Promotion of derived products, the Microsoft case (was: Scope of copyright on derivative works)

[Rick Moen]

Quoting Philippe Verdy (verdy_p at wanadoo.fr):
> Alexander Terekhov [mailto:alexander.terekhov at gmail.com] wrote:
> > - Neither the name of the <ORGANIZATION> nor the names of its
> > contributors may be used to endorse or promote products derived from
> > this software without specific prior written permission.
> 
> This kind of statement is exactly the typical restriction that I was
> speaking about the Microsoft's possible attempt to limit the use of its
> licence name, because it would indirectly reference Microsoft itself without
> permission for promoting a product distributed under the terms of one of the
> proposed Microsoft licences.

No.  See below.

> So if this statement is enforceable, this means that such restrictions are
> valid and enforceable, and so, unless such permission is explicitly provided
> in the Microsoft proposed licences, the names of the licence will cause a
> problem, given that the trademark "Microsoft" is effectively protected, and
> obeys to its general usage policy explicited in the Microsoft web site or in
> the EULA, or simply by law and in by official trademark registrations in the
> various countries where it has been protected.
> 
> I can't safely assume a "fair use" legal clause, simply because the "fair
> use" exception does not apply to the case of promoting competing products,
> and this is not even a citation (if software are considered as artistic
> creations, in countries where this is applicable). 

Wrong.  Philippe, _please_ go study some trademark law.  You mean well,
but are wasting everyone's time.

Trademark law gives a limited monopoly right on _brand impression_, such
that it is a tort (trademark infringement) to use someone else's mark in
business, within the same trade or industry, for third-party competing
goods (trademark in the strict sense of the term) or services (service
marks), in such a fashion as to tend to create the misleading confusion
in the mark-holders' less-sophisticated customers' minds that the
mark-owner has produced or endorsed the competing goods or services.
That is precisely the legal standard that would apply.  (That is the 
standard within systems derived from English common law, and yes, I'm
well aware of the issue of international differences.  Please see below.)

Putting one's competing goods or services under the Fooware-drafted
"Fooware Licence" does not create a colourable claim of such a tort
having been committed.  Fooware, upon dragging you to court, would have
the impossible burden of convincing a judge that your Barware, that you
had released under Fooware Licence, is, from all of the surrounding
facts, likely to confuse the less perceptive of its customers into
thinking Barware is theirs.  

If you, as a commercial user of Fooware's licence within Fooware's trade
or industry, are utterly paranoid about Fooware's evil litigious nature,
and are actually worried about trademark infringement, you can put a
notice right above your included text of Fooware Licence saying "Barware 
is not produced or endorsed by Fooware Company".  That would be a bit 
silly, but would completely disarm any possibility of such a tort
attack.

(I am not discussing the separate torts of trademark disparagement or
dilution, which are not relevant here.)

> Don't forget that "fair use" is mostly a US-only exception, this legal
> right may not even exist in any other country or applicable
> legislation.

Actually, the applicable defense in this case would be properly called
"nominative use".  Upon checking my notes about (yes, USA) trademark
law, I find that the Federal Lanham Act and caselaw carve out two
separate affirmative defences.  (I very _much_ doubt that the same
conceptis are absent from EU member states + the Law of the European
Union, or from any other significant legal system, because the same 
underlying issues exist and there isn't much room for handling them any
other way, e.g., I notice European companies are free to mention each
others' names.  Inquire locally about details.)

Nominative use:  E.g., Automobili Lamborghini S.p.A. doesn't need the 
permission of Bayerische Motoren Werke AG to claim in print that a
Lamborghini Diablo is a better car than a BMW E90.  US statutory
guidelines:  (1) the trademark owner's product or service must be one
that is not readily identifiable without the use of the trademark; (2)
the author only uses as much of the trademark as is reasonably necessary
to identify the trademark owner's products or services; and (3) the
author does nothing that would, in conjunction with the trademark,
suggest to the reader sponsorship or endorsement by the trademark owner.

Fair use:  Usage of the (ordinarily) trademark-encumbered mark that has
a primary, descriptive sense _in_ that sense, as opposed to in the
secondary, non-descriptive sense that is eligible for trademark
coverage.  Mark owners attempting to establish brand identities using
established, commonly-used words or phrases simply have to endure the
continued existence of those phrases applied in a descriptive sense.
E.g., Apple Computer cannot prevent you from writing about apples, and
you can offer macintoshes to ward off rain without needing to worry
about itinerant lawyers from Cupertino.