[License-discuss] System 76's BeanBooks Public License v1.0

[Pamela Chestek]

On 9/18/2013 4:08 PM, Ken Arromdee wrote:
> On Wed, 18 Sep 2013, John Cowan wrote:
>>> Sec. 4.3 strikes me as actually conceptually somewhat interesting,
>>> inasmuch as many commercial lawyers have argued that this type of
>>> clause is often implicit in software that contains a protect trademark
>>> embedded in the software and not removed by a downstream licensee.
>> In this case, however, Section 4.2 prevents you from removing the
>> protected trademark.  Taking the two clauses together, you are 
>> effectively
>> prevented from making commercial use of the software without paying for
>> the trademark license, which obviously contravenes clauses 6 and 7 of
>> the OSD.  So this license is on its face not Open Source.
>
> It says:
>>         4.3 - Commercial distribution of the Software requires a
>>         trademark license agreement and you may be required to
>>         pay. Using the Software within a corporation or entity is not
>>         considered commercial distribution. This license does not grant
>>         You rights to use any party's name, logo, or trademarks, except
>>         solely as necessary to comply with Section 4.2.
>
> Wouldn't the "except solely as necessary to comply with section 4.2" 
> clause
> make it okay?  Section 4.2 prevents you from removing the protected
> trademark, and section 4.3 allows you to use the trademark under those
> circumstances.

I believe the restriction in 4.3 violates the OSD, specifically OSD 5 or 
6 (but you all have much more experience with how each of these are 
interpreted, so perhaps you will disagree).

4.2 applies to the use of the trademarks in the software only, but 4.3 
tries to restrict use of the trademarks more broadly in a commercial 
context. As an example, trademark law allows the resale of genuine 
product without any kind of license. So in the open source context, I 
should be able to take unaltered software and state on my website and in 
advertising materials that I am distributing the genuine software. It 
appears to me that this provision tries to prohibit this lawful use by 
contractually requiring a license for it. So it treats a commercial 
enterprise differently from a non-commercial enterprise (whatever that 
distinction is because I'm not sure); if I am non-commercial I can 
advertise that I distribute the software but if I am commercial I can't 
without paying for a trademark license.

In my opinion, if there is no statement in a license about trademarks 
then the assumption should be there is no trademark license. Some 
licenses, like the Apache license, say the same thing expressly, to 
avoid any question (I think a good practice). What happens then in both 
these cases is that use of the trademark by anyone is a matter of 
whether it is a lawful use or not. But this license goes further than 
that by arguably prohibiting lawful uses too.

Pam

Pamela S. Chestek, Esq.
Chestek Legal
PO Box 2492
Raleigh, NC 27602
919-800-8033
pamela at chesteklegal.com
www.chesteklegal.com