[License-discuss] Modified Apache License

[Pamela Chestek]

On 2/7/2021 3:09 PM, James wrote:
> On Sun, Feb 7, 2021 at 2:27 PM Langley, Stuart
> <Stuart.Langley at disney.com> wrote:
>> Thank you.  The rationale is that in a company like ours (Disney in this case, but others obviously would share this concern) trademarks are a fundamental value of the company.  We license marks very intentionally and are not comfortable with constraining trademark use only by “reasonable and customary” as that is 1) subject to interpretation by licensees, and 2) may change over time.
> Hi Stuart,
>
> Thanks for sharing your thoughts.
>
> I'd like to know if you've experienced trademark issues related to
> this "in the wild" or if this is merely a preventative change to
> reduce that possibility.
>
> (In fact if anyone has experienced trademark issues as a result of
> Apache V2, please let us all know.)
>
> Thanks,
> James
Speaking 100% personally and not in my role with the OSI.

I have always thought the Apache license's phrase "reasonable and 
customary use in describing the origin of the work" was meant to 
describe nominative fair use, but I do know of some who have interpreted 
it more broadly than that. I don't agree with that interpretation, but I 
appreciate that the wording in the Apache license is a suboptimal way to 
express the concept. I assume that Apache was trying to add clarity with 
this section but I think it only created ambiguity. You could read it as 
describing what are only lawful uses anyway, which of course doesn't 
need to be said, thus begging an interpretation that it must mean that 
the section is granting permission for some trademark use that requires 
a license, allowing for argument what that might be. I submit that an 
improvement to the license would be to delete Section 6 altogether. Your 
revision, expressed as permission for uses that no one needs to have 
permission to do, has the same structural problem as the original, 
albeit with less room to argue that it might be granting a license for, 
well, something.

That said, I think your draft is ok from an open source perspective even 
though it doesn't expressly allow for some other lawful uses (which will 
critically include functionality and non-trademark use, as well as 
nominative fair use). It says "we're not giving permission except for 
these two uses." As with the original, there is room to argue that this 
wording doesn't /exclude/ any lawful uses, it is just silent on them. If 
it did say something like "and no other uses will be tolerated," then I 
think the section will have crossed the line to non-free. But there 
still is a risk of an interpretation that the section is//meant to 
describe the sole lawful uses, which would be problematic in the same way.

IMO, permitting lawful uses of trademarks, particularly the functional 
use, is critical to being considered an open source license. If the 
trademark owner claims "you cannot use the command 'foo' to run the 
software because FOO is our trademark," that claim is more restrictive 
than trademark law, which does not consider that kind of use of a 
trademark infringement. Nevertheless, it is a threat I have seen used to 
try to interfere with use of the software that is otherwise permitted by 
the copyright license, based on the belief that rewriting the code to 
avoid it is an insurmountable obstacle. I would therefore say that any 
license that tries to prohibit the lawful use of trademark will not be 
an open source license.

Because of the ambiguity about what exactly this section is supposed to 
mean, I would say expressly that lawful uses are permitted. I would 
consider this an improvement:

6. Trademarks. This License does not grant permission to use the trade 
names, trademarks, service marks, or product names of the Licensor and 
its affiliates, except as required for reasonable and customary use in 
describing the origin of the Work to comply with Section 4(c) of the 
License, and to reproduce reproducing the content of the NOTICE file. 
This section does not prohibit any lawful use.

Pam

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