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On 2/7/2021 3:09 PM, James wrote:<br>
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<pre class="moz-quote-pre" wrap="">On Sun, Feb 7, 2021 at 2:27 PM Langley, Stuart
<a class="moz-txt-link-rfc2396E" href="mailto:Stuart.Langley@disney.com"><Stuart.Langley@disney.com></a> wrote:
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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.
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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
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Speaking 100% personally and not in my role with the OSI.<br>
<br>
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.<br>
<br>
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 <i>exclude</i> 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<i> </i>meant to describe the
sole lawful uses, which would be problematic in the same way.<br>
<br>
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.<br>
<br>
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:<br>
<span style="mso-fareast-language:EN-US"><br>
6. Trademarks. This License does not grant permission to use the
trade names, trademarks, service marks, or product names of the
Licensor <span style="color:red">and its affiliates</span>,
except as required <s><span style="color:red">for reasonable and
customary use in describing the origin of the Work</span></s>
<span style="color:red">to comply with Section 4(c) of the License<font
color="#0000ff">,</font> </span>and <span style="color:red">to
reproduce <s>reproducing</s></span> the content of the NOTICE
file. <font color="#0000ff">This section does not prohibit any
lawful use</font>.</span><br>
<br>
Pam<br>
<br>
Pamela S. Chestek<br>
Chestek Legal<br>
PO Box 2492<br>
Raleigh, NC 27602<br>
<a class="moz-txt-link-abbreviated" href="mailto:pamela@chesteklegal.com">pamela@chesteklegal.com</a><br>
(919) 800-8033<br>
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