GNOME FOUNDATION TRADEMARKS
The GNOME Foundation's trademarks are some of its most important assets. We must protect the trademarks in order to keep them. Therefore, we have some guidelines for their use and a standard agreement for user groups. These should cover most situations, but special agreements also are possible where necessary.
The GNOME Foundation trusts its own community to use our trademarks properly. However, we are legally obligated to have clear rules in order to prevent the infringement or dilution of our trademarks. Ideally, these guidelines will not get in your way. If they do, please let us know immediately.
TRADEMARK AGREEMENT FOR USER GROUPS
User groups are a very important part of the GNOME community. User groups have a need to make use of the GNOME trademarks in such ways as creating and distributing marketing materials or creating web sites.
The following is a draft of a standard license to allow GNOME user groups to use the GNOME trademarks under certain conditions. (The usage of the term user group here is broad: the canonical example would be a group of people using and promoting GNOME in a specific locality, but it could also be a group of developers working on an open source GNOME application or many similar non-commerical uses.)
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1. Potential problem: is a signature required?
Lawyer's response: YOU CAN HAVE USER GROUPS SIGN THE AGREEMENT OR HAVE THEM AGREE ELECTRONICALLY BY CHECKING A BOX (agreeing to the terms) WHEN THEY REGISTER.
2. Under paragraph 6, Termination, does "submission" mean that the group needs to have an officially authorized representative under local laws that needs to sign the document and send it back to the foundation? If not, how will this work? This seems like a lot of troubles, which was exactly what was to be prevented by this agreement...
Lawyer's response: ELECTRONIC AGREEMENT AS MENTIONED ABOVE SHOULD BE FINE.
3. Also the introduction text says about "Your acceptance and submitting this license to GNOME". Also, what are "GNOME USER GROUP GUIDELINES", and where are they defined? Protecting trademark rights doesn't need signed agreements, there are laws that protect it.
Lawyer's response: CHANGE IT TO "GNOME'S USAGE GUIDELINES" at end of fourth line in first paragraph. THIS REFERENCES THE THIRD PARTY GUIDELINES, WHICH WE WANT TO COVER USER GROUPS AS FAR AS STYLISTIC AND OTHER USES OF THE MARKS.
4. Potential problem: GNOME name trademark usage?
Lawyer's response: UNCERTAIN WHAT THEY'RE ASKING.
5. Paragraph 1.d.i, state or in any way imply...; Who can represent GNOME? The GNOME Foundation board?
Lawyer's response: YES, THE GNOME FOUNDATION BOARD CAN REPRESENT GNOME.
6. Under paragraph 1.d.iii, use the trademark..., the use of the GNOME trademark in a URL is forbidden. How is this supposed to go together with the use of the GNOME trademark in the user group name as permitted in section 1aii? GNOME-nl, hosted on http://nl.gnome.org/, seems to violate this agreement already. What is the purpose of this rule, what should it prevent (1diii)?
Lawyer's response: THERE IS NO INCONSISTENCY BECAUSE THIS CONTEMPLATES THAT USER GROUPS ARE NOT HOSTING THEIR OWN DOMAINS. IF THE BOARD'S INTENT IS TO LET USER GROUPS USE AND HOST GNOME DOMAIN NAMES, WE SHOULD DISCUSS.
7. There are also local GNOME user group sites such as http://www.gnome.se/ and http://www.gnome.fi/ Should the license require a written permission from GNOME Foundation to register and use a new gnome.tld site?
Lawyer's response: ONCE AGAIN, THE LICENSE CONTEMPLATES THAT USER GROUPS ARE NOT USING DOMAIN NAMES. IF THEY ARE, WE SHOULD MAKE THAT MORE CLEAR.
8. Section 2, Copyright License, paragraph e, Subject to the terms...; Didn't find definition for "Licensed Works" before this section.
Lawyer's response: LICENSED WORKS AS DEFINED IN SECTION 2(f) IS APPLICABLE FOR THE ENTIRE AGREEMENT.
9. Paragraph 3.a, Legal notices: When used in website, can this text be translated to the language of the corresponding site?
Lawyer's response: OUR PREFERENCE IS THAT TRANSLATIONS BE DONE ON A CASE-BY-CASE BASIS. WE COULD CONSIDER ALLOWING TRANSLATIONS, IF THAT'S YOUR PREFERENCE.
10. Paragraph 4, Ownership Rights: "...the Group will cause such domain name to be assigned to GNOME at no cost." This is not possible in many countries. For example in Finland the entity registering a domain must have a business in Finland. This also conflicts with existing domains like gnomefiles.org.
Lawyer's response: ADD LANGUAGE TO MAKE IT: " . . . AT NO COST OR TAKE SUCH OTHER ACTION AS REQUESTED BY GNOME." THAT SHOULD COVER THE CONCERN.
11. Paragraph 8, Permitted Access: "... the authorized representative of the Group ...". The user groups are often non-organized group of people, and there may be no legal entity for the group. In this case there can't be authorized reprensetative.
Lawyer's response: WE SHOULD DO THE BEST WE CAN TO ENSURE THAT REGISTERED USER GROUPS ARE ORGANIZED ENTITIES. TO THE EXTENT THAT A PERSON AGREES TO THE LICENSE ON BEHALF OF THE USER GROUP, THEY ARGUABLY ARE COMMITTING FRAUD IF THEY DO NOT HAVE SUCH AUTHORITY.
12. The signature section should be removed; There should be no need to sign a paper that gives you some rights. See also note about Paragraph 8, Permitted Access.
Lawyer's response: THEY SHOULD EXECUTE EITHER BY ELECTRONIC SIGNATURE OR BY CHECKING A BOX ELECTRONICALLY.
13. Jurisdiction clause (section 9, Miscellaneous) is invalid in some countries. Worse it may be enforcable in others. (A. Cox)
Lawyer's response: WE CAN'T CONTROL THE ENFORCEABILITY, BUT OUR PREFERENCE IS, WHERE FEASIBLE, TO TRY TO USE MASSACHUSETTS. PRACTICALLY SPEAKING, THERE'S NO REAL DOWNSIDE IN ATTEMPTING TO BRING PEOPLE UNDER MASSACHUSETTS JURISDICTION.
14. Domain name stuff allows GNOME to hijack arbitary domains of anyone who signs it. If they register a mark in the US for a name already used outside the US then the user group must hand over the domain. (A. Cox)
Lawyer's response: OUR VIEW IS THAT ANY GNOME-RELATED DOMAIN NAMES SHOULD BE OWNED BY THE FOUNDATION, REGARDLESS OF WHEN THEY WERE USED.
15. Print format includes T-Shirts (non-commercial) - is that intentional. (A. Cox)
Lawyer's response: UNCLEAR WHAT THEY'RE ASKING.
16. Requirement for statement on the usergroup case doesn't allow translations so will have comical results in some countries, and even could prevent the license being signed in others (A. Cox) Suggest you add "and/or appropriate approved translations"...
Lawyer's response: WE SHOULD NOT APPROVE TRANSLATIONS BECAUSE WE HAVE NO QUALITY CONTROL OVER THEM. WE SHOULD DETERMINE ON A CASE-BY-CASE BASIS.
17. Given what GNOME is about, suggest adding areas in which the mark is held. (A. Cox) Also something to make it more friendly such as
national law on the use of the marks. It is not the intent of this document to claim to deny you such rights. Trademark law is a complex field and a full explanation would require a complete textbook. If in doubt consult your attorney" (A. Cox)
Lawyer's response: "YOU MAY HAVE OTHER RIGHTS AND RESTRICTIONS IN THE UNITED STATES OR OTHER COUNTRIES REGARDING THE GNOME TRADEMARKS. TRADEMARK LAW IS A COMPLEX FIELD. IF YOU HAVE QUESTIONS REGARDING YOUR LEGAL RIGHTS, FEEL FREE TO CONSULT YOUR ATTORNEY."
18. The paranoid part of me says it should also say
contract between GNOME and another party" (A. Cox)
Lawyer's response: NO. WE PREFER NOT TO ADD THIS.
Questions not submitted to the lawyers yet
19. It's not clear whether user groups will be able to sell GNOME LiveCD at conferences. This is a great way to promote GNOME, but it's expensive and we can't just give them (VincentUntz)
20. Could we have a simpler version, with less lawyerish language? This version wouldn't have any legal implication, but it could really help us to understand the agreement. See for example how Creative Commons does this. (VincentUntz)
TRADEMARK USAGE GUIDELINES FOR THIRD PARTIES
Under the law, "fair use" of trademarks is allowed (for example, trademarks typically may be used without permission in magazine and book reviews). The attached draft guidelines are designed to help users determine what constitutes fair use.
The following is a draft of a document describing usage guidelines for the GNOME trademarks.
Draft usage guidelines for third parties
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1. Given what GNOME is about
- suggest adding areas in which the mark is held. (A. Cox)
2. Something to make it more friendly such as
- "You may have other rights and restrictions in US or other national law on the use of the marks. It is not the intent of this document to claim to deny you such rights. Trademark law is a complex field and a full explanation would require a complete textbook. If in doubt consult your attorney" (A. Cox)
3. The paranoid part of me says it should also say
- "No part of these usage guidelines shall be held to form a contract between GNOME and another party" (A. Cox)
OTHER STANDARD TRADEMARK AGREEMENTS
In addition to the license and usage guidelines, the GNOME Foundation can grant permission for use of the GNOME trademarks in other contexts. We've been doing this for a long time and it likely will remain the right way to handle cases such as when a company wants to sell GNOME-branded merchandise.
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