Trademarks and F/OSS [LWN.net]

Petition to Cancel

Posted Aug 18, 2005 17:47 UTC (Thu) by dmarti (subscriber, #11625) [Link]

Why do people even argue about the Linux trademark when the trademark holder's signature is on a document from 1995 asserting that "Linux" is a "generic term of art"?

It's not so bad that "Linux" is generic. So is "windows" (but Microsoft will pay you $20 million to pretend that it's not). And "Apple" belongs to the Beatles, and every few years Steve Jobs's company takes a legal beating over that.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Trademark Registration No. 1,916,230
For the mark "LINUX"
Date Registered September 5, 1995

Linus Torvalds, an individual;

WorkGroup Solutions, Inc., a Colorado corporation;

Yggdrasil Computing, Inc., a California corporation;

Specialized Systems Consultants, Inc., doing business as Linux
Journal, a Washington corporation; and,

Linux International, a New Hampshire unincorporated association,

PETITIONERS

vs.

William R. Della Croce, Jr.,
RESPONDENT

Cancellation No.________________________

PETITION TO CANCEL REGISTRATION
PETITIONERS

Petitioners are a representative group of the vast number of
individuals and companies that create, use, write about, distribute,
and sell "Linux" computer operating systems software. They have come
together in order to defend the generic "Linux" name for unrestricted
use by the Linux computer operating system community. The petitioning
parties are:

1. Linus Torvalds, a Finnish computer scientist and educator residing
in Finland, whose mailing address is
Linus Torvalds, Faculty Member,
Computer Science Department
University of Helsinki
PB 26
University of Helsinki
Finland

2. WorkGroup Solutions, Inc., a Colorado corporation whose mailing
address is
P.O. Box 460190
Aurora, CO 80046-0190.

3. Linux International, a New Hampshire unincorporated association
whose mailing address is
80 Amherst St.
Amherst, NH 03031-3032.

4. Specialized Systems Consultants, Inc., a Washington corporation
doing business as "Linux Journal", whose business address is
7723 24^th Ave. NW
Seattle, WA 98117.

5. Yggdrasil Computing, Inc., a California corporation, located at
4880 Stevens Creek Blvd., Suite 205
San Jose, California 95129

To the best of the Petitioners' knowledge, the name and address of the
current owner of the registration is

William R. Della Croce, Jr.

33 Snow Hill St.

Boston, Massachusetts 02113

The above-identified Petitioners believe that they are or will be
damaged by the above-identified registration and they hereby petition
to cancel same for the detailed reasons set forth herein.

AS GROUNDS FOR THIS PETITION, IT IS ALLEGED THAT:

STATEMENT OF FACTS

1. DESCRIPTION OF REGISTRANT'S REGISTRATION: Filed on August 15,
1994, for the mark LINUX; registered on September 5, 1995 on the
Principal Register, in class 9, for "computer operating system
software to facilitate computer use and operation"; claiming first
use in interstate commerce on August 2, 1994.

2. On or before the Fall of 1991, Linus Torvalds, a Finnish computer
programmer and one of the Petitioners herein, made available
worldwide on the Internet the source code for a freeware computer
operating system he named, at the time of release, "LINUX". It has
continuously been referred to by this name since its first
release, both by Torvalds and by hundreds of thousands, if not
millions, of users worldwide.

3. Since its inception in 1991 the Linux operating system has been
freely available and distributed in source code format to users in
the United States and elsewhere worldwide. This allows programmers
around the world to use, modify, and develop the Linux operating
system as their needs dictate. [See PCWeek Article dated October
7, 1996, incorporated herein by reference as Exhibit A]

4. The Linux operating system can be freely modified and sold by
anyone, with the only requirement that it remain an open and
changeable system. Therefore, there are many different groups,
companies and individuals, including some petitioners herein, who
market various Linux operating systems, Linux programming tools,
and Linux reference materials. [See San Jose Mercury News Article
dated September 8, 1996, incorporated herein by reference as
Exhibit B]

5. The "Linux" name was chosen by Linus Torvalds as a combination of
his first name, Linus, and the word MINIX. MINIX was a clone of
the UNIX computer operating system. Since Linus Torvalds modeled
the Linux computer operating system for PC based computers after
the UNIX computer operating system, which ran mostly on main frame
computers, it was an abbreviated way to denote the combination of
Linus and MINIX, a variation of UNIX. [See Minnesota Technolog
Article dated March 1994, incorporated herein by reference as
Exhibit C]

6. Mr. Della Croce's registration was for "Computer Operating System
Software to Facilitate Computer Use and Operation". [See Patent
Trademark Office Registration No. 1,916,230, incorporated herein
by reference as Exhibit D] This is exactly what the Linux
operating system is and does, created by Linus Torvalds years
before the claimed first use by Mr. Della Croce took place. [See
Exhibit B San Jose Mercury News article]

7. By the fall of 1994, when petitioner claimed first use in
interstate commerce, there were already approximately 100,000
existing users of Linus Torvalds' Linux program worldwide. [See
Exhibit B San Jose Mercury News article] From 1991 through 1994
many publications in the computer industry discussed Linus
Torvalds' operating system. By early 1994 there were several
businesses that existed which solely depended on selling and
supporting Linus Torvalds', then existing, "Linux" computer
operating system.[See Exhibit C]

8. Petitioners have been unable to locate any evidence of any Linux
trademarked products, of any kind, ever having been offered by the
Registrant for sale to the public. It appears no such product(s)
from Registrant is available for purchase or license at this time.
Registrant has declined to provide exemplars of any such products
to establish the bona fide nature of his claim to first, or
continuing, use of the mark, in spite of the Petitioners' repeated
requests, both directly and through his attorney, that he do so.
Registrant does not answer phone calls requesting product
information, nor to discuss this matter, although numerous
messages have been left on the answering machine at the phone
number which he designated in his letters, and under which he is
listed in the Boston area telephone directories.

9. Petitioners' legal counsel has unsuccessfully attempted to obtain
information about any evidence of the existence of Registrant's
alleged Linux product through direct contact with his then
attorney, Joel R. Davidson of Quincy, Massachusetts. Mr. Davidson
has declined to respond in writing, or otherwise, as to the status
or existence of his client's products. Davidson has since advised
Petitioners' legal counsel, by letter and by phone call, that he
no longer represents Della Croce, because he will not follow his
advice to agree to the cancellation of the registration. Davidson
has also failed to respond to several requests that he confirm the
address and phone of his former client, so that Petitioners can
talk directly with Della Croce.

10. The Registrant, both directly and through legal counsel, Joel R.
Davidson, began sending letters, in the summer of 1996, to various
companies engaged in the sale and promotion of the Linux operating
system demanding 10% royalty payments for the use of the Linux
name. [See letter dated July 30, 1996 from Global American signed
by Registrant to WorkGroup Solutions, Inc. dated July 30, 1996.
incorporated herein by reference as Exhibit E] [See letter from
Joel R. Davidson to Mark Bolzern, President, WorkGroup Solutions,
Inc., dated August 20, 1996 incorporated herein by reference as
Exhibit F ]

11. Counsel has also sought evidence that either Registrant or Global
American are licensed to do business in the Boston, Massachusetts
area, and third parties have placed calls to Registrant, at the
request of legal counsel for Petitioners, seeking information on
his business and the availability of his alleged trademarked
products. Of the two possible phone numbers listed in public
records, both are answering machines with messages not indicating
any business name or identification. Absent more information or
confirmation by attorney Davidson, Petitioners have had to assume
that one or the other of these numbers was that of
Registrant/Respondent Della Croce, since he never personally
answers the phone and has never responded to messages left there.
A person purporting to be Della Croce has telephoned Petitioner
Torvalds and spoken with him about Torvalds authorship of Linux,
in the past.

PETITIONERS' STANDING TO FILE

Standing of the various Petitioners is as follows:

12. Linus Torvalds:
As indicated above, Petitioner Linus Torvalds was the original
creator of the Linux computer operating system. He holds the
copyright to the majority of the source code of the Linux
operating system and continues to guide the development of the
Linux operating system. Further, he is a well known computer
scientist and educator who lectures worldwide regarding his Linux
computer operating system.

13. WorkGroup Solutions, Inc.:
Petitioner WorkGroup Solutions Inc. is engaged in the development
and sale of operating systems, software, languages and
enhancements. One of its chief product lines involves the
operating systems and related tools from the Linux genre.
Petitioner WorkGroup Solutions Inc. sells over five different
computer operating system packages based on the Linus Torvalds
Linux operating system kernel, as well as a variety of tools,
books, and other reference materials, all bearing the "Linux"
name. [See Internet web page printout of wgs.com which includes
Linux Shopping Mall, incorporated herein by reference as Exhibit
G]

14. Linux International:
Petitioner Linux International is an organization made up of
companies and individuals whose goal is the promotion of the use
of the Linux computer operating system. Members of Linux
International include, among others: Caldera, Digital Equipment
Corporation, Metro Link, X-Inside, WorkGroup Solutions Inc., H& L
Software, Interactive Software Engineering, Just Logic, Linux
Journal, Red Hat Software, and Tower Technology Corporation.

15. Specialized Systems Consultants, Inc., doing business as the Linux
Journal:
Petitioner Specialized Systems Consultants, Inc. is a Washington
State corporation established in 1985. Linux Journal, which
publishes articles concerning Linux, has been continuously
published since March of 1994, which date is prior to the alleged
date of first use by Registrant/Respondent. [See Linux Journal
Volume #1 Editions #1 and #2, incorporated herein by reference as
Exhibit H]

16. Yggdrasil Computing, Inc.:
Petitioner Yggdrasil Computing, Inc. is a California corporation
established in 1992. It produces a variety of Linux computer
operating system products including the Linux Bible, Plug and Play
Linux, Linux Internet Archives, and Linux -- Installation and
Beyond. [See Internet web page printout of www.yggdrasil.com,
incorporated herein by reference as Exhibit I]

SPECIFIC GROUNDS ALLEGED FOR CANCELLATION

17. Linux has been a generic term of art in that segment of the
computer industry of which Petitioners are members, since at least
1991 or early 1992. It is estimated that there are currently
between one million and two million computers using the Linux
computer operating system. None of the users of these computers
ever heard of Registrant or this alleged "Linux" software until
his recent demands for royalties for trademark use were made, and
the Linux user groups on the Internet are all expressing outrage
at what they consider a fraudulent claim by Della Croce. The term
"Linux" was and still is used generically to describe all the
variants of the operating system developed by Petitioner Linus
Torvalds. Thus, "Linux" differentiates an entire genre of computer
operating system software from such operating systems as Microsoft
DOS, Microsoft Windows, or Apple Macintosh. It is not a
proprietary product of Registrant and never has been, in spite of
Registrant's letters to some users, demanding royalties, and his
false claim filed with the PTO.

18. Registrant's alleged registered mark is the common descriptive
name of all Linux computer operating system and related products.
It is the generic name of all such goods produced and sold by
every company or person engaged in such business. Therefore,
Petitioners allege that Registrant's registered mark does not
function to identify Registrant's goods (if in fact Registrant has
any) nor distinguish them from goods offered by others.
Petitioners are likely to be damaged by the existing registration
of said generic term, in that the existence of said registration
tends to impair Petitioners' legal right to use of the said term,
and because Petitioners have been involved for some time in the
manufacture, sale, and distribution of Linux software products, as
to which the Petitioners have a valid and legal right to refer to
by its common descriptive name, Linux, selected by Petitioner
Torvalds in 1991.

19. On information and belief, Petitioners allege that Registrant's
registration was obtained fraudulently in that in the formal
application papers filed by Registrant, under oath pursuant to 18
USC 1001, states that Registrant's first use in commerce took
place on August 2, 1994. Despite extensive searching and repeated
efforts by Petitioners' counsel to contact Registrant,
Petitioners' counsel can find no evidence whatsoever of
Registrant's alleged product ever having had any bona fide use in
commerce. On information and belief, Petitioners allege that no
such product from Registrant ever existed, neither on the asserted
date of first use, nor as of the date of filing the application
for registration, nor at this time. On information and belief,
Registrant's statements as to ownership, use, and knowledge of
others using the same mark are intentionally false, and constitute
perjury under 18 USC 1001.

20. On information and belief, Petitioners further allege that
Registrant's registration was obtained fraudulently in that in the
formal application papers filed by Registrant, under oath pursuant
to 18 USC 1001, states that to the best of his knowledge and
belief no other person, firm, corporation, or association has the
right to use the Linux mark in commerce. Said statement was false
because if Registrant was a computer programmer capable of
creating, or commissioning, an operating system he either knew or
should have known that there was a widely distributed computer
operating system with the identical name which does exactly what
the Registrant claimed his registration covers. On information and
belief, said statement was made by the Registrant with knowledge
and belief that said statement was false. On information and
belief, said false statement was made with the intent to induce
authorized agents of the US. Patent and Trademark Office to grant
said registration. Reasonably relying upon the truth of said false
statements, the U.S. Patent and Trademark Office did, in fact,
grant said registration to Registrant. On information and belief,
Petitioners were damaged by said false statements and the
registration issued in reliance thereon in that Petitioners, since
as early as 1991, some or all of them, have continuously used the
mark Linux on software product packages. Petitioners' continued
and legal use of said mark is being and will be impaired by the
continued registration of said mark of Registrant.

21. Registrant now claims a 10% royalty on all Linux sales, past and
present, from Petitioners and others in the industry, which is an
attempt to use his fraudulently obtained trademark registration to
demand royalties from something he cannot own, all to the damage
of Petitioners and to the general public.

22. If falsely obtained, the use of the U.S. trademark registration,
by Registrant Della Croce, to demand money (royalties) under false
pretenses by correspondence through the U.S. mail, also
constitutes federal mail fraud pursuant to 18 U.S.C. 1341, a crime
punishable by up to five years in prison and a fine of $1,000.

WHEREFORE, Petitioners pray that Registration No. 1,916,230 be
canceled immediately, and that this Petition for Cancellation be
sustained in favor of Petitioners, with costs and legal fees awarded,
if appropriate, pursuant to the Federal Rules of Civil Procedure and
the Rules of the PTO and the TTAB.

DAVIS AND SCHROEDER,

A California Professional Law Corp.

BY_____________________________

G. GERVAISE DAVIS III, Esq.

ROBERT T. DAUNT, Esq.

CATHERINE McCAULEY-LIBERT, Esq.

ATTORNEYS FOR

Linus Torvalds,

WorkGroup Solutions, Inc.,

Yggdrasil Computing, Inc.,

Specialized Systems Consultants, and

Linux International