Will the real Linux Gazette please stand up?

Posted Nov 14, 2003 11:20 UTC (Fri) by rickmoen (subscriber, #6943) [Link]

billg wrote:

It's worth asking why the Linux Gazette crew didn't seek to protect that name?

Names can be reserved against some certain sorts of commercial use within one's industry segment, through use of trademark law. Please hold that thought, which I'll return to in a moment (and remember that I said commercial use).

Copyright on the material that appeared in the Gazette during its time under the SSC umbrella is, presumably, accounted for by the terms of the agreement between the Gazette and SSC.

Copyright title remains with each item's author, and published material is open-source licensed under the Open Publication Licence v. 1.0. This is true of all issues of recent years. A slightly different but OPL-like licence was used before that, and contents of issues #1-8 in 1995-6 were BSD-licensed.

However, the name itself might have been trademarked years ago, making this current dispute moot.

There are more misconceptions in the Linux community over trademark law than pretty much any other, in my experience. (I'm not saying you personally are under such misconceptions.) Let's go over the matter:

1. You can establish a trademark without registration, by using it in business and establishing a brand identity for your product. This is called common-law trademark, and exists (in the USA) subject to regulation by state law. By using a distinctive mark (name, logo, style) in business for a product, you gain a limited monopoly over the use of the brand in business -- limited to your industry and the geographical area where your product is sold. Specifically, nobody else (in the same geographical area and industry) may lawfully use your mark for a competing commercial product in such a way as to mislead customers into thinking the trademark owner endorsed or produced the competing goods.

SSC has gotten into the habit of putting "TM" next to the words "Linux Gazette", which is an unregulated symbol used to indicate a common-law trademark assertion. The symbol has no legal force, and is not required to have any legal merit behind it. It should not be confused with the R-in-circle symbol, which in the USA may by law be used only next to paid-up Federally-registered marks:

2. You can register your (US-based) trademark with the US Patent and Trademark Office (USPTO), for ten years at a time for about US $300 per decade. This gives your trademark nation-wide coverage (within your industry), and I believe also some broader enforcement powers -- but the nature of what you third-party uses you can enjoin is otherwise the same. (Neither SSC nor anyone else has filed for Linux Gazette marks.)

3. The only consequence of being the first person to successfully assert a particular trademark within a given industry (with or without registration) is that you get to enjoy the monopoly over customers' impression of of that brand identity in your area of business.

4. Recently, any valid trademark has also been held to be privileged against "disparagement", defined in Black's Law Dictionary as a "false and injurious statement that discredits or detracts from the reputation of another's property, product, or business". The idea is that if your use of a trademarked image drags a valuable trademark (in what can be argued as being) through the mud, e.g., you show Mickey and Minnie Mouse in flagrante delicto, then you've committed the tort of trademark disparagement even if your usage was otherwise privileged, e.g., because it was non-commercial.

5. You may have noticed a recurring theme in the above -- maybe because I've said it before. A valid trademark (of either sort) can be used only to enjoin sale of goods offered in commerce that wave about your trademarked brand in a way tending to convince customers that you (the trademark owner) produced or endorsed the competing goods. That's it. That's all trademark gets you.

So, people often confuse two separate questions:

• Can SSC successfully assert that invented (or bought) "Linux Gazette" as a commercial brand identity -- given that it was actually invented by John Fisk as an explicitly non-commercial magazine, and which countless people including Phil Hughes have repeatedly proclaimed to be non-commercial?
• If so, so what? (The answer is that it would gain limited rights to control the brand-identity usage of that mark _in business_ to sell products. Note that LG is non-commercial.

So, finally, to respond to your comment: No trademark registration exists, a common-law trademark cannot be validly asserted (since the mark isn't used in commerce) -- and, even if it could, it could be used only to enjoin certain sorts of uses of the mark in commerce, which means the Linux Gazette magazine inherently could not infringe such a hypothetical trademark, being entirely non-commercial.

There's a tremendous amount of nonsense promulgated about trademark law. Here's Cory Doctorow of EFF, explaining trademark law and detailing just how badly people tend to misunderstand it: http://www.openp2p.com/pub/a/p2p/2003/08/14/trademarks.html

Example of a "trademark disparagement" legal action: http://www.chillingeffects.org/protest/notice.cgi?NoticeID=652

General overview of trademark law: http://www.law.cornell.edu/topics/trademark.html

Rick Moen
rick@linuxmafia.com