Fedora's trademark license agreement

While trademarks are often lumped together with copyrights and patents—under the poorly termed "intellectual property" umbrella—trademarks are quite different. One of those differences is that a trademark must be actively enforced, at least under US law, or the mark holder risks losing it. The Fedora community is currently discussing a license to allow community members to use the Fedora trademarks, while still protecting Red Hat's ability to defend the mark against those who would misuse it. But, requiring a signed license agreement in order for a community web site to use Fedora trademarks—on the site or in the domain name—seems heavy-handed to some.

Christoph Wickert brought up some concerns with the trademark license agreement (TLA) on the fedora-advisory-board mailing list. He was commenting on an earlier revision of the agreement, which has since been updated as a result of the conversation. One of the more controversial aspects of the agreement is that license termination requires that the domain registration be turned over to Red Hat:

The TLA allows either party to terminate the agreement "for any reason at any time upon thirty (30) days prior notice in writing to the other party" in section 3(a), or, in section 3(c), with no notice in the event of a legal claim against the site. Because of the domain transfer requirement, Wickert was concerned that it could lead to domain hijacking:

It should be noted that the TLA does not require that the contents of the website be handed over. Changes to the content may be required if the license is terminated in order to remove the trademarked items, but the contents would still be the property of the web site owner. Wickert's statement to that effect was simply a misunderstanding of the TLA.

Wickert also sees problems in the indemnification clause. By indemnifying Red Hat against various claims, without any kind of cap, he is worried that "a person could be bankrupt [for] the rest of his life even if he didn't damage Red Hat or Fedora in any way". In the end, he concludes that the TLA is not something he can recommend for others to sign, which is "a shame".

Fedora project leader Paul Frields responded at length to Wickert's concerns, noting:

Another concern was the specific requirements for how the trademarks needed to be used and identified on a site covered by the TLA. Richard Körber complained that those requirements were too restrictive, leaving his site at risk because of minor violations:

Körber concluded that the barrier was just too high: "Frankly, I would rather drop the domain or close down the entire site, before I would sign the TLA". Robert Scheck, who was asked to sign the original TLA back in March, agreed with Körber's conclusion. But, Luis Villa noted that, at some level, the existence of the agreement doesn't change anything:

There is a larger issue as well. Dimitris Glezos worries about the barrier created by requiring a signed agreement:

Glezos argues that any miscreants are not going to sign the agreement anyway, so requiring the TLA just makes it harder for those who want to help spread Fedora. Part of the problem is that the TLA is a legal document, so anyone considering signing it should either be very comfortable with what it means, or, as was suggested in the thread, consult a lawyer. That just creates an additional barrier as Wickert points out: "Is Red Hat really expecting their community members to pay for a lawyer if they want to contribute? That would be ridiculous."

Frields agrees: "If I thought that this process required people to go get attorneys I'd agree it's an utter failure." The underlying problem, though, is the need for active enforcement of trademarks. By licensing community members to use Fedora trademarks, Red Hat can still pursue other, unlicensed users—some of whom may be using those marks in a way that is detrimental to the project. Furthermore, engineers trying to solve legal problems may not be the best approach, Frields said:

As it turns out, those bug reports did reach someone who can help: Pamela Chestek, a trademark attorney who works for Red Hat. She had a lengthy response to the various questions and problems that had been raised in the thread. Chestek started by trying to allay fears that there was a Red Hat agenda behind the TLA:

In addition, she went point by point through the issues that had been raised. To start with, she explained the reasoning behind clause 3(a), which allowed Red Hat to terminate the license at will, noting that it allowed the Fedora community more flexibility should it decide to change the Fedora name at some point. But, she said, "Because this has been so controversial, though, we can forgo the flexibility and eliminate this basis for termination". The current version of the agreement now reflects that change.

While Chestek's explanation of the domain transfer requirement still may not sit well with some, it does at least explain why it exists:

On the indemnification clause, Chestek explained that it was there to ensure fairness for both sides. In any legal action that was brought against the site for content or behavior that had nothing to do with Red Hat, the site owner would be responsible, but "if the only reason you are in the lawsuit is because you are using the Fedora trademark, Red Hat has to pay the whole amount. That seems fair."

She also addressed the issue of minor problems with how the trademarks were used on the site noting that the wording requires a "material breach" of the agreement. Chestek pointed out that the trademark guidelines were included by reference in the agreement, "but it would take a flagrant disregard for the Guidelines before it would be considered a 'material' breach". Even if that were to happen, there is a cure provision that would give a site owner seven days to address a problem that Red Hat notified them about.

Overall, Chestek covered the main legal (as opposed to philosophical) issues that were brought up. She clearly listened to the suggestions and complaints, and made changes where she thought it appropriate. The interaction displayed is very different than the sometimes lofty—and unapproachable—position that lawyers tend to occupy. By engaging the community in its normal communication forums, Chestek is well on the way to heading off some serious unhappiness amongst some in the community.

There may still be those who disagree with the TLA, philosophically or because of the language it contains, but, at the very least, everyone should understand the reasoning behind it. Free software projects using trademarks is controversial; we have seen Mozilla also wrestle with the problem and are likely to see other projects do so in the future. It is in a project's best interest to ensure that something called Fedora (or Firefox) is, indeed, the "real McCoy" and not some malware-afflicted knock-off. How exactly that is done will likely evolve over time. Villa sees some hope in the distance:

Various projects have different ways of approaching the trademark issue. Mozilla has a trademark policy that does not require a signed agreement for using its trademarks on a web site, but does have a license [PDF] for using the trademarks in domain names. That license has much of the same content as the Fedora TLA, including transferring the domain if the license is terminated. Other projects, like Linux, have a different strategy: sublicensing the mark for use in other trademarks, but considering most other uses to be "fair use"—though still subject to proper trademark attribution.

Because trademarks have to be actively, and not selectively, enforced, there needs to be a clear delineation as to what is allowed, and what isn't. Whether it truly requires a signed license agreement is an open question, but clearly Red Hat lawyers think it is safer to do things that way. One alternative is for the mark holder to disallow any use by third parties—a much worse outcome.

While it may be distasteful to have to sign some kind of agreement, it may also be the only workable solution that will satisfy Red Hat, which, after all, does own the trademarks. It will be interesting to see how other projects—particularly those backed by a large company—handle the trademark issue down the road.