Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 8:21 UTC (Mon) by anselm (subscriber, #2796)
In reply to: Ubuntu Community Council statement on Canonical package licensing by oliwarner
Parent article: Ubuntu Community Council statement on Canonical package licensing

It can't really be a trademark issue. Trademark law is supposed to stop me from defrauding the public by distributing my inferior homemade brown sugar water in curvy bottles labeled »Coca-Cola«. The Linux Mint people can't defraud the public by distributing original Ubuntu packages labeled as original Ubuntu packages (especially if they don't actually distribute them themselves, but point people to the original Ubuntu servers to get them from). If that was trademark infringement then every grocery store would be infringing Coca-Cola's trademark.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 9:22 UTC (Mon) by dlang (guest, #313) [Link] (16 responses)

distributing Ubuntu packages under the name Mint is at least close enough to the line that I can see why lawyers would see that it needs a license.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 9:38 UTC (Mon) by palmer_eldritch (guest, #95160) [Link]

Do they really redistribute them though?
If the packages come from Canonical's servers or some mirror, you could argue that they're not the ones distributing the packages.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 16:04 UTC (Mon) by ewan (guest, #5533) [Link] (8 responses)

That's the other way round though, and that's not a problem. There's a consumer protection angle in claiming something's Coke when it's not, but there isn't in selling 'Ewan brand cola' and having it actually be Coke with the name changed.

There's no damage to either consumers or to Ubuntu's reputation if users are getting Ubuntu packages without knowing it.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 19:49 UTC (Mon) by tialaramex (subscriber, #21167) [Link] (7 responses)

Reverse passing off is still something you can pursue in the courts. It's not easy like a registered trademark case, but you can and people do if they care. It's the sort of thing that would be open to a big corporation like Canonical or as in your example, Coca-Cola, but not to a mom-and-pop business. In practice that's never been a problem.

Dastar v 20th C Fox was a reverse passing off case that went to the Supreme Court, and lost, but note that it was peculiar circumstances, the public domain status of the recordings under dispute was clearly the deciding factor, if not for that the reverse passing would probably have been an infringement.

I assure you that if "Ewan brand cola" is just Coke with a different label (and especially if it's Coke poured from large bottles into smaller containers to be re-sold, thereby risking contamination in principle if not in fact) the Coca-Cola company will tell you to stop that, and if you don't they'll be back with an injunction.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 20:07 UTC (Mon) by anselm (subscriber, #2796) [Link] (6 responses)

I don't think the Coca-Cola company gets to tell Ewan what to do – or not to do – with their product after he has bought it. (If he is selling beverages that are unfit for human consumption the local food safety authority might eventually be interested, though.)

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 20:20 UTC (Mon) by tialaramex (subscriber, #21167) [Link] (5 responses)

Well it's nice that you don't think so, but the law says differently, and I even explained why.

Ewan does not get to label Coke "Ewan cola" and then sell it, and he also doesn't get to label it "Pepsi" and then sell it. These are not unreasonable restrictions, it seems to me, and there is no reason any ordinary person would fall foul of them. Indeed, even in the cases I've seen like Dastar where a Reverse Passing Off lawsuit failed, it's clear that the defendant knew they were trying something... naughty, just they believed correctly that it would prove to be legal.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 22:40 UTC (Mon) by paulj (subscriber, #341) [Link] (4 responses)

So, the case you mentioned, you also mention it failed because the work being passed off was in the public domain. That strongly suggests to me that there was a strong copyright angle to that case.

There is no copyright involved in the "Ewan Cola" example, so it sounds like a potentially very different case.

The claim you're making is that if you buy some product and rebrand it completely, so no one knows it was the original brand, that you could still somehow be bound by laws governing the original branding. That seems quite perverse to me, and add a level of obligation to transfers of goods that I think many people would not think existed.

That apparent perversity, plus that copyright was involved, makes me wonder if there was a lot more to that case you cited, and that perhaps it doesn't quite apply to the "Ewan Cola" example as you think? (No offence - I'm just really curious now to dig into this ;) ).

Try reading the original case file.

Posted Feb 18, 2014 5:29 UTC (Tue) by gmatht (subscriber, #58961) [Link]

To satisfy your curiosity, it is probably best to read actual case. Of particular relevance is the following excerpt:

“That claim [false designation of origin] would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own. Dastar's alleged wrongdoing, however, is vastly different: It took a creative work in the public domain —the Crusade television series—copied it, made modifications (arguably minor), and produced its very own series of videotapes.” — DASTAR CORP. v. TWENTIETH CENTURY FOX FILM CORP. ET AL.

So it sounds that e.g. packaging cola as Ewan's cola could be problematic, but adding a shot of mint vodka and calling it a mint cocktail would probably be fine. I understand origin is not precisely defined; the case goes through various possible interpretations of what precisely an “origin” is. If Canonical interprets origin as being the webserver from which the files from which the distro collects downloads its deb files, it is arguable that some sort of agreement needs to be reached about use of trademarks. (All of this needs to be taken with a grain of salt since I am neither a lawyer nor someone with any inside information on this license.)

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 18, 2014 13:32 UTC (Tue) by tialaramex (subscriber, #21167) [Link] (2 responses)

In that case, yes, a strong copyright angle. But that's not the core principle behind "passing off" or of "reverse passing off" although it does come up here and there. The key is that you're "stealing" somebody else's good will. Let's look at another case, although you will find it not so well documented online because it did not come before the Supreme Court of the US (because it's a British case).

Bristol Conservatories Ltd v Conservatories Custom Built Ltd concerns a new company building conservatories (that is, extensions to a residence which are mostly glazed and relatively lightweight structures). The company intuited that it would be much easier to attract customers if they could show previous examples of similar work of a high quality. But they were a new company, with no such examples to show. So their salesmen provided illustrations of the plaintiff's work instead. It was not important to the case who held copyright in these illustrations - after all the prospective buyers would have no reason to ask. This bit of deceit was found to be reverse passing off, the plaintiff was entitled to have their past work associated with them, not the defendant, because they did it.

Jurists have concerns about what you've call the "perversity" of reverse passing off, it's clearly at the edges of what the courts want to address. Extended too far it would suppress legitimate economic activity, e.g. if you buy product A and product B, and combine them to produce product C, you should generally be able to sell that, without needing the makers of A and B to come to any sort of agreement as to how to label it. But courts have found that in cases like Bristol Conservatories there was a legitimate purpose in prohibiting reverse passing off. So the question for a lawyer (if you were inclined to stray near this line) is whether the courts where you are might consider what you're doing to be on the far side of the line, and whether you can change what you do or obtain some sort of license so as to ensure you're not.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 18, 2014 16:02 UTC (Tue) by anselm (subscriber, #2796) [Link]

But again this doesn't help us with the issue at hand. Unlike the conservatory builders, the Linux Mint people make no attempt to hide the fact that their distribution is based on Ubuntu. Nobody is actively being fooled.

This of course does not mean that Canonical couldn't still believe that the Linux Mint people ought to obtain a »license« from Canonical for their use of Ubuntu (although exactly what is licensed and why remains unclear to mere mortals), and that the Linux Mint people wouldn't prefer to agree to this in order to avoid legal hassle. On the other hand, it would probably be an utterly atrocious PR move on the part of Canonical to sue Linux Mint about this, on top of the uncertainty of who would win the suit.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 18, 2014 17:42 UTC (Tue) by paulj (subscriber, #341) [Link]

Interesting answer, thanks!

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 18:48 UTC (Mon) by rfontana (subscriber, #52677) [Link] (5 responses)

Close enough to what line?

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 20:08 UTC (Mon) by tialaramex (subscriber, #21167) [Link] (4 responses)

Messing with Canonical's good will.

The idea in a Reverse Passing Off lawsuit is that the defendant did something that attracted good will which was deserved to the plaintiff to themselves instead.

In the Coca-Cola example we saw elsewhere, the customer believes Ewan brand cola is very good, with a distinctive flavour and not too sweet, but in fact this high quality cola drink is from Coca-Cola. The Coca-Cola company worked very hard to come up with their recipe and to produce this cola, and they use their "Coke" trademark to ensure people associate the drink with them. So their good will was taken by Ewan unlawfully. With a good lawyer, and presuming Ewan doesn't have an undisclosed justification for what he did, Coca-Cola will win.

A Reverse Passing Off lawsuit isn't a money spinner. They're expensive (you have a lot of facts to prove and very little presumption on your side) and you can't expect much compensation, but you can expect to shut down the people doing the reverse passing off, which is usually the point.

Note that it's not illegal for you to buy Coke and put it in a bottle labelled "Ewan cola". That's fine. Knock yourself out. The problem arises, as with all trademark cases, when there's a third party consumer who is misled. When you sell that cola, or give it away to people as a raffle prize, or whatever, that's when you step across the line. Likewise then, the point where people think they're a "Mint" user but actually perhaps 90% of what they're using is coming from Canonical's servers, without the slightest effort by anybody connected with Mint, is where they may be close to a line. I'm not offering a legal opinion that it's not OK, but just which line it is that they may be straying close to.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 20:13 UTC (Mon) by anselm (subscriber, #2796) [Link] (3 responses)

Likewise then, the point where people think they're a "Mint" user but actually perhaps 90% of what they're using is coming from Canonical's servers, without the slightest effort by anybody connected with Mint, is where they may be close to a line.

On the other hand, the fact that Linux Mint is to a very large extent based on Ubuntu and/or Debian is not exactly a well-kept secret. The Linux Mint web site, for example, is pretty obvious about it. It's not as if the Linux Mint people tried to create the impression that Linux Mint was all their own work.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 20:31 UTC (Mon) by donbarry (guest, #10485) [Link] (1 responses)

Unfortunately, nowhere on Mint's home page is the Debian connection (by way of Ubuntu) mentioned. It is, however, easy to find in the "About" link, which is a pretty obvious link.

Contrast with the very busy Ubuntu homepage, which also nowhere mentions Debian. The "About" link, which is small and unobtrusive, also does not mention Debian. One has to find the "About Ubuntu" link, which then mentions Debian obliquely, as in Ubuntu "hired from" them, but not that Ubuntu remains directly parasitic from Debian for the great majority of its packages.

You have to go one level further down, to "Ubuntu and Debian", to find something that directly engages with the relationship, though -- predictably -- falsely. To say that Ubuntu has a "different community" when most of what it is comes from Debian is to significantly reinvent reality. That it has different people in *charge* of what it what it adds, brands, and markets is entirely true, but perhaps would not be so congenial to would-be nibblers. The greatest difference, of course, is that in Ubuntu's case it is not the distributed democracy of Debian, but the *one* person in charge, the self-appointed billionaire dictator for life, Mark Shuttleworth, czar over his vanity distribution.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 18, 2014 7:11 UTC (Tue) by kugel (subscriber, #70540) [Link]

The difference between "Mint <-> Ubuntu" and "Ubuntu <-> Debian" is that Ubuntu uses Debian's work in source code form. Canonical compiles on its own and distributes via its own download servers. Mint, in contrast, compiles only specific packages and links to Canonical Servers for the rest (using up Canonical's resources). I think this difference is significant.

Ubuntu Community Council statement on Canonical package licensing

Posted Feb 17, 2014 20:56 UTC (Mon) by tialaramex (subscriber, #21167) [Link]

Sure, there are lots of reasons to think that what Linux Mint is doing is fine. If there weren't I am sure this statement would say "Mint bad. Ubuntu smash" or something equivalent but more carefully worded by lawyers.

I only wanted to point out that there are issues in the area we're talking about, that this concern about trademarks is concrete, a real thing that can have real repercussions in the world, and it doesn't come out as simple as "If you use your name on things you are 100% free and clear".