EFF Says Mark Shuttleworth Is Wrong About Trademark

sfcrazy writes "Last week Canonical sent a cease and desist letter to EFF staffer Micah F Lee asking him to remove the word Ubuntu from the URL as well as the Ubuntu logo from the site. Lee responded through an attorney who said that Canonical's 'request were not supported by trademark laws and interferes with protected speech.' Shuttleworth apologized, though it was cheeky, and while he dubbed the Mir opponents as non-technical (hello KDE, systemD, Wayland, Intel) he also went on to explain why they needed to protect their trademark. Now there is an official response from EFF. In the blog post EFF has explained that Shuttleworth is far from reality and was totally wrong about trademark."

Comments

frivolous

[FudRucker]

didnt shuttleworth/cannonical themselves say the word "ubuntu" is an african word for humanity (or something like that) so there is most definitely prior art on the word

this is about as silly as Microsoft ordering all glass companies to quit using the word "windows" for those see-through glass panels everyone has in their houses and commercial buildings

Re:frivolous

[zentigger]

I think you might be confusing patent and trademark.

Re:frivolous

[Anonymous Coward]

Nope.

Re:frivolous

[Sesostris III]

Did Microsoft order all glass companies to quit using the word "windows"? Or, to put it another way, "[citation needed]"!

I believe with trademarks context is everything. I can go to a store and buy an apple (the fruit), but if I buy an "Apple" electronic device, if it isn't made by Apple Inc (the computer company), then lawyers will be coming down hard! (There is also Apple Corps Ltd, owned by the Beatles. There have been trademark disputes between Apple Inc and Apple Corp Ltd, none of which will affect you buying apples (the fruit)),

Interestingly, the article itself said that although it believed Shuttleworth was wrong, it didn't believe he meant any malice.

Re:frivolous

[thomst]

Sesostris III noted:

There is also Apple Corps Ltd, owned by the Beatles. There have been trademark disputes between Apple Inc and Apple Corp Ltd, none of which will affect you buying apples (the fruit)).

And Apple Computer was forced to negotiate a settlement with Apple Corps Ltd in every suit the Beatles' company filed. (They were all related to iTunes, which is all about music - and the Beatles worldwide trademark was established in 1968, so Apple Computers' conflicting mark had no legal leg to stand on.)

Trademarks are, for the most part, geographically limited, and apply fairly narrowly to the product or service to which the mark applies. Thus the Saturn automobile company, the Sega Saturn console, and Saturn Internet Services ALL had trademarks on the name Saturn. None of them conflicted with each other, because each represented a different category of product (cars vs. game consoles) or service (an ISP). Very few trademarks are global. Apple Computer is, and so is Apple Corps Ltd. The conflict arose when Apple Computer decided to get into the music business - and ran into a trademark the Beatles had established more than thirty years earlier. So Steve Jobs changed the service's name to iTunes, paid Apple Corps an undisclosed (but clearly substantial) amount of money, and signed a quitclaim agreement to make it all go away. Once that happened, negotiations began between Apple Corps and Apple Computer to make the Beatles' music available on iTunes - which it now is.

In other news, Shuttleworth over-fucking-reached in a major way. The EFF has set him straight. Let's hope he stays that way.

Unless, y'know, he's gay.

Re:frivolous

[Mike Frett]

Believe it or not, there is a Health Insurance company in my area called Apple Care. There is also a Meat processing company with a logo that's strikingly similar in every way, to AMD's Logo. I'm betting neither Apple or AMD know of this or, most likely, the many more like this.

Re:frivolous

[AlecC]

Patents last twenty years
Copyrights last about seventy years - now.
Trademarks can last for ever, if maintained.

Relevant differences, I would have thought,

Re:frivolous

[cheesybagel]

Seventy years after death of author.

Re:frivolous

[AlecC]

For individual works. But in context of /., we are likely to be looking at corporate works (for example, of a company that paid people to write software), for which it is seventy years from first publication.

Which, incidentally, suggests that corporations are not alive, contradicting the "companies are legal people" mantra used to justify a lot of corporate dubious practice.

Re:frivolous

[bill_mcgonigle]

They were all related to iTunes, which is all about music - and the Beatles worldwide trademark was established in 1968, so Apple Computers' conflicting mark had no legal leg to stand on.

Which is silly because nobody was confused that the iPod or iTunes were from the Beatles publishing company - the computer company was a far more successful brand by that point. It's actually a great example of trademark law just adding cost to the system and not doing what it's purported to be for.

Re:frivolous

[garyebickford]

Actually the parent is not quite right. Wikipedia has a good summary. The first litigation began in 1978, when Apple Corps. sued Apple over the trademark. This was long before iTunes. The 1981 settlement involved a payment (later found to be $80,000) to Apple Corps by Apple Computer, Apple Computer agreed not to get into the music business and Apple Corps agreed not to get into the computer business.

This led to a series of additional litigation when Apple Computers began to support music and later video publishing with a synth card in the Apple IIGS (effectively ending that product's lifecycle). And again when Apple included a sampled system sound in the OS, and a couple more times over various ways to distinguish what the two companies do, and most recently when the iTunes project reared its head.

Some of these suits were settled, others went to trial. To at least some extent it is necessary - boundaries sometimes need to be set. Ideally this would be done by negotiation, arbitration, and litigation in that order. IMHO this process is just a way of establishing boundaries and testing the other party's willingness to defend their turf. It is just like kids in the playground establishing which part is 'owned' by which clique, and similar to what nations do - today the Russians are flying bombers over the border between Sweden and Russia, basically testing Sweden's resolve and response time. The Russians/Soviets and the US have done that with each other for years. And the US Navy regularly sails their ships through areas like the China Sea, maintaining the 'right of innocent passage' in territorial waters.

Re:frivolous

[garyebickford]

Long ago there was an Apple Music store in San Luis Obispo CA, complete with an apple logo. I DK if it's still there. I suspect it predated Apple Corps.

Re:frivolous

[Soluzar]

That's still a trademark issue. The mention of prior art only applies to patents. Doesn't come into play for either the FixUbuntu case or your hypothetical example of a glazier called MS Windows.

Re:frivolous

[Soluzar]

This distinction will soon become meaningless since copyright terms will always be extended if Disney or some other sufficiently large and "important" studio / publisher request it. I wouldn't be surprised to see patent terms extended too, one day. Probably Apple or Microsoft will request it.

Of course by "important" I mean that they contribute money to the right people.

Re:frivolous

[AlecC]

"One day" might be very soon, if leaks from the Trans Pacific Partnership negotiations are correct. I had been, in a vague sort of way, in favour of this. But if the price is extending IP periods, I go the other way.

Re: frivolous

[Soluzar]

Very hard to believe. The case would have literally no merit at all. In order for a case like this to succeed, the two companies have to be competing in the same line of business. The conflict between Apple (computer) and Apple (records) arose because Apple (computer) moved into the music publishing biz with iTunes. Otherwise it would never have happened.

Re:frivolous

[Soluzar]

If they did know, there would be literally nothing they could do about it. The law simply does not provide blanket protection for a trademark in the manner you appear to believe it does. In a separate field of buisness, there can be no possibility of infringement.

Re: frivolous

[Mabhatter]

Steve finally broke them. That's why there is just "Apple Corporation" on their copyright line now. "Apple Records" was licensed back their name for $1 after selling ALL their claims to Steve Jobs for a cool Billion.... McCartney was getting another divorce without pre-nup and needed the money to get by after she cleaned him out.

Re:frivolous

[blueg3]

Disturbingly, with data URIs, a URI can contain an image. Probably not what was meant in this case, though.

Re:frivolous

[ArbitraryName]

For individual works. But in context of /., we are likely to be looking at corporate works (for example, of a company that paid people to write software), for which it is seventy years from first publication.

Nope. Ninety five years from publication or 120 years from creation, whichever comes first.

Which, incidentally, suggests that corporations are not alive, contradicting the "companies are legal people" mantra used to justify a lot of corporate dubious practice.

Corporate personhood is what's called a legal fiction. Those are assumptions that are codified into law for the purposes of smoothing and standardizing the application of law. While corporate personhood is probably the most well known to laymen, it is far from the only one. They exist is all facets of law.

Ubuntu TM

[mysidia]

sfcrazy writes "Last week Canonical sent a cease and desist letter to EFF staffer Micah F Lee asking him to remove the word Ubuntu from the URL as well as the Ubuntu logo from the site.

Dear sfcrazy: You have used the word Ubuntu in your article. Please be advised that there is a chance now that some crazy folken at Canonical may approach you with a C&D letter, over the use of their 'holy' name; prithee take care.

Re:Ubuntu TM

[ae1294]

Dear mysidia: You have used the word Ubuntu in your comment. Please be advised that there is a chance now that some crazy folken at Canonical may approach you with a C&D letter, over the use of their 'holy' name; prithee take care.

Posted as AC, for obvious reasons.

Dear 127.0.0.1 we know who you are as we backtracked your IP and are informing you that you used words in your post... All of which are now owned by one or more of our clients... you will die.... thank you...

Re:Ubuntu TM

[ae1294]

Pursuant to section (4)(g)8.3; you may each of you send 1.0 Bitcoins to spend address 1DquDGdVmfhULMHnnvB9psKs3LCSo2QdFz

In order to apply for amnesty.

Otherwise, you, and others in your social network may be subject to prosecution under the fullest extent of the law, including acts of Trademark terrorism under the AT act, and friends may be subject to charges of Treason under the Anti-Friends of Terrorists act.

I hate the NSA you can all go die in a fire for all I fuck all per I don't give a fuck my life is already broken dot com...

Re:Ubuntu TM

[ae1294]

I fucking didn't sign shit assholes and you will pay the full fee which is free...

\Luke Payton - Master of Chaos and the New World Orderer. \

Re:Ubuntu TM

[ae1294]

I resend Alchemememe... I am the MeMe... I am over 9000.000.000.0

Give him some slack.

[Endloser]

Strict enforcement of intellectual property laws is what open source is all about!

Canonical Loses

[edibobb]

Remind me not to do business with Canonical. (1) I don't like to support over-active legal departments, and (2) they're liable to sue me.

Re:Canonical Loses

[Anonymous Coward]

It seems that the RDF (reality distortion field) has temporarily moved from Apple to Canonical.

IMHO, Canonical has lost the plot. They are trying to do far too much. Far too many fingers in far too many pies for my liking.

When you compare them to RedHat you see a world of difference. RH seem to go about their business very quietly, making tons of money and contributing lots to the FOSS and Open Source movement. Not that I don't have some gripes with RH (I'm a RHCA,RHCE sort of person) but IMHO they are in a different world when you compare professionalism.

Think about distros like CentOS. Source code compatible with RHEL but with the trademarked branding removed and replaced with something different. RH lawyers are happy. Many customers are Happy as well. They get what is effectively a supported Distro as zero cost. I deal with several who have just a few servers under support from RH. The rest run CentOS.
However given the ferocity of RH's Laywers in cases where RH are being sued, I really wouldn't want to get on the wrong side of them. NAZGUL mk 2 perhaps?

Re:Canonical Loses

[Sesostris III]

Going to do business with Apple Inc instead? They would never sue over 'i' (as in 'iPhone').

Re:Canonical Loses

[cheekyjohnson]

2. They only sue if you violate any kind of license or infringe on their intellectual property.

They may sue if they believe you are doing such things; that doesn't necessarily mean you are actually doing so.

Re:Canonical Loses

[Anonymous Coward]

That said, one instance of this kind of behavior from Canonical does not mean they have an "over-active" legal department; instead, this has been, to my knowledge, an isolated instance for this kind of thing. Don't make a mountain out of a molehill.

Canonical made a douche move and got bitch-slapped, quite publically, by the EFF. Good. Glad someone is still able/willing to fight the good fight.

Re:Canonical Loses

[ausekilis]

While I applaud what Canonical did in make Linux more usable and available to the masses, they have become increasingly more like-minded with Microsoft. They didn't like Gnome or KDE, so they went off and built their own Unity desktop (which I find unusable and annoying as hell). They didn't like X and the upcoming Wayland, so they started in with Mir. While these things are still open source, they are treating it more as their own baby and not playing nicely with others anymore. "You either die a hero, or live long enough to see yourself become the villain"

Let's fly a kite.

[philip.paradis]

In consideration of recent coverage of the matter, and referencing my previous /. comment on an attempt to promote open source operating systems to kids via kites, I think I'll just go ahead and start producing small scale production of kites with the Ubuntu logo on them. After all, my goal is to support introducing people to Ubuntu, and I honestly don't care what the entity known as Canonical thinks about this anymore. If they care enough, they can sue me if they want, and they can explain it to my kids later. Doing this today, I'll be sure to include a kite with a Debian sail with each Ubuntu kite, just to be sure kids know what Ubuntu is derived from and give credit where it's due.

Re:Let's fly a kite.

[Sesostris III]

I think they believe Canonical was mistaken, not malicious. The issue seems to be over how far you need to defend your trademark before you lose it.

Re:Let's fly a kite.

[philip.paradis]

That's exactly the point I'm making. Let's see if they challenge it.

Re:Let's fly a kite.

[Anonymous Coward]

Are you really still bitching about how you got told "no" over trying to sell kites with the Ubuntu logo on? They don't want you to make money off their brand, stop being an asshole and make your own brand instead of acting like they owe you something or you're doing them a favor. You're not.

Re:Let's fly a kite.

[philip.paradis]

Let's see if Canonical thinks it's silly, meaning let's see if they decide to pursue legal action over it.

Re:Let's fly a kite.

[garyebickford]

And that is a valid concern. Most folks don't know that the word 'Aspirin' was originally a trademark of Bayer. In the 1930s the courts said that Bayer hadn't sufficiently defended the term against generic use, and ruled it was no longer a trademark in the US. But for a long time (still?) it was still a valid trademark in Canada. And Xerox Corp. spent $millions defending the word xerox as a term for photocopying. This is kinda the converse of 'use it or lose it': 'make sure nobody else uses it _except to describe your product specifically_, or lose it'.

Re:ubuntu is trash, linux is trash, fuck all ya'll

[arkane1234]

you know it is possible to use an ipad and linux on another system without exploding, right?
even windows too...

Error in summary

[nej_simon]

and while he dubbed the Mir opponents as non-technical ...

He did non call the Mir opponents non-technical. He appologized for calling non-technical critics of Mir the "Open Source Tea Party". That's quite a difference.

Re:Error in summary

[Anonymous Coward]

Isn't that a bit like Captain Koloth saying, "I didn't mean to say that the Enterprise should be carrying garbage--I meant to say she should be hauled away AS garbage!"?

Re:Error in summary

[semi-extrinsic]

I actually clicked the last link to try and RTFA. Damn, that is the worst piece of writing I've seen in a while. No wonder the summary is crap as well. /. why do you link to these shitty articles? I was expecting to get the EFF site, not some random "tech journalist" who couldn't pass 5th grade English!

Re:Error in summary

[AlphaWolf_HK]

Yeah it's annoying to read. TFS made it sound like that link was the EFF blog link, and as I started reading I was thinking to myself how I really hope this isn't written by an actual lawyer.

Though Lee was not required, by the law, to remove the logo he removed it.

There was heavy criticism of Canonical from the press and the Open Source community which supposedly forced the company to publicly apologize for the missteps.

While we believed the dust had settled, it did not. The entire episode raised some very serious issues over how companies can abuse the trademark laws to silence critics (though in this case it doesn’t look like Canonical had any malice.)

Lee who was backed by EFF so he had resources to fight back with Canonical and tell them that law is on his side.

I don't think this person knows where comma's are supposed to go, it's as if he's just randomly throwing them around because he hasn't seen an article without comma's before so he figures they've gotta go somewhere. And I wonder who this Law fellow is, because it sounds like it is good to have him on your side.

Re:Error in summary

[idontgno]

I was expecting to get the EFF site, not some random "tech journalist" who couldn't pass 5th grade English!

The "editors" here don't want to link to TFAs that make their own skills look too bad by comparison.

The joke's on them, though; there is no sample of text on the Internet written by a human being that doesn't make the editors look like spastic monkeys slapping keyboards around.

In other words, this effect.

Re:Error in summary

[atomicxblue]

This just furthers my impression that he is a sad little man. Any time someone disagrees with him, be it over this, the local computer searches being sent to Amazon, Unity -- his first reaction is to lob baseless attacks over the castle walls. There are surely many Mir opponents who disagree on purely technical grounds.

Re:ubuntu is trash, linux is trash, fuck all ya'll

[real-modo]

you know it is possible to use an ipad and linux on another system without exploding, right?
even windows too...

Trying it right now, as it happens. Here we g-aarghh!

UK vs US

[emj]

Further I'm interested by the fact that there is quite a lot of talk about first amendment, but considering that Cannonical is not based in the US the perspective is alittle different. I have tried to use company logos in publications in Sweden, and it was really hard, you are not allowed to print logos without premissions. While the creator of the website might be from the US I don't know that, but I guess it's easy to check.

I guess the question is would I think the same if this was about Apple or Windows.

Re:UK vs US

[intermodal]

Ubuntu's own terms state:

"You can use the Trademarks in discussion, commentary, criticism or parody, provided that you do not imply endorsement by Canonical."

Re:UK vs US

[intermodal]

I'm not sure what you're trying to disagree with. Canonical has expressly acknowledged and endorsed the ability to use their trademarks in these contexts, and some stupidity within their company has made them look foolish for sending the letter.

missing the point

[Anonymous Coward]

he dubbed the Mir opponents as non-technical (hello KDE, systemD, Wayland, Intel)

He's not talking about those people, he means the thousands of screaming idiots that act like football fans over if vi or emacs is the superior text editor, except these people are much worse then the past text editor wars. Today we have thousands of people bitching about "how dare Canonical not use Wayland, Upstart, Unity" as though open source was only about using what Redhat shits out.

Re:missing the point

[Anonymous Coward]

Emacs, thanks to evil!!! ;)

Re:ubuntu is trash, linux is trash, fuck all ya'll

[philip.paradis]

Clever girl

This wasn't a mistake

[Arrogant-Bastard]

Shuttleworth/Canonical are just using the Facebook playbook:

1. Engage in an outrageous overreach.

2a. If there's no reaction: proceed.

2b. If there's a negative reaction, then walk it back just far enough to quell the outrage. Use weasel words. Pretend that you were just kidding. Call it an unfortunate oversight, a lapse, a mistake -- but be sure not to admit that it was deliberate and calculated.

3. Wait for outrage to die down.

4. Return to step 1.

This works beautifully on an audience that isn't paying attention, that can't generalize from specifics, that doesn't remember what happened yesterday, let alone last year or last decade.

Re:This wasn't a mistake

[bill_mcgonigle]

Do you know where these steps originated?

Geez, politicians have been doing it since at least the Roman Senate.

Re:This wasn't a mistake

[atomicxblue]

2c. Call the detractors losers who live in their mom's basement, "Open Source Tea Party", etc

Two nerds enter, one nerd leaves.

[Drewdad]

Nerd Fight!

Re:Ubuntu

[Entropius]

The Egyptians would like a word with you.

Wolf in sheep's clothing?

[Dega704]

I have been a fan of Ubuntu for a while, but Shuttleworth's antics are increasingly turning me off of it. It seems to me that while he likes to benefit from the advantages of open-source development, he really doesn't care about the fundamental philosophies behind it.

Re:Wolf in sheep's clothing?

[atomicxblue]

Precisely why I made the switch to Linux Mint. Well, that, and I value my privacy and screen real estate.

Trademark law education

[jdavidb]

That response from the EFF was very educational and worth reading among all the other links in this article. I learned that companies don't really have to go around and actively defend their trademark in court or risk losing it. And I also confirmed my suspicion that no company needs to be ensuring that every time somebody uses their name ("mark") that they have permission.

Here's the link again in case you can't tell which one I'm referring to.

Wow

[Sasayaki]

Went to register www.ubuntusucks.com to see if Mark Shuttleworth would sue me.

Turns out it redirects to their bugtracker.

Well played, sir.

Well played.

Re:WHat's canonical got to do with

[ArbitraryName]

Canonical is threatening people into not exercising them?