Alternative suggestion for a trademark policy

[ewel]

Thread moved with permission

First, I must apologise in advance for making a rather long post, but I felt I had to in order to explain the reasons for my suggestions properly. The short version is that I made an alternative trademark policy by way of suggestion, which can be seen at Scribd.


Introduction

"Joomla!" is one of the key assets of this project because obviously the project needs its own name. Due to the project's success, the name has become quite valuable. It is therefore no surprise that the name is protected as a trademark. OSM states in the trademark policy that "We do, however, have a trademark, which we are obliged to protect." I agree with that completely.

At the same time, many individuals, groups and companies in the Joomlaverse use branding which in some way show that the individual, group, company, product, service or domain has something to do with Joomla!. Some think this is good, others don't, I think people should decide for themselves. but in any case this is accepted practice. However, as most know, the more branding identifies itself with Joomla!, the more chance that is an infringement of the Joomla! trademarks in legal terms. On the other hand, when some form of permission is given by the Joomla! project then branding that would otherwise be an infringement can be still used.

To this end, OSM, the legal entity owning the trademark, has made a trademark policy which can be found at opensourcematters.org. Unfortunately, the implementation of this policy has met with some discontent within the community. This is a great pity, because evidently the original intent was as much to empower the community as it was to protect the trademark. I now believe that there is discontent because the Joomla trademark policy should express more clearly that Joomla! is an collaborative open source community as well as an organisation and product. At the same time, I am getting the impression that the current trademark policy brings about a lot of work for the project leadership, who no doubt could think of more fun things to do.


The current trademark policy

Let me begin with reviewing the current trademark policy. It first (1) explains when no trademark permission from OSM is needed, and then (2) goes on to explain that permission can be requested if needed.

Ad 1. No permission needed
In my view, the part explaining when no permission is need is not clear, and even somewhat misguiding. At law, no permission is needed when there is no infringement. Generally, that means that permission has been obtained or:
A. the trademark is used in a way that qualifies as fair use; or
B. the third party branding concerned does not cause confusion.

Ad A. Fair use
In the policy, fair use is more or less described in the third point, "you may use the Joomla! name (but not the Joomla! logo) in descriptions of your website, product, business or service to provide accurate information to the public about yourself." The only thing missing here is that you can obviously also use the trademark to identify the project, in the way of 'I think Joomla! is a great CMS'.

Ad B. No confusion
In the policy, the first, second and fourth points more or less cover situations where the third party branding concerned does not cause confusion, but this is not done in a clear and accurate way. If you do "not incorporate the Joomla! name (...) into the name (...) of your website, product, business or service", then there simply is no confusion so then you do not have to put a "disclaimer on your home page" to "make clear that you are not Open Source Matters, Inc. or the Joomla! project and that you do not represent Open Source Matters, Inc. nor the Joomla! project". (Here and below I am going to ignore logo use.)
Moreover, there could be cases in which using the Joomla! name is not confusing and then there is no infringement and no need for permission. While the policy evidently deems any use of the Joomla! name an infringement that needs permission, In reality the concept of infringemnt is far more finely tuned by the body of trademark law in many jurisdictions. I do not want to suggest a policy should simply refer to trademark law. I understand and agree that a policy should state what OSM is happy with in its own interpretation of law. Still, I think it should perhaps be easier for OSM to be happy, or the policy should admit that it is based on an extremely strict interpretation of OSM.

Ad 2. Requests for permission
As said, the trademark policy also explains that permission can be requested if needed. Currently the crucial bit of the OSM trademark policy reads as follows:
"If you would like to use the Joomla! name or logo for any other use, please contact the Joomla! project and we'll discuss a way to make that happen. We don't have strong objections to people using the name for their websites and businesses, we just want to have a chance to review such use. Generally, we approve your use if you agree to a few things, mainly: (1) our rights to the Joomla! trademark are valid and superior to yours and (2) you'll take appropriate steps to make sure people don't confuse your website for ours. In other words, it's not a big deal, and short conversation (usually done via email) should clear everything up n short order.
If you currently have a website that is using the Joomla! name and you ave not gotten permission from us, don't panic. Let us know, we'll give you permission, as described above."
On the face of it, this seems to be a very helpful and flexible approach. However, I believe that this does not work out as positively as it is written and intended. This approach of case-by-case licensing on request brings about a lot of work for the project leadership to review and decide on requests for licences and to monitor licensees. So much so that there are people who have complained that they have had to wait for decisions a very long time. At the same time, this approach does not give people any idea of what is acceptable to OSM and what is not.


Protection and sharing

All in all, in my view the current trademark policy is clearly best geared to prevent and act against infringements, presumably such as those that are costing OSM a lot of money according to notes on the latest published accounts. Unfortunately, the careful protectiveness that speaks from the current trademark policy will probably not prevent the sort of infringements and disputes that OSM is currently involved in. Those who feel that they have the right to do what is an infringement in the view of OSM will not consider themselves to be bound by OSM's trademark policy. So, it seems to me that it would be better if OSM saved itself some time and effort by using a trademark policy that is a bit less expansive in what it deems to be subject to permission.

More importantly, I feel that the trademark policy fails to express how policy might change the way trademark law is used in a collaboratieve open source community similarly (but on a much smaller scale) to how the GPL changes the way copyright law is used. The open source community views copyright as unproductively restrictive and uses the GPL to share without putting code in the public domain. In more or less the same way, I would like the trademark policy to share the project's name within the community without tossing away the usefulness of trademark protection.
Incidentally, the failure I see is not a failure of project leadership. The trademark policy already does open the door to sharing, while for example Drupal has a policy which looks more user-friendly but in fact is far more restrictive.

Wikipedia (a great source of information, have you donated?) says, in plain language: "The essential function of a trademark is to exclusively identify the commercial source or origin of products or services.". "[iA registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered.[/i]" "Trademark infringement is a violation of the exclusive rights attaching to a trademark (...). Infringement may occur when (...)the 'infringer' uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers." "(...)similarity will generally be assessed by reference to whether there is a likelihood of confusion that consumers will believe the products or services originated from the trademark owner."

As you can see, the key words are 'source', 'exclusivity' and 'confusion'. No wonder therefore that for a business it sounds normal that it has the exclusive right to use a trademark so that there is no confusion (amongst consumers seeing similar products or services) that this business is the only source of its trademarked products or services. But for Joomla!, when you think about it, it does not sound quite as normal. Joomla is not just a business producing a product, it is a community collaborating on an open source CMS. Paraphrasing what sounds normal for a business, it would sound much better if one could say that OSM shares the right to use the Joomla! trademark so that there is no confusion, amongst users seeing products and services associated with Joomla!, that the Joomla! community is a distributed and open source of the Joomla CMS and related products and services. In the Joomlasphere, those key words 'source', 'exclusivity' and 'confusion' just don't seem to fit very well.

The very nature of open source is that tomorrow anyone could start distributing Joomla copies without changing the name, and be a second non-exclusive source. The very nature of community is that things are shared and not exclusive. I am convinced that users are rarely if ever confused about the similarity between Joomla at joomla.org and any product, service or domain with Joomla, jooml, joom, joo or la in the name. I would almost say: find me a user who thinks JoomUnity (the name that originally prompted me to start thinking about this) is distributed by OSM and I will show you an Apple user who goes to Redmond for warranty. Even where there is so much name similarity that there is some potential confusion, the question is: should we see third party developers are competitors who need to be barred from benefiting from the Joomla brand goodwill? Or should OSM perhaps even encourage the use of the Joomla name or parts of it, because that may strengthen the Joomla brand and thereby the community collaborating on the CMS?

Moreover, quoting from Wikipedia again, "Trademark law is designed to fulfill the public policy objective of consumer protection, by preventing the public from being misled as to the origin or quality of a product or service." In other words, trademark law is there not to protect the supplier of a product (although it certainly has that effect) but the consumer. So, the function of the Joomla trademark is not to protect the project, but to make sure that nobody gets confused about the Joomla project (incorporated in the trademark holder OSM) as the one and only source of a great CMS, which has the exclusive right to use the trademark. Again, this does not seem to fit into the Joomlasphere very well. In the case of an open source CMS community, the consumer is the user, and therefore trademark law aims to protect Joomla users. But, Joomla users are different from normal consumers. I already claimed that users are rarely if ever confused. In addition, the user, especially the actively participating user, is also a community member. It seems odd when users as community members cannot share in the use of the name of their community to prevent that they themselves would become confused by doing so.

All in all, I am looking for a trademark policy that helps community members to help the community. I would like to see a policy that helps community members who want to have a Joomla!-related branding of themselves or their activities, products and services. At the same time, I would like to see a policy that enables community members to increase the spread and reputation of the Joomla trademark through their own branding and activities. Most of those who want to use Joomla!-related branding are third party providers of extensions, training, development, etc. Most actively contribute to the Joomlasphere by making Joomla! more useful for others, and better known. Most are either individuals or micro- and small-sized businesses. But most do not have the resources to obtain legal advice on trademarking and create their branding in ignorance or uncertainty. So, I believe the most important thing that a trademark policy can do is to provide helpful clarity on how the Joomla! trademark is shared with the community.

At the same time, let's not forget that this is about a policy, so it should express what is good for the project as well as the community. To this end, I think a trademark policy should show what OSM, as trademark owner, is happy with. OSM should be happy to share the trademark within the community, but a policy must also reflect what OSM is happy with as an interpretation of trademark law and as a tool that does not hinder protection of the trademark against malevolent outsiders.
Trademark law changes from time to time, and varies a bit across different countries. It would be unworkable for OSM to adapt to the legal system of every community member who wants to use Joomla!-related branding, and therefore OSM should explain how it wants to deal with sharing the trademark across all countries. So, a policy will always be a little different from what a judge might say in a particular case. Still then, it will provide clarity and therefore some certainty. As that credit card commercial might say: a lawyer, $250 an hour... legal certainty, priceless!


An alternative suggestion

I have tried to show in what way I feel the trademark policy fails to live up to my expectations. In doing so I have criticised the current policy, but I do not believe much in un-constructive criticism and I think that criticism becomes constructive when an alternative is suggested. So, I have created an alternative by way of suggestion, which I think is cheaper and easier for OSM to administrate, as well as easier and more encouraging for the community to work with.

Hopefully what I wrote as an alternative is self-explanatory. I tried to give explanations that put the policy into the right context, and to provide people clarity about what they can and should not do. Also, through automatic acceptance I tried to tried to make it easy for people to use Joomla!-related branding while making it easier for the leadership to do trademark administration. At the same time, I hope to have left ample room for effective trademark protection.

If my suggestion were to be accepted, then there would be a few things to do. A licence text would have to be made that corresponds to the policy. OSM would have to make a list of reserved names, and it would have to make sure that there is a Joomla User Groups policy that works well with the trademark policy I am suggesting. Also, the logo policy might have to be adjusted a little bit. Finally, one would have to decide what to do with existing licences, which in my view can be left in place but can be amended to correspond to the policy I am suggesting.

I posted my text at Scribd, and of course I am curious to hear what you think!

As a final note on the side, I think that the trademark FAQ on the OSM site should also refer to oami.europa.eu.

[dhuelsmann]

There is no doubt that a little more clarity in definitions might be helpful. However, the balance between expansiveness that you propose and the current approach taken by OSM is delicate for many reasons. I believe it was best summed up in the following two articles:
http://www.rosenlaw.com/html/GL6.pdf
http://www.rosenlaw.com/html/GL7.pdf

[brian]

Care to expand on that Dave rather just posting 2 pdf that we have hopefully all read as I am failing to see how you draw your conclusions.

[leolam]

Dave,
I like to see a more careful and explicit response from OSM than just referring to some documents. It is impossible to even cross read and digest or discuss the piece in 21 minutes

As you are well aware this is a very intense issues since month's and Ewout (Ewel) is a lawyer in his own profession and has spend tremendous amount of time carefully formulating a good suggestion to start a positive contribution to resolve some burning issues.

Some more consideration would be appropriate to community contributions

[arlen]

The simplest, best and easiest way to advertise training, support, and development for Joomla web site builders and operators is to use the Joomla name in the title of the service. The language of the policy strictly forbids it, but we all know that if I bill myself as a "Joomla Trainer" or offer "Joomla Training" as a service, it's not infringing (unless I do so in a way that implies official sanction -- difficult to do, as I've never seen any offering of official sanction for services like these). Yet the policy clearly tries to prohibit it in all cases, a legally untenable position.

The policy is overreaching (as is often the result when lawyers get involved). This sort of approach can be justified against an adversary, but OSM is taking that approach against the community, people that are not supposed to be treated as adversaries.

You want a good template for a trademark policy, check the Drupal one. They have it right. It doesn't sound like it came from a lawyer (meaning it's written in words we can all understand) and it starts out by clearly delineating examples of appropriate use. It's far less scary, and I'll wager also takes far less effort to oversee, because it will generate fewer questions and permission requests.

The trademark policy should reflect an attitude consistent with the idea of open source, not come across like coils of razorwire around a fortress. It should focus first on "here's how you can work with us" and not on "we will prosecute you." (There's a place, of course, for the latter, but that shouldn't be the first impression a reader receives.)

I'm a fairly smart guy, but when I read the trademark policy, I wasn't entirely sure I could even mention the word "Joomla" in public and be safe from a lawyer's letter. That's the wrong attitude to present.

And I think that's touching on the major reason the trademark policy needs a rewrite. More than anything else, it needs an attitude adjustment (and I'm sorry, Ewout, but I'm not sure your alternative is much better; it's not quite as hostile-sounding, true, but it's still loaded down with formality and structure -- it needs a friendlier tone). The only thing the current policy makes clear is hostility. I'm willing to grant that perhaps OSM has in mind something close to the same range of permissions and restrictions I have in mind; my issue is you can't demonstrate that from the policy itself. It begins by claiming the planet for OSM, then hints that there may be ways to co-exist if the supplicant grovels properly. That attitude is going out of your way to provoke a hostile reaction. Upon first reading it I entertained thoughts of creating a few "unauthorized" websites and posting URL's to dare OSM to sue me, just to prove my point.

Turn the focus of the policy toward bridges, instead of fences. Start the policy with good clear examples of things which automatically get permission, and with a good explanation of the categories that do not need permission. Set the tone of the policy as "we want to work together and here's how we can" (the current policy's tone is more "here's how we'll allow you to work for us"). When you start with that sort of common ground, most people will never need to read down to the prickly-pear verbiage, and so never get the impression OSM is waving a gun in their face. When you start out by waving the gun, it's hard to get people to hear anything friendly you might say.

Answer the simple questions people will have first. "Can I call myself a Joomla developer/sitebuilder? Yes, if you exclusively or primarily build Joomla-based websites for your clients." "Can I call my service Joomla Training? Yes, you just cannot suggest your training is certified or authorized by us." Stop making everything into an "ask permission first" kind of thing. Assume the people reading the policy want to work with you, not against you, and make it your first priority to clearly show them how to do it.

And keep in mind that if the "Keep of the [* spam *]" signs are too big, folks may start to Keep off the Joomla, and move to a friendlier neighborhood.

[bushie]

I'm no lawyer, nor would I want to be and so I am reluctant to even make comment regarding the trademark policy which seems to be dominating Twitter at present.

All I want to say on my web site is that I love Joomla as a development tool and develop all my client's web sites using Joomla as a platform. Quite frankly, I see no difference in this statement to saying I use Microsoft Word to write all my letters.

When there was a recent option to have yourself included on the Joomla website as a developer, it was a requirement that you included a disclaimer on your website that you weren't associated with Joomla. I felt this was ridiculous to the absurd. Fancy saying you use something, support it, believe in it and yet are no way associated it. It's almost the complete dichotomy!

From where I sit, it would seem there is far too much money being spent ($44K I believe) by OSM in pursuing the slightest chance of a trademark infringement instead of getting on with the job. This comes back to focus of purpose and can become the core reason for one's existence to the detriment of the real reason and that is to promote Joomla. Perhaps this is a naive view by an ordinary member of the Joomla community, but the last thing I believe OSM wants is to be driving people away from the community because they are terrified of infringing some legal requirement. Does OSM want to be known as an all embracing group of people trying to build community or as a police force with a big stick?

Cheers,

Ric

[dhuelsmann]

First off - even though I am on the board of OSM, please do not presume I am speaking for OSM. The following is simply my semi-educated opinion about the use of the trademarked name Joomla!

What about using the name Joomla makes so many in the Joomla community unhappy about the existing trademark policies of OSM? Could it be related to brand strength?

By October, 2009, the 2009 Open Source CMS Market Share Report reached the conclusion that Joomla! is the web's most popular open source content management system. That conclusion was based on an extensive analysis of rate of adoption patterns and brand strength and was backed by a survey of users.

And, what about brand strength makes the name so attractive? Obviously there is potential benefit of some kind to the user of the name. I would postulate that commercial benefit is the likely driving force. The joomla community does not object to commercial benefit (just look at all of the commercial extensions in the JED). However allowing more confusing domain names simply directs traffic away from the joomla.org websites thus impacting one of the few sources of income that helps support the project.

What happens if there is broader use of the Joomla name? Right now, I would say the mark is "famous" based upon the broad adoption of Joomla. Wouldn't you? If a trademark is not used correctly, there is a risk of it being declared "generic". Even established trademarks can lose their protection if they are used generically: thermos and escalator are famous examples. Keep in mind that the purpose of a trademark is to ensure that the product (Joomla) can be distinguished clearly from other products that purport to be the same or similar.

Automatic licensing as proposed without an opportunity to review the use of the name in context could allow for marketing of disreputable goods or services thus impacting the users negatively about the Joomla brand quality. The reliability of the project is an important contributor to the brand strength of the Joomla name.

The proposed expansion to allow automatic licensing of combined names like JoomlaMeet as described in the proposed policy dilutes the Joomla brand and potentially can be argued that OSM acquiesced in the misuse of the trademark. A trademark is only protected while it serves to identify the source of goods or services.

The existing trademark policy http://www.opensourcematters.org/index.php?Itemid=158 is clearly and simply written. It outlines clearly typical trademark policy and then simply says OSM will find a way to license your use of the name

We don't have strong objections to people using the name for their websites and businesses, we just want to have a chance to review such use. Generally, we approve your use if you agree to a few things, mainly: (1) our rights to the Joomla! trademark are valid and superior to yours and (2) you'll take appropriate steps to make sure people don't confuse your website for ours. In other words, it's not a big deal, and short conversation (usually done via email) should clear everything up n short order.

It seems that having to ask for permission (as mentioned above) is something members of the community would like to avoid. Unfortunately, the "trust us" members are far outnumbered by those who wish to take advantage.

Is this portion of the policy the rest of the issue?

Note that licenses for name or logo use will not be given for businesses or products that violate the GNU GPL

[brian]

Unfortunately, the "trust us" members are far outnumbered by those who wish to take advantage.

Dave I strongly suggest that you reconsider that statement. It's a very strong indictment against the joomla community you are a guardian of

[dhuelsmann]

Dave I strongly suggest that you reconsider that statement. It's a very strong indictment against the joomla community you are a guardian of

@Brian - Please read it this way (as I intended) Unfortunately, the "trust us" members are far outnumbered by those in the world who wish to take advantage.

[brian]

I cant see any other way to read it, maybe i'm being thick, but it reads to me that you are saying that there are more people abusing the trademark than using it genuinely.

[AmyStephen]

What about using the name Joomla makes so many in the Joomla community unhappy about the existing trademark policies of OSM? Could it be related to brand strength?

Dave -

Would it be possible to get your very important question moved to a separate thread? There are a number of reasons, other than "not wanting to ask permission from OSM" or "wanting to avoid the GPL" that I have heard from community who are unhappy with the implementation of the TM policy. Discussing those points is a great idea but asking those questions in this thread will take this discussion off topic.

Would you mind moving your post to new thread? I'd like to provide you with some examples but I don't want to take away from Ewout's work or get this discussion off-topic.

If you agree, feel free to move this post, too!

Thanks!
Amy

[brad]

When there was a recent option to have yourself included on the Joomla website as a developer, it was a requirement that you included a disclaimer on your website that you weren't associated with Joomla. I felt this was ridiculous to the absurd.

I agree.. do you have a link to this requirement? I was only under the impression this applied if you were using the Joomla name in your domain or products.

What an amazing amount of work has gone into this alternative policy. Looking forward to seeing what others think.

[brian]

What an amazing amount of work has gone into this alternative policy. Looking forward to seeing what others think.

Yes clearly it was a huge ammount of time and yet it received negative comments quicker than it could even have been read never mind digested. A document as in-depth as this deserves/requires some time to read, evaluate and consider before you can justifiably comment on what it is saying. Any other comment is just shooting from the hip without a true apreciation of the documents content. I know that personaly I'm still considering the full implications of everything in there.

[AmyStephen]

Turn the focus of the policy toward bridges, instead of fences. Start the policy with good clear examples of things which automatically get permission, and with a good explanation of the categories that do not need permission. Set the tone of the policy as "we want to work together and here's how we can"

@arlen - I agree with this.

I like how Ewout has clarified the policy using the Automatic Licensing provisions. The examples in the Restrictive, Name, and Use Criteria are helpful. But it would be better, still, if there were "human" use cases provided that clear those restrictive criteria Ewout outlined. As you said, placing those use cases EARLY in the policy *would* set a friendlier tone, without diminishing the TM protection, at all.

Intro text: Open Source Matters is responsible to protect and manage the Joomla! Trademark for use by the Joomla! Community. An engaged, active community is essential to the success of a free software project. Community members who build and distribute GPL Extensions for Joomla!, train and support Joomla! Users, and blog about what can be done with Joomla! are essential. Encouraging use of the Joomla! mark for those purposes is an important part of maximizing the Joomla! brand.

Automatic Licensing: To strengthen the Joomla! community and encourage the rapid growth of shared assets, several use cases are provided that qualify for automatic licensing of the Joomla! Trademark. Examples include:

Use Case: Betty is a Joomla! Extension Developer who licenses her Extensions using only the GPL. She provides support for those who use her Extensions on a Web site she maintains solely for that purpose. The name of her Web site is "Joomla! Extensions by Betty" and the domain name JoomlaExtensionsbyBetty.org. Both qualify for automatic licenses to use the mark.

Then, I would go into the Fair Use, Automatic licensing, etc., for more specifics. Those pieces are very important. But, I agree with Arlen on opening up with a very warm greeting to the community and making it clear that the TM is for us to use for building up our shared work and abiding by our rules (ex. the license.)

The policy is overreaching

I'm going to wait to respond to that. You covered a lot of topics. I wonder if we can come back to this? I'd LOVE to see if we can get some agreement on what the heck we all think we want the community to do - and then see if automatic licensing can support that. I know what you mean. I agree with you. We might be the cheese that stands alone on this. And, for me, the empowering community is a higher priority.

Good comments.
Amy

PS - ROUGH ROUGH draft ideas, above. :-P

[dhuelsmann]

I cant see any other way to read it, maybe i'm being thick, but it reads to me that you are saying that there are more people abusing the trademark than using it genuinely.

Tiptoe through Google images and let me know how many conditional use logos you see (which do not require permission to use) versus how many Joomla logos with no disclaimer marketing products, ISP providers, templates, etc.

[brad]

What an amazing amount of work has gone into this alternative policy. Looking forward to seeing what others think.

Yes clearly it was a huge ammount of time and yet it received negative comments quicker than it could even have been read never mind digested. A document as in-depth as this deserves/requires some time to read, evaluate and consider before you can justifiably comment on what it is saying. Any other comment is just shooting from the hip without a true apreciation of the documents content. I know that personaly I'm still considering the full implications of everything in there.

Try to focus on the positives Brian. You know well that this proposed policy was available long before today if you knew where to find it. Don't jump to conclusions about people that may well be incorrect. Try focussing on the issue, this policy, rather than the action and opinions of people who are trying to share their views. It will lead to a far calmer discussion.

[brian]

That's an exercise that would be pointless for me to do as
1) I would have no way of knowing if those people had applied to use the logo
2) I have no way of knowing if those people had been contacted to inform them that the conditions of using the logo had changed
3) The use of a logo to depict a product is not a breach of TM or Copyright in most countries of the world.

[dhuelsmann]

3) The use of a logo to depict a product is not a breach of TM or Copyright in most countries of the world.

I agree if it is not someone else's trademarked logo placed on their product.

[bushie]

When there was a recent option to have yourself included on the Joomla website as a developer, it was a requirement that you included a disclaimer on your website that you weren't associated with Joomla. I felt this was ridiculous to the absurd.

I agree.. do you have a link to this requirement? I was only under the impression this applied if you were using the Joomla name in your domain or products.

What an amazing amount of work has gone into this alternative policy. Looking forward to seeing what others think.

Certainly Brad...

Clause 19....
Resources must comply with Open Source Matters trademark, license and other policies. Those who submit a listing and have not been approved for use of the name or logo by OSM or do not comply with the license policies will be sent an email by the JRD team asking them to take the appropriate steps for listing approval in the Directory.

See:-
http://resources.joomla.org/component/c ... cle/6.html

From recollection, this wasn't originally included and then after doing my listing I received an email with explicit instructions regarding wording that had to be shown on the page. The listing then had to be resubmitted and checked by the Joomla Resources people. I complied with all this, but have since removed it as I felt it was absolutely stupid. If they want to remove me for promoting Joomla, then they can go for their life!

Perhaps I should reword my site to say that I write all my sites for clients in an absolutely brilliant CMS whose name I cannot use for trademark reasons!

I cant see any other way to read it, maybe i'm being thick, but it reads to me that you are saying that there are more people abusing the trademark than using it genuinely.

Mmmmm.... I must be thick too Brian. I read it the same way!

Cheers,

Ric

[brian]

So the image search you propose its a fruitless exercise. point proven. Seriously Dave the original post is about far more than the use of the logo and deserves serious consideration

[brad]

Ric, I think Ewout is here trying to address that problem you came up with. However, from your clarification it's obvious you were not just listing yourself as a Joomla developer, rather you were at the same time using the Joomla name on a website or a product of yours.

Let's see a discussion on this policy brought forth here. I understand people are frustrated, but let's not detract from the positive outcome that could come from sharing the collective wisdom from people who contribute to this thread.

[dhuelsmann]

So the image search you propose its a fruitless exercise. point proven. Seriously Dave the original post is about far more than the use of the logo and deserves serious consideration

@Brian - I offered my considered opinion in previous posts. The issue is about the trademark policy. Both the name Joomla! and the logo are trademarked. The policy would apply to both.

[bushie]

@brad

No, I was listing myself purely as a Joomla developer. That was all that was mentioned on my web site.

Cheers,


Ric

[brian]

@dave sorry that you chose not to listen to what people are saying I'll move along now and find some nice cookies to eat

[brad]

Ric, I'll look into it for you and get back to you privately. I see people and companies listed on JRD even now that do not have a disclaimer as they do not use the Joomla trademark in their site url or products in such a way that the current policy requires approval for.

Perhaps there was a mistake. In any case, PLEASE can we let this thread be about the solid proposal and work that Ewout has put into addressing the concerns of people like yourself.

Edit: I see you are still listed Ric: http://resources.joomla.org/directory/o ... lting.html at least you're not turning down the free traffic that comes a a result of being listed on JRD. I'm happy to look into this for you if you are not happy to contact the JRD editors, just let me know in private to save taking this thread off topic.

[JacquesR]

@ ewel: that you for your hard work with this proposal! :-)

What comes to mind, is that we should perhaps differentiate between policy (philosophy) and law. In other words, what is required (at the minimum) by law to protect the value of the trademark, and what has more to do with policy.

It seems that the current trademark policy does indeed reach further then what trademark law would require, and then we should ask the question if what we use the policy for is valid uses, or really in the interest of everyone.

I like the following 2 quotes from ewel, and how it links trademark policy to a collaborating community that builds and shares (on/with) the GPL:

More importantly, I feel that the trademark policy fails to express how policy might change the way trademark law is used in a collaboratieve open source community similarly (but on a much smaller scale) to how the GPL changes the way copyright law is used. The open source community views copyright as unproductively restrictive and uses the GPL to share without putting code in the public domain. In more or less the same way, I would like the trademark policy to share the project's name within the community without tossing away the usefulness of trademark protection.

As you can see, the key words are 'source', 'exclusivity' and 'confusion'. No wonder therefore that for a business it sounds normal that it has the exclusive right to use a trademark so that there is no confusion (amongst consumers seeing similar products or services) that this business is the only source of its trademarked products or services. But for Joomla!, when you think about it, it does not sound quite as normal. Joomla is not just a business producing a product, it is a community collaborating on an open source CMS. Paraphrasing what sounds normal for a business, it would sound much better if one could say that OSM shares the right to use the Joomla! trademark so that there is no confusion, amongst users seeing products and services associated with Joomla!, that the Joomla! community is a distributed and open source of the Joomla CMS and related products and services. In the Joomlasphere, those key words 'source', 'exclusivity' and 'confusion' just don't seem to fit very well.

(own emphasis added)

As far as I'm aware, the US trademark is specifically for a CMS (don't have the link now). So does OSM then (for instance) have any business trying to licence or restrict the use of J*, Joo*, Joom*, etc. as the name of an extension (note: not a CMS)? I understand confusing miss-spelllings like Jumla or Jooomla not being allowed.

Perhaps someone can shed more light on that?

Regarding the wording of your proposal:
Paragraph 2.2 is perhaps a bit to complicated.
(is it possible to post a copy of the proposal in this thread to better respond to specific sections?)

PS: I hope this topic gets an even wider audience (and input) in this new section!

[dhuelsmann]

http://www.stresscure.com/relation/7keys.html

[masterchief]

In any case, PLEASE can we let this thread be about the solid proposal and work that Ewout has put into addressing the concerns of people like yourself.

Let's see a discussion on this policy brought forth here.

Amen.

Ewout, first of I want to thank you for going out on a limb and preparing this. Regardless of the outcome (and I have an idea of where I'd like it to end up), no one can disclaim that it's not a thoughtful, mature and professional response to a "complicated" issue. The preamble is certainly a hike to read but well worth it and I really could not have put it more eloquently. It certainly captures some of the lay concerns I've had.

For me the key is:

At the same time, this approach does not give people any idea of what is acceptable to OSM and what is not.

The point here is "run everything by us" is very safe, but it's not without it's drawbacks (as Ewout has pointed out) and I think we can do better.

Ewout has emphasised there is some wordsmithing required and other things. I don't want to comment on fine-tuning here because that is a very separate process. What I like about the proposal is it's structure and intent. I think the order and tone is appropriate. I agree with Ewout on drawing comparisons to the Drupal policy - it [Drupal's] looks deceptively simple but it is far more restrictive than how I believe OSM currently enforces the Joomla trademark (and far more restrictive than I would ever *want* the Joomla name to be protected). With that in mind, I actually think Ewout has converted to words what OSM, on the whole, already does. I think he's captured the spirit and substance of what is already happening and been able to articulate it in a fairly non-threatening way (though I'm used to reading legislative policy). More examples of allowed and not allowed will of course be required in time as Amy suggests.

I think it's appropriate to spell out the broad net of things that OSM, as steward for the project, wants to hold to. Hence, I like the "Restrictive Criteria". I think it's important to put a fence around what OSM wants to keep in reserve for the project's use, particularly the reserved name use (and you might as well get that out of the way first).

Next, I like the concept of then having self-assessable name usage that is automatically approved. This is a common technique used in legislative circles and one that was used when I was in Local Government. Why is it used? To cut down the the workload of having to process stuff that is simply not a problem and I don't think it's an impossible task to define what falls into that zone. It also clearly shows where sweet spot of the goal posts is. I agree with the notion that the "JoomWord" or "JooWord" hybrid type names should be automatically acceptable (I personally would steer away from them for business reasons, but that's another conversation).

The icing on the cake, for me, is the "Use Criteria". This section is just magic and it basically captures the essence of what Joomla, as a brand stands for. If you aren't using the Joomla name in this way, then you are taking the Joomla name in vane (that's actually what the Commandment means).

"Clarity" is good. "Relevance" is particularly good at knocking out the domain campers with link farms (I really like that one). "Integrity" I love - Joomla stands for the GPL, for security and responsible behaviour.

So all up, I'm very impressed with the document realising of course that fine tuning would be required. Full marks for the effort and I hope it's given due consideration by the OSM board (that's really all anyone can ask).

Those are my thoughts anyway.

[brian]

How is this for an off the wall suggestion as fundamentaly this whole issue is about the law and very few of us are remotely qualified about the law especialy such a complex area as TM. OSM empower Ewout and their own lawyer (sorry dont know the name of the TM lawyers any more) to discuss this together to each get a better understanding of their respective positions. Then hopefuly together they will be able to present options to OSM and joomla-leadership for a TM policy with more clarity.

[ewel]

Frankly, with so much response I don't know where to start! Let me begin by saying that Dave's first reply made me very grateful for seeing his second reply with arguments that I don't agree with but respect. Second, it is great to see a good discussion getting underway here! That in itself is plenty reward - anyway it is a pleasure being able to contribute by writing something I find easier to write than code! Thanks also to Brad for keeping it that way with a positive approach.

You want a good template for a trademark policy, check the Drupal one. They have it right. It doesn't sound like it came from a lawyer (meaning it's written in words we can all understand) and it starts out by clearly delineating examples of appropriate use. It's far less scary, and I'll wager also takes far less effort to oversee, because it will generate fewer questions and permission requests.

It is interesting that you mention that. Drupal's policy is pleasant to read, but not easy. In fact, it is so difficult to really take in that many people don't seem to realise that Drupal in some ways has a very unfriendly policy. Joomla practice (not the policy) works out to be much easier for the community.

(and I'm sorry, Ewout, but I'm not sure your alternative is much better; it's not quite as hostile-sounding, true, but it's still loaded down with formality and structure -- it needs a friendlier tone)

I am both disappointed and happy about this comment. Obviously my intention was to make something that would be the answer to the points you and Ric made. But given this intention plus my evident failure to escape a professional compulsion to write formally, I am very glad that you pointed this out, so that this aspect could be changed to better meet your expectations if those are generally agreed with. I think your suggestion of changing the sequence and toning some things down, together with Amy's suggestions on how to make the text read more pleasantly, would probably get things close to what you would like. And I vote for keeping Betty as the preferred name to honour the fact that Amy disagrees with how I structured it but still helps improving the text. : ) For myself, I have learned that before you let a leash hang loose you have to give a hard pull to show that you're still in charge, and that is probably reflected in my text.
Still, I do think my alternative is better because it is more practical in the way it works. Also, I really tried to resist the temptation to go overboard with friendliness and forget that a trademark does need some protection afterall. That brings me to Dave...

The proposed expansion to allow automatic licensing of combined names like JoomlaMeet as described in the proposed policy dilutes the Joomla brand and potentially can be argued that OSM acquiesced in the misuse of the trademark.

Dave, as said I respect your point of view, but I am going to have to attack your points. Please shout foul if you feel I attacked the person not the point.
I do not think that what I wrote was an expansion. In fact, I honestly thought I was contracting the exceedingly broad scope of what the current policy deems to be subject to permission. Certainly I did not expand in the way you meant. Names like JoomlaMeet already exist, and some are so visible that I find it very hard to imagine they are not licensed.

Moreover, I do not see dilution, I see that some third party developers are adding a lot of value to the Joomla trademark precisely because they use Joomla-related branding. The Joomla websites deliver a lot of traffic to developers, but I am convinced they also get a very nice ranking and visitor boost from the efforts of developers who spread the Joomla name to people who otherwise would have never heard of it. Many of these developers are not commercially engaged in Joomla, and my own desire to name my non-commercial website after Joomla is a case in point.
But, if you meant dilution in a more legal sense, then I cannot agree either. The policy I propose is no different from the current policy in that it claims the trademark right of exclusivity and then dishes out licences - the difference being that my proposal does so in a clear and understandable way, whereas currently there is no transparency at all regarding what criteria are used to grant or deny a licence. I should add that in this way, neither the current nor the proposed policy are risking that the Joomla name becomes generic, or they both are. Incidentally it takes quite a lot to become a generic brand and I don't see Joomla becoming synonymous with CMS or becoming a verb in the way of 'have you joomlaed that website for client X yet?'. Joomla is great but it is no coke or hoover yet!

Keep in mind that the purpose of a trademark is to ensure that the product (Joomla) can be distinguished clearly from other products that purport to be the same or similar.

No, let's go one level deeper and keep in mind that the purpose of trademark law is to avoid that consumers become confused. And again I say that I find it hard to imagine anyone becoming confused by a name like JoomUnity to take one of many examples.
As to purporting to be the same or similar, keep in mind that the reference to products works both ways. I don't see Joomla organising any training or support where I live, so perhaps it would not be so confusing at all when I start providing those services with a name that includes Joomla or part of the word. Given that Joomla does not visibly pay any attention to whether or not the project is offering products or services similar to my (hypothetical) activities, perhaps the current policy should not assume that my branding is subject to permission at all, for lack of any potential of confusion.

Unfortunately, the "trust us" members are far outnumbered by those who wish to take advantage.

As I wrote in the first post, it would be a mistake to think that a trademark policy can do anything against those who wish to take advantage. If I was planning to abuse the Joomla trademark I would do so on the basis of my opportunistic legal and commercial assessment and I would completely ignore the policy. Do you seriously expect somebody making one of those websites with adverts on a domain that violates the policy to be discouraged by that policy? I bet I could pretend to be Joomla Malta (don't worry, I won't!) and the policy really wouldn't be able to stop me - only enforcement of the trademark rights at law would. Policies are for those who want to play by the rules, lawyers and courts are what you need against those who take advantage.
Anyway, in so far as a trademark policy does discourage abuse, please read my proposal and especially have a good look at the use criteria. I don't see anything like that in the current policy. Perhaps you will tell me that internally criteria like that are used, but then perhaps we could use some transparency about what those internal criteria are.

Tiptoe through Google images and let me know how many conditional use logos you see (which do not require permission to use) versus how many Joomla logos with no disclaimer marketing products, ISP providers, templates, etc.

Let's tiptoe through the JED and see how many extensions and developers have branding that would fit in nicely in my proposed automatic licensing. Quite a few, I imagine, or otherwise I haven't done it right. Either those are being promoted by the JED while they violate the trademark policy, or they are licensed under the current policy. So what exactly is the problem with a policy that explicitly states what practice has already resulted in on the basis of an intransparent policy?

Incidentally there is a flaw in my work that I already pointed out in the passing: I have completely ignored the logo policy, and ideally they should be closely related. I focussed on a replacement of the OSM page on trademark policy and in that sense I let Ric down. But then again I have good hopes that we'll get there too in the end.

What comes to mind, is that we should perhaps differentiate between policy (philosophy) and law. In other words, what is required (at the minimum) by law to protect the value of the trademark, and what had more do do with policy.
It seems that the current trademark policy does indeed reach further then what trademark law would require, and then we should ask the question if what we use the policy for is valid uses, or really in the interest of everyone.
I like the following 2 quotes from ewel, and how it links trademark policy to a collaborating community that builds and shares (on/with) the GPL: (.....)
As far as I'm aware, the US trademark is specifically for a CMS (don't have the link now). So does OSM then (for instance) have any business trying to licence or restrict the use of J*, Joo*, Joom*, etc. as the name of an extension (note: not a CMS)? I understand confusing miss-spelllings like Jumla or Jooomla not being allowed.

Jacques, I think you hit the nail on the head. Trademark law is a very refined body of law which already does everything you can hope for in terms of trademark protection, and better than a policy ever could. You don't need a policy for protection, you need a policy to share. With a trademark policy, you dispose of your exclusive right in a way that you think is good, which I think in a community should be to share the project's name within the community. You can use a policy to share by licensing or otherwise permitting things that you could otherwise have seen as an infringement of your exclusive right to use the trademark. Once you are at it, you might as well be helpful and explain in what circumstances you would grant a licence or other permission. If you do not want to share, you do not need a policy. The policy does not have to protect, it just has to make sure it is not tossing those exclusive trademark rights away that make it possible to share.
And yet, a sharing policy must work within the boundaries of the law, otherwise it would be unenforceable and ineffective. So, where the policy states in what circumstances the trademark is shared (i.e. licensed), that should more or less resemble what would be the case at law. Trademark law essentially checks whether there is confusion by looking at the similarity of names of similar products and services (which may often carry the name of the organisation that is the source of those products and services). So, if there is a good chance that people will get confused when they see a third party product or service of the kind Joomla provides under a name that looks a lot like Joomla, then Joomla has every right to claim exclusive use of the Joomla name. But, if either the name is not so similar or the products and services are different, then you can wonder if there is enough potential confusion for Joomla to claim exclusivity.
Like the current policy, but less so, the proposed policy tries to claim more exclusivity than trademark law would probably give, doing so by ignoring the type of product or service involved and by implicitly claiming exclusivity for names that arguably are not confusing. This makes sense because in the project's best interest it is better to err on the safe side while it seems best for the community to keep things simple. However, unlike the current policy, the proposed policy makes up for this by admitting that the law overrides the policy, and by handing back automatic licences for most things that are not normally confusing in such a way that people know where they stand.
These explanations are overly simplified of course.

After I've written all this, Andrew's post came in. I just want to say that your compliments and general agreement mean a lot to me.

Brian, good point. It would be very healthy for OSM's legal team to review the policy proposal, and I would be glad to help with that. But before we get a review on what OSM needs in terms of protection, I think it would be good to make sure that we have something that the community wants. Otherwise we'll be doing this again next year...