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
"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 donate
d?) 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 [url=oami.europa.eu]oami.europa.eu[/url].