RE: draft-ietf-ipr-trademarks-00.txt

["Lawrence Rosen" <lrosen at rosenlaw.com>]

> > I'm really surprised how much time this issue is taking.
> 
> I'm not.  This seems to be what happens every time programmers attempt
> to do law.
> 
> Lawyers can leave things fuzzy because the entities who
> interpret their code are (normally) sentient.
> 
> Programmers are used to nailing down every single detail so their
> instructions can be executed by an automaton.  This is especially true
> for folks with a network security background...

I was actually trying to be more helpful than fuzzy. The continuing traffic
indicates I failed.

The following is not legal advice to IETF even though it is worded as such
by force of habit. Only your own legal counsel can advise you and he may
very well disagree with me. 

The Trademark Act says:

   "...A registrant of a mark registered in the Patent and Trademark
    Office, may give notice that his mark is registered by displaying
    with the mark the words 'Registered in U.S. Patent and Trademark
    Office' or 'Reg. U.S. Pat. & Tm. Off.' or the letter R enclosed
    within a circle,..." 15 USC § 1111.

[Similar provisions apply for state and common law trademark notice
requirements. I assume other countries are similar.]

The "registrant" is the one who "may" give notice by "displaying" [certain
notices] "with the mark." That latter phrase means placing notices directly
on his goods to which the mark is applied or on packaging and advertising
materials directly associated with those goods. The registrant, therefore,
has the option to mark goods that he sells or distributes. Failure to notice
affects damages he can collect for trademark infringement by third parties. 

The law doesn't prohibit companies from bragging about their trademarks in
other places, including in their IETF contributions. But neither does the
law require third parties like the IETF to notice other companies' trademark
notices and participate in the bragging. 

The law defines infringers as:

   "Any person who shall, without the consent of the registrant
    (a) use in commerce any reproduction, counterfeit, copy, or 
    colorable imitation of a registered mark in connection with
    the sale, distribution, or advertising of any goods or services
    on or in connection with which such use is likely to cause 
    confusion, or to cause mistake, or to deceive; or...." 
    15 USC § 1114.

IETF contributions and IETF specifications aren't goods (only
implementations are goods). IETF specifications bear no trademarks (except
for the "IETF" mark!). IETF does not sell, distribute or advertise goods.
IETF's use of other companies' trademarks within published specifications is
not likely to cause confusion, or to cause mistake, or to deceive as to the
source or origin of goods subsequently produced by third-party downstream
implementers having no relationship to IETF. 

Even if IETF uses other companies' trademarks within IETF specifications
[for clarity of communications about well-understood industry brand names,
as one example], you won't be an infringer as long as you're technically
accurate and not out to confuse or deceive. And once again, you needn't
acknowledge the trademark status of those brand names.

In summary, (1) trademark owners cannot require IETF to place their
trademark notices on IETF's non-goods, and (2) IETF can use any "colorable
imitation" of trademarks in its specifications because specifications
themselves are not goods and as long as such uses are not likely "to cause
confusion, or to cause mistake, or to deceive."

IETF should stay out of other companies' trademark claims altogether and
don't include their notices in published specifications. You're not required
to publish such notices no matter how much those companies may want you to.
Use trademarks with impunity in your published specifications where useful
and accurate for technical clarity. 

On the other hand, if you're a downstream implementer of an IETF
specification, have your attorney conduct a Google and trademark search
before you place a trademark on your goods. It is your responsibility to
search the marketplace and to avoid becoming a trademark infringer.

/Larry

Lawrence Rosen
Rosenlaw & Einschlag, technology law offices (www.rosenlaw.com)
3001 King Ranch Road, Ukiah, CA 95482
707-485-1242  ●  fax: 707-485-1243
Author of “Open Source Licensing: Software Freedom 
               and Intellectual Property Law” (Prentice Hall 2004)


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