Trademark issue: "ubuntu" in package name

[Sandro Mani]

Hello,

I've got a pending review request for "ubuntu-keyring" (see [1]) where 
the reviewer correctly pointed out that there may be a trademark issue 
with the package name containing the word "ubuntu". I've tried 
contacting Canonical to ask whether we are allowed to use ubuntu in 
package names, but they have not replied to date (inquiry was sent 10 
days ago). This potential trademark issue also affects the package 
"ubuntu-title-fonts", see [2].

I would like to ask whether anyone here has already dealt with a 
precedent issue of this kind, and if so how such issues were resolved. 
Specifically, maybe someone has already approached Canonical for such 
issues?

Thanks,
Sandro


[1] https://bugzilla.redhat.com/show_bug.cgi?id=1009998
[2] https://bugzilla.redhat.com/show_bug.cgi?id=1014065

[Tom Callaway]

On 10/10/2013 05:51 AM, Sandro Mani wrote:
>  Hello,
>  
>  I've got a pending review request for "ubuntu-keyring" (see [1]) where
>  the reviewer correctly pointed out that there may be a trademark issue
>  with the package name containing the word "ubuntu". I've tried
>  contacting Canonical to ask whether we are allowed to use ubuntu in
>  package names, but they have not replied to date (inquiry was sent 10
>  days ago). This potential trademark issue also affects the package
>  "ubuntu-title-fonts", see [2].
>  
>  I would like to ask whether anyone here has already dealt with a
>  precedent issue of this kind, and if so how such issues were resolved.
>  Specifically, maybe someone has already approached Canonical for such
>  issues? 
Canonical says explicitly not to do this:

(from: http://www.canonical.com/intellectual-property-policy)

  You cannot use the Trademarks in software titles. If you are
  producing software for use with or on Ubuntu you may reference
  Ubuntu, but must avoid: (i) any implication of endorsement, or (ii)
  any attempt to unfairly or confusingly capitalise on the goodwill of
  Canonical or Ubuntu.

Short of explicit permission from Canonical, we should not do this.

~tom

==
Fedora Project

[Sandro Mani]

On 10.10.2013 16:36, Tom Callaway wrote:
>  On 10/10/2013 05:51 AM, Sandro Mani wrote:
> > Hello,
> >
> > I've got a pending review request for "ubuntu-keyring" (see [1]) where
> > the reviewer correctly pointed out that there may be a trademark issue
> > with the package name containing the word "ubuntu". I've tried
> > contacting Canonical to ask whether we are allowed to use ubuntu in
> > package names, but they have not replied to date (inquiry was sent 10
> > days ago). This potential trademark issue also affects the package
> > "ubuntu-title-fonts", see [2].
> >
> > I would like to ask whether anyone here has already dealt with a
> > precedent issue of this kind, and if so how such issues were resolved.
> > Specifically, maybe someone has already approached Canonical for such
> > issues?
>  Canonical says explicitly not to do this:
>
>  (from: http://www.canonical.com/intellectual-property-policy)
>
>     You cannot use the Trademarks in software titles. If you are
>     producing software for use with or on Ubuntu you may reference
>     Ubuntu, but must avoid: (i) any implication of endorsement, or (ii)
>     any attempt to unfairly or confusingly capitalise on the goodwill of
>     Canonical or Ubuntu.
>
>  Short of explicit permission from Canonical, we should not do this.
>
>  
Thanks for your reply. I changed the package name to ubu-keyring.

Sandro

[Christopher Meng]

What....

Can we get an exception?

[Sandro Mani]

On 11.10.2013 08:47, Christopher Meng wrote:
>  What....
>
>  Can we get an exception?
>  
I guess for that to happen, Canonical would need to reply to my inquiry 
first.

Sandro

[Christopher Meng]

On Oct 11, 2013 4:46 PM, "Sandro Mani" <manisandro(a)gmail.com&gt; wrote:
>  On 11.10.2013 08:47, Christopher Meng wrote:
> >
> >
> > What....
> >
> > Can we get an exception?
> >
>  I guess for that to happen, Canonical would need to reply to my inquiry 
first.
>  Sandro 
It's better to keep the original name, I think we shouldn't confuse our
users.

[Sandro Mani]

On 11.10.2013 11:19, Christopher Meng wrote:
>  On Oct 11, 2013 4:46 PM, "Sandro Mani" <manisandro(a)gmail.com 
>  <mailto:[e-mail]>> wrote:
>  >
>  >
>  > On 11.10.2013 08:47, Christopher Meng wrote:
>  >>
>  >>
>  >> What....
>  >>
>  >> Can we get an exception?
>  >>
>  > I guess for that to happen, Canonical would need to reply to my 
>  inquiry first.
>  >
>  > Sandro
>
>  It's better to keep the original name, I think we shouldn't confuse 
>  our users.
>  
Well I'd certainly like to keep the original name (referring here to 
ubuntu-keyring vs ubu-keyring), but as it stands now I'm not allowed to 
do so.

Sandro

[Haïkel Guémar]

Le 11/10/2013 11:37, Sandro Mani a écrit :
>  Well I'd certainly like to keep the original name (referring here
> to 
>  ubuntu-keyring vs ubu-keyring), but as it stands now I'm not allowed 
>  to do so.
>
>  Sandro 
Hi,

I brought that matter to Jono Bacon (Ubuntu Community Manager) 
attention, he's gonna ask their legal team to follow up. You should 
receive an answer from Canonical soon.

best regards,
H.

[Sandro Mani]

On 11.10.2013 19:42, Haïkel Guémar wrote:
>  Le 11/10/2013 11:37, Sandro Mani a écrit :
> > Well I'd certainly like to keep the original name (referring here to 
> > ubuntu-keyring vs ubu-keyring), but as it stands now I'm not allowed 
> > to do so.
> >
> > Sandro
>
>  Hi,
>
>  I brought that matter to Jono Bacon (Ubuntu Community Manager) 
>  attention, he's gonna ask their legal team to follow up. You should 
>  receive an answer from Canonical soon.
>  
Thanks a lot!

Sandro

[Sandro Mani]

On 11.10.2013 19:42, Haïkel Guémar wrote:
>  Le 11/10/2013 11:37, Sandro Mani a écrit :
> > Well I'd certainly like to keep the original name (referring here to 
> > ubuntu-keyring vs ubu-keyring), but as it stands now I'm not allowed 
> > to do so.
> >
> > Sandro
>
>  Hi,
>
>  I brought that matter to Jono Bacon (Ubuntu Community Manager) 
>  attention, he's gonna ask their legal team to follow up. You should 
>  receive an answer from Canonical soon.
>
>  best regards,
>  H. 
Hi Haïkel,

Do you know whether Jono Bacon managed to get in touch with the legal 
team? So far I have not heard anything from them.

Thanks,
Sandro

[Gianluca Sforna]

On Thu, Oct 10, 2013 at 4:36 PM, Tom Callaway <tcallawa(a)redhat.com&gt; wrote:
>  Canonical says explicitly not to do this:
>
>  (from: http://www.canonical.com/intellectual-property-policy)
>
>    You cannot use the Trademarks in software titles. If you are
>    producing software for use with or on Ubuntu you may reference
>    Ubuntu, but must avoid: (i) any implication of endorsement, or (ii)
>    any attempt to unfairly or confusingly capitalise on the goodwill of
>    Canonical or Ubuntu.
>
>  Short of explicit permission from Canonical, we should not do this. 
Legal things never cease to amaze me.

I can't really see how naming a package "ubuntu-title-fonts", which is
the name upstream (and upstream *is* Ubuntu) chose can be "using
Trademark in software titles".
We are not even producing software here [1,2], these are just
packaging of content, not code.

[1] https://wiki.ubuntu.com/UbuntuTitle
[2] https://launchpad.net/ubuntu-keyring

-- 
Gianluca Sforna

http://morefedora.blogspot.com
http://identi.ca/giallu - http://twitter.com/giallu

[Tom Callaway]

On 10/11/2013 03:09 AM, Gianluca Sforna wrote:
>  On Thu, Oct 10, 2013 at 4:36 PM, Tom Callaway
> <tcallawa(a)redhat.com&gt; wrote:
> >
> > Canonical says explicitly not to do this:
> >
> > (from: http://www.canonical.com/intellectual-property-policy)
> >
> >   You cannot use the Trademarks in software titles. If you are
> >   producing software for use with or on Ubuntu you may reference
> >   Ubuntu, but must avoid: (i) any implication of endorsement, or (ii)
> >   any attempt to unfairly or confusingly capitalise on the goodwill of
> >   Canonical or Ubuntu.
> >
> > Short of explicit permission from Canonical, we should not do this.
>  
>  Legal things never cease to amaze me.
>  
>  I can't really see how naming a package "ubuntu-title-fonts", which is
>  the name upstream (and upstream *is* Ubuntu) chose can be "using
>  Trademark in software titles".
>  We are not even producing software here [1,2], these are just
>  packaging of content, not code.
>  
>  [1] https://wiki.ubuntu.com/UbuntuTitle
>  [2] https://launchpad.net/ubuntu-keyring 
Yes, I know, but we're attempting to be good citizens and respect
Canonical's trademark policies. It would not take Canonical very long to
simply say that anyone may use the "ubuntu-keyring" or
"ubuntu-title-fonts" names to describe those software/font components,
but they have not done so to date.

~tom

==
Fedora Project

[Miro Hrončok]

Dne 10.10.2013 16:36, Tom Callaway napsal(a):
>  Canonical says explicitly not to do this:
>
>  (from: http://www.canonical.com/intellectual-property-policy)
>
>     You cannot use the Trademarks in software titles. If you are
>     producing software for use with or on Ubuntu you may reference
>     Ubuntu, but must avoid: (i) any implication of endorsement, or (ii)
>     any attempt to unfairly or confusingly capitalise on the goodwill of
>     Canonical or Ubuntu. 
If you are producing software -> no, we are not, we are redistributing 
it. Canonical produces it and they chose to name it with this name.

This rule does not contain anything, that forbids us to package it, 
however, it does not even contain anything, that would explicitly allow 
us to do so.

(Just my opinion)

-- 
Miro Hrončok
--
Phone: [phone]
IRC: mhroncok

[Björn Persson]

Miro Hrončok wrote:
>  Dne 10.10.2013 16:36, Tom Callaway napsal(a):
>  > Canonical says explicitly not to do this:
>  >
>  > (from: http://www.canonical.com/intellectual-property-policy)
>  >
>  >    You cannot use the Trademarks in software titles. If you are
>  >    producing software for use with or on Ubuntu you may reference
>  >    Ubuntu, but must avoid: (i) any implication of endorsement, or
>  >    (ii) any attempt to unfairly or confusingly capitalise on the
>  >    goodwill of Canonical or Ubuntu.
>  
>  If you are producing software -> no, we are not, we are
>  redistributing it. Canonical produces it and they chose to name it
>  with this name. 
An RPM spec file is software, and Fedora packagers are producing
those. We're not producing software for use with or on Ubuntu though,
so that entire sentence is irrelevant to packaging in Fedora, and what
remains is simply "You cannot use the Trademarks in software titles."

The question is: Does "software titles" include software titles chosen
by Canonical? Apparently Tom thinks it does.

Björn Persson

[Tom Callaway]

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On 10/11/2013 10:08 AM, Björn Persson wrote:
>  The question is: Does "software titles" include software
> titles
>  chosen by Canonical? Apparently Tom thinks it does. 
I'm not sure why it doesn't. They're still software titles and their
guidelines make no exception for ones chosen by Canonical.

FWIW, I happen to think that the Canonical Trademark Guidelines could
stand to be improved significantly, or at the very least, Canonical
should be responsive to clarifying questions about them.

~tom

==
Fedora Project
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