My questions about the new Trademark Guideline draft

[Paul W. Frields]

On Thu, Feb 23, 2012 at 09:06:03PM +0100, Christoph Wickert wrote:
> Am Mittwoch, den 22.02.2012, 18:21 -0500 schrieb Paul W. Frields:
> > On Wed, Feb 22, 2012 at 10:55:57PM +0100, Christoph Wickert wrote:
> > > In the Board meeting today we agreed to collect all remaining questions
> > > about the Trademark guidelines draft from
> > > https://fedoraproject.org/wiki/User:Pchestek/TMGuidelinesDraft
> > > and send them to Pam or Fedora Legal.
> > > 
> > > While I agree to most of what is written or at least understand why it's
> > > necessary to follow a clearly defined procedure, I am having serious
> > > problems with the 'Ambassador giveaways' section. It reads:
> > > 
> > > > If the design is simply an unmodified Fedora logo, word-mark, or
> > > > previously approved design, with nothing else, the merchandise is
> > > > appropriate, and the material type/quality is acceptable, the request
> > > > will be granted, and the Fedora Ambassador will be given a one-time
> > > > permission to produce the specified non-software promotional goods in
> > > > the amount requested. Any other request must have Board approval, and
> > > > may require that the Ambassador produce a two item proof batch of the
> > > > proposed non-software promotional goods. Please note that designs must
> > > > be in compliance with the Fedora Logo Usage Guidelines, and all
> > > > requests must be made at least one month before expected production of
> > > > the non-software promotional goods. Trademark approval, if granted,
> > > > does not constitute any budgetary or financial agreement to produce
> > > > non-software promotional goods.
> > > 
> > > AFAICS this means
> > >      1. Pre-approved design will be approved more or less automatically,
> > >         nevertheless the permission is only for one time and we need to
> > >         run in circles for every new batch even if absolutely nothing
> > >         has changed. Is that true? We are using the same Ambassador polo
> > >         shirts for ages now and neither the design not the quality has
> > >         changed. It's still produced by the same vendor from the same
> > >         master with the same material.
> > 
> > As always IANAL.  Having said that...
> > 
> > The way I read the above, the Board isn't prohibited from granting a
> > long-term or continuing approval based on using the same vendor,
> > materials, etc.  The way I read it, the provision prevents the
> > *assumption* that there is an automatic or long-term approval, unless
> > the Board says otherwise.
> 
> long-term approvals are not mentioned anywhere, and if a guidelines only
> mentions one-time approvals, my understanding is that the board can only
> give one-time permissions.

If the request to produce swag fell outside the description listed --
such as an indefinite amount, to be given away at presently unknown
events or other circumstances -- then it would fall into the category
described as "any other request," and then it "must have Board
approval."  There's no specific requirement there that the Board's
approval be limited to one time only, just that the approval must be
obtained.  That's why I thought it sounded reasonable.  But if that's
unclear, and my interpretation matches the intent, then I'm sure we
can get it clarified in the text.

I think I'm correct that one goal of the text is to avoid assuming
that an approval is automatically forever.  But I also think a goal
should be not to bind the Board's hands so that it can't give
long-term approvals to Ambassadors when the design and materials
remain the same high quality.

> > >      2. In most cases it is not possible to produce two item proof, say
> > >         two pens or shirts. What to do?
> > >      3. What do we actually do with the two proof items? Do we send them
> > >         to Raleigh where they will be archived?
> > 
> > This provision states "may require," not "will require."  Should be no
> > problem in theory or practice, since the Board should not be requiring
> > the impossible.
> 
> I'm afraid we are having a different perspective. While you seem to be
> more optimistic, I am very careful. If something is unclear I always try
> to prepare for the worst - especially when it has to do with lawyers.
> The EMEA community had some bad experiences in the past.
> 
> > >      4. Would photos be sufficient?
> > >      5. Would similar items by the same vendor be sufficient as
> > >      proof?
> > 
> > See above, but I believe the Board has latitude to say "yes" to
> > specific cases here.
> 
> see above :)

We can agree to take different POVs here. :-) But I think it's safe to
say that any trademark owner with an interest in maintaining the value
and ownership of its marks wouldn't relinquish its ability to ensure
that things receiving the mark are of good quality.  The text is clear
that the Board is not *required* to make anyone produce two proofs.  I
think the Board knows if they were to exercise that requirement
unreasonably, I think they know it would be harmful to the community
(not to mention just silly).  I trust them not to do that.

> > >      6. If it is possible, who will pay for the two item proof batch? 2
> > >         polo shirts are over 50 EUR, with shipping to the US this is ~
> > >         60 EUR. Or what about goodies that don't get approved? Will the
> > >         community members have to take over the costs?
> > 
> > IMHO no community member should have to front money for proofs or
> > other Fedora costs.  Sometimes people do this voluntarily but there's
> > no reason the Fedora budget can't reimburse.  If the money is needed
> > up front, it should be no problem, as long as it's discussed in
> > advance with the budgetholder.  I imagine no one would be happy if 2
> > proofs of a Fedora Ferrari were charged to our budget.  (I didn't say
> > no one would be happy if they *showed up*, it's just paying for them
> > that would be sticky!) ;-)
> 
> I like that idea of a Fedora Ferrari. ;) Jokes aside: We agree that
> contributors should not pay, but what if? This may be a corner case of
> the new TLA but I want to be prepared.

I'm not sure if TM guidelines are the right place for this, but I
agree the Board and contributor should agree on who will pay any proof
costs before they're made.  I don't think the guidelines should just
state who is bound to pay; that produces bad corner cases too.

> > >      7. Can we get rid of the one month clause? Last year we did polo
> > >         shirts 5 days before Linux-Tag and they were delivered directly
> > >         to the event. There was no time for an approval and even if we
> > >         are not in a hurry "at least one month" seems way too long for
> > >         me.
> > 
> > My question here is, if that clause is eliminated, would there need to
> > be some provision for quality checking in urgent situations?  In other
> > words, if making an order for next-day shipping eliminates the need to
> > check quality, would that undercut the entire section?  I don't think
> > you're suggesting that, Christoph, I'm just pointing out the follow-on
> > question that occurred to me.
> 
> I'm afraid only legal can answer that question. Theoretically this can
> be used to bypass the requirement, but - just like you do with the board
> - I like to trust in our contributors and their common sense.

The Board are contributors too. ;-)

> What I have in mind is something like: If pre-approved material is
> produced again without changes in design or quality, there should be no
> further requirements: No proof items, no time limits and all that. We
> should just update the old ticket that was used for approval with a note
> "On {date} the {region} ambassadors ordered another {quantity} of
> {item}." for tracking purposes.

I agree with the concept, as I wrote above.

> I'm not even sure this is needed, as think we are basically dealing with
> a question of prior-art, so only the first appearance of an item should
> really matter. On the other hand: If we can do approved swag without new
> approval, basically all approvals are permanent unless explicitly
> withdrawn. I think this should be the default, but I'm not sure if it
> causes a problem for legal.

I chuckled at "prior art" here since it's a legal term in a different
type of topic, but the plain English also totally fits this situation!
It's like a legal pun. :-)

My suspicion is that a default of "permanent approval" would be a
problem for Legal.  That's why I agree the Board should be able to
make these, but they should not be assumed in every case.  I would
also expect the Board would offer these approvals in most cases where
an Ambassador was overseeing things.  Again, IMHO the guidelines
should allow the Board that latitude, but the requirements for
preserving the value of trademarks in the legal text probably won't
allow for such a *default*.

> > >      8. Is legal really to decide what "acceptable quality" is?
> > 
> > I don't think the intention is for Legal to examine all swag by
> > default, but rather that the Board and Legal reserve the *right* to
> > look at granting or not granting swag production based on quality.
> > AIUI this is something a trademark owner's obliged to do.  In practice
> > I expect the Board would be comfortable with an Ambassador
> > representing the quality of the goods as being sufficient.
> > Ambassadors have always done an excellent job at judging this IMHO.
> 
> I agree, the ambassadors have done a good job here and we should trust
> them. And IHMO we should trust them more than the board or legal. I
> generally do not trust lawyers (unless I pay them) and I recall some
> board members picked on some swag for reasons no ambassadors and very
> few people in the community could understand. It's not that I like bad
> design and poor quality, but in the end the decision should be up to the
> people who hand out the swag on events.

I'm sorry, I don't agree that people on the Board or attorneys,
certainly not the attorneys at Red Hat Legal, should automatically be
trusted less than other people.  I've worked with literally hundreds
of attorneys in the course of my professional career.  The vast
majority of them were wonderful, trustworthy people, just like the
vast majority of people I've met in free software, and in the Fedora
community.  In fact, I've found the length to which Red Hat's
attorneys go to make their work more transparent and understandable to
the community is an enormous testament to their trustworthiness.

Regardless of that quibble, I still agree the guidelines for swag
production shouldn't be burdensome to Ambassadors.  We should enable
them to keep doing the work they've done for years as a valued part of
the community, and do it well.

-- 
Paul W. Frields                                http://paul.frields.org/
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