The current Trademark License Agreement is unacceptable

[Christoph Wickert]

Sorry for the lurid subject, but at least I have everybody's attention
now. ;)

I'm working together with people from some Fedora centric sites at the
moment. So far none was asked to sign the TLA [1] but we are planing a
redesign which makes use of the Fedora logo. So now it would be the
right time to put the relationship to the Fedora Project onto a solid
base, which means the owners should sign the TLA. However I cannot
advocate this to anybody currently.

There are two reasons that make me think that nobody should sign the TLA
in it's current version: §3 and §7.

> 3. Termination: Licensor or Licensee may (without prejudice to any
> other right or remedy) terminate this Agreement (a) for any reason at
> any time upon thirty (30) days prior notice in writing to the other
> party; (b) at any time upon notice in writing to the other party if
> the other party is in material breach of any obligation hereunder and
> does not cure such breach within seven (7) days of being requested in
> writing to do so; or (c) with no notice where the Domain Name(s), Web
> Pages, or Licensee's use of the Trademarks are the subject of a legal
> claim. The right to use the Licensor's Trademarks will cease
> immediately upon the termination or expiration of this Agreement and
> Licensee must immediately discontinue use of the Licensor's
> Trademarks. On termination or expiration of the License, the Licensee
> agrees that the ownership of the Domain Name(s) automatically
> transfers to Licensor and Licensee will take all steps necessary,
> including working with domain name registrars and registries as
> necessary, to ensure that the legal ownership and control of the
> Domain Name(s) is expeditiously transferred to Licensor or a party of
> its choosing. Licensee agrees to remove any Web Pages content
> immediately if in Licensor's sole discretion such removal is
> warranted.

So even if the licensee follows all the terms of the TLA and the logo
usage guidelines, Red Hat can terminate the agreement for (a) no reason
and (c) even without notice at any time. If they do, they automatically
become owner of the licensees domain. This is a legal way of hijacking
the domain with all it's contents, all it's reputation and all the work
that was put into it. This just isn't fair.

I'm not even sure if the licensee is allowed to transfer the domain and
it's content to Red Hat: Think of a community website with private data
of the users. Here in Germany we have very strict law for data privacy
protection. If the community members did not explicitly agree to giving
their personal data to Red Hat or any entity outside of Germany, the
licensee must not give this data to the licensor. If he does, he also
violates the law. He is caught between the devil and the deep blue sea.

The second issue is the indemnification: 

> 7. Indemnification: The Licensee will indemnify and hold harmless the
> Licensor and its directors, officers, employees and agents
> (collectively, the “Indemnitees”) from and against any and all
> damages, injuries, liabilities, costs and expenses, including but not
> restricted to actual legal fees and costs charged to any of the
> Indemnitees by their lawyers, that may be incurred by any of the
> Indemnitees or claimed by any third parties against any of the
> Indemnitees in connection with any wares, services or business of the
> Licensee, any negligent or wrongful conduct of the Licensee, and any
> breach of this Agreement by the Licensee or by any person who is
> related to or affiliated with the Licensee. The foregoing
> notwithstanding, Licensor will indemnify, defend and hold Licensee
> harmless from any claim that the Licensee's use of the Trademarks
> consistent with the terms of this agreement is an infringement of a
> third party's trademark in those countries where Licensor has
> registered the accused trademark.

We all know how ridiculous high indemnifications under American law are,
so no community person effectively can bear this risk. I agree there
must be a form of indemnification, but it should be limited to a certain
amount, otherwise a person could be bankrupt or the rest of his life
even if he didn't damage Red Hat or Fedora in any way.

So why is the TLA a adhesion contract? Please don't tell me that Red Hat
as an American company needs to be that restrictive in order to protect
their trademarks. I recently reviewed the Nimbus theme from OpenSolaris
(#488174) and Rahul argued that we must not ship the OpenSolaris logo. I
looked at their trademark FAQ [2] and their trademark policy [3] and I
wasn't able to find anything that prevents us from shipping their logo.
They have a "fair use" guideline. You can basically do whatever you
want, as long as you don't damage their trademark on purpose and as long
as it's non commercial. Why can Sun be way more liberal than Red Hat
although both are American companies?

I really regret saying that currently I cannot recommend signing the TLA
to anybody. It's a shame.

Regards,
Christoph

[1] https://fedoraproject.org/wiki/Trademark_license_agreement
[2] http://opensolaris.org/os/about/faq/trademark_faq/
[3] http://www.opensolaris.org/os/trademark/