Trademark license agreement status

[Pamela Chestek]

All,

Sorry for the delay in response; I took ill on Wednesday and finally 
made it back to work yesterday. Thanks for your comments, again they 
were very helpful. I've added mine below and I've also updated the wiki 
version of the agreement with some of the changes so you can see them in 
the actual document.

Also, just to confirm for Richard, we'll be adding this sentence to the 
TLA and the Trademark Guidelines: "The '?' symbol should be placed after 
the first or most prominent use of the FEDORA Mark and the 'TM' should 
appear after the first or most prominent use of the Infinity design logo 
unless your editorial convention is never to use symbols with any 
company's marks, including your own." I can't add it to the wiki version 
of the agreement because it's on an exhibit, although the original I 
have on my computer has been amended. We just have to coordinate adding 
it to the Trademark Guidelines also, but we will.

Scott Glaser wrote on 09/08/2009 07:44 PM:
> Paul,
>
> I see four issues with the document in its current state:
>
> 1. There is no verbage defining what is cause for "termination or
> expiration of the License". It would be good if examples were included 
> in the document explaining
> what is cause for termination or expiration of the license.
Paragraph 3, "Termination," defines what the main reasons for 
termination of the agreement are. They are (1) material breach after 
notice and (2) when there is a legal claim.

There are two other paragraphs that had also mentioned termination, the 
former "Content Control" paragraph, reworked as discussed below, and 
Paragraph 11, "Partial Invalidity." In paragraph 11, a party can 
terminate the license if the contract goes to court and it is so changed 
by the court that it "unreasonably compromises the rights or increase 
the liabilities" of a party. The paragraph was originally written just 
in favor of Licensor but I changed the paragraph to make it apply to 
either party.

I removed two sentences in paragraph 6: "Licensor reserves the right to 
terminate this Agreement as a result of any misuse by Licensee of any 
Trademark. Licensee agrees that the Licensee will incorporate the 
appropriate ? or TM after the use of the Trademark as described in the 
Licensor's Trademark Guidelines." I hope that eliminates some of the 
concerns about undue termination.

A contract is generally considered "expired" when the term of the 
contract is over. In this case, though, it renews automatically unless 
one party takes a positive action to end it, which is sending a notice 
letter 30 days in advance of the anniversary date. So it expires at the 
end of the term, provided notice is given.

In summary, there should be only four events that might cause the 
contract to end: material breach after notice; a legal claim; partial 
invalidity; and the end of term assuming 30 days' notice has been 
provided. If there are any other places I've missed please let me know.

> 2. Why is there no verbiage in the TLA that the the registrant of
> the domain name would be reimbursed for their remaining expenses
> (domain registration/transfer fees) if the domain is registered for X
> amount of time and that time exceeds the life of the license?
> I think this would foster a better relationship with the community by
> doing so, as the expenses would be trivial to the Licensor should a
> domain need to be turned over.
>
If the termination is because the licensee has materially breached the 
agreement, it doesn't seem appropriate for Fedora to pay a breaching 
party for the domain name. Any payment would also be out of Fedora's 
budget, so it's their judgment on under what circumstances and what 
amount would be appropriate. But I agree that it's probably a trivial 
amount, so it shouldn't be a hurdle either way.
> 3. What is done if the trademark is sold or the licensor goes out of
> business?
>
> Big question here, but it should be addressed in the agreement.
If the trademark (or Red Hat) is sold, the new trademark owner would 
acquire these licenses also. It would then have the benefits and burdens 
of the contracts. I believe the way the contract is currently written is 
as favorable as it can be for the licensee. Often a trademark license 
will terminate immediately on change of control of a company, which 
isn't the case here.

If Red Hat goes out of business, then the trademark would be an asset of 
the bankrupt company and disposed of in the bankruptcy. There are 
special rules that apply in bankruptcies that would override any effort 
in the contract to control what happens.
>> Trademark Control: might be a better title for that section as it is
>> what is being discussed.
Changed.
>> However I also believe that was an incomplete thought I jotted down,
>> I meant to make this two points:
>>
>> 4. What would be defined as objectionable by the Licensor?
>>
>> I think that this is self explanatory we need to know what would be
>> considered objectionable by the Licensor.
In a situation where there is content that the Fedora Project or Red Hat 
might find objectionable, they would have to identify how that content 
was a material breach of the terms of the agreement. One place would be 
the sentence that says "Licensee may not make available at the Domain 
Name(s) or Web Pages any content that is unlawful, defamatory, 
infringing, obscene, fraudulent, hateful, or racially, ethnically or 
otherwise objectionable and may not disparage Licensor, Licensor's 
products, or the Fedora Project." These words and phrases - "unlawful," 
"defamatory," "infringing," "obscene," "fraudulent," "hateful," 
"racially, ethnically or otherwise objectionable" and "disparaging" - 
for the most part define specific types of legal wrongs requiring 
specific elements of proof. For example, defamation requires a false 
statement, so if there's no falsity there's no defamation, no matter how 
much Red Hat or the Fedora community as a whole might not like the 
statement. So there are contractual limits on what Red Hat can claim is 
a material breach. I have also removed the part of the sentence that 
said "and may not disparage Licensor, Licensor's products, or the Fedora 
Project." I expect that's one phrase that was most offensive, and also 
subject to more legal ambiguity than the other words, so I removed it.

So I've removed the "disparagement" portion and I've removed a couple of 
sentences (one in paragraph 6 described above and one in paragraph 5 
described below) that perhaps could have been used to claim material 
breach for merely critical language. I'm hoping that removing these 
alleviates the majority of your concerns about unfettered behavior by 
Red Hat or Fedora. If there are other spots still remaining in the 
contract that you believe Red Hat or Fedora could misuse to terminate 
the contract, please let me know.

I'm also happy to have more discussion on how we might be able to define 
what would be unobjectionable if you let me know what kinds of things 
you believe might aggravate Red Hat or Fedora but that shouldn't be a 
basis for termination. For example, constructive criticism of Fedora 
Project policies or processes, or of the performance of either Red Hat 
Enterprise Linux or Fedora distributions of Linux, are two topics that I 
can readily say would not be cause for termination.

>> 5. If Licensor determines that Licensee is using the Trademarks
>> improperly, and/or in connection with goods or services not covered
>> under this Agreement, Licensor will notify Licensee, and Licensee will
>> remedy the improper use within two (2) business days following receipt
>> of such notice from Licensor.
>> What is meant by improper usage of the trademark and/or in connection 
>> with goods or services not covered
>> under this Agreement? Does that mean if the Licensor does not agree
>> with the content of our site based on the topic heading (Content
>> Control) that the license could be revoked? Or if we are not following
>> the trademark guidelines to the letter that the license could be
>> revoked? Keep in mind this applies to many of the sites out there that
>> cover topics that can not be handled by the Fedora Project proper (i.e.
>> Third Party drivers).
I see your point; the sentence created ambiguity where none was 
intended. I took the two sentences out entirely.
>> Also on point 5; two business days is a pretty aggressive schedule for
>> hobbyist sites, I think five business days may be more amiably
>> accepted by the community as a whole as most of us do this in our spare
>> time and with real life commitments two days may become an issue
>> depending on the nature of the request.
>>
I agree, it's been changed to five.

Let me know if there's anything I missed,

Pam