Subject: RE: On not using (r) and (tm)

From: "Contreras, Jorge" <[email-masked]>
Date: Fri, 11 Feb 2005 22:56:34 -0500

Actually, the situation would be fine if simply left
the way it is handled today under RFC 3667:

1.  No trademark designations/claims should be made 
in IETF standards track documents,

2.  If someone wants to claim trademark rights in a name, they 
can do so in a separate IPR statement.

This approach is perfectly legal (remember, those (TM) and
(R) symbols are optional, and don't really even apply when the
marks are used in IETF documents) and would eliminate 
the whole dispute over (R), (TM) and the rest of the trademark 
notifications being discussed.

This doesn't solve the problem of people claiming trademark
rights in names of standards, but neither would the use
of (TM) symbols throughout documents.

-----Original Message-----
From: [email-masked] [mailto:[email-masked]]On Behalf
Of Bill Sommerfeld
Sent: Tuesday, February 08, 2005 3:34 PM
To: John Levine
Cc: [email-masked]
Subject: Re: On not using (r) and (tm)

On Sun, 2005-02-06 at 22:37, John Levine wrote:
> >But why should all trademarks in a document necessarily be marked?
> 
> As Paul says, they shouldn't.  

I'm now firmly convinced that the draft needs to be framed with:

 - forget we ever wrote 3667 section 3.4(e).  contributors need not call out  trademarks; if they feel the need, they should do it this way: ....

But I think we need to document the low-friction region of the process in addition
to the boundaries;  Perhaps we could also say something along the lines of:

 - IETF protocols must be implementable by many.  As a result, protocol names
need to be used by many and will tend to be used generically.

 - Trademarks are complex and are often not well understood by engineers.  A name
collision between a proposal you submit to the IETF and a trademark you use is likely
to cause delay in the IETF.  We hear this might also make it easier for you to
accidentally damage your trademark.

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---

From: Bill Sommerfeld <[email-masked]>
Date: Fri, 11 Feb 2005 23:38:40 -0500

> in IETF standards track documents,

are we looking at the same rfc3667?

every time I've looked at it, it's said:

	   "When reproducing Contributions, the IETF
           will preserve trademark and service mark identifiers used by
           the Contributor of the Contribution, including (TM) and (R)
           where appropriate," (section 3.3(a)(D))
and:

      "All trademarks, trade names, service marks and other proprietary
      names used in the Contribution that are reasonably and personally
      known to the Contributor are clearly designated as such where
      reasonable." (section 3.4(e))

						- Bill

---

From: Simon Josefsson <[email-masked]>
Date: Sat, 12 Feb 2005 11:01:06 +0100

> notifications being discussed.

I like that approach, and would support it.

Having simple procedures for this save time for everyone, and I
believe the above approach is better than what's in
draft-ietf-ipr-trademarks-00.txt currently.

Regards,
Simon

---

From: "todd glassey" <[email-masked]>
Date: Sat, 12 Feb 2005 05:23:18 -0800

Jorge - for the record, when you are speaking as the IETF's Attorney could
you identify yourself as such. The intent is to make your firm directly
accountable for the advice you give since that is the purpose of retaining
you professionally. In instances where you are participating as a normal
mortal, which BTW I think would be a conflict of interest, you should just
sign messages regularly... The problem is in determining what is official
guidance from the Counsel's office and what is not.

Todd Glassey

-----Original Message-----

 - forget we ever wrote 3667 section 3.4(e).  contributors need not call out
trademarks; if they feel the need, they should do it this way: ....

But I think we need to document the low-friction region of the process in
addition
to the boundaries;  Perhaps we could also say something along the lines of:

 - IETF protocols must be implementable by many.  As a result, protocol
names
need to be used by many and will tend to be used generically.

 - Trademarks are complex and are often not well understood by engineers.  A
name
collision between a proposal you submit to the IETF and a trademark you use
is likely
to cause delay in the IETF.  We hear this might also make it easier for you
to
accidentally damage your trademark.

---

From: "John R Levine" <[email-masked]>
Date: 12 Feb 2005 09:32:17 -0500

> > the way it is handled today under RFC 3667:

With the understanding that this was the pre-3667 rule, I concur.

> > notifications being discussed.

Regards,
John Levine, [email-masked], Primary Perpetrator of "The Internet for Dummies",
Information Superhighwayman wanna-be, http://iecc.com/johnl, Mayor
"I dropped the toothpaste", said Tom, crestfallenly.

---

From: Simon Josefsson <[email-masked]>
Date: Sat, 12 Feb 2005 15:51:40 +0100

> With the understanding that this was the pre-3667 rule, I concur.

I'm not sure we can call it the pre-3667 rule either.

Trademark claims were made in documents before RFC 2026 (e.g., RFC
1510), and also between RFC 2026 and RFC 3667 (e.g., RFC 2505, RFC
2835).

Whatever we call it, I agree that this is a good rule.  I would even
say it is better than my proposal, since it appear to be simpler to
implement.  Simpler means saving time for the IETF, which was an
argument put forward earlier.

I fear some might not accept the rule though, and want trademark
identifiers in documents anyway.  If that is so, my proposal (i.e.,
require IPR statements in order to be able to add identifiers in
documents) appear to me to be the simplest approach.

>> > notifications being discussed.

Thanks,
Simon

---

From: Bill Sommerfeld <[email-masked]>
Date: Sat, 12 Feb 2005 13:15:59 -0500

> I'm not sure we can call it the pre-3667 rule either.

For once I agree on this point.  Existing practice has been to pass through
most trademark claims but remove others.

There's also at least one open legal question:

When documents are limited to containing glyphs from the ASCII 
character set, is the ASCII character sequence "(" "R" ")" a legally 
acceptable representation of the R-in-a-circle glyph which indicates
trademark registration?   Its use in rfc3667 survived legal review, 
while others (all non-lawyers as best as I can tell) claim otherwise.  

With regards to (tm) vs (r), the authoritative-seeming material I've found
is consistent on a few points:

 - "(tm)" appears to be entirely optional.  The most charitable interpretation 
I can make of it is that it's a courtesy sign to the reader, along the lines of
"danger, you may be entering a minefield".  As best as I can tell, the properties of
the minefield are not changed by the use of (tm).

 - the R-in-a-circle glyph is also optional, but it appears that 
consistent use *by a trademark registrant* disallows a particular "innocent
infringement" defense to infringers.  There appear to be a few other 
trademark-registrar-dependent magic phrases (such as "reg. u.s. pat. off.")
which are claimed to be equivalent to R-in-a-circle.

One site claims: 

    "Failure to put the notice on a registered trademark can greatly
    reduce the possibility of recovering significant damages if it later becomes    
    necessary to file a lawsuit against an infringer." [1]

Based on this and on several private communications from an IETF contributor I conclude that IETF contributors holding a trademark registration denied the right
to use circle-R or equivalent might find it necessary to withdraw their submission or
have their work go uncredited.

						- Bill

[1] Found through google at the unwieldy URL http://www.nolo.com/article.cfm/ObjectID/82AB4042-68AE-4043-B656554BB65C561F/catID/D8932879-DC34-43DF-BF65FC92D55FEE5D/310/274/ART/

in an article titled "Enforcing your Trademark Rights" by Richard Stim

---

From: "John R Levine" <[email-masked]>
Date: 12 Feb 2005 14:17:16 -0500

> while others (all non-lawyers as best as I can tell) claim otherwise.

I've seen fairly persuasive arguments that (C) is not an adequate
substitute for C-in-a-circle copytight notices. See for example
http://www.copyright.gov/circs/circ1.html#fnv and
http://www.copyright.gov/circs/circ03.html which warn against variant
forms of the C-in-a-circle mark. I'd think the same principle would apply.

>  - "(tm)" appears to be entirely optional.

Right.

> infringement" defense to infringers.

Also right, but R-in-a-circle is not the only kind of notice, and ASCII
doesn't permit R-in-a-circle anyway.

That's why I suggest that we permit a trademark notice at the end, not
gooping up the text of the document, for trademark owners who want to put
people on notice.  The reason that R-in-a-circle exists is so that
trademark owners can squeeze the notice into places with limited space,
like package labels.  Limited space is unlikely to be an issue in RFCs,
where there is plenty of room at the end for the phrase "Registered in
U.S. Patent and Trademark Office" which is unambiguously valid.  So
actually, we're doing them a favor although I fear that there are plenty
of lawyers too ill-informed to understand that.

Regards,