Subject: draft-ietf-ipr-trademarks-00.txt

From: Simon Josefsson <[email-masked]>
Date: Fri, 04 Feb 2005 00:56:54 +0100

Do this document imply that IETF contributors who use trademarked
names must add (TM) or (R)?

In section 3, it says:

   If no statement has been filed with the IETF about a term or phrase
   that is marked in a contribution as a trademark or service mark it
   is reasonable to assume that references to the term or phrase in
   product text, documentation and advertising material is permitted
   but that using the term or phrase as the name of a product requires
   permission from the holder of the mark.

That paragraph seem unfinished to me.  "Reasonable" to whom?  The
suggested interpretation is not binding for anyone, nor is it the only
interpretation.  At worst, this appear to permit abusive or
discriminatory behavior wrt trademarks.

I would feel more comfortable if all unavoidable uses of (TM) and (R)
markers within IETF documents were accompanied with a clear IPR
statement.

Ideally, there should not be a need for many (TM) or (R) markers, so
this additional requirement do not appear to be costly to implement.

Can I ask what the motivation for this document is?  As far as I know,
there are no legal requirement, in any jurisdiction, to add (TM) or
(R) when writing a trademark in general.

Generally, kowtowing toward trademark owners can be one way to
undermine the free software community.

Thanks,
Simon

_______________________________________________
Ipr-wg mailing list
[email-masked]
https://www1.ietf.org/mailman/listinfo/ipr-wg

---

From: Bill Sommerfeld <[email-masked]>
Date: Thu, 03 Feb 2005 20:01:28 -0500

> markers within IETF documents were accompanied with a clear IPR

This will result in delay in the publication if the draft has to
be held until the trademark IPR claim appears in the IPR repository.

> (R) when writing a trademark in general.

RFC3667 requires that trademarks be acknowledged in RFC's, but is not specific
about the exact form of reference to use.

A disagreement arose as to the meaning of 3667 in the specific case 
where the holder of the trademark is author of an I-D.  The trademark 
holder, citing 3667, wanted to insert text which in my opinion violated 
the no-IPR-claims-in-documents requirement of 3668.  I raised this 
issue through my AD and after discussion the IESG referred the question 
to this WG,  and this document is an attempt to nail down the resolution.

One relevant part of 3667 is:

> 3.4.  Representations and Warranties
> 
>   With respect to each Contribution, each Contributor represents that
>   to the best of his or her knowledge and ability:
> 	...
>
>   e. 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.

When this was pointed out several people on this list agreed that this 
wording was too strong (though the "where reasonable" allows
for some wiggle room).

The wording in draft-ietf-ipr-trademarks-00 would appear to implicitly 
weaken the requirement here as section 2 of -trademarks-00 uses wording 
such as "A contributor may indicate ...".

I'd like to see the new document explicitly amend 3.4(e) of 3667, but I'd 
also rather get this over with quickly..

						- Bill

---

From: Simon Josefsson <[email-masked]>
Date: Fri, 04 Feb 2005 13:57:16 +0100

> be held until the trademark IPR claim appears in the IPR repository.

Is that unreasonable?

To me, it seems that time would be well spent, to get a clear IPR
statement on the trademark permissions.

If it turns out the conditions under which you can use the trademark
is discriminatory or abusive, or if the trademark owner refuses to
publish a statement, I would prefer to know this before a document is
published.  Then a WG is given an opportunity to revise the document
so it do not reference the trademark.  If the WG consensus is to use
trademark with unclear or bad permissions, that would be its
prerogative.

> about the exact form of reference to use.

RFC 3667 never ceases to surprise.  Thanks for the reference.

A question on RFC 3667 would then be: Why is there a requirement to
acknowledge trademarks?  That seem to be misguided advice to me.

> to this WG,  and this document is an attempt to nail down the resolution.

Thanks for giving the background!

> also rather get this over with quickly..

I believe RFC 3667 was poorly put together, and that we now see the
consequences of that.

I can sympathy with getting things over quickly, but can't help but
feel that in the long run there should be a more worked out solution.

Thanks,
Simon

---

From: Bill Sommerfeld <[email-masked]>
Date: Fri, 04 Feb 2005 08:31:46 -0500

> > be held until the trademark IPR claim appears in the IPR repository.

in the case I'm concerned with, yes.

> trademark with unclear or bad permissions, that would be its

In the case I'm immediately concerned with, the consensus that you ask for exists already.

The trademark claims were made known long ago through text in I-D's and mail to
the WG; there was, after extended anguished discussion, WG consensus that the
claims did not warrant a name change and would not be a barrier to deployment
or use of multiple implementations.

					- Bill

---

From: Harald Tveit Alvestrand <[email-masked]>
Date: Fri, 04 Feb 2005 15:03:57 +0100

> discriminatory behavior wrt trademarks.

My worry about not having any such statement is that it imposes a heavy 
system burden in that one must choose between:

1) not identifying trademarks even when one knows that they are present, 
thus hiding information in standards (never a good idea)
2) sending in an IPR disclosure for every trademark in every draft 
submitted, thus introducing a new, heavy load on the IPR notice filing 
sytem, dwarfing its important duty to identify patent disclosures, without 
any corresponding benefit

I believe that in all jurisdictions, there exist norms for which uses of 
trademarks are "non-infringing" - I would like the document to reflect a 
reasonable norm in this area.

I'm sure the specific text can be improved.

                       Harald

---

From: Simon Josefsson <[email-masked]>
Date: Fri, 04 Feb 2005 15:25:33 +0100

> reasonable norm in this area.

That is what I would propose as well.  I think the requirement in RFC
3667 to acknowledge all trademarks is the source of the problem.
Exactly how to acknowledge trademarks is another problem, but
contingent on the first problematic situation.

Rather than updating RFC 3667 to be specific on how trademarks should
be acknowledged, I think it would be better to relax the requirement
to acknowledge all trademarks.

For comparison, RFC 1510bis has a similar issue.  There is no IPR
statement available, and the document acknowledge a specific trademark
owner.  RFC 1510 even forbid commercial use of the trademark.  This
complicate things for implementors.

Thanks,
Simon

---

From: Bill Sommerfeld <[email-masked]>
Date: Fri, 04 Feb 2005 10:38:44 -0500

> to acknowledge all trademarks.

But that doesn't help the case where a person making a trademark claim is one of 
the contributors to the document and claims to be required by trademark law to
acknowledge the mark.

							- Bill

---

From: Simon Josefsson <[email-masked]>
Date: Fri, 04 Feb 2005 18:10:37 +0100

> the contributors to the document and claims to be required by trademark law to

One of the properties of a consensus process is that all wishes cannot
be accommodated all of the time.

If a WG reached consensus on acknowledging a trademark, which I
thought is what you said earlier for this example, then whether a
contributor claim something does not seem relevant to what goes into
document.  It is relevant to the WG discussions that might lead to a
consensus, but if the WG doesn't agree with the claim, I don't see how
the WG would have any problem removing the offending text.

Thanks,
Simon

---

From: Bill Sommerfeld <[email-masked]>
Date: Fri, 04 Feb 2005 13:57:48 -0500

On Fri, 2005-02-04 at 12:10, Simon Josefsson wrote:
> thought is what you said earlier for this example, 

That's not what I said.  

The WG was asked by the trademark owner/original author to rename the
protocol; instead the WG reached consensus that renaming to avoid the
trademark was unnecessary.

To my knowledge, since that point no new information has surfaced which 
would affect that consensus, and nobody seems to be eager to reopen the
question.

IETF working groups are not in a position to evaluate the validity of
trademarks, although my understanding is that many WG participants
did in fact personally investigate the question as part of deciding
whether to support or oppose the proposed renaming.

Even if 3667 3.4(e) were removed, we still have the second half of 
3667 3.3(a)(D) to contend with:

      (D)  ...  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, ...

As I understand it, trademark law puts a burden on trademark owners to mark
their own trademarks in certain contexts.  IETF documents are written
by specific, credited individuals; as such, they could well be interpreted 
as a statement by a contributor rather than a statement by the IETF as a whole.
Passing through trademark identifiers seems only fair.

						- Bill

---

From: Sam Hartman <[email-masked]>
Date: Fri, 04 Feb 2005 16:11:02 -0500

Speaking as an individual (although not as an AD) I cannot support a
requirement that trademark owners must file a disclosure in order to
mark terms (tm) or (r) in documents.

--Sam

---

From: Simon Josefsson <[email-masked]>
Date: Sat, 05 Feb 2005 00:49:55 +0100

> mark terms (tm) or (r) in documents.

What are your reasons?

In particular, what is improved by not having an IPR statement
available?

I assume that trademarks are only needed in IETF documents when there
is a technical need for them.  Otherwise, I can't see how removing the
trademark from the document would affect protocol interoperability,
which is what I imagine the IETF is concerned with.

When a trademark is used for technical reasons, it seems to me that
would have consequences for implementors.  They would need to use the
trademark in order to implement the protocol.  I don't see how not
having an IPR statement would help them.

Generally, I believe it is useful for the IETF to spend some time
making sure standards can be implemented safely by anyone.  When that
goal cannot be reached, which in some situations is understandable, I
believe that the IETF should require IPR statements, to inform
implementors about potential risks.

Leaving the field open for IPR predators do not seem to be consistent
with the IETF missions to me.

Thanks,
Simon

---

From: Simon Josefsson <[email-masked]>
Date: Sat, 05 Feb 2005 01:07:42 +0100

> trademark was unnecessary.

Thank you for clarifying.

> their own trademarks in certain contexts.

Do you, or anyone else, have further references on this?

One question is whether RFCs are included in those contexts.

> Passing through trademark identifiers seems only fair.

I'm not contending that.  I have suggested that if trademark
identifiers are passed through, there should be an IPR statement on
the use of that trademark.

Doing so would be simple for the IETF, and would go a long way to
improve the situation for me, and presumably other free software
implementors.

I believe it is sound advice to be skeptical about the motives of
anyone who submit a protocol standard that contain trademarks but do
not want to make the trademark usage permission public.  Going through
lengths and update RFC 3667 to protect that behavior does not seem
like a good idea to me.

Thanks,
Simon

---

From: "Lawrence Rosen" <[email-masked]>
Date: Fri, 4 Feb 2005 16:20:08 -0800

> mark terms (tm) or (r) in documents.

I'm really surprised how much time this issue is taking. 

Anyone can identify their trademarks in any document they want. Only if the
trademark is used in association with specific goods to identify the source
or origin of those goods does that word, symbol (etc.) serve as a trademark.
For example, I can say that "Windows is a trademark of Microsoft" but that
doesn't mean that I need Microsoft's approval or anyone else's to say that
in this email nor that I need to remove that statement here because they
might not like an open source lawyer talking about Windows. Jello brand
gelatin is delicious and I encourage every IETF contributor to eat it. Just
because I said that doesn't mean I'm marketing this email as Jello and I
don't need the Jello Company's permission to make that statement. I can
acknowledge their trademark or not in IETF specifications.

IETF does not distribute goods or services. You don't need to worry about
third party trademarks. Let those notices stay in the documents as
submitted. Who will care?

/Larry Rosen

Lawrence Rosen
Rosenlaw & Einschlag, technology law offices (www.rosenlaw.com)
3001 King Ranch Road, Ukiah, CA 95482
707-485-1242  ●  fax: 707-485-1243
Author of “Open Source Licensing: Software Freedom 
               and Intellectual Property Law” (Prentice Hall 2004)

> -----Original Message-----
> From: [email-masked] [mailto:[email-masked]] On Behalf
> Of Sam Hartman
> Sent: Friday, February 04, 2005 1:11 PM
> To: Simon Josefsson
> Cc: [email-masked]
> Subject: Re: draft-ietf-ipr-trademarks-00.txt
>

---

From: Fluri Dave <[email-masked]>
Date: Sat, 05 Feb 2005 06:10:23 -0000

> I'm really surprised how much time this issue is taking.

Agreed.

> Anyone can identify their trademarks in any document they want. Only if 
> the trademark is used in association with specific goods to identify the 
> source or origin of those goods does that word, symbol (etc.) serve as a 
> trademark. For example, I can say that "Windows is a trademark of
> Microsoft" but that doesn't mean that I need Microsoft's approval or
> anyone else's to say that in this email nor that I need to remove that
> statement here because they might not like an open source lawyer talking
> about Windows. Jello brand gelatin is delicious and I encourage every
> IETF contributor to eat it. Just because I said that doesn't mean I'm
> marketing this email as Jello and I don't need the Jello Company's
> permission to make that statement. I can acknowledge their trademark or
> not in IETF specifications.
>

It appears to me that altogether too much time has been spent on this 
discussion. Let us mark things with the trademark advisory or not, as the 
case may be. There is certainly no harm in trying to be exhaustive in our 
efforts, if we wish. In any case, if a trademark holder has difficulty with 
the result, I'm sure she'll speak up. When she does, we'd deal with that, 
as appropriate, as well. AFAIK, there is no impediment to acting in good 
faith nor to being responsive to complaints...

Dave Fluri

-- 
Dave's using M2, Opera's revolutionary e-mail client
http://www.opera.com/m2/

---

From: Simon Josefsson <[email-masked]>
Date: Sat, 05 Feb 2005 11:33:46 +0100

> acknowledge their trademark or not in IETF specifications.

Thanks, I think your explanation is consistent with my view of how
trademarks can be used.

> submitted. Who will care?

Adding trademark identifiers, or possibly acknowledgments, send a
signal that this is required.  If it is not required, it is better to
avoid them in RFCs, in my opinion.  Nobody would care, and it means
less work for everyone.

If an IETF document included (tm) and (r), or acknowledgments, people
will use that as an argument to add similar language in other places.
Related arguments have already been used in this thread, e.g., that
trademark owners must protect their own trademarks by adding
identifiers.

Please, let's not proliferate these non-required identifiers and
statements.

Thanks,
Simon

---

From: Harald Tveit Alvestrand <[email-masked]>
Date: Sat, 05 Feb 2005 08:55:27 +0100

> improve the situation for me, and presumably other free software

My personal estimate is that it takes 15 min of processing time at the 
secretariat to deal with an IPR statement. (the example numbers I heard 
were 2 minutes for an IPR statement coming in by Webform and 20 mins for 
one coming in by email - YMMV).

I also guesstimate that it takes a trademark owner about one hour to get 
the information together to file an IPR notice. This is probably VERY low 
for the first notice he has to generate, but the time should fall sharply 
once the trademark owner learns the rules.

If we have 200 trademarks mentioned in RFCs per year, each requiring one 
IPR filing, we have imposed a burden on the secretariat of 50 working 
hours, and a burden on IETF participants of 200 working hours.

If we pick a random number of 100 dollars per working hour, fully loaded, 
the financial burden of your "simple" requirement is 5000 dollars - or the 
total secretariat contribution of approx. 25 IETF attendees.

Of course, we could easily waste more than 200 IETF participant working 
hours discussing the requirement.....

                        Harald

---

From: "todd glassey" <[email-masked]>
Date: Sat, 5 Feb 2005 06:05:44 -0800

----- Original Message ----- 
From: "Simon Josefsson" <[email-masked]>
To: "Bill Sommerfeld" <[email-masked]>
Cc: "Harald Tveit Alvestrand" <[email-masked]>; <[email-masked]>
Sent: Friday, February 04, 2005 4:07 PM
Subject: Re: draft-ietf-ipr-trademarks-00.txt

> > trademark was unnecessary.

Why is a WG making a decision of this type??? - this is clearly an openloop
governance model and its totally unacceptable.

---

From: Bill Sommerfeld <[email-masked]>
Date: Sat, 05 Feb 2005 12:10:59 -0500

> governance model and its totally unacceptable.

This is veering off-topic for this list.  But, for the record:

 - the consensus call was closely supervised by the relevant AD's and the IESG was aware of what was going on.

 - As with any other WG action, the appeals process in RFC2026 (which I believe you are familiar with) could have been invoked; it was not.

 - And, as with any other WG action, nothing is final until the documents are approved by the IESG.  

There were no "open loops".

						- Bill

---

From: Simon Josefsson <[email-masked]>
Date: Sat, 05 Feb 2005 22:12:46 +0100

> total secretariat contribution of approx. 25 IETF attendees.

How much money would you estimate that the SECSH WG spent on
evaluating the unclear trademark situation?  Is it higher than
5000/200=25 dollars?

If Bill's understanding that "many [SECSH] WG participants [...]
personally investigated" the SECSH trademark validity is correct, then
it appears to me that requiring a trademark IPR statement before
adding trademark designators to documents would avoid, or at least
simplify, similar problems in other WGs.

> hours discussing the requirement.....

I am sorry you view it as wasting time.

Thanks,
Simon

---

From: Harald Tveit Alvestrand <[email-masked]>
Date: Sun, 06 Feb 2005 00:30:29 +0100

> I am sorry you view it as wasting time.

Simon,

in one sense, I regard *every* message on the IPR list as a waste of time, 
and *every* engineering minute spent in IPR discussions as the same.

They contribute *zero* to getting better engineering specifications that we 
can use in building a better Internet.

The only excuse I can find for spending any time at all developing 
procedures for handling of IPR is that not having such procedures makes us 
waste more time in the same sort of issues on a case-by-case basis - or let 
us be trapped in situations where we *cannot* do what's best for the 
Internet.

I regard our job in the IPR WG as *minimizing* the total amount of time we 
have to spend on the "overhead" of dealing with IPR.

But that doesn't mean I have to call the time spent "productive".

                    Harald

---

From: Sam Hartman <[email-masked]>
Date: Sun, 06 Feb 2005 15:46:55 -0500

>>>>> "Harald" == Harald Tveit Alvestrand <[email-masked]> writes:

    Harald> My personal estimate is that it takes 15 min of processing
    Harald> time at the secretariat to deal with an IPR
    Harald> statement. (the example numbers I heard were 2 minutes for
    Harald> an IPR statement coming in by Webform and 20 mins for one
    Harald> coming in by email - YMMV).

    Harald> I also guesstimate that it takes a trademark owner about
    Harald> one hour to get the information together to file an IPR
    Harald> notice. This is probably VERY low for the first notice he
    Harald> has to generate, but the time should fall sharply once the
    Harald> trademark owner learns the rules.

I think this estimate is way low.  If I want to get approval to submit
anything that claims to be an IPR disclosure, I'm going to go through
all sorts of lawyer time, educating the lawyers about the IETF and
about our process and requirements.  I'm going to have to discuss
licensing of the trademark etc etc.

Obligating me as a contributor to do this serves no interest I can
see.

--Sam

---

From: Sam Hartman <[email-masked]>
Date: Sun, 06 Feb 2005 15:48:52 -0500

>>>>> "Simon" == Simon Josefsson <[email-masked]> writes:

    Simon> How much money would you estimate that the SECSH WG spent
    Simon> on evaluating the unclear trademark situation?  Is it
    Simon> higher than 5000/200=25 dollars?

    Simon> If Bill's understanding that "many [SECSH] WG participants
    Simon> [...]  personally investigated" the SECSH trademark
    Simon> validity is correct, then it appears to me that requiring a
    Simon> trademark IPR statement before adding trademark designators
    Simon> to documents would avoid, or at least simplify, similar
    Simon> problems in other WGs.

Except that I don't believe your proposed requirement would actually
avoid wasting this time.  I think it might make it even more likely.

---

From: Simon Josefsson <[email-masked]>
Date: Sun, 06 Feb 2005 22:32:48 +0100

> avoid wasting this time.  I think it might make it even more likely.

My proposal would include the (preferred) option of not adding (tm)
and (r), or trademark acknowledgments, at all.  I hope that point
wasn't lost in the discussion.

Since, as far as I know, these identifiers are not required by any law
in any jurisdiction, the preferred approach would "waste" as little
time as possible for everyone.

If someone really want to have the identifiers, or an acknowledge, in
a document (which seem to be the case in SECSH), with my proposal,
they would have to "waste" time preparing the IPR statement, or they
would have to make do without the identifiers/acknowledgment.

Thanks,
Simon

---

From: Simon Josefsson <[email-masked]>
Date: Sun, 06 Feb 2005 23:13:42 +0100

> But that doesn't mean I have to call the time spent "productive".

Harald, this seem to be a rather pessimistic or technocratic view to
me.  The IPR issue appear to have a potentially big effect on all IETF
documents.  Minimizing the "wasted" time might thus improve the
Internet as a whole more than any individual technical progress is
likely to be able to.

I would call IPR activities productive, if your mission is a better
Internet, since IPR activities improve the foundation for all
documents.

If your mission is engineering specifications, I would agree with a
more pessimistic view of IPR work, though.  Perhaps my understanding
of what the IETF is about is flawed.

I still believe adopting the following paragraph, that I quoted
initially in this thread, would contribute to prolonging an unclear
IPR situation.

Perhaps by this we can get back to discussing the document.

Regards,
Simon

---

From: Harald Tveit Alvestrand <[email-masked]>
Date: Sun, 06 Feb 2005 23:22:53 +0100

> wasn't lost in the discussion.

It was lost.

But that option (telling people to not mention trademarks they know about) 
sounds to me like saying "don't mark this rathole - as long as you don't 
know that it's there, you won't stumble into it".

And it wouldn't have saved one iota of time in the SECSH group, I think.

---

From: Harald Tveit Alvestrand <[email-masked]>
Date: Sun, 06 Feb 2005 23:31:35 +0100

My remarks of a few moments ago were overly hasty.

The fact that I'm angry at the way IPR disrupts technical work does not 
excuse intemperate comments about others' attempts to lessen the 
disruption, even when I disagree strongly about whether they will achieve 
their stated purpose.

I'll see if I can say something more constructive after having slept on the 
issue.

                 Harald

---

From: Simon Josefsson <[email-masked]>
Date: Sun, 06 Feb 2005 23:52:45 +0100

>> wasn't lost in the discussion.

My fault.

> know that it's there, you won't stumble into it".

But why should all trademarks in a document necessarily be marked?

I grep:ed for "Windows" in RFCs, and it is used in several documents.
Windows is a trademark, and probably even a widely known one.  I fail
to see how that become a rathole.

My point is this: Identifying and acknowledging trademarks waste time,
don't do it.  When someone want to force their way to add identifiers
or acknowledgments, put the onus on them and have them do work by
filing IPR statements.

> And it wouldn't have saved one iota of time in the SECSH group, I think.

It seems to me that with my proposal a WG would have two options:

1) The term X is used in the document, without identifiers or
   acknowledgment.

2) The term X is used in the document, with identifiers and/or
   acknowledgment, and the contributor has to prepare an IPR
   statement.

If I understood Bill correctly this time (feel free to correct me),
the SECSH problem was that a contributor did not file a proper IPR
statement, but still wanted the trademark to be identified or
acknowledgment, because of some argument that trademark owners must
always identify their own trademarks.  The WG couldn't solve the
problem by referring to IETF policies, but had to spend time
evaluating the situation.

Regards,
Simon

---

From: Bill Sommerfeld <[email-masked]>
Date: Sun, 06 Feb 2005 18:15:08 -0500

On Sun, 2005-02-06 at 17:52, Simon Josefsson wrote:

> always identify their own trademarks. 

No, this is not correct.  Please review the secsh archives for the complete story.

					- Bill

---

From: Paul Hoffman <[email-masked]>
Date: Sun, 6 Feb 2005 18:06:01 -0800

>But why should all trademarks in a document necessarily be marked?

A good question. I have asked trademark lawyers every five years or 
so, "if I am talking about a trademarked name in a document I'm 
writing, and I don't acknowledge the trademark, what damage can be 
done to me". The answer has consistently been, in essence, "none 
unless you are doing it to purposely diminish the trademark owner's 
property rights".

If we believe that legal advice, only in pathological cases do we 
need to acknowledge trademarks in Internet Drafts and RFCs. 
Pathological cases (such as SSH) happen, but so rarely that we are 
safer not creating rules and dealing with those cases only when they 
rear their ugly heads.

>Windows is a trademark, and probably even a widely known one.

An excellent point. Further, there are probably a dozen or more 
similar examples where we do not mark or, even worse, inconsistently 
mark.

>don't do it.

Agree.

>   When someone want to force their way to add identifiers

Agree.

Please note that there is a downside to acknowledging a trademark 
that is quite similar to acknowledging a patent: you are asserting 
that the trademark/patent is valid even though you haven't done the 
legal research to validate that. If I come into a WG and say "I have 
a trademark on WhizzyFoo" and wave around a paper issued to me by my 
local government, that has about the same validity as me saying "I 
have a patent on this process" and waving around a similar paper from 
similar over-burdened bureaucrats.

And, of course, the fact that I have a trademark on WhizzyFoo issued 
by Freedonia, who issues trademarks (and patents) liberally, should 
be taken into account somehow in our deliberations on whether or not 
to say if a term is trademarked. Slope->slippery++

The IETF's policies for the two kinds of IPR should be as nearly 
parallel as possible.

--Paul Hoffman, Director
--VPN Consortium

---

From: "Steven M. Bellovin" <[email-masked]>
Date: Sun, 06 Feb 2005 22:15:49 -0500

In message <p06200707be2c7a9db22d@[10.20.30.249]>, Paul Hoffman writes:

>legal research to validate that.

This, too, is part of our policy:  the IETF doesn't take a position on 
the validity of any IPR, patents or trademarks.  WG participants are 
welcome to make their own judgments.

		--Prof. Steven M. Bellovin, http://www.cs.columbia.edu/~smb

---

From: John Levine <[email-masked]>
Date: 7 Feb 2005 03:37:58 -0000

>But why should all trademarks in a document necessarily be marked?

As Paul says, they shouldn't.  

The practice of acknowledging other people's trademarks is a cargo
cult practice that originated in the 1970s.  The contract that
universities signed with AT&T to get the cheap UNIX license included a
clause that required the contracting universities to acknowledge
AT&T's trademark claim on UNIX.  Then a generation of comp sci grads,
not knowing that those UNIX(tm) references were due to a specific
contract with a particular vendor, leapt to the unwarranted conclusion
that all trademarks should be acknowledged, and invented various
imaginative theories to justify that conclusion.

>My point is this: Identifying and acknowledging trademarks waste
>time, don't do it.

What he said.  I've published a lot of books, and the most we ever did
was to capitalize terms we believed were claimed as trademarks, as a
courtesy to the vendors whose software we were writing about.

Incidentally, (r) and (tm) are cargo cults, too.  US trademark law
says in 22 USC 1111 that you can give notice of a trademark
registration

  by displaying with the mark the words `Registered in U.S. Patent and
  Trademark Office' or `Reg. U.S. Pat. & Tm. Off.' or the letter R
  enclosed within a circle,

But it definitely does not say that (r) is an adequate substitute for
R in a circle, nor does it say anything about tm in a circle, parens,
or anything else.  For copyright fans, 17 USC 401 describes the form
of a copyright notice including C in a circle, but (c) is not an
adequate substitute.

In some cases, document authors may wish to note trademarks that they
or their own employers claim.  In that case I would suggest that they
still don't get to put (r) or (tm) in the text, but in the goop at the
end of the document they MAY put a sentence or two like this:

 KLUDGE is Registered in U.S. Patent and Trademark Office by the
 Kludge Computer Corp.

or

 KLUDGE is claimed as a trademark by the Kludge Computer Corp.

Regards,
John Levine, [email-masked], Primary Perpetrator of "The Internet for Dummies",
Information Superhighwayman wanna-be, http://www.johnlevine.com, Mayor
"A book is a sneeze." - E.B. White, on the writing of Charlotte's Web

---

From: Scott W Brim <[email-masked]>
Date: Sun, 06 Feb 2005 19:12:15 -0500

> markers within IETF documents were accompanied with a clear IPR

Anyone who submits a draft with a TM/SM/R indicated does so because 
(we "reasonably assume") they know that one exists.  They may also 
know that one exists and choose not to indicate it, or choose not to 
file a disclosure (first- or third-party), for various reasons.  There 
are clear rules in law and the IETF about all of this.  The authors of 
the draft are responsible for both of those decisions.  There is no 
need for a rule saying that all TMs/SMs/Rs must be indicated, since 
the relevant issues are already covered elsewhere.  Nor is there a 
*requirement* that every TM/SM/R have an IPR disclosure, because 
third-party disclosures are optional in the IETF, and in some cases 
might be illegal.

Perhaps the vagaries of "reasonable" could be removed.  If something 
is in fact marked, then the paragraph should be about the choices and 
responsibilities of the contributors in doing so.  SOB, does the 
following capture your intent(?):

    Authors may choose not to file a statement with the IETF about a
    term or phrase that is marked in their contribution as a trademark
    or service mark if they conclude that references to the term or
    phrase in product text, documentation and advertising material are
    permitted but that using the term or phrase as the name of a
    product requires permission from the holder of the mark.

(or maybe "may" should be "should"?)

SWB

---

From: John Levine <[email-masked]>
Date: 7 Feb 2005 17:17:53 -0000

>are clear rules in law and the IETF about all of this. ...

Could you refer us to the law that says anything about (TM) or (SM) or
(R)?

I have looked fairly hard, and I do not believe that any such laws
exist, at least in the United States.  There is a law that says
something about the letter R in a circle, but it's entirely optional
at all times, and I see no evidence that (R) is an adequate substitute
for the circle.  I believe that all three are legally meaningless.

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

---

From: Bill Sommerfeld <[email-masked]>
Date: Mon, 07 Feb 2005 15:16:28 -0500

> I'm really surprised how much time this issue is taking. 

I'm not.  This seems to be what happens every time programmers attempt 
to do law.

Lawyers can leave things fuzzy because the entities who
interpret their code are (normally) sentient.

Programmers are used to nailing down every single detail so their
instructions can be executed by an automaton.  This is especially true 
for folks with a network security background...

						- Bill

---

From: Sam Hartman <[email-masked]>
Date: Mon, 07 Feb 2005 18:12:27 -0500

>>>>> "John" == John Levine <[email-masked]> writes:

    John> In some cases, document authors may wish to note trademarks
    John> that they or their own employers claim.  In that case I
    John> would suggest that they still don't get to put (r) or (tm)
    John> in the text, but in the goop at the end of the document they
    John> MAY put a sentence or two like this:

    John>  KLUDGE is Registered in U.S. Patent and Trademark Office by
    John> the Kludge Computer Corp.

    John> or

    John>  KLUDGE is claimed as a trademark by the Kludge Computer
    John> Corp.

I have a preference for this approach.  No IPR disclosures, just a
sentence in the document.

It's my understanding that this working group already reached a
consensus against that approach before I started following.

---

From: Bill Sommerfeld <[email-masked]>
Date: Mon, 07 Feb 2005 19:02:19 -0500

> consensus against that approach before I started following.

That's not clear to me.  
 
> sentence in the document.

It would be best if we could find wording which makes it clear that it's
the contributor speaking here, not the IETF -- the IETF is merely passing
through the possibly jurisdiction-specific trademark assertions of
contributors without endorsing them.

						- Bill

---

From: "Steven M. Bellovin" <[email-masked]>
Date: Mon, 07 Feb 2005 20:12:45 -0500

>consensus against that approach before I started following.

No.  Given that at the time I was both a Security AD and the IPR WG 
chair, I was asked what to do.  After a lot of reading of 3667/3668 and 
talking with others, I concluded that (a) the answer according to our 
procedures was *probably* to use the (TM) or (R) -- those are 
explicitly mentioned in 3667 -- but to put any more details in an IPR 
disclosure, and (b) the question was sufficiently murky that this WG 
should approve a document clarifying it.  The issue was made even more 
complex because there are recent RFCs -- see 3805, which is later than 
3667/3668 -- that contain explicit trademark statements.

---

From: "Lawrence Rosen" <[email-masked]>
Date: Mon, 7 Feb 2005 18:01:52 -0800

> for folks with a network security background...

I was actually trying to be more helpful than fuzzy. The continuing traffic
indicates I failed.

The following is not legal advice to IETF even though it is worded as such
by force of habit. Only your own legal counsel can advise you and he may
very well disagree with me. 

The Trademark Act says:

   "...A registrant of a mark registered in the Patent and Trademark
    Office, may give notice that his mark is registered by displaying
    with the mark the words 'Registered in U.S. Patent and Trademark
    Office' or 'Reg. U.S. Pat. & Tm. Off.' or the letter R enclosed
    within a circle,..." 15 USC § 1111.

[Similar provisions apply for state and common law trademark notice
requirements. I assume other countries are similar.]

The "registrant" is the one who "may" give notice by "displaying" [certain
notices] "with the mark." That latter phrase means placing notices directly
on his goods to which the mark is applied or on packaging and advertising
materials directly associated with those goods. The registrant, therefore,
has the option to mark goods that he sells or distributes. Failure to notice
affects damages he can collect for trademark infringement by third parties. 

The law doesn't prohibit companies from bragging about their trademarks in
other places, including in their IETF contributions. But neither does the
law require third parties like the IETF to notice other companies' trademark
notices and participate in the bragging. 

The law defines infringers as:

   "Any person who shall, without the consent of the registrant
    (a) use in commerce any reproduction, counterfeit, copy, or 
    colorable imitation of a registered mark in connection with
    the sale, distribution, or advertising of any goods or services
    on or in connection with which such use is likely to cause 
    confusion, or to cause mistake, or to deceive; or...." 
    15 USC § 1114.

IETF contributions and IETF specifications aren't goods (only
implementations are goods). IETF specifications bear no trademarks (except
for the "IETF" mark!). IETF does not sell, distribute or advertise goods.
IETF's use of other companies' trademarks within published specifications is
not likely to cause confusion, or to cause mistake, or to deceive as to the
source or origin of goods subsequently produced by third-party downstream
implementers having no relationship to IETF. 

Even if IETF uses other companies' trademarks within IETF specifications
[for clarity of communications about well-understood industry brand names,
as one example], you won't be an infringer as long as you're technically
accurate and not out to confuse or deceive. And once again, you needn't
acknowledge the trademark status of those brand names.

In summary, (1) trademark owners cannot require IETF to place their
trademark notices on IETF's non-goods, and (2) IETF can use any "colorable
imitation" of trademarks in its specifications because specifications
themselves are not goods and as long as such uses are not likely "to cause
confusion, or to cause mistake, or to deceive."

IETF should stay out of other companies' trademark claims altogether and
don't include their notices in published specifications. You're not required
to publish such notices no matter how much those companies may want you to.
Use trademarks with impunity in your published specifications where useful
and accurate for technical clarity. 

On the other hand, if you're a downstream implementer of an IETF
specification, have your attorney conduct a Google and trademark search
before you place a trademark on your goods. It is your responsibility to
search the marketplace and to avoid becoming a trademark infringer.

/Larry

Lawrence Rosen

---

From: Scott W Brim <[email-masked]>
Date: Tue, 08 Feb 2005 12:04:31 -0500

On 2/7/2005 20:12, Steven M. Bellovin allegedly wrote:
> The issue was made even more

I took a quick look at 3805 ... is a string in a comment in a MIB that 
looks like a trademark statement the same as an actual statement in 
the main text of the RFC?  I don't think so.  I think it's a 
completely different case -- it's about what should be in the MIB, a 
WG decision, not a question of IPR procedures for contributions.  No?

swb

---

From: Scott W Brim <[email-masked]>
Date: Tue, 08 Feb 2005 12:07:10 -0500

> Could you refer us to the law that says anything about (TM) or (SM) or

That was based on previous statements in this thread.  I was waiting 
for people who made those statements to respond, but I guess they 
won't.  I'm not a lawyer so I'm not going to make assertions.  Maybe 
they'll speak up now?

swb

---

From: "Steven M. Bellovin" <[email-masked]>
Date: Tue, 08 Feb 2005 12:54:48 -0500

>WG decision, not a question of IPR procedures for contributions.  No?

OK -- see 2835, which is the latest standards-track RFC.

My point isn't that any of these things are right or wrong, or 
permitted or excluded by our procedures.  This is a WG issue because it 
was unclear to a contributor, a WG chair, the IPR chair, and more than 
one AD.

---

From: Bill Sommerfeld <[email-masked]>
Date: Tue, 08 Feb 2005 14:10:17 -0500

> WG decision, not a question of IPR procedures for contributions.  No?

so if the contributor in my case was happy with putting the TM notice in an
embedded code fragment we could just move on and paste it into the docs without
waiting for the IPR WG to converge?  cool....

					- Bill

P.S. I'm not serious.  This seems like the wrong hair to split -- we'd be 
better off treating non-functional comments in embedded source fragments in IETF
documents the same as regular body text.

P.P.S. by functional comments I mean hacks like /*NOTREACHED*/ and the 
way in which javascript hides inside html comments.

---

From: Bill Sommerfeld <[email-masked]>
Date: Tue, 08 Feb 2005 15:33:57 -0500

> 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.