Subject: Re: where to send RFC 5378 license forms

From: Simon Josefsson <[email-masked]>
Date: Mon, 29 Dec 2008 17:19:35 +0100

"Donald Eastlake" <[email-masked]> writes:

> On Fri, Dec 19, 2008 at 5:30 AM, Simon Josefsson <[email-masked]> wrote:
> ...
>> If you are updating a pre-RFC 5378 document that contains trademarked
>> words, it isn't sufficient for the old contributor to have signed the
>> IETF Trust form if the document contains trademarks.  You need to
>> contact him anyway, to get permission to reproduce the trademark.
>>
>> /Simon
>
> You should consult an attorney but, as far as I know, at least in the
> US, there is no magic permission needed to "reproduce" a trademark.
> Usually trademarks are to indicate the source of a product or service
> and as long as you don't mislead people about that, you are fine.

Then what use does section 3.4 of RFC 5378 serve?

3.4.  Rights to Use Trademarks

   Contributors may wish to seek trademark or service mark protection on
   any terms that are coined or used in their Contributions.  The IETF
   makes no judgment about the validity of any such trademark rights.
   However, the IETF requires each Contributor, under the licenses
   described in Section 5.3 below, to grant the IETF Trust a perpetual
   license to use any such trademarks or service marks solely in
   exercising rights to reproduce, publish, discuss, and modify the IETF
   Contribution.  This license does not authorize the IETF or others to
   use any trademark or service mark in connection with any product or
   service offering.

It was co-authored by the IETF attorney, so I suspect it is intended to
serve some purpose.

If it serves a purpose, contributors needs to get the necessary right
and be able to transfer it to the IETF Trust in order to submit a
contribution.  As far as I understand, that would involve talking with
the old contributor if trademarks are involved.

/Simon

---

From: "Contreras, Jorge" <[email-masked]>
Date: Tue, 30 Dec 2008 10:32:12 -0500

> the old contributor if trademarks are involved.

For background, the trademark license was included in RFC 3978 because
someone was concerned about Contributors who submitted documents to IETF
for standards-track use and included trademarked product names in them.
The IETF wanted to ensure that the IETF process would not be hindered by
the Contributor, and also wanted to ensure that the trademarks were
identified so that implementers would not be surprised by the trademark
owner's claim after a standard was adopted.  

While it's true that trademark *infringement* requires an infringing use
(i.e., use on a product or service), and that IETF would likely not be
engaged in such an infringing use, the US also gives owners of "famous"
marks the ability to sue for trademark "dilution", which does not
require an infringing use.  To be absolutely safe, the IETF has
requested the trademark license to avoid any infringement or dilution
suit.

This being said, for the sake of completeness, the Contributor License
should probably include both trademark and copyright grants (thanks to
Simon for identifying this).  However, given that RFC 3978 includes the
same trademark license as 5378, the issue only exists for pre-3978
documents.  Moreover, RFC 2026 requires identification (via IPR
disclosure) of any IPR rights relating to Contributions, which
technically would include trademarks.  If a Contributor did not identify
the relevant trademarks in an IPR disclosure (a rare occurrence), then
one would question the enforceability of those trademarks against IETF.
Pre-2026 IPR policies such as those contained in RFC 1602 and 1310
include wording relating to rights that could also include trademarks.

Thus, I think that including a trademark grant in the Contributor
License would be an improvement, but don't view this as a large issue in
any case.