IANAL. As far I know our registered trademark can become void, if we are not careful about its usage. We have open ticket requests regarding edited/invented Gentoo logos which may collide with the trademark. The debian project uses two logos for this case: https://www.debian.org/logos/ One logo may be changed as artwork. The other is the legal trademark. I think the only clean solution is to use two logos as they do. Could the foundation please ask a lawyer about this for clarification? Reproducible: Always
Speaking here as both a member of the licenses team, and a Trustees, but absolutely I am not a lawyer (IANAL), and nothing below should be construed as legal advice in any way. First, some background: The logo was also Creative-Commons licensed from the start, predating the trademark. Being granted a trademark does NOT remove the creative-commons rights and privileges around usage of the logo. Gentoo had a long history of modified versions of the logo, even before the trademark was granted. The current name & logo usage policy was based on the Django policy, and both of them were reviewed by lawyers (pro bono, but still). I've read some of the lawyer-privileged exchanges about the logo, since I'm the person that has the real dead tree trademark certificates and associated documentation: While the creative-commons licensing did cause delays in granting the trademark, it was ultimately approved (applied for in 2003, granted in 2006). I agree that it's NOT in present best practice to have CC-licensed trademark logo, but much of the present state of legal art and advice has come SINCE the trademark was granted: https://creativecommons.org/faq/#could-i-use-a-cc-license-to-share-my-logo-or-trademark Creative Commons trademark policy: https://creativecommons.org/policies/#trademark (because if the Creative Commons org themselves doesn't license their trademarks as CC, who else would?) So what CAN'T be done about it? - We cannot re-license the Logo. - We can't retroactively take it back any uses of it. What CAN we do about it? a) Not worry to much about it AND/OR b) Pursue any violations of the logo usage policy AND/OR c) Create a new version of the logo, with a restrictive license and trademark that specific version AND/OR d) abandon the trademark To help decide between these, what does "careful about usage" really entail? In a situation where the logo was trademarked and not freely licensed, it would be chase down any modifications and/or unauthorized uses of the logo, and make them take it down and/or pay for trademark usage, possibly via civil legal damages. How would Gentoo go about that? To quote the USPTO's own page, https://www.uspto.gov/about-trademarks, with emphasis added (Gentoo would be the plaintiff): "To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and ***that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks***." Please do go and read that entire page about the nature of "trademark confusion", as well as the further risk of "trademark dilution". Now that the direct risks are identified, how do they fit into our policies? If any use of the Gentoo marks is in line with the name & logo policy, and includes attribution to Gentoo as required, then it would NOT cause confusion, nor dilution. If any use of the Gentoo marks is NOT in line with the name & logo policy, then we're into interesting discussions. Confusion first: somebody makes a widely successfully product with a similar logo, and we get lots of misdirected mail from people who think we're related to product. While this is a clear case of confusion, it can be dispelled with better branding, and probably leads to a settlement between the parties (really, the party with more money winds, which isn't the Foundation or most umbrellas we would wind up with, other than the Linux Foundation). Dilution is a bit harder: It needs to meet very strict standards about how well known the mark is. I do not believe that the Gentoo name or logo have EVER been sufficiently well-known to qualify for a dilution claim. Good reading is at https://en.wikipedia.org/wiki/Trademark_dilution (Note the court finding that "Charbucks Blend" from a New Hampshire company did not dilute or blur the trademark "Starbucks"). So what should we do based on those 4 options? a) not worry too much b) keep an eye out for other violations of the logo policy that could constitute Trademark Confusion, simply because we don't want to be sued by the other party, and would like to be proactive What we're not going to go & why c) Create A New Trademark: we don't have the budget for the direct legal costs and the filing fees; and the potential gain is very small; we also don't really have anywhere distinct to use it to qualify in the first place d) Abandon the trademark: It's still usable for the moment, esp. in defense against claims that we might be infringing on some other trademark registered later. The marks are up for renewal in 2005 & 2006 respectively, and then again in 2035/2036. If Gentoo is still relevant in 2035, we'll probably just renew it again.
AIUI copyright and trademark protection are pretty much orthogonal to each other. The text or image of a trademark need not even be copyrightable. For example, the Deutsche Bank logo (https://commons.wikimedia.org/wiki/File:Deutsche_Bank_logo_without_wordmark.svg) consists of simple geometric shapes and therefore doesn't reach threshold of originality. Or, one cannot claim copyright for the work "apple" but still is can be protected as a trademark. Another example, the GNU project's "Gnu head" https://www.gnu.org/graphics/agnuhead.html is protected as a trademark. At the same time, it is triple-licensed under || ( FDL-1.3 FreeArt CC-BY-SA-2.0 ). I'd assume that FSF had checked by a lawyer that this doesn't derogate from the trademark protection.
I had a typo in my years, 2005/2006 is when the trademarks were first registered. "renewal in 2005 & 2006 respectively" => "renewal in 2025 & 2026 respectively"
Also note that in 2016 the logo was relicensed from CC-Sampling-Plus-1.0 to CC-BY-SA-4.0 (and I was the person who was pushing for it). There is some discussion and references in bug 293309 comment #23 and following. About the choice of that particular license: While the 3.0 versions of the CC licenses are silent about trademark issues, CC-BY-SA-4.0 clarifies in section 2.b.2.: "Patent and trademark rights are not licensed under this Public License." (In reply to Robin Johnson from comment #1) > So what should we do based on those 4 options? > a) not worry too much > b) keep an eye out for other violations of the logo policy that could > constitute Trademark Confusion, simply because we don't want to be sued by > the other party, and would like to be proactive > > What we're not going to go & why > c) Create A New Trademark: we don't have the budget for the direct legal > costs and the filing fees; and the potential gain is very small; we also > don't really have anywhere distinct to use it to qualify in the first place > d) Abandon the trademark: It's still usable for the moment, esp. in defense > against claims that we might be infringing on some other trademark > registered later. The marks are up for renewal in [2025 & 2026] > respectively, and then again in 2035/2036. If Gentoo is still relevant in > 2035, we'll probably just renew it again. +1
+1(In reply to Ulrich Müller from comment #4) > Also note that in 2016 the logo was relicensed from CC-Sampling-Plus-1.0 to > CC-BY-SA-4.0 (and I was the person who was pushing for it). There is some > discussion and references in bug 293309 comment #23 and following. > > About the choice of that particular license: While the 3.0 versions of the > CC licenses are silent about trademark issues, CC-BY-SA-4.0 clarifies in > section 2.b.2.: "Patent and trademark rights are not licensed under this > Public License." Thanks for the clarification. on the gentoo logo page stil say that the logo is licensed under CC-BY-SA/2.5. https://www.gentoo.org/inside-gentoo/artwork/gentoo-logo.html > > > (In reply to Robin Johnson from comment #1) > > So what should we do based on those 4 options? > > a) not worry too much > > b) keep an eye out for other violations of the logo policy that could > > constitute Trademark Confusion, simply because we don't want to be sued by > > the other party, and would like to be proactive > > > > What we're not going to go & why > > c) Create A New Trademark: we don't have the budget for the direct legal > > costs and the filing fees; and the potential gain is very small; we also > > don't really have anywhere distinct to use it to qualify in the first place > > d) Abandon the trademark: It's still usable for the moment, esp. in defense > > against claims that we might be infringing on some other trademark > > registered later. The marks are up for renewal in [2025 & 2026] > > respectively, and then again in 2035/2036. If Gentoo is still relevant in > > 2035, we'll probably just renew it again. > > +1 +1 not worry too much
Thank you all for weighing in on this issue. In my opinion, it would be good to see our community projects include more creative artwork and Gentoo themes. The "Gentoid" logo for Gentoo on Android[1] and the GKernelCI logo[2] are perfect examples. They help the Gentoo community by providing a visual identity to our some of our sub-projects beneath the Gentoo umbrella. Also, they are fun. I'm in much agreement with Gentoo's founder Daniel Robbins: Gentoo should be fun. [1] https://wiki.gentoo.org/wiki/File:Gentoid.svg [2] https://raw.githubusercontent.com/GKernelCI/Gassets/main/img/gkernelci_main.svg
