Thanks very much for your replies. Gerber On Thu, 2010-11-18 at 08:59 -0800, r...@packetlaw.com wrote: > On Nov 18, 2010, at 7:31 AM, Gerber van der Graaf wrote: > > I have a question concerning trademark name infringement for a GPL > > software I and a colleagues are working on. The company OpenCFD > > (http://www.cfd-online.com/) issued software for Computational Fluids > > Dynamics (CFD) called 'OpenFOAM' under the GPL license > > (http://www.openfoam.com/). The abbreviation FOAM is an invent of the > > company and means "Field Operation And Manipulation". > > FYI, OpenCFD Limited appears to have only the single U.S. registered > trademark "OpenFOAM" (registration no. 3,462,576). This does not rule out > common law trademarks. > > > > We have modernized the entire configuration / compilation system of > > this software using CMake. In order to publish our improvements we > > have issued the software package under the name 'FreeFOAM', referring > > to the company, the original software and keeping all author rights in > > the existing files (http://freefoam.sourceforge.net/). > > In that context, you may have valid defenses to likelihood of confusion > arguments... > > > > Recently another user started the "OpenFOAM Documentation Project" > > (ODP) and promptly received a letter of thread to bring the project to > > court because of trademark infringement. > > Do you happen to have a copy of this letter, or the language they used? No, I do not have it by myself. But as we are joining our eforts, it might be a good idea to ask for it at the author of ODP. > > BTW, I think you mean "threat," not "thread." Sure, apologizes. English is not my native language. > > > > 1) Wait until we will receive such a thread. The advance is we can > > keep the FreeFOAM name that associates the project with the original > > OpenFOAM project and will not break-up its large user community. The > > drawback is uncertainty and fear. > > > 2) Change the name of the project. Would this be sufficient to avoid > > trademark name infringement? > > Not necessarily. OpenCFD could always, if they were so inclined, pursue the > matter based on previous infringement. How likely they are to do so is a > question I don't think anyone here can answer, but litigation is annoying and > expensive. Most companies prefer to make things go away with a > cease-and-desist letter. > > > > 3) Or is it required to change the name of the project and all its > > libraries, binaries, file names etc. that include the word 'FOAM'? This > > would bring a lot of work and maintenance, among synchronization with > > the OpenFOAM project. Probably the history of the git repo will be > > (partly) lost. > > Under-the-hood stuff (libraries etc) that the end user never sees, likely > don't need to be changed. Programmers are unlikely to be confused as to the > origin of the GPL software, especially if they're the ones downloading them > from SourceForge. It's not a "zero" risk, however. > > > > 4) Another option is to write the company asking for a letter of > > declaration it will not pose a thread against the FreeFOAM project > > because of trademark name infringement. Is this done before and, if > > so, what are the experiences? Will such a letter hold in court once > > the company will decide to pose a legal thread? > > A letter stating an intent not to sue might be useful in some contexts > (inducement, possibly laches, etc), but isn't all that binding. It's better > than nothing. But if you can get one, I'd recommend an affirmative grant of > rights to use the FreeFOAM mark (and they'll almost certainly want it to be > crystal clear that OpenCFD is not affiliated, the source provider, etc., of > the FreeFOAM project). > > > > Some other questions remain: > > Will the domain name for a software project give legal rights as primary > > owner of a (trademark) name? Or, to put it in other words: is legal > > trademark registration of GPL software required? If so, how to do this? > > What are the costs? > > I'm not sure what you're asking here. Domain names and trademarks have > interfaces between them ... Registering a domain name and using it can be > evidence of use in commerce for a secondary meaning showing, trademark > ownership gives you certain presumptions in, e.g., UDRP proceedings and > 1125(d) rights, etc. But registering a domain name by itself does not convey > any affirmative legal rights. > > Also, registration of a trademark is preferred (a registered trademark is > presumed to be valid, etc), but not required. You can assert common-law > trademark rights without registration, in the U.S. at least. It'll be more of > a slog, but it's doable. > > > Any recommendations or suggestions are welcome. > > Talk to a trademark attorney. Get real legal advice. (I am an attorney, I do > do trademark work, but this is not legal advice and does not create an > attorney-client relationship.) I will do that. Thanks again for your help. > >
-- To UNSUBSCRIBE, email to debian-legal-requ...@lists.debian.org with a subject of "unsubscribe". Trouble? Contact listmas...@lists.debian.org Archive: http://lists.debian.org/1290103318.3842.23.ca...@solo
