On Wed, 9 Aug 2000, Kal Lin wrote:
> Many of us are concerned about the implications of the new
> clause with respect to our ability to produce legitimate
> OGL materials. The first problem is being able to identify
> items throughout the text by a trademarked name such as a
> Colt revolver and Smith&Wesson ammunition. Or to make a
> passing reference such as "Our hero once even defeated the
> great [insert trademarked hero] in a contest of strength."
The new clause does little to change current behavior. Just because the
clause would give trademark holders a powerful claim, there is absolutely
no evidence that any trademark holder would use that power except for
where they feel their trademark is being devalued. Since they could sue
in such a case without the clause, I don't see the clause changing actual
behavior in the instance you are referring to. Smith&Wesson isn't likely
to waste money to stop someone from simply refering to their products;
anyone who feels such a passing reference to their trademarked hero
infringes on their product can sue currently.
> A second problem is legitimate uses of the trademark that
> does not refer to the same franchise. You repeatedly dismiss
> that by saying one cannot trademark a term or a phrase. And
> I understand. But that does not mean a trademark owner would
> not see someone else using the term in a different way as
> possibly causing consumer confusion. The new clause gives
> them a way to stop such usages without having to actually
> demonstrate consumer confusion in a trademark case.
No it doesn't. The clause (or what Ryan has given as the possible
clause) prevents the use of a trademark. In order to stop your use, the
trademark holder has to be able to show you are using a trademark, not
just a word. The trademark holder may not have to demonstrate confusion,
but they do have to show you actually used a trademark. Clearly, this
means that normal use of words is unaffected by the proposed clause.
> Example: Your Snakemen are mean and evil. You assert a
> trademark on Snakemen. Never having seen your Snakemen, I
> write about some cute and cuddly Snakemen. You use the new
> OGL clause to make my work disappear. (Yes, I know standing
> might be an issue but there are plenty of ways to obtain
> standing if open gaming really is a community building on
> each other's work). Even if you argue the new clause was
> not meant to prevent this type of usage, the existence and
> current expression of the clause certainly leaves the way
> open for someone to interpret it that way. The new clause
> is intended to protect trademarks. The cute and cuddly
> Snakemen are damaging the mean and evil Snakemen trademark.
> Therefore, the new clause should be applicable.
>
> Note that I use "damaging" in the previous paragraph. The
> cute and cuddly Snakemen are not causing market confusion.
> They are damaging the mean and evil Snakemen trademark by
> being so damn popular that no wants to buy or even cares
> about the mean and evil Snakemen.
Here's the biggest issue I have with Kal's examples - he keeps using what
is a highly questionable term for a valid trademark "Snakemen". Even
assuming one could be granted a trademark of such a term, if you read the
U.S. Patent & Trademark Offices information, you'll see that being awarded
a trademark does not guarantee that your trademark will be valid upon all
atttempts to enforce it. Using such a generic term as "Snakemen" is one
of those instances where it is quite possible that even a registered
trademark will not be upheld by the courts. And if you change Kal's
trademark to something more specific than "Snakemen" such as "Slithr'sss",
the example falls apart as it's 1)highly unlikely that independent people
will create such conflicting trademarks & 2)if they do this is exactly
what trademark law is suppose to protect, meaning that the new clause
doesn't change behavior.
> A third problem is companies asserting/obtaining a trademark
> on something that many people feel they should be allowed to
> use (and normally are allowed to use without the new clause).
> Suppose someone trademarks a set of gods from some mythology
> because they have a series of modules on these gods. That
> effectively takes those gods away from the rest of us.
Could you provide a better example? The one you provides is invalid under
trademark law as it is impossible to trademark an existing mythology. In
fact, this paragraph seems to be confusing the issues of copyright with
those of trademark. You could trademark the names in a mythology, but not
to refer to the gods of that mythology. If you are refering to someone
creating their own mythology and trademarking the names of the dieties,
then you are incorrect in saying that anyone would normally be allowed to
use those gods. They would be stopped by both trademark and copyright
law. In my view, this problem is non-existent since I can't think of a
single valid example of something that people can use now that someone can
trademark and prevent use of under the clause that they couldn't trademark
and prevent use of without the clause.
> A fourth issue is the new clause only serves companies with
> valuable trademarks. For some of us who do not want to use
> anyone else's trademarks or assert trademarks ourselves, the
> new clause in the OGL does not serve us. In fact, we would
> think twice about contributing anything into open gaming,
> if anyone who builds on our modules can prevent us from building
> on theirs by aggressive use of trademarks.
This one I just don't understand the logic of at all. The proposed clause
is bad because it protects something that is valuable. It does nothing
for those who have no interest in trademarks. Yet it could drive away
people who want to use other people's trademarks. The people in your
third sentence are not the same people in your second, yet you speak as if
they were. Aggressive use of trademarks under current law will prevent
you from building on the works of others. Building on another's
trademarks is not something protected under current trademark law. Not
all aspects of the OGL are going to relevant to everyone using the OGL;
that's true with or without the proposed clause. The people in your
second sentence are not negatively effected by the proposal. And you
appear to have missed Ryan's message where he explained that the new
clause does not change the fact that anyone who uses a trademark in open
content is still opening up the use of that trademark.
> I do not know if the final clause will exhibit all of these
> problems. However, there are probably also problems that none
> of us have thought of yet (and probably ones I failed to list
> in this message).
>
> I also disagree that such a clause is "almost required" for the
> D20STL to have any value. The value in the D20 logo will mostly
> be determined by how much and what kind of promotion WotC puts
> behind it. You can only use the D20 logo under the D20STL.
> If WotC pumps tons of marketing into D&D and leave consumers
> with the impression that D20 is a lesser distinction then what
> you say is true. But WotC can certainly promote the D20 logo and
> give it significant value, if they so choose.
No, under the reading you have given to trademark law and the proposed
language, I can use the D20 logo under the OGL, without agreeing to the
D20STL. All I have to do is say this product is compatible with D20.
Since most OGL will be "compatible" (remember, this word doesn't have a
definition yet with regard to the rpg industry) with D20, this is
currently permissible under trademark law. In fact most OGL material will
likely be more "compatible" with D20 than D&D. Because of this anyone
publishing under OGL would be intelligent to use such advertising since it
provides them with the benefits of D20 (for as long as any benefits exist)
without the requirements. However, the use of the D20 trademark by people
not under the D20STL will likely result in the loss of any value from the
D20 trademark.
Sure, under current law WotC could actively prosecute against this type of
use of the D20 trademark. And they might even be successful. My
understanding of how MS enforces the use of their compatibility logo is
through means other than trademark law (access to code, monopolistic
pressures) so it's not clear if just current trademark law would protect
the D20 logo. And it is rather disengenuous for anyone to say that it is
permissible to use "compatible with D&D" and not permissible to use
"compatible with D20".
later,
alec
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