1. The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute).
2. The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol).
3. The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags.
The use of the logo in this case is not necessary to identify Ubuntu. If the site in question had just used the name "FixUbuntu", it is doubtful Ubuntu would have cared. But not only do they have this vaguely official-sounding domain name, they also had the Ubuntu logo as the most prominent art on the page and did nothing to disclaim the association.
In response to the complaint, the site has dropped the logo and has also added a disclaimer. I'm betting Ubuntu will be OK with this.
See section "Commentary and criticism" on the page below
The fact that you are engaged in commentary or criticism does not automatically protect you from claims of infringement. If this had just been an entry on a blog, that would be one thing, but instead it was a standalone website where the only branding was the name "Fix Ubuntu" and the Ubuntu logo, and no attempt was made to disclaim the association. Surely you can see why Canonical might be concerned.
(Again, none of this is meant to constitute legal advice — I'm just explaining why I don't think Canonical was being unreasonable.)
As kcorbitt says, the trademark law requires ongoing enforcement or the owner will lose the legitimity. Have you checked whether they'd let you keep talking about Ubuntu? IANAL, but wouldn't it be correct to keep a website named "Fix Ubuntu" in a domain name such as privacywatch.com? This way they keep the integrity of the brand for the consumers and you stay in the ecosystem.
http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm...
http://askubuntu.com/questions/192269/how-can-i-remove-amazo...
Your settings tweaks don't work on 12.04 - any idea how I would go about disabling this?
(The settings schema "com.canonical.Unity.Lenses" doesn't exist on my system.)
The protection for trademarks is thus much more lax than the one that you have with copyrights: trademarks are protected only for limited purposes, whereas the protection is broader for copyrights.
The protection was extended in 1996 to forbid some uses of trademarks that however would not be confusing to customers. The owner of the trademark is able to sue someone that use its trademark in such a way for trademark dilution - and not infringement. However, this dilution statute does not apply to noncommercial uses of a famous trademark, such as for news reporting, criticism, commentary, and parody.[2]
As fixubuntu.com doesn't sell any goods or services, there is no trademark infringement. In addition, as it does not show ads nor link to commercial websites, a court would most likely recognize it as non-commercial. If it is still seen as a commercial venture, it would still be protected by the "commentary or criticism" protection.
The fixubuntu.com website could hardly be said to be "festooned" with the logo considered it was used only once. But removing it, despite what I said earlier, was still prudent. Indeed, the problem with trademark law is that even if you're not infringing or diluting, it is really hard to get a trademark lawsuit dismissed quickly, and you could easily get dragged in a long litigation you have the financial situation to fight.
For full disclaimer, IANAL, but I have a strong interest in law, have an education in French public law (which is VERY different from american law) but follows regularly the debate on the popehat.com website on free speech related litigations.
[1] http://www.law.cornell.edu/uscode/text/15/1114 As you can see in the definition of the trademark infringement for registered trademarks, the use of the trademark has to be in relation with the sale of a product.
[2] http://www.dmlp.org/sites/citmedialaw.org/files/15USC1125.pd... See (a)(1) for the definition of trademark dilution and (a)(3)(A)(ii) or (a)(3)(C) for the exceptions for non-commercial use; I think the fixubuntu case would work for both.
If this rule actually existed, anyone could set up an Apple-branded site dedicated to ranting about Jewish conspiracies. Do you actually believe that sort of false endorsement would fly?
I gave the link to the specific federal statutes oO
As for the case you're bringing, the criterion would be: it the website tyring to get people to believe it is actually endorsed by Apple to injure its reputation? In this case it is criminal impersonation, which is a usually a state criminal offense unrelated to trademark law.
Otherwise, if it's only criticizing the participation of Apple in a jewish conspiracy, to use your example, it is pretty safe on the trademark front (and even more if the webmaster was careful not to show ads or to link to a commercial website).
However, depending on the actual content of the website, it could still constitute defamation and Apple could thus sue, but again not in relation with its trademark.
A complainant in a UDRP proceeding must establish three elements to succeed:
The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
The registrant does not have any rights or legitimate interests in the domain name; and
The registrant registered the domain name and is using it in "bad faith".
In a UDRP proceeding, a panel will consider several non-exclusive factors to assess bad faith, such as:
Whether the registrant registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark;
Whether the registrant registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, if the domain name owner has engaged in a pattern of such conduct; and
Whether the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or Whether by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant's website, by creating a likelihood of confusion with the complainant's mark.
In this case, I don't think that bad faith could be established, so Canonical may have to adjust their policy to reflect certain use cases in domain names to be completely accurate.
moocowduckquack is explaining that the law already gives rights and obligations wrt trademark use.
It's helpful to know the difference between public law and contracts; they have the same effects (creating rights and obligations), but public law applies to everyone (within a jurisdiction) and contracts don't.
Obviously it does not apply to everyone. Desmond Tutu, for instance is the patron of a very different Ubuntu foundation - http://www.saubuntu.co.za/ - and I doubt that Mark will be sending him any takedown notices anytime soon. Ubuntu itself is also an existing word that is free to use in its original context. Added to this, even if you are using the word ubuntu to mean the company Ubuntu, then in pretty much anywhere in the world you can use a trademarked word to criticise the thing it trademarks, otherwise critics would have a really hard time writing reviews. Criticism is plainly not imitation and it is imitation that trademark law legislates on.
You will require Canonical’s permission to use: (i) any mark ending with the letters UBUNTU or BUNTU which is sufficiently similar to the Trademarks or any other confusingly similar mark, and (ii) any Trademark in a domain name or URL or for merchandising purposes.
[. . .]
You can use the Trademarks in discussion, commentary, criticism or parody, provided that you do not imply endorsement by Canonical.
You can write articles, create websites, blogs or talk about Ubuntu, provided that it is clear that you are in no way speaking for or on behalf of Canonical and that you do not imply endorsement by Canonical.
The trademark policy is important because Canonical owns the trademark, and it outlines specific things which they allow, like criticism, and specific things they do not, like using Ubuntu in a domain name without permission. The conversation is derailed if everyone does not understand that it is specifically use of the logo and domain name that Canonical has objected to. The logo is removed, but the domain name remains. It seems that Canonical might not be able to convince ICANN or the courts that the domain name is in bad faith.
We have seen similar issues before. Debian objected to Christian Marillat using the domain name debian-multimedia, so it was changed to deb-multimedia.
Canonical should be criticized for the bad things they do and praised for the good things they do in the hopes that they will improve in the future. If we just set ourselves against them and criticize their every action because of who they are, it will only increase the division between them and the larger free software community. It's a division that needs to be mended. Without their work, free software distributions like Trisquel would not be possible.
trisquel.info