Re: (Legal) advice needed

["Luis Villa" <luis villa gmail com>]

On 7/21/06, Rouquier Philippe <rouquier p wanadoo fr> wrote:
>  Hi,
>
>  Here is the problem I've run into. I'm the author of bonfire, an app for burning CD/DVD
> (http://gnomefiles.org/app.php?soft_id=1158). Recently I've been given a CVS account to
> import it into GNOME CVS.
> Before I did it, a user reported that bonfire was a name used by a Canadian site selling
> music to be downloaded (http://bonfire.puretracks.com/). Apparently they had trademarked
> this name (see
> http://strategis.ic.gc.ca/app/cipo/trademarks/search/tmSearch.do?language=eng and
> search for bonfire).

Application # 1218927 and 1218917 for those wondering.

>  So, my question is: Is it still OK to import bonfire into GNOME CVS or should I change the
> name before?

We don't have a formal policy on such things, but obviously we'd
prefer to avoid known legal problems.


>  Of course I'm reluctant to change the name for many reasons, being:
>  - the site is Canadian, I'm French and GNOME servers are in the USA, so maybe trademark
> doesn't apply in this case

IANAL(Y)* but some things to consider:

(1) trademarks can be extended; i.e., it is likely that if Best Buy
wanted to file to use this mark in the US or France, they would get it
and could cause you legal problems in a completely traditional, valid
way. (Though you have been using it in the US and France longer than
they have, so you might win the case, but it would be expensive, a
PITA, etc.)

(2) GNOME does try to distribute in Canada; it would be irritating if
a Canadian court told us we had to block ftp.g.o from being seen by
Canadians :) This is a very messy area of the law, with very little
settled precedent, but again, they could try to make life
irritating/expensive/not fun.

>  - bonfire just started to get included in some major distribution and changing the name will
> postpone everything
>  - it's a new application and changing the name would confuse many people

You should ask the Ekiga guys about that- it would seem that their
name change went pretty smoothly.

> - above all, Bestbuy (the trademark holder) won't really care about my app having the same
> name

This is a legal and strategy decision for them, but they are probably
*required* by trademark law (if Canadian law is anything like American
law) to care about your app having the same name, at least in Canada.
If they don't defend it against you, they can lose the right to use
the mark to describe software, which presumably is a big problem for
them.

>  What I thought was: import bonfire into GNOME CVS and wait and see. If Bestbuy reacts
> (which I doubt but who knows) I would change the name. But I really want to make sure
> that it's not an issue for GNOME.

I'd certainly suggest being proactive, changing the name now, and
getting it over with instead of letting it hang over your head- if
bonfire is incredibly successful, someday this *will* be a problem.
Whether or not it is a problem for GNOME should probably be left to a
real lawyer- if the only legal penalty is 'you have to change the
name', then it probably shouldn't be a problem for GNOME; if the
potential legal penalty is 'change the name and fork over a lot of
cash', then the board should probably think about it :)

Luis

* Hi Dave! Hi Jeff!