[asterisk-biz] Open letter to digium, asterisk developers and consultants

Tue Jun 10 19:53:05 CDT 2008

Brett -
    Sorry for the delay on this - many of us were off-site yesterday, 
and today has been catch-up while writing snippets of this throughout 
the day.

    You've brought up some good points, but I think they are issues of 
perception instead of issues of intention.  While Digium does keep 
control over the Asterisk and Digium trademarks, I think it is not 
our intention (or ability) to lock them down quite in the way you 
describe.  I will admit that after closely reading our policy and 
comparing it against your described concerns, there does seem to be 
some ways in which we can re-word that document so as to become more 
clear and allay your fears.  Some of your points are quite 
reasonable, and we will see what we can do to make it more obvious as 
to our goals with this policy, or at a minimum explain each in more 
detail here or on the trademark page.

   I have a meeting tomorrow with our internal counsel to go into some 
of these details specifically and hopefully a longer reply will 
result from that meeting.  However, our comments on this have to be a 
bit more deliberate and well-thought out on all of your points than I 
will be able to produce today/this evening.   I have responded to a 
few of the issues below that are most obvious, and I would ask that 
you give me a day or two in order to come up with more concrete 
answers on some of the points that I do not address in this message. 
I have not outlined a response to every issue you make in the text 
below, but please be a bit patient as we work towards resolving or 
clarifying your points.

   Let me just say again that while it is our intention to prevent 
confusing and dilutive use of our trademarked terms (most notably, 
the term "Asterisk") we do not intend to prevent the legitimate use 
of our trademarks when it comes to basic descriptive uses.

   See the bottom of this message for some references.  My more 
specific comments are in-line.

At 2:47 AM +0200 2008/6/9, Trixter aka Bret McDanel wrote:
>
>I am writing this letter to Digium and all those that use or develop
>software for Asterisk.  Asterisk is released under a dual license, the
>one I will focus on is the GPL license. 
>
>Digium maintains a trademark on the word Asterisk, along with other
>words.  The trademark policy they have forbids marketing a product with
>the asterisk word if it is not "Genuine Digium Software".  If you modify
>software, apply a patch, add 3rd party modules, this trademark policy
>prevents you from distributing that software saying that its based on
>asterisk, or even using the name asterisk within the program.
>
>This is particularly problematic for 3rd party module developers, since
>they are forbidden from ever revealing that the module is "asterisk
>compatible".  The same applies to AGIs.  All of this software is not
>"Genuine Digium Software".  Consultants are not allowed per the
>trademark policy from stating they work on asterisk systems, even if thy
>are genuine digium software products.
>
>Further, the exceptions to linking that come with asterisk include
>critical libraries that will not allow for building if the project is
>not asterisk.  The trademark policy forces a fork in the software due to
>the name, however the exceptions make this a less than trivial task
>since you would have to replicate openssl and other libraries.  In
>general this policy makes it all but impossible to distribute modified
>works based on asterisk.
>
>The Digium trademark policy is available at http://www.digium.com for
>reference.

http://www.digium.com/en/company/view-policy.php?id=Trademark-Policy

>While this may seem reasonable under the protection of the brand name,
>it does defy the spirit and intent of the GPL in that effectively Digium
>has banned forks of the project, distribution of 3rd party modules,
>distribution of modified code, etc.
>
>I understand that digium wants to protect their name, their branding,
>and make a clear difference between what they release and what others
>release, however it seems to fly in the face of open source, the Free
>Software Foundation, and the GPL specifically to place these
>restrictions on the software.  It also makes it so that people who have
>developed components for asterisk may have a difficult time leveraging
>that experience for personal or professional advancement.
>
>I am requesting that the disclaimer apply to forks of the asterisk
>project and not just asterisk itself, as this would allow people to
>comply with the trademark policy and still distribute a functional
>program under the terms of the GPL license.
>
>I further request that a difference be made in the trademark policy
>allowing for advertising of products that include phrases such as
>"Asterisk Compatible" or "Based on Asterisk" should someone wish to
>place their AGI, 3rd party module, patch, etc on a webpage and write a
>description for it.

It is my belief that this is the case already, and that if you use 
the term in a descriptive manner the word "Asterisk" can be used 
without requiring Digium's permission.  Similar to the way you can 
say "We use 3M paints" or "This car runs on Exxon gasoline" without 
getting releases from 3M or Exxon, it is possible to say "This module 
is used by Asterisk to perform functions with the foo server." 
However, if you say "Asterisk-Powered" or "Asterisk Inside", then you 
would move from descriptive use to infringing use in a product name. 
In some cases, you may even see people using specific disclaimers in 
their advertisements like "All trademarks referenced in this 
advertisement are property of their respective owners" or similar 
wording.  No permissions have been provided, but acknowledgement is 
sometimes additionally given to remove even the possibility of 
confusion.

This distinction between descriptive and assigning uses perhaps needs 
to be made more clear, and our wording might be inappropriate.  I 
will address this with our counsel and see what we can do to resolve 
this in one or more of three ways:  1) Clarify our documents with 
better examples to match what you reference, 2) Clarify our policy 
wording to make it more obvious as to our intentions, or 3) clarify 
my understanding of this and correct my perhaps incorrect 
interpretation.

>I encourage anyone who agrees that the spirit of the GPL be followed,
>not just its wording to contact digium in support of this proposal.
>
>
>Specifics about the trademark policy obtained from
>http://www.digium.com/en/company/view-policy.php?id=Trademark-Policy on
>June 08 2008, 2:35am CEST.
>
>General
>Genuine Digium Software is the software in the same form as originally
>distributed by Digium, without modification to the code of any extent.
>The only exception is that software may still be considered Genuine
>Digium Software if, in connection with distribution of that software for
>a certain platform, code has been removed that relates to functions that
>would not work on that platform in any event. Once a change has been
>made to the software, even if that change may be permissible under the
>GPL, the software is no longer Genuine Digium Software, because Digium
>did not make or control the change.
>
>
>Uses that are not approved by this policy
>"Use of a Trademark in a web page title, TITLETAG, META tag, or other
>manner with the intent or the likely effect of influencing search engine
>rankings or results listings."
>
>Search engines rank based on content of a page, this in effect prevents
>you from using the trademarked words in your webpage if the software is
>not "genuine".
>
>
>Uses that are not approved by this policy
>"Use of a Trademark to refer to services offered by your company, or to
>suggest that your services are authorized or endorsed by Digium."
>
>If you are a consultant who specializes in asterisk systems you cannot
>mention that, even if it is genuine digium software per the first part
>of this policy.
>
>
>There is a allowed use under the "fair use" provision, which has the
>potentail to remove these, however the policy itself does not make it
>clear that you would be allowed to use it in this way, and it does seem
>to indicate specifically you cannot.

I would agree that we have failed to make this as obvious as we 
should, and that will be a topic of discussion and possibly 
clarification in the document.  Our intention has never been to lock 
the word "Asterisk" so that it is impossible to use - that is not our 
goal, nor is it possible legally.  If you are a consultant who works 
with Asterisk, by all means please put that on your website and in 
your CV!  We encourage that type of use; it broadens the Asterisk 
ecosystem.  Using the word "Asterisk" in a statement of factual use 
is not prohibited - you can say "My company works on developing code 
and systems which utilize Asterisk."  However, when it becomes used 
as a descriptive term such as "Asterisk Enabled" then that does seem 
like it is an infringing use.  More on this in the follow-up reply to 
this soon to come.

>--
>Trixter http://www.0xdecafbad.com     Bret McDanel
>Belfast +44 28 9099 6461        US +1 516 687 5200
>http://www.trxtel.com the phone company that pays you!

Further, here are some videos of the recent talk given at 
Asterisk-tag.org last week, which relate specifically to how Digium 
manages and protects its trademarks, service marks, and copyrights:

Michelle Petrone-Fleming, Digium:

1 of 2:  http://video.google.com/videoplay?docid=7721041484802602556&hl=en
2 of 2:  http://video.google.com/videoplay?docid=-9080097810538247406&hl=en

Basic trademark legal summary:

http://www.publaw.com/fairusetrade.html

JT

-- 
--
John Todd              jtodd at digium.com
Asterisk Open Source Community Director