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

Wed Jun 11 07:40:56 CDT 2008

	Well, yes, that is the issue. But it's not clear how the issue is
decided. If you use the trademark "Red Hat" or "RHEL" to say "This is
Red Hat", that's a violation, because it's not Red Hat (even if it were
the identical binaries). But if you say "100% Red Hat Compatible", that
should be legal, as per the "100% IBM PC Compatible" example I gave from
the 1980s. If you say "This is a Fork of Red Hat", that could go either
way, depending on what a court says a "reasonable person" in the market
would think that means. If the court says the reasonable person thinks
that means "CentOS == Red Hat", that's a violation. If the court says
the reasonable person thinks that means "CentOS != Red Hat", even if
they think it means "CentOS ~ Red Hat", that's not a violation.

	In other words, has the market realized that a fork is not the same as
the base version? In the Linux market, the mass of people might indeed
not be sophisticated enough anymore to understand the distinction
between a "fork" (RHEL to CentOS) and a "version" (eg. 1.2 to 2.4). But
the Asterisk market is still more sophisticated, and can tell that a
fork inherently means "!=", by definition. A court might look to see
that the fork is marketed under a *different* trademark than "Asterisk"
or "Digium", its own brand that clearly distinguishes it from Digium's
Asterisk, to ensure that its use of "Asterisk fork" does not confuse
reasonable people in the market.

	These cases aren't predictable unless there's a clear precedent. Since
it's hardware, and IBM is a very clearly recognizable entity that a
little vendor is unlikely to be mistaken for, I don't know whether the
"100% IBM Compatible" example is a deciding precedent (though I'd expect
a lawyer to argue in court that it is). There might be an example
already, a precedent in trademark court defining the non/infringement of
marketing SW as a fork of a trademarked product. Until there is, we have
to make our own guess to a reasonable person's confusion. It's rarely
profitable to overestimate the competence of reasonable people in
markets, but in this case, since SW PBX markets are still highly
technical, I'd say that "fork of TRADEMARK" doesn't confuse consumers
into finding "fork" when they're looking for "TRADEMARK".


On Wed, 2008-06-11 at 00:33 -0400, Andrew Joakimsen wrote:
> In regards to ports, the issue is that both can be confused because
> inherently they will be very similar. Just look at CentOS, it's not
> "based on RHEL" its "based on another PNAELV's Linux" they have
> removed *every* redhat reference except those required for
> compatibility (such as the filename /etc/redhat-release)
> 
> http://www.pnaelv.net/
> 
> On Mon, Jun 9, 2008 at 5:14 PM, Matthew Rubenstein <email at mattruby.com> wrote:
> >        I'm not sure that a trademark on "Asterisk" prevents anyone else from
> > saying their product "works with Asterisk", or "is compatible with
> > Asterisk". The trademark prevents anyone else from calling their own SW
> > PBX by the name "Asterisk", to prevent consumers in the market confusing
> > the new product with Digium's. But if the other product is in fact
> > compatible with Asterisk, as advertised, or otherwise is related to
> > Asterisk, but is not marketed confusingly *to be Asterisk*, trademark
> > doesn't prohibit using the word descriptively. Digium has no control
> > over that.
> >
> >        At least for things that aren't a SW PBX. A fork is a different story.
> > I don't know whether trademark prohibits that use of "Asterisk" or not.
> > Because "a fork" means "is not the same as the original", but in a way
> > that means "better than the original" (as it is used). A new version of
> > Asterisk, like v1.8, from Digium, is no different as a "fork" than is
> > some other developer/distributor's revision that is derived from the
> > earlier Asterisk sources. Since a fork from a different
> > developer/distributor competes with Digium's Asterisk, it cannot be
> > called "Asterisk". But I'm not sure that it cannot be marketed as
> > "competes with Asterisk".
> >
> >        However, I'm pretty sure that this has been resolved in the courts.
> > Even though it's HW, not SW, the "100% IBM Compatible" PC clone
> > marketing in the 1980s comes to mind. The HW example is probably an even
> > stronger case, though perhaps the greater mutability of SW than HW, and
> > the GPL that is designed to foster that mutability and sharing of SW,
> > and the lack of patents on the SW (which did encumber the IBM PC) all
> > make an even stronger case for using the word "Asterisk" to compete with
> > Digium, as long as "Asterisk" is used to identify the Digium product,
> > and not misleadingly to identify the competing product. The trademark
> > law takes into account that consumers understand English, and that the
> > trademark is not some kind of hypnotic mind control that makes the
> > consumer buy no matter what context it's used in.
> >
> >
> > On Mon, 2008-06-09 at 12:00 -0500, asterisk-biz-request at lists.digium.com
> > wrote:
> >> Date: Mon, 09 Jun 2008 02:47:14 +0200
> >> From: Trixter aka Bret McDanel <trixter at 0xdecafbad.com>
> >> Subject: [asterisk-biz] Open letter to digium,  asterisk developers
> >> and consultants
> >> To: Commercial and Business-Oriented Asterisk Discussion
> >>         <asterisk-biz at lists.digium.com>
> >> Message-ID: <1212972434.9412.28.camel at trixtop.0xdecafbad.com>
> >> Content-Type: text/plain
> >>
> >> 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.
> >>
> >> 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.
> >>
> >> 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.
> >>
> >>
> >>
> >> --
> >> 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!
> > --
> >
> > (C) Matthew Rubenstein
> >
> >
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-- 

(C) Matthew Rubenstein