[cc-licenses] Trademark attribution loophole?

James Grimmelmann james at grimmelmann.net
Sat Sep 14 18:14:06 EDT 2013

On 2013-09-14, at 8:32 AM, Kent Mewhort <kent at openissues.ca> wrote:

> On 13-09-13 10:24 PM, Mike Linksvayer wrote:
>> On Fri, Sep 13, 2013 at 4:04 AM, Kent Mewhort <kent at openissues.ca> wrote:
>> I just gave this latest draft a careful line-by-line read over and it looks conformant to me (other than the clearly non-conformant NC clause in this license type).
>> Although I don't think it makes it non-conformant, I completely agree with Herb that the new requirement in 4.0 to identify the author "in any reasonable manner requested by the Licensor (including by pseudonym or trademark if designated)" is a slippery slope and a cause for concern.  There's a similar clause in GPLv3 which allows licensors to attach additional terms for the "preservation of specified reasonable legal notices or author attributions".  In at least a of couple cases, this has been abused to require obnoxiously visible brand advertising and watermarking (eg. Flexpaper and SugarCRM).
>> Certainly, the "reasonable" tempers the scope of what a licensor can require and brand advertising demands may very well be out of scope; however, in any case, it's easy enough for a licensor to use a heavy-hand in crafting these attribution obligations, creating uncertainty for licensees.
>> Hmm, I failed to notice the word trademark previously, though it was introduced in the previous (3rd) draft. If one is requiring a use of a trademark for attribution, should not one also be granting a limited trademark permission for the purpose of attribution? Or is one implicitly doing so?
>> There's a recent software license that explicitly attempts to use requiring retaining trademarks and not granting trademark permission to turn a seemingly open source license into a non-commercial-only license, which I find kind of ugly, see 4.2 and 4.3 of https://github.com/system76/beansbooks/blob/master/BEANSBOOKS.LICENSE.md (and clearly not open).
> Ugh, that is ugly -- and I think you're right that the same could tactic could be leveraged with the trademark attribution requirement in CC 4.0d4.  I believe a requirement to attribute with a trademark     would generally imply a limited license with respect to that mark, but not if explicit text to the contrary accompanies the attribution request.  For example, if Foobar Inc. made a derivative work that     comes under CC-BY-SA, it seems they could effectively redistribute it commercially and non-openly with something along the lines of:
>   "Pursuant to section 3(A)(1)(a) of our CC-BY-SA license, we require you to visibly mark this work or any derivative works with the Foobar Inc. logo. Please see this webpage for our trademark licensing options (note that the CC-BY_SA license does not grant you any permission to use Foobar Inc trade-marks; you must license these from us separately)".
> Perhaps this is a loophole that needs explicit plugging in this section of the CC license. Maybe "You must...identify the creator(s) of the Licensed Material and others designated to receive attribution, in any reasonable manner requested by the Licensor (including by pseudonym or trademark; if by trademark, the Licensor grants you permission to use the trademark for the purposes of attribution)."
> I hope no one minds, but I'm cross-posting this back to cc-licenses for further discussion there as well...

I would argue that imposing additional restrictions on use by requiring attribution in a form that is only possible if one consents to additional legal requirements is per se not "reasonable." And where a trademark is used truthfully to identify a trademark owner or its goods, such use is noninfringing as a matter of law, regardless of whether one has a trademark license or not. But to avoid doubt, it would be better either:

* to modify 2(b)(2) to say that trademark rights are licensed to the extent needed to comply with an identification requirement, or
* to modify 3(a)(1)(A)(i) to say that the identification condition is waived if "the manner requested by the Licensor" would impose legal liability or additional legal obligations on the licensee.

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