Project name is unauthorized use of a registered trademark? #445

Closed
lpar opened this Issue Jan 5, 2016 · 24 comments

Projects

None yet
@lpar
lpar commented Jan 5, 2016

Lotus® is a registered trademark of IBM.

I'm pretty sure that your use is infringing, since web products under the Lotus brand have been a core IBM product area.

Have you checked with IBM legal that the trademark is being abandoned?

@jodosha
Member
jodosha commented Jan 5, 2016

@lpar I haven't checked with them because this started as a side project and have nothing to do with IBM or their office suite. My intention is not to fool customers with the same name or take advantage of IBM popularity.

I named it after the spiritual meaning that this flower has for me. It's even tattooed on my arm.


I've noticed that you work for IBM on the Lotus Domino team. Are you speaking on behalf of your company?

@jxxcarlson

jaam rek: Peace always

On Jan 5, 2016, at 11:48 AM, mathew notifications@github.com wrote:

Lotus® is a registered trademark of IBM http://wwwibmcom/legal/us/en/copytradeshtml#section-L
I'm pretty sure that your use is infringing, since web products under the Lotus brand have been a core IBM product area https://enwikipediaorg/wiki/IBM_Lotus_Web_Content_Management
Have you checked with IBM legal that the trademark is being abandoned?


Reply to this email directly or view it on GitHub #445.

@lpar
lpar commented Jan 5, 2016

I don't work on the Lotus Domino team. I am not speaking on behalf of IBM. I was simply hoping to alert you to the problem so that you could resolve it without the risk of lawyers becoming involved.

@jodosha
Member
jodosha commented Jan 5, 2016

@lpar Thank you for the clarification. I hope the same.
What's your suggestion?

@lpar
lpar commented Jan 5, 2016

Well, the clash is unfortunate and it will be a pain, but my suggestion would be to pick a new name. Maybe "nelumbo" after the genus of the sacred lotus flower? (Nelumbo nucifera)

Looks like there was an application to trademark nelumbo for laundry detergent, but it was abandoned, so you should be in the clear. (Disclaimer: This is not legal advice, as I'm not a lawyer either!)

(As an aside, the software company Lotus was named after the lotus position, so it's also linked to the flower.)

@jxxcarlson

If you do need to change, what about ‘lotus framework’ or some such composite?

On Jan 5, 2016, at 11:48 AM, mathew notifications@github.com wrote:

Lotus® is a registered trademark of IBM http://wwwibmcom/legal/us/en/copytradeshtml#section-L
I'm pretty sure that your use is infringing, since web products under the Lotus brand have been a core IBM product area https://enwikipediaorg/wiki/IBM_Lotus_Web_Content_Management
Have you checked with IBM legal that the trademark is being abandoned?


Reply to this email directly or view it on GitHub #445.

@joneslee85
Member

I hate to think that we have to rename the project.

Marketing-wise, nelumbo is not very great as it sound awkward and hard to memorize.

I would not worry about this now until it has become a problem. Then we could think of other naming.

@jodosha
Member
jodosha commented Jan 6, 2016

@lpar "lawyers", "will be a pain".. The more I read what you write, the more this looks like an informal "cease and desist".

I can even rename the project "nelumbo", which is horrible name btw, but there is one problem. I don't have money to register trademark, I don't have money to pay lawyers to defend that trademark. So if the next corporation wants to sue me, it can do it.

I'm exposing myself and my family with this project, by doing full time, unpaid work on Lotus, since July. I cannot even think what will happen if a letter from your lawyers will be delivered to my house.

I'm doing this "only" because I truly believe in Open Source, and giving back to the Community. I put all my efforts in it in the last three years, I never earned a dime from it, never tried to fool developers because we share the name.

My choice was unfortunate, but again, it's named after a spiritual meaning that it has for me.

This is the first time I feel discouraged and depressed about this project. Give to the Community and potentially get ruined as result. This industry is broken.

We'll evaluate what to do soon.


PS: the project will continue with the expected timeline, I don't know under which name in the future.

@jodosha jodosha closed this Jan 6, 2016
@jodosha jodosha self-assigned this Jan 6, 2016
@Havvy
Havvy commented Jan 6, 2016

http://www.bitlaw.com/trademark/common.html - If you use it first, you're protected.

This isn't really an existential threat - IBM doesn't want to destroy your project, they just don't want people confusing things as their project. The only company I've seen use trademark to try to kill others is King games.

@YorickPeterse

It's worth mentioning that IBM owning the trademark of a name including the word "Lotus" does not per definition mean nobody else is allowed to use said word for a project. For example, the US (and many other countries) have a fair use policy that covers commonly used words, symbols and the likes. How this holds up in court is up to the lawyers and judges involved.

Without knowing what countries and laws are involved it's hard to get a definitive answer. I suggest contacting organizations such as the FSF, though I'm unsure if they help in these sort of cases. Also until IBM itself files a case I wouldn't worry about it too much, though that's just my personal view on the matter.

@jxxcarlson

This is very good advice.

On Jan 6, 2016, at 8:37 AM, Yorick Peterse notifications@github.com wrote:

It's worth mentioning that IBM owning the trademark of a name including the word "Lotus" does not per definition mean nobody else is allowed to use said word for a project. For example, the US (and many other countries) have a fair use policy that covers commonly used words, symbols and the likes. How this holds up in court is up to the lawyers and judges involved.

Without knowing what countries and laws are involved it's hard to get a definitive answer. I suggest contacting organizations such as the FSF, though I'm unsure if they help in these sort of cases. Also until IBM itself files a case I wouldn't worry about it too much, though that's just my personal view on the matter.


Reply to this email directly or view it on GitHub #445 (comment).

@YorickPeterse

Oh, apparently the links are bound to a session. Great. Either way, use the link http://tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk, use "Basic Word Mark Search (New User) ", then search for "Lotus".

@nathanvda

I am the author/maintainer of a rubygem called cocoon, and apparently there is a framework by Apache with the same name, and they have registered their trademarks, and they asked me to just place a very clear and explicit message that my code/gem was not related in any way to the Apache Cocoon project. Also: they reached out to me, as I was not aware of this at all.

Also I worked at a company where we guarded trademarks and helping searching for new trademark names, and @YorickPeterse is imho right. If a company would care about it's trademark, or would consider this project to be infringing, I would assume you would already be contacted. Personally I do not see how this project could be infringing for IBM. On the other hand, Disney considers any use of any of their names infringing (for good reason probably). On the off chance they would contact you, just renaming to Lotus.rb would already put you in the clear.

Note: while I worked at such a company, I am just a programmer, so this is just my opinion and has no legal basis whatsoever 😄

@lpar
lpar commented Jan 6, 2016

Yes, you can have non-infringing use of the same trademark in a different area of business where there won't be confusion. Look at Apple vs Apple — it was OK when Apple Computer made computers and Apple Corp was a record company, but once Apple Computer started selling computers that could make music, things got ugly.

So Lotus jewelry isn't going to clash with Lotus web software or Lotus Chinese restaurant. But that's why I mentioned IBM's products — the Lotus trademark has been specifically used by IBM for web software, including web development frameworks. It confused me for a moment when I first saw the name; that's how I ended up here, and the reason why I suspect it might lead to trouble.

You don't need to register a trademark, you don't need lawyers (yet), you don't need to spend money or get worked up. I'm just a bystander who happened to notice a likely trademark infringement, and to try and save you from unpleasantness I thought I'd alert you to the problem. It's quite possible I wasn't even supposed to do that, but I don't like seeing free software projects scared by legal letters.

Ultimately all I'm really saying is that personally, I think it might save you grief in the future if you come up with a name that hasn't been registered as a trademark and recently used for the exact same sort of project. I would have offered the same advice if your project was called WebLogic or WebObjects; the specifics of who owns what trademarks are just detail. You are, of course, free to ignore my personal advice. Or, you might just put a disclaimer in the README as @nathanvda suggests, and hope for the best.

As far as the lotus having deep personal meaning, I sympathize, and naming is hard. But, I can't help reflecting that a name is just a label, and that if you label a thing and cultivate strong attachment to that label... well, that's not really what the lotus flower is all about, is it?

@booch
booch commented Jan 6, 2016

Don't worry about it until someone from IBM contacts you about it — and that doesn't seem very likely to happen. IBM is not using the Lotus trademark, and trademarks are unenforceable if they're not used. Of course, you don't have the time or money to fight them even if you're not doing anything wrong. But there's no sense in rolling over and playing dead if nobody is attacking you.

That said, putting a note in the README and on the web site home page would probably be a good idea, if nothing else than to prevent confusion from anyone looking for the old Lotus company.

@smathy
smathy commented Jan 6, 2016

As others have mentioned, trademarks are registered in industries/categories, and the protection only exists within that industry that the owner continues to trade in.

That having been said, IBM definitely hold the "Lotus" trademark in the relevant category ("Computer Programs and Related Documentation"), but here are the good things:

  1. The onus is on the trademark holder to enforce their trademark, there's no burden on you at all until they contact you.
  2. Even once that happens (if you wanted to fight it) they need to show that you're "engaged in commerce" in the jurisdiction they hold the trademark in, this is very clear for a non-FOSS project/product/company but less so for FOSS.
  3. They also need to show that there exists a "likelihood of confusion", this is often very hard to show for non-competitors. This point also includes the requirement that they're actively using the trademark, if they're not using it then there can't be any confusion.
  4. That brings me to the biggest thing in your favor, IBM are pulling back from their Lotus trademark and name. Domino is now IBM Domino and even Notes is IBM Notes now. Their existing usage of "Lotus" is mostly as an umbrella brand for a whole suite of software (protected by this trademark btw) and you're not in breach of that at all.

So, my summary, wait until they contact you anyway, and even then if you wanted I think you have grounds to force the issue.

@smathy
smathy commented Jan 6, 2016

Also, delete this issue so they don't find it when they google for IBM/Lotus/trademark ;)

@nathanvda

@booch and @smathy 👍

@jdickey
jdickey commented Jan 6, 2016

Ummm…IANLAL, but I'd think that deleting or otherwise obscuring this discussion after the fact, in light of the Wayback Machine and other technology, might lead an ambitious young lawyer in the Stygian depths of Big Blue to try to score points by saying "hey! they knew they were potentially infringing; whether or not they actually were, they tried to cover it up! Let's bash their teeth in!" Shit like that has happened with far more tenuous cause.

tl;dr As in music, when you make a mistake, make it loudly.

@solyaris
solyaris commented Jan 6, 2016

Ciao Luca!
first of all: your big work on Lotus is great and I keep this opccasion to say: thank you!

back to the "issue", I see your points, and yes, I understand your love for word 'lotus' because spiritual meanings!

Now let reverse this remote legal trap in a positive way: my proposal could be to just contact IBM in some way, trying a no-cost agreement with them. As someone here state, maybe a clarification note could be sufficient. Honestly IBM lotus is an old name for an old spreedsheet. How care now ?

I want to exaggerate: a contact request with IBM could be the occasion to ask them a sponsorhip for Lotus! Why not! IBM is in some way (I hope so) interested in Ruby realms (see rumors about possible contacts between Yukihiro Matsumoto and IBM).

I believe Lotus is a splendid project an it could deserve attention by IBM :) that could be invest more in software innovations and guys like you and less in cloud computing marketing investments (my personal opinion).

respect
giorgio

@bradland
bradland commented Jan 6, 2016

IANAL, but I have been on both sides of trademark litigation. Smathy's summary of points are good, but I disagree with his advice to delete this issue. Jdickey is correct that this discussion would ultimately be considered material and subject to discovery (which is where the participants in litigation have to share information) in any potential litigation. The only way it would not be subject to discovery is if you had asked an attorney, rather than the internet. Knowingly deleting information related to a dispute like this would not be good for you in some hypothetical future court situation.

Which leads me to another piece of advice. Soliciting legal advice in a public forum is a really bad idea. You're putting yourself in a position to discuss legal matters in a medium that is afforded zero protection from exploration by a potential legal opponent. I realize that this is antithetical to the open source mindset, but if you want to avoid trouble, you have to be prepared to switch contexts when working on your software versus running your organization. There are organizations that offer free legal advice to open source projects. I would recommend soliciting an attorney's (free) advice before opening the discussion to the internet.

My final advice would be this: don't obsess over future risk. Much of what has been said here — with regard to trademarks and their enforceability based on category/industry — is correct. However, the only action that really matters is that of the mark holder. lpar's comments are just that: comments. Just like some people can't help but say something when they see someone litter, lpar felt compelled to let you know that you're treading on questionable ground with regard to IBM's trademark. It's good information, but it carries no weight, legally speaking.

Until IBM comes knocking, or sells the trademark to someone else who cares, you don't have an issue. The counterpoint to this would be that you need to consider this question: will renaming the project get harder or easier with time?

If you are certain it will get harder over time, then rename the project now. Your chances of defending your use of the Lotus name against IBM are not good; unless you can find some outside source of funding to fight the case. That seems unlikely given that the Lotus trademark is in an industry so similar to your use case. The FSF or EFF are unlikely to come to your aid if they feel the chances of success are low, or that you should have been able to anticipate the issue.

If you feel that it makes no difference (relative to the difficulty of said task) whether you change the name now or at some future date, then keep on truckin'. At the time a mark holder comes knocking, it is extremely unlikely that they will take any action beyond issuing a cease & desist letter. At that point, you can decide to change the name or fight it. If you were a commercial entity with substantial assets, they might seek to reclaim some of the benefit you had received from the abuse of their mark, but given that this is an open source project, it is unlikely that they'll waste the man hours with anything more than a boilerplate letter.

@jodosha
Member
jodosha commented Jan 7, 2016

Thank you all for the suggestions. I'm in contact with people that can give me a legal advice.

@jodosha jodosha locked and limited conversation to collaborators Jan 7, 2016
@jodosha
Member
jodosha commented Jan 20, 2016

We're changing name from Lotus to Hanami.

https://twitter.com/hanamirb/status/689861441361448960

Sign up for free to subscribe to this conversation on GitHub. Already have an account? Sign in.