Zope Corporation Trademark Management Open Letter

In anticipation of the formation of a Zope Foundation we have documented our position with respect to the use and management of the Zope trademarks. We hope you find this document clarifies our position and addresses concerns about the future-proofness of the Zope brand.

Some of this open letter represents the simple collection of trademark background and documentation from around the Internet. We've collected this information in order to address popular misconceptions about what trademarks are, how they behave and what it means to preserve them. Many of the concerns we hear regarding the Zope trademark have no basis in law.

Please send questions to: legal@zope.com. Thanks!

Regards,
Rob Page
CEO

1. What is a Trademark?
   

   A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

2. What are the limits of trademark rights? (from www.chillingeffects.org)
   

   There are two situations where the doctrine of fair use prevents infringement:

   • Fair Use.
     
     • The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.
     • Nominative fair use: This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant's product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
       
       • his/her product or service cannot be readily identified without pointing to the registrants mark
       • he/she only uses as much of the mark as is necessary to identify the goods or services
       • he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant
   • Parody Use: Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.
   • Product Comparison and News Reporting: Even in a commercial use, you can refer to someone else's goods by their trademarked name when comparing them to other products. News reporting is also exempt.
   • Geographic Limitations: A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy's Bakery in Boston, there is no infringement if Jane Roe uses Timothy's Bakery to describe a bakery in Los Angeles.
     


3. Why is Zope Corporation licensing the trademark to the Zope Foundation? And why now?
   

   The formation of the Zope Foundation is an important step in the progress and development of Zope. This is especially true in the light of Zope 3's readiness for production deployments. We recognize that trademarks are an important component in the Foundation.

4. Where is the exact language of the trademark license?
   

   The exact language has not been developed. We will be working on this as soon as possible and will post drafts and the final version when they're ready.

5. What is being covered by the trademark license?
   

   Zope Corporation will license the right to use and sub-license the use of the word Zope and the "Circle-Z" for each of the following purposes:

   • Distributing software releases
   • owning and operating the website at www.zope.org.
   • for the branding of Zope Foundation membership classes (e.g., Zope Committing Member, Zope Strategic Developer, Zope Associate Member, etc.)


6. What will the Zope Foundation not be able to do with the marks?
   

   The Zope Foundation will not have the authority to sublicense the trademarks in any way other than as explicitly permitted. In other words, it is easier to characterize what can be done rather than what can't be done.



7. That is vague. Give some examples of sub-licenses that would not be permitted.
   

   The Zope Foundation would not have the authority to sub-license the following uses of the marks:
   

   • Zope Consulting, GmbH
   • http://www.ZopeDevelopmentForExperts.com
   • http://zopemanagedhosting.com



8. So, if I wanted to create a site called Zope Development For Experts, I could not?!
   

   If you wanted to create a site called Zope Development for Experts and locate it at http://www.zopedevelopmentforexperts.com you would ask Zope Corporation for a license to use the trademark. This application would ask you for the purpose of the site. Presuming the site was for the purposes of helping expert Python and Zope developers hone their skills Zope Corporation would not hesitate to grant a license to use the marks.

   • Could Zope Corporation subsequently revoke the trademark license?
     

     Yes. If the site evolves in a way that it is no longer delivering on the original intent (as specified, however generically, in the trademark license application) Zope Corporation might revoke the trademark license. If, for example, the site evolved into marketing pornographic materials or materials related to the fabrication of weapons we would revoke the trademark license. This is a service to the Zope community.

   • Could Zope Corporation revoke the trademark license if I wrote something they didn't like?
     

     We could, under our existing trademark license. We understand that this might be an issue for some so we have started looking into language we can add to our existing trademark license agreement that will eliminate "editorial censure" as a basis for the revocation of a license to use our marks.

   • In general, we have been and will continue to be good custodians of the Zope marks and to work to ensure that they continue to represent a high-quality body of software and a vibrant community. We understand that the Zope community is populated with people of widely varying opinions and that the tolerance for those opinions and perspectives is important to the continued success of the platform. We also understand that a failure to actively manage the use of the marks will result in a deterioration of the significance of the marks and that is something noone in the Zope Community wants to see happen.


9. Are there any uses that don't require a trademark license from either Zope Corporation or the Zope Foundation?
   

   Yes. As one example, eGenix recently approached us about trademark licensing for their eGenix mxODBC Zope Adapter. This is an example of nominative fair use. Their use of the word Zope is free of trademark issues. They neither required nor received a license to use the word Zope in their product, and we immediately informed them that they didn't need one.

   Other nominative fair uses of the trademark that in no way confuse the market as to whether the word Zope refers to the "software" or to Zope Corporation.

   Zope Intranet Solution would require a license from Zope Corporation (and likely not get one), but Acme Zope Intranet Solution would not require one, and would get one if they preferred to have one to avoid the ambiguity. The point is that "Acme Zope Intranet Solution" makes it obvious that this is based on Zope the software, from Acme the company.



10. Are there any uses that Zope Corporation would obviously deny a license for?
    

    Zope4Accounting. Zope Managed Hosting, etc.. The first one is too close to the pattern of a number of our current commercial offerings, and would likely imply to the market that the product came from Zope Corporation. The second is the exact wording that we already use. However, if it were labeled "Acme Zope Managed Hosting", then it would be fine.



11. What is the nature of the license?
    

    The trademark license that will be granted to the Zope Foundation will be a fully-paid, worldwide, perpetual, and irrevocable license to use and sublicense the use of the marks in accordance with the associated guidelines. The Zope Foundation will owe Zope Corporation no accounting for its use and sublicensure of the marks.



12. Will an acquirer of Zope Corporation be required to honor the terms of the license made to the Zope Foundation?
    

    Yes. The license will name Zope Corporation and its successors and/or assigns.



13. Zope Corporation doesn't want to see any derogatory content about it or the Zope software posted on the Internet - that's why they protect the trademark so aggressively.
    

    The first part is right - we would surely prefer not to see derogatory content about Zope Corporation or Zope the software on the Internet. The notion that we can control this - independent of trademarks - is naive. Zope won't satisfy all people all of the time. People are bound to write unflattering things about us. We can not and will not use trademark protection to preclude that. This does not mean that we won't defend ourselves in cases of libel or slander which are not related to trademark protection. See the earlier section regarding our intent to amend our current trademark license agreement to preclude the use of editorial censure as a basis for the revocation of a trademark license.



14. Will the Foundation have any enforcement rights or obligations?
    

    The Zope Foundation will have the right and obligation (to its Members, not to Zope Corporation) to enforce the sublicenses it grants. This obligation to protect sublicensed marks will ensure that the Zope Foundation Licensed Marks are being used in a manner consistent with the objectives and ByLaws of the Foundation. Any enforcement action taken by the Foundation (e.g., revocation) will be done in the sole discretion of the Foundation without accounting or notice to Zope Corporation.



15. Why do we need trademarks and enforcement, etc.? Can't we dispense with all of this?
    

    A trademark registration provides the mechanism for protecting a brand. If we want Zope, the brand, to have meaning, it must be protected. There are simply no two ways about it. Zope Corporation wants the brand to have meaning, importance, "equity" and to share this value with other Zope stakeholders to the maximum practical extent.



16. Is it fair that the community contributes so much to the development of Zope and Zope Corporation is the exclusive owner of the trademark?
    

    This question suggests that, over time and by virtue of contributions to software, documentation and evangelistic efforts, the Zope Community has developed "sweat equity" in the Zope trademarks. Few companies better understand or appreciate the value that can be created by a talented, hard-working world-wide developer community than Zope Corporation. Zope Corporation clearly and deeply understands the value that has been created. Trademarks are not a divisible asset. Unlike copyright, two parties cannot jointly own a trademark. Since the trademark (and associated brand integrity) has value and is important to all Zope stakeholders (users, developers, consultants, etc.) some (single) organization needs to own and manage it. Clearly Zope Corporation owned all of the source code to Zope in November 1998 when it released the project as Open Source under the ZPL. Since then, both Zope Corporation and the Zope Community have made material contributions to both Zope 2 and Zope 3. Even now, Zope Corporation is contributing 100% of their ZPL-licensed copyrighted code to the Foundation.

    Zope Corporation is contributing a fully-paid, irrevocable license to the Zope Marks that permit the Zope Foundation to have the software be protected from a branding perspective, forever.

    Zope Corporation does not intend to change its corporate name, nor change the names of its products, and therefore will retain all other uses of the marks in order to protect the corporate brand, separate from the software brand.



17. Why can't the Zope Foundation and Zope Corporation share the trademark?
    

    A trademark is not a divisible asset. It is not possible to be "joint trademark" owners since the very purpose of a trademark is to define a source.



18. Why is Zope Corporation so aggressive in defending its marks?
    

    We have asked people to sign our Trademark license agreement. Unfortunately, many of the people that inaccurately characterize our trademark defense as "aggressive" haven't take the time to educate themselves about trademark law. Trademarks are required to be defended in order to be retained. On the other hand, since we liberally license our marks to nearly all that ask, it is completely incorrect to characterize our trademark policy as "aggressively defensive", since very few who request a license are denied, and to date, no one who has received one has had it revoked.

Zope Corporation has been a tremendous partner in our project. Working collaboratively with Zope Corporation has permitted us to educate our staff on the product inside out, without having to build something of this complexity from scratch. We retain the flexibility of making changes to the source when we want to, while leveraging the expertise of Zope Corporation and the global Zope community. A highlight of the product is the ultra-flexible and robust feeds-processing architecture embedded in Zope4Media.
- Randy Brandenburg, Vice President of Products/Technology, Boston.com