[Zope] Re: Re: Zope Foundation Update

[Hadar Pedhazur]

Matt, unfrotuntately (for me), you make a number of very
good points, so I will break my self-imposed silence to
respond ;-)

Unfortunately for everyone else, this continues the thread,
but at least it feels to me like we're "de-escalating" and
hopefully actually getting somewhere good, faster...

"Matt Hamilton" <matth at netsight.co.uk> wrote in message 
news:42DFBAF8.4040000 at netsight.co.uk...
> Hadar Pedhazur wrote:
>> Beyond that point, _we_ are the first registrants of the
>> ZOPE trademark in WIPO. ZEA registered our LOGO, not the
>> word ZOPE, which we registered _before_ they registered the
>> LOGO. So, everyone, please pay attention. We did _not_
>> ignore our trademark rights in Europe. We registered our
>> base trademark, the word ZOPE, in a number of countries in
>> Europe. ZEA then registered our LOGO (taken from our
>> website), including the name ZOPE in it (which we had
>> already registered).
>>
>> I am truly unsure as to how to make this point any clearer.
>
> A few points I want to clear up... the next two paragraphs I write are 
> about technicalities, I am not refering to any moral right or wrong, or 
> who did what etc.
>
> In my view the confusion is apparent.  If I go to zope.org I see the same 
> logo (admittedly with the word community added to it).  If I install Zope 
> and go to the ZMI one of the first things I see is the Zope logo.  I can 
> clearly see how people associate the logo with the software.  Very few 
> clients (and potential clients) we talk to in the UK are even aware of 
> ZC... *in their mind* Zope is a CMS not a company.

You are absolutely correct. In certain usages, we try to
make the distinction obvious (like Community being part of
the logo, and certainly in adding "Corporation" in our own
logo). That said, our "Logo Usage" page on zope.com, which
has been there for a _very_ long time, makes it clear that
we own the trademark for _all_ variations of the mark, and
that we _freely_ license it (without any signatures!) for
certain usage, and license it under a contract for all other
usages (most of those are free too!):

http://www.zope.com/about_us/legal/zope_logo_usage.html

The point is that even the logo in the free Zope software is
"owned" by us. It just happens to be freely licensed, with
no fee or contract. That doesn't make it available to be
registered as an owned trademark by someone else.

We don't care if potential clients of yours don't associate
the logo with us, that's obviously fine. We _do_ care if
they associate the logo with ZEA and nobody else. If they
associate it with Zope the software, that's fine too, and
doesn't require a license, but that still leaves us as the
owners of the mark.

> And please please please remember that there is no such thing as 
> 'registered the trademark in Europe'.  There are many companies in Europe 
> and the trademarks have to be registered in specific countries.

Again, you are correct. I noted in my previous response to
you that you were also correct that we picked countries that
were economically interesting to us.

>> Read the above response again (and again if necessary). More
>> importantly, ask yourself why ZEA admitted to us during a
>> phone call that they believe that there were deals that they
>> could not have won if they didn't control the mark? Now
>> extend that thought one more inch and ask yourself how the
>> Zope-based companies that they competed against in Europe
>> would feel if they knew that this was a commercial leverage
>> point for ZEA in winning against their bid?!?!?
>
> You are twisting the truth here -- I wish I had recorded the phone call 
> now to prevent the chinese whispers :)  On the call to Lois, Xavier said 
> that there are certain possibilities of using Zope for EU projects which 
> would be hampered by a corporation (ie ZC) owning the trademark to the OSS 
> software.  ZEA does not want the trademark.  Repeat.  ZEA does not want 
> the trademark.

Huh? ZEA does not represent everyone in the Zope Community
(as Rob has already pointed out) and worse, does not even
represent all commercial Zope companies in Europe. How does
ZEA holding the trademark make an EU project "less hampered"
than ZC holding it? You can keep repeating that ZEA doesn't
want the trademark, and yet, you registered it...

>> it's utterly obvious that even the more basic of the "facts"
>> are still misunderstood by a number of posters. As an
>> example, the repeated questioning of why we didn't register
>> our own marks in Europe, which we did.
>
> Yes, you are still mis-understanding the facts.  Europe consists of many 
> countries, of which you registered the mark in just six - Germany, 
> Denmark, Spain, France, Great Britain and Italy.

This is the third time that I am publicly agreeing that we made a choice.

> ZEA then went on to further protect the mark registering it in: Austria, 
> Bulgaria, Switzerland, Cyrus, Czech Republic, Hungary, Lithuania, Poland, 
> Portugal, Romania, Russia, Slovenia, Slovakia, Ukraine

Really? We registered the base word Zope, from which all of
our other marks derive (except for the separate trademark
that we have on the Circle-Z logo). You did _not_ register
the word Zope in any of the other countries, so you did not
in fact "further protect the mark" in the countries that you
mention above. You registered a logo that we have a
registered trademark for in the US, that we paid to design,
that includes our registered (in a number of EU countries as
well) trademark "ZOPE", with publicly stated policies for
its usage available on our website, and not only registered
it in the "additional" countries, but also registered it in
all of the countries where we were already "protected".

I truly think it's time to just call it like it is, and stop
pretending that you were saving the world from a few bad
guys.

People make mistakes, we all do. We didn't threaten to sue
you (though we were most definitely accused of having
threatened to sue you, which we responded to in writing that
we did _not_ intend to sue you!). We simply pointed out that
the mark was registered in your name, and that we wanted it
transferred back to us. At this point, the transfer would
still solve the problem quickly, but we are just as happy to
have it "reversed", which in some sense will more firmly
cement that our position was correct all along...

>> Amazingly enough, we have owned the trademark since 2002 (we
>> changed our name in 2001, and it took that long to get the
>> trademark registered in the US). There was _no_ hope of a
>> Foundation at the time. Yet, by your own admission, you and
>> others continued to invest marketing money in the brand.
>> Why?
>
> Because we believed (and still want to believe) in the good of all the 
> parties involved.  I guess when we started investing in promoting the 
> software there was no confusion with the name, now there is.

My point is that the confusion has existed since 2001. This is 4
years later, and you continue to invest. It's obvious (to me) that
we haven't behaved in any way that should cause people to stop
investing in the brand, and that we continue to try to be creative
in finding ways to make people feel even more comfortable in
continuing that investment (like Rob's recent suggestion of having
the ZF be the ultimate arbiter).

>> The more amazing part is that now that we will transfer the
>> IP to the Foundation, and give an _irrevocable_ license to
>> the Foundation for the use of the word ZOPE to brand the
>> software (which can _never_ be taken back, even if someone
>> acquires us), but somehow, _now_ you are worried about
>> investing in the Zope brand. I simply can't connect the
>> dots.
>
> I guess its because IANAL, but I just:
>
> 1) Don't understand how an irrevocable license works.

Straight from the dictionary:

http://dictionary.reference.com/search?q=irrevocable

"Impossible to retract or revoke: an irrevocable decision."

Note the word "Impossible" in the definition...

> 2) Am still unclear of licencing issues, when Rob spoke at EPC about the 
> foundation it was very unclear as to who would make decisions on 
> licensing, in some cases ZC would have the final say, and in some cases 
> the ZF.  It just seemed confusing to me.

We have attempted to clarify that in writing in Rob's post on Tuesday.
The Foundation will be responsible (100%) for any licensing involving
the Software, and ZC will not be involved. For any "business" use of
the word Zope, ZC will be involved if there is any ambiguity regarding
whether the business use implies ZC.

> 3) ZC is a very small, yet very powerful part of the Zope Community (maybe 
> this is just my view from Europe).  Can you explain to me exactly what 
> benefits ZC has in holding the trademarks as opposed to them being held by 
> an independant foundation?  The fact that ZC doesn't want them to be held 
> by an independant 3rd party makes me think something sinister is planned 
> on the horizon.

Sinister? We want two things from holding the trademark:

1) No confusion as to the source of our products.

2) The right to license the mark to those that see value in it.

Since the rights that 99.9% of the community are interested in are covered
100% by the license to the ZF, there should be a handful of people 
world-wide
who will be unhappy with this (if everyone truly understands the issue), and
those people are unhappy today anyway, since we already own the mark.

>> Two months ago, you would invest, when there was no
>> Foundation on the horizon, and the Zope software could be
>> revoked by a future acquirer of ZC. Now, there will be a
>> guaranteed future for the Zope software and brand forever,
>> independent of ZC, but that's somehow now "risky" for you to
>> invest...
>
> Yes a future acquirer of ZC could try and revoke the software, but it is 
> licensed under the ZPL so is joint ownership.  I think this creates enough 
> of an incentive to prevent this happening as much of the code is 
> contributed by people other than ZC.

We are talking apples and oranges here. You could always fork the
software. Before the ZF though, your fork would have had to be renamed
and the brand equity you so desire would be gone in an instant. With the
new ZF, and our irrevocable license to it, no acquirer can _ever_ take back
the word Zope from the community (or more properly from the ZF). This
is _way_ better than the situation you are currently in, but somehow, the
TM debate rages on.

>> I agree that Rob's suggestion was a good one, and the fact
>> that I agreed to it shows that we are more than willing to
>> work with the community to find _reasonable_ ways to solve
>> problems.
>
> Yes, it is reasonable and it is a start of dialogue.  This is a distinct 
> improvement over last week's approach of 'We are not negotiating anything. 
> Hand it over or we set our lawyers on you'.  When I *specifically* asked 
> Lois if something like this was possible she re-iterated that you would 
> not be willing to enter any further discussion.

Let's make another important distinction here. We were not,
and are not willing to negotiate with ZEA over the
registration of our TM.

We are _more_ than willing, and have _always_ been willing
to listen to the community regarding issues that can help
the community grow. So, when the current TM dispute is
behind us, and it is obvious to one and all that we own the
TM wherever we choose to register it, we will be happy to
continue to find even more ways to make the community feel
comfortable regarding TM and anything else, for the growth
of the community, and the benefit of all.

>> Perhaps European law is different that US law, but Rob
>> stated clearly that the contract would name ZC's successors
>> and assigns, which makes it legally binding on anyone who
>> purchases ZC as well. In the US, that contract would survive
>> the sale of ZC. I see no reason to be paranoid about that
>> eventuality, as long as you would trust the initial contract
>> between ZC and the ZF.
>
> OK, in which case, that makes sense to me.  Combined with Rob's idea of 
> letting the board of the ZF make the decisions on licensing issues I think 
> I personally am happy.

Excellent! Like I said in my first post yesterday, even with
the current dispute ongoing, it is our intention to fulfill
every promise we have made with regard to forming the
Foundation and delivering the code and the license for the
marks. The only thing we said was there might be a delay in
the formation, until the dispute is resolved.

Perhaps, since you are a member of the ZEA, you can help
make some of your other members more comfortable, and help
accelerate the resolution of the dispute. If not, that's
fine too.