[linux-elitists] *tris?

Rick Moen rick@linuxmafia.com
Mon Jul 10 02:12:12 PDT 2006

Quoting Don Marti (dmarti@zgp.org):

> One Tetris-like game for a non-free platform got a
> C&D from The Tetris Company.
> http://simonhaertel.de/
> http://www.boingboing.net/2006/07/09/mac_tetris_game_kill.html
> [...] 
> But a lot of the Free Tetris-like games have names
> that a court might say are confusingly similar to
> Tetris ("${toolkit_name}tris").

>From rick Mon Jul 10 02:08:09 2006
Date: Mon, 10 Jul 2006 02:08:09 -0700
To: chris.wells@gmail.com
Subject: Trademark and unfair competition laws (since I can't address the Norris McLaughlin & Marcus letter itself)
X-Mas: Bah humbug.
User-Agent: Mutt/1.5.11+cvs20060403

Dear Chris:

I'm not an attorney, and so cannot offer legal advice on your specific
situation.  I'm merely a sysadmin with a very longtime interest in legal
issues concerning software.  (Attorneys are allowed to comment on your 
legal specifics if they are accredited to the bar in your jurisdiction,
but generally will not do so unless they've accepted you as a client and
studied the specific facts of your case at length.)

One cautious way to avoid violating the "unauthorised practice of law" 
statutes (which prohibit me as a non-lawyer from giving you legal advice) 
is to comment about the law itself in general terms.  Anyone is
permitted to study and understand the law, and discuss it with others;
it's an important part of citizenship to do so.  Therefore:  I will
discuss trademark and unfair-competition laws in general.  I make _no_
representation about Quinn, Tetris Company, LLC, or the legal issues in
your case.  You can decide for yourself how what I say applies to your
situation, if at all, and how credible it may be.  If you feel you need 
specific legal advice, you should get it from a qualified attorney.

(Saying the above and meaning it protects me against anyone claiming
that I overstepped prohibitions on amateurs giving people legal advice.
And I do mean it.)

Trademark Law

A trademark is an abstract property anyone can establish ownership over, 
consisting of the "brand identity" of something as a good or service.  
(Technically, for services they are called "service marks", but are
governed by the same laws.  In the USA, the governing legislation for
Federal trademarks is the Lanham Act, chapter 15 of the United States code.
Each state also has statutes governing common-law trademark.  See:

To be valid under either Federal or common-law theories, trademarks must
be distinctive.  ("Joe's Restaurant" is not qualified.)  You establish
common-law trademarks through using them in commerce; you establish
Federal trademarks by paying $330 to the US Patent and Trademark Office
every 10 years.  Trademarks are in the general case enforceable, at most,
only within the trade or industry where you create your brand identity.  
Thus, if I establish a trademark for Unix as an operating system, I 
cannot sue to enjoin someone from selling Unix diapers.  (Unix-brand 
diapers do exist.  There's a page of "other Unixes" linked from, I
think, Dennis Richie's Web page.    Common-law trademarks are valid, 
at most, only in the same geographical area.  Thus, if I establish a
brand identity for Moen's Tavern in San Francisco, I cannot force a
Moen's Tavern in Seattle to change its name.

  1. Infringement

The main thing trademark law hands to a validly established trademark's
owner is the right to enjoin _commercial_ competitors from offering
competing goods or services that use the other guy's trademark in a
fashion likely to confuse the trademark owner's customers into thinking
he'd produced or endorsed his competitor's competing goods.  This is
called the tort[1] of "trademark infringement".  If you are claimed to
have infringed, then plaintiff must prove to a judge's satisfaction that
his own customers are reasonably likely to have been mislead (confused)
by your use of the trademarked and distinctive name, mark, phrase, or
style into thinking that your commercially offered competing goods
_were_ his goods, or that he endorsed them.

Important:  Your infringing use of the mark _must be in commerce, or it
absolutely is not infringement.  Therefore, one way to be completely
and utterly immune to charges of trademark infringement is to not charge
money for what you do.

It should be reasonably obvious that, therefore, another way to fight off
possible claims of trademark infringement is to include a statement that
your goods are services are not produced or endorsed by the other guy.
See, for example, the legal disclaimer on http://linuxgazette.net/ that
the editor-in-chief put there after talking to me about trademark law.

   2.  Disparagement

Under a separate tort theory, if you use someone else's validly
established mark in such a way as to associate it with immoral or
illegal behaviour, or such, i.e., dragging it through the mud, you're
considered to have reduced its value wrongfully.  Commerce is _not_ a
necessary part of this tort, by contrast.  E.g., if you make a movie
where Mickey Mouse has anal sex, Disney's lawyers would argue
disparagement, even if you never made a dime from the flick.  The
"parody defence" (which is against _copyright_ infringement, by the way)
won't protect you.

   3.  Dilution

A relatively new extension to trademark law has been to allow certain
extremely famous brands' owners, e.g., Coca-Cola to claim that their
brands are _so_ famous that third-party use of their brands _regardless_
of whether they're in the same trade or industry harms the brand's value
and can be enjoined.

Personal comment:  There's a fundamental fact about trademark law that
leads most trademark owners to behave in a rather insanely aggressive
manner towards _anyone_ who makes use of their protected marks, even 
competely legal ones -- e.g., non-commercial uses.  They'll usually 
retain a law firm to crank out nasty threat letters to all such users,
without regard to the actual law.  (It's not illegal to make toothless
and ludicrously belligerent legal threats, and it costs them only

Unfair Competition

The law doesn't permit people to compete in the marketplace (_in
commerce_) egregiously wrongful or deceptive manners.  Doing so is
(again) a tort.   See:
Trademark infringement is basically a type of unfair competition, except
with its own special controlling statutes.

There is nothing in law (all other things being equal) preventing you
from inventing and giving away for free something that is similar to a
commercial offering -- except in very special circumstances where a
judge might find that you were normally a commercial competitor but were
doing special "dumping" in this one instance to destroy a competitor.
The mere fact that some business doesn't like what you're doing doesn't
make it "unfair" per the law.

Personal comment:  Again, remember that threats cost businesses only
postage, so they can afford to send out laughable threats, on a theory
of "Hey, if the other guy capitulates, we win with an expenditure of
only 39 cents."

Another place you might want to look through:
http://www.chillingeffects.org/  The law students who maintain that
site, like me, tend to discuss only the broad shape of controlling law,
and leave it up to you to decide whether it applies or not.

[1] A "tort" is a wrongful deed within the scope of civil law, as
opposed to a "crime" which exists in criminal law.  You get _sued_ for 
a claimed tort by the injured party, seeing a judge to order monetary
damages or corrective action.   One is not tried by the state for torts,
as they're considered private matters between two parties, and you
cannot be imprisoned or fined by the state for them.  (This is of course
in the USA and similar legal systems.)

You get _prosecuted_ by the state for allegedly committing crimes, and
if convicted (through showing of evidence past all reasonable doubt,
versus proponderance of the evidence in civil law) can be either fined
or imprisoned.

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