[Foundation-l] Trademarks (Was: A local chapter without Wikimedians)

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Re: [Foundation-l] Trademarks

Thomas Dalton

24 Nov 2008 24 Nov '08

4:04 p.m.

2008/11/24 Michael Bimmler <mbimmler(a)gmail.com>om>:

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Yeah and, what Nathan probably meant: If a chapter ignores a termination message and keeps using the trademark, we would need to obtain an injunction in *their* country. Now, I think the Wikipedia trademark is not even registered internationally yet (it isn't in Switzerland, so I suppose it isn't in that many other countries either), so we'd run into problems. As a matter of fact, the chapter could just register the trademark in the country and unless the foundation was willing to really put up a court fight to get the trademark back, they could just ignore the termination notice.

That's an interesting question. What is the current trademark situation for the WMF? A trademarks committee was set up nearly 3 years ago to advise the board on what trademarks to register and where but it seems to have only lasted a few months before disbanding. There is a page on meta ("Wikimedia Trademarks") that was marked as historical over a year ago on which Angela said the details of the trademarks were confidential, but that doesn't sound right - how can a registered trademark be confidential? Doesn't it need to be public knowledge in order to serve a purpose? The main reasons I can see in old discussions for not registering everything and everywhere was that it's expensive and time consuming, but we have a much larger budget now (the discussions say the registration fee is $400 a time for the US, which was a lot of money for the foundation 2 or 3 years ago, it isn't now) and a full time staff (including a general counsel) which it didn't have when the committee was set up. It would seem we can reasonably register (and even, if necessary, defend) all our major trademarks in at least those countries where we have significant activity (in terms of readership, more than anything), so has this been done?

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Casey Brown

24 Nov 24 Nov

10:11 p.m.

New subject: [Foundation-l] Trademarks (Was: A local chapter without Wikimedians)

On Mon, Nov 24, 2008 at 11:04 AM, Thomas Dalton <thomas.dalton(a)gmail.com> wrote:

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2008/11/24 Michael Bimmler <mbimmler(a)gmail.com>om>:

Trademarks has been one of Mike's projects for a while now. -- Casey Brown Cbrown1023 --- Note: This e-mail address is used for mailing lists. Personal emails sent to this address will probably get lost.

Mike Godwin

11:43 p.m.

New subject: [Foundation-l] Trademarks (Was: A local chapter without Wikimedians)

On Nov 24, 2008, at 2:11 PM, Casey Brown wrote:

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Trademarks has been one of Mike's projects for a while now.

That's right. A very large percentage of my time is devoted to securing the commercially valuable trademarks we hold and expanding the jurisdictions in which those trademarks are recognized. --Mike

Phil Nash

11:57 p.m.

New subject: [Foundation-l] Trademarks (Was: A local chapter withoutWikimedians)

Mike Godwin wrote:

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> On Nov 24, 2008, at 2:11 PM, Casey Brown wrote: >> Trademarks has been one of Mike's projects for a while now. > > That's right. A very large percentage of my time is devoted to > securing the commercially valuable trademarks we hold and expanding > the jurisdictions in which those trademarks are recognized. > > > --Mike

I don't want to seem naive but it is unclear to me how this applies to an essentially non-profit organisation; if you can help me out with a link, I'd be grateful. Thanks.

Delirium

25 Nov 25 Nov

2:59 a.m.

New subject: [Foundation-l] Trademarks (Was: A local chapter withoutWikimedians)

Phil Nash wrote:

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Mike Godwin wrote:

> On Nov 24, 2008, at 2:11 PM, Casey Brown wrote: >> Trademarks has been one of Mike's projects for a while now. > That's right. A very large percentage of my time is devoted to > securing the commercially valuable trademarks we hold and expanding > the jurisdictions in which those trademarks are recognized. > > > --Mike

I don't want to seem naive but it is unclear to me how this applies to an essentially non-profit organisation; if you can help me out with a link, I'd be grateful. Thanks.

Well, some non-profit organizations are run essentially as businesses (charitable mission notwithstanding), often explicitly in for-profit holding companies that are subsidiaries of the main organization. For example, this is how the Mozilla Corporation operates, and enforces a very aggressive trademark policy aimed at monetarily exploiting the trademarks it holds. On the other hand, Mozilla is a somewhat extreme case, and going down that path had risks in terms of goodwill, also a valuable commodity for donation- and volunteer-driven nonprofits. I would personally hope that our main interest in the trademarks is not their commercial value, but their usefulness in furthering our stated charitable mission, by reducing confusion on the part of potential users and reusers of our content. -Mark

Michael Snow

5:52 a.m.

New subject: [Foundation-l] Trademarks (Was: A local chapter withoutWikimedians)

Delirium wrote:

...

Phil Nash wrote:

Mike Godwin wrote:

> On Nov 24, 2008, at 2:11 PM, Casey Brown wrote: > >> Trademarks has been one of Mike's projects for a while now. >> > That's right. A very large percentage of my time is devoted to > securing the commercially valuable trademarks we hold and expanding > the jurisdictions in which those trademarks are recognized. > > > --Mike >

I don't want to seem naive but it is unclear to me how this applies to an essentially non-profit organisation; if you can help me out with a link, I'd be grateful. Thanks.

The benefit of trademarks for us has two aspects. One is that trademarks identify the projects - ultimately, trademarks exist to identify - which serves to minimize confusion for the general public. That's the fundamental reason for having trademarks, protecting the names associated with our mission. The second aspect is that our trademarks also have commercial value, as noted. What may not be immediately apparent is that this value isn't necessarily correlated with maximizing trademark income (the profit motive, or exploitation if you like). In fact, I'd submit that quite a bit of the value in our trademarks is due to our nonprofit status and mission. So when Mike talks about securing commercially valuable trademarks, this is as much about protecting them (from others trying to make money off them, either abusively without permission or detrimentally by taking advantage of us) as it is about making money from them ourselves. It may help to realize that our emphasis is not on proactively seeking ways to license our trademarks to bring in revenue. In reality, we're not lacking in proposals, but more time is spent turning them down even though they might be lucrative, because they're not appropriate for what we do. If we can bring in funds to support the mission through trademark licensing, that helps, but it's the only reason to do so. Considerations of trademark value are secondary to their function as it relates to the mission. --Michael Snow

Stephen Bain

24 Nov 24 Nov

10:48 p.m.

New subject: [Foundation-l] Trademarks (Was: A local chapter without Wikimedians)

On Tue, Nov 25, 2008 at 3:04 AM, Thomas Dalton <thomas.dalton(a)gmail.com> wrote:

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That's an interesting question. What is the current trademark situation for the WMF?

I don't think permanent links into Madrid Express are supported, but you can go here and search for "Wikimedia" under "mark": http://www.wipo.int/ipdl/en/search/madrid/search-struct.jsp "Wikimedia" was first registered in France and is now registered in a dozen countries. Note that there are some alternatives to having a registered trade mark - for example, in the common law countries, the action of passing off - which would likely protect the Wikimedia mark, known as it is now globally. -- Stephen Bain stephen.bain(a)gmail.com

Thomas Dalton

11:11 p.m.

New subject: [Foundation-l] Trademarks (Was: A local chapter without Wikimedians)

2008/11/24 Stephen Bain <stephen.bain(a)gmail.com>om>:

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On Tue, Nov 25, 2008 at 3:04 AM, Thomas Dalton <thomas.dalton(a)gmail.com> wrote:

That's an interesting question. What is the current trademark situation for the WMF?

That's a very useful tool (if rather cryptic in its output), thank you! If I'm reading it right, it looks like "Wikipedia" is registered far more widely.

Thomas Dalton

11:13 p.m.

New subject: [Foundation-l] Trademarks (Was: A local chapter without Wikimedians)

...

That's a very useful tool (if rather cryptic in its output), thank you! If I'm reading it right, it looks like "Wikipedia" is registered far more widely.

Actually, on a second glance, it seems to be registered in Switzerland, despite Michael's claims otherwise. Michael, what was your source for that? (Or did you mean "Wikimedia" when you said "Wikipedia"?)

Michael Bimmler

25 Nov 25 Nov

8:54 a.m.

New subject: [Foundation-l] Trademarks (Was: A local chapter without Wikimedians)

On Tue, Nov 25, 2008 at 12:13 AM, Thomas Dalton <thomas.dalton(a)gmail.com> wrote:

...

That's a very useful tool (if rather cryptic in its output), thank you! If I'm reading it right, it looks like "Wikipedia" is registered far more widely.

Very interesting, to say the least. CH is in the list column of (834) entries, and clicking on the 834 gave me "(834): Designations under the Madrid Protocol by virtue of Article 9sexies" Now I looked up article 9sexies, which reads as follows: "Article 9sexies Safeguard of the Madrid (Stockholm) Agreement (1) Where, with regard to a given international application or a given international registration, the Office of origin is the Office of a State that is party to both this Protocol and the Madrid (Stockholm) Agreement, the provisions of this Protocol shall have no effect in the territory of any other State that is also party to both this Protocol and the Madrid (Stockholm) Agreement. (2) The Assembly may, by a three–fourths majority, repeal paragraph (1), or restrict the scope of paragraph (1), after the expiry of a period of ten years from the entry into force of this Protocol, but not before the expiry of a period of five years from the date on which the majority of the countries party to the Madrid (Stockholm) Agreement have become party to this Protocol. In the vote of the Assembly only those States which are party to both the said Agreement and this Protocol shall have the right to participate." if anyone can tell me, how this relates to whether the mark is now registered in Switzerland or not, I'd be grateful. My source was www.swissreg.ch, which is the official query tool of the Swiss government (and also has an English interface, so you should be able to use it as well) I notice now, and I'm sorry for only noticing now, that they do not include international registrations in this database, I just assumed they would. Bah. Well, I'm glad that at least Wikipedia and Wikimedia seem to be somehow registered in Switzerland, but if anyone of the trademark-savvies here (or someone with more time to research than I have right now) can enlighten me on this "(834): Designations under the Madrid Protocol by virtue of Article 9sexies"-thing, I'd be grateful. Michael -- Michael Bimmler mbimmler(a)gmail.com

Geoffrey Plourde

10:58 p.m.

New subject: [Foundation-l] Trademarks (Was: A local chapter without Wikimedians)

IANAL, but I would guess that would be something similar to the Berne Convention. But then again IANAL. ________________________________ From: Michael Bimmler <mbimmler(a)gmail.com> To: Wikimedia Foundation Mailing List <foundation-l(a)lists.wikimedia.org> Sent: Tuesday, November 25, 2008 12:54:53 AM Subject: Re: [Foundation-l] Trademarks (Was: A local chapter without Wikimedians) On Tue, Nov 25, 2008 at 12:13 AM, Thomas Dalton <thomas.dalton(a)gmail.com> wrote:

...

That's a very useful tool (if rather cryptic in its output), thank you! If I'm reading it right, it looks like "Wikipedia" is registered far more widely.

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Casey Brown
Delirium
Geoffrey Plourde
Michael Bimmler
Michael Snow
Mike Godwin
Phil Nash
Stephen Bain
Thomas Dalton