[Foundation-l] Fair Use and Registered Trademarks

[Robert Scott Horning]

I've come across a potential legal issue that has an impact across 
several Wikimedia projects that I'd like to bring up for general discussion.

I've been trying to find a home for the 1911 Wikipedia (for more 
details, see the new project page), and I've been attempting to move it 
to Wikisource, with the following discussion at the Scriptorium: 
 http://wikisource.org/wiki/Wikisource%3AScriptorium#1911_Wikipedia

The larger issue I am seeking input from the regulars of this mailing 
list is in regards to proper use of registered trademarks for larger 
projects.  In this case it is how a registered trademark can be properly 
used or avoided when a project is tied to something that inevitably has 
strong references to registered trademarks.

In this case it is in reference to the 1911 edition of the Encyclopedia 
Britannica, where a whole sub project is going to be based on content 
from that set of volumes.  This issue could also deal with How-to books 
in Wikibooks or even Star Trek or Star Wars trivia entries in Wikipedia, 
which is again why I'm posting this issue here rather than other 
Foundation lists.

In particular for the Encyclopedia Britannica, this issue already came 
up with Project Gutenberg where Encyclopedia Britannica's legal team 
forced Project Gutenberg into a policy statement.  Keep in mind that 
prior to this official statement, Project Gutenberg routinely referenced 
the associated text with the Encyclopedia Britannica by name.  What 
resulted was the following:

    "The Project Gutenberg Encyclopedia is a reproduction of a 1911
    edition of a famous encyclopedia. The text has not been updated.
    Although the text is in the public domain in the United States, the
    original publisher still has a valid trademark in the original title
    of the encyclopedia. The original publisher offered Project
    Gutenberg a license to use the trademark, but the terms of the
    license were not consistent with the volunteer noncommercial nature
    of Project Gutenberg or its primary goal of distributing electronic
    text with the fewest possible restrictions. In order to avoid the
    possibility of trademark infringement, all references to the
    original title and the original publisher have been changed or
    deleted. Because of numerous references embodying possible
    trademarks, the entire preface has been omitted. The original
    publisher of the 1911 print encyclopedia was not and is not involved
    in any way with the creation, editing or distribution of the Project
    Gutenberg Encyclopedia. Any errors which may have occurred in the
    conversion to electronic form can not be attributed in any way to
    the original publisher. In order to avoid possible future trademark
    infringements or confusion in the minds of the public, this
    electronic version should be referred to as the Project Gutenberg
    Encyclopedia. The name of the original print encyclopedia should not
    be used in any way in connection with this electronic text."

I am suggesting that the Wikimedia Foundation follow the lead of Project 
Gutenberg in this case and try to avoid implied endorsement by also 
avoiding the use of registered trademarks when possible.  The real 
question then is how and in what cases should registered trademarks be 
omitted?  Obviously there shouldn't be much of a problem for a Wikipedia 
article about a company, but it gets into grey areas when you get into a 
collection of articles that could be refered to by using a registered 
trademark, such as Ford mussle cars or kinds of SPAM.

Obviously each Wikimedia project will end up having to deal with this 
issue independently on the fine points, but it wouldn't hurt to 
establish some general policy guidelines either.  Any general assistance 
would be appreciated.

-- 
Robert Scott Horning