[Juriwiki-l] Re: [Foundation-l] Trademark violation of our 'MediaWiki' mark

[Jean-Baptiste Soufron]

Daniel Mayer wrote:
> --- Anthony DiPierro <wikilegal at inbox.org> wrote:
>> Is there an officer who either is tasked with this type of thing or can
>> appoint someone to be? A request really needs to come from someone acting as
>> an agent of the foundation, and having it come from 50 different wannabies
>> is going to be counter-productive.
> 
> Having an intellectual property officer was part of my platform in the first
> board election. This person would be the official point-of-contact for the
> foundation on these matters. I think it is high time we create such a position
> as part of the legal department. We *don’t* want to be trademark and copyright
> Nazis, but at the same time we do need to have somebody who is tasked with
> representing the foundation on these matters when needed (as a final step in
> the illegal mirror review process and as one of the first steps in the
> trademark protection process; of course, asking nicely at first, yada, yada). 
> 
>> According to the US Code, a work made by an employee within the scope of his
>> employment is *always* a work made for hire. The copyright may have been
>> transfered (and that transfer can be terminated after 35 years), but AFAIK
>> you can't change the authorship of a work.
> 
> Perhaps. But my gut feeling is that only really applies when a specific work is
> commissioned... That is not the case with almost all of what Brion does. He is
> pretty much paid to do what he thinks is best (that itself, may or may not be
> legal). Either way, copyright ownership is a transferable asset, so if needed
> we’d just need to draw-up a contract whereby the foundation gives ownership of
> his paid copyrighted work as part of his compensation. 
> 
> This is a very important point that we need to work out; if Brion’s work is
> owned by the foundation, then the foundation may need to account for that as an
> asset (this part of the law confuses me though since some types of software
> fall under it and others do not). Since I don’t yet know how to do that and I’m
> the CFO, I’d much rather have Brion retain ownership of all his work if it
> means less work for me. :-) I wonder how free/open source software companies do
> this. For that matter, how the FSF does this since they like to have GNU
> software copyright assigned to them (I don’t recall if that means transfer of
> ownership). 

Well, being the Legal Officer I think it should be my job.

With one master in IP law, and another master in contracts, having
worked for IP Law Firms in France and in Japan, working for the EU 
commission on licenses, etc.
I guess I have all the required credentials.

And much of the work I do on juriwiki-l and on IRC already concentrates
around IP issues of Wikimedia projects (licenses compatibility,
copyright violations, trademarks, public domain, etc.)

This said, from my point of view, I don't think there is a real need
for a designated IP officer today.

To be efficient, answering trademark issues must follow some sort of
3-steps process :

1. At a primary level, answering trademark issues is only about getting
information and asking politely for explanations and changes. Only very
simple knowledge of law is required at that step. It can be easily done
by any officer of the Foundation, or local chapter representative.

2. But then, it is possible that things become more complicated and that
Officers and local boards would need some help. In that case, I can
easily intervene directly as the Legal Officer of the foundation, and 
draft beautiful
legal letters ; or stay in the background and give them a few advices on
what to say and not to say. It is also easy to send a mail to the
juriwiki-l mailing list and get some helps from these legal professionals.

3. Finally, there could be some rare cases when it would be necessary to
act judicially. That would mean to rely not only on Foundation Officers
but also on some actual Law Firm.

This process is what I think to be the most efficient solution and it
would simply rely on good communication between Officers.

If necessary, the board could easily make the role a bit more precise by 
pointing out
  that the legal officer of the Wikimedia Foundation is especially
charged with IP issues related to Wikimedia projects.

Jean-Baptiste Soufron,
cersa-cnrs paris 2