Red Hat Comments on License Agreement

[Pamela Chestek]

Let me introduce myself. My name is Pam Chestek and I am the in-house 
Red Hat lawyer with the primary responsibility for trademarks 
company-wide. I wrote the original license and I am the person advising 
Fedora on it.

First and foremost, let me say that Red Hat hugely values the Fedora 
community and the Fedora Project. It's important for you to know that 
when I do work on behalf of Fedora, my only responsibility is to do 
what's best for Fedora. The agreement is intended to protect the 
collective interest of the Fedora Project and community as a whole. You 
may not like how the agreement affects you as an individual, and you may 
disagree that the decisions accomplish the goal. But Red Hat has no 
hidden agenda and the only consideration when making decisions is 
Fedora's best interest.

The feedback on the license has been invaluable and I thank everyone for 
their thoughtful review and input. A number of issues have been raised 
and I'll try to cover them all.

First, on the translation. I did not provide a translation because for 
the most part you are reading the English version correctly. There are 
only a few places where I think there might be a misunderstanding, but 
they are only minor. So a German translation would not have solved the 
problem and would have added more problems, since there would be more 
discrepancies introduced by adding a second version. It makes sense to 
me to work out the issues in English without confusing things by adding 
another language.

On to the issues in the agreement itself. One major sticking point is 
termination. There were three bases for termination in the original 
agreement, 3(a) for convenience, 3(b) for material breach, and 3(c) if 
there is a lawsuit. The purpose of Paragraph 3(a) was to give Fedora 
flexibility in what it does. For example, if the Fedora community 
decided that the “Fedora” name didn't appropriately represent the 
project anymore and wanted to change it, all the licenses could be 
terminated and new ones granted for the new name. Because this has been 
so controversial, though, we can forgo the flexibility and eliminate 
this basis for termination.

I don't think that 3(b) and 3(c) should be too controversial. I believe 
everyone agrees it's reasonable to terminate the license if one of the 
parties isn't meeting their responsibilities under the contract. I want 
to point out that the termination is not for any breach, but only for 
“material” breach, which I'll talk about below.

3(c) is there because if there's a lawsuit, there must be a way to make 
immediate changes to avoid further damages. So, for example, if a 
licensee was sued for trademark infringement for its use of Fedora (a 
situation where Red Hat indemnifies the licensee), it might be 
reasonable to have the web site stop using the Fedora trademark to 
prevent further liability, so terminating the license would be an 
appropriate action.

Another major issue is giving the domain name to the Fedora Project when 
the agreement terminates. It would be exceptionally damaging to the 
Fedora Project if a domain name that was previously used for the 
betterment of the project fell into the hands of wrongdoers and was used 
in a way harmful to Fedora. It would even be damaging if people were 
used to visiting a particular site for Fedora info but that site just 
wasn't there anymore, because we would have lost touch with community 
members and they might think less of Fedora because of it. It's just not 
in the best interest of the Fedora Project to let that happen.

On indemnification, the agreement does not give Fedora the right to 
control what is on your web site (other than how you use the Fedora 
trademarks), so it seems only fair that everyone is responsible for 
what's in their own control.

Take a hypothetical case where there was no indemnification provision 
and both you and Red Hat are sued for a claim unrelated to the trademark 
(a claim for a bad computer repair or something). Assume the court 
awards some amount of damages to the plaintiff on his or her claim. 
Since both of us were named as defendants we can both be held 
responsible for payment, but the payment will only be the amount awarded 
by the court (not doubled because there are two defendants). The only 
difference when there is an indemnification is that there is also a 
private agreement between us that, because you caused the claim and Red 
Hat had nothing to do with it, you will pay the whole amount. Likewise, 
if the only reason you are in the lawsuit is because you are using the 
Fedora trademark, Red Hat has to pay the whole amount. That seems fair.

There was a lot of concern that failure to follow the guidelines would 
mean that the contract was breached and would terminate. That's not true 
at all. As I mentioned above, the contract will only terminate for 
“material” breach of the contract, not minor ones. A law dictionary 
defines “material breach” as “violation of contract which is substantial 
and significant.” Things like forgetting to use the ® symbol would never 
be considered a material breach. We include the Guidelines as part of 
the agreement because fostering consistent use of the Fedora marks is a 
major goal of the contract, but it would take a flagrant disregard for 
the Guidelines before it would be considered a “material” breach. Even 
then, in the case of a “material” breach there is a cure provision; that 
is, before the agreement terminates we have to give you written notice 
of the breach and you have seven days to correct it. It is therefore 
just not possible that minor oversights in following the trademark 
guidelines would ever be a reason to terminate the agreement.

There are several places where people have pointed out that following 
the guidelines wouldn't be possible. We can put language in the 
agreement that addresses those as necessary, for example, to clarify 
that if a site only mirrors then it is otherwise excused from the 
guidelines.

There was another comment about having an English-language trademark 
legend on a German site; that's also a good point and we can change it 
to say that the legend should be in the language of the site.

The concept that marking the Fedora mark but not others' might expose 
the web site owner to liability is not something I am familiar with, but 
I'm happy to try to accommodate concerns like these once I understand 
where the problem lies.

With respect to a concern that the agreement means you will have to 
cease using “Fedora” altogether if the license terminates, that is 
indeed what the agreement says, but that wasn't the intention and I will 
modify the agreement. The concept was that you would not have a license 
to use the trademarks, but you would still be able to use them in the 
same way that any other unlicensed person could use them under 
principles of fair use. I will change the sentence to read “The license 
to use the Licensor's Trademarks will cease immediately upon the 
termination or expiration of this Agreement.” I'll delete the remainder 
of the sentence. Will that be acceptable?

There was also a comment suggesting that those who signed the license 
were obliged to use the Infinity logo. That's not true; there is nothing 
in the agreement or the guidelines that requires use of a trademark. 
Instead, the agreement only says that if you use the Fedora name or 
logos, you have to use them properly.

There was one very good comment that both sides expect to gain from 
entering into a contract. That's true and I hope is the case here. The 
principle purpose of the license is to allow widespread use of the 
Fedora trademarks, but making sure it is done consistently and always 
with a clear reference to the Fedora Project. Consistent use is critical 
to building a strong, recognizable trademark, which in turn increases 
the visibility of the Fedora Project and the community. I hope everyone 
agrees that this is a valuable benefit to everyone.

There's another critical benefit to the community. An unlicensed use is 
an infringement (assuming it's not a fair use). If the Fedora Project 
tolerates some infringements, even “friendly” ones, the day will someday 
come when it could not take any action against a harmful, confusing use 
and the community's unique identity will fade away. If instead the 
Fedora community makes sure that the appropriate licenses are in place, 
the identity that we share collectively remains strong and vibrant for 
all our benefit.

I welcome your comments.
-- 

Pamela S. Chestek
Senior IP Attorney
Red Hat, Inc.
1801 Varsity Drive
Raleigh, NC 27606
919-754-4473
pchestek at redhat.com