Red Hat Comments on License Agreement

[David Nalley]

On Fri, Aug 28, 2009 at 2:55 PM, Pamela Chestek<pchestek at redhat.com> wrote:
> 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
>
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>

So I don't have a stake in the underlying conversation, but it's times
like this that I am reminded how awesome the free software/open source
community is, and even more so how companies within that community who
grok open source.
Just days ago I marvelled at how Mo noted that there was a problem
with playing certain video files within gstreamer - and within hours
there was a bug filed, a temporary workaround, and someone within
gstreamer committed a fix. Despite how awesome that is, this kind of
solution happens all the time in the community.
Now fast forward to today, and we have a 'Senior IP Attorney' at a
major company communicating directly with community members, and
working to address concerns of community. That is awesome!!! I am
impressed every time I see Richard Fontana, and more recently Pamela
Chestek showing up on Fedora mailing lists, and specifically because
they are spending the time to address concerns of the community. You
guys are to be commended for this as is RHT for letting you do this.