> > On Fri, Dec 19, 2008 at 5:30 AM, Simon Josefsson > <simon@xxxxxxxxxxxxx> wrote: > > ... > >> If you are updating a pre-RFC 5378 document that contains > trademarked > >> words, it isn't sufficient for the old contributor to have > signed the > >> IETF Trust form if the document contains trademarks. You need to > >> contact him anyway, to get permission to reproduce the trademark. > >> > >> /Simon > > > > You should consult an attorney but, as far as I know, at > least in the > > US, there is no magic permission needed to "reproduce" a trademark. > > Usually trademarks are to indicate the source of a product > or service > > and as long as you don't mislead people about that, you are fine. > > Then what use does section 3.4 of RFC 5378 serve? > > 3.4. Rights to Use Trademarks > > Contributors may wish to seek trademark or service mark > protection on > any terms that are coined or used in their Contributions. The IETF > makes no judgment about the validity of any such trademark rights. > However, the IETF requires each Contributor, under the licenses > described in Section 5.3 below, to grant the IETF Trust a perpetual > license to use any such trademarks or service marks solely in > exercising rights to reproduce, publish, discuss, and > modify the IETF > Contribution. This license does not authorize the IETF or > others to > use any trademark or service mark in connection with any product or > service offering. > > It was co-authored by the IETF attorney, so I suspect it is > intended to > serve some purpose. > > If it serves a purpose, contributors needs to get the necessary right > and be able to transfer it to the IETF Trust in order to submit a > contribution. As far as I understand, that would involve talking with > the old contributor if trademarks are involved. For background, the trademark license was included in RFC 3978 because someone was concerned about Contributors who submitted documents to IETF for standards-track use and included trademarked product names in them. The IETF wanted to ensure that the IETF process would not be hindered by the Contributor, and also wanted to ensure that the trademarks were identified so that implementers would not be surprised by the trademark owner's claim after a standard was adopted. While it's true that trademark *infringement* requires an infringing use (i.e., use on a product or service), and that IETF would likely not be engaged in such an infringing use, the US also gives owners of "famous" marks the ability to sue for trademark "dilution", which does not require an infringing use. To be absolutely safe, the IETF has requested the trademark license to avoid any infringement or dilution suit. This being said, for the sake of completeness, the Contributor License should probably include both trademark and copyright grants (thanks to Simon for identifying this). However, given that RFC 3978 includes the same trademark license as 5378, the issue only exists for pre-3978 documents. Moreover, RFC 2026 requires identification (via IPR disclosure) of any IPR rights relating to Contributions, which technically would include trademarks. If a Contributor did not identify the relevant trademarks in an IPR disclosure (a rare occurrence), then one would question the enforceability of those trademarks against IETF. Pre-2026 IPR policies such as those contained in RFC 1602 and 1310 include wording relating to rights that could also include trademarks. Thus, I think that including a trademark grant in the Contributor License would be an improvement, but don't view this as a large issue in any case. _______________________________________________ Ietf@xxxxxxxx https://www.ietf.org/mailman/listinfo/ietf