Re: [GNU-linux-libre] Usage of NINTENDO, MAME and other trademarks

[Stephen Clement]

Hello Jean,

On 04/02/2016 03:53 AM, Jean Louis wrote:

Hello Stephen,

On Sat, Apr 02, 2016 at 02:49:07AM -0400, Stephen Clement wrote:

Hello Jean,

I think that claims of danger from Nintendo are rather overstated. I'm not
aware of any free software emulators, or repositories hosting them, being on
the receiving end of legal threats from Nintendo. To my knowledge, Nintendo,
Sony, etc. have limited their attempts to enforce their trademarks to those
making commercial emulators.

I am not sure for the basis or foundation of your opinion. Is it just
personal or you have argument that is based on some legal practice.

No, I'm requesting for you to provide a counterexample, showing that it is a credible threat.

There are numerous definitions of the word "commercial", just look it up
in the dictionary. I will assume you think "connected to sales".

For the purpose of determining damages in US courts, actual profits are one of several factors used to determine damages:
http://www3.ce9.uscourts.gov/jury-instructions/node/254

However, that term "commercial" is not the deciding factor for the
courts. Further, it would be very questionable in courts, if asking for
donations does not constitute "commercial usage".

When software is published as GPL it is "commercial", as if you wish to
give freedom to others, you do not forbid them selling the software. GPL
software has been sold over and over and some companies made millions on
that. 

There are two separate issues at play here. Could GuixSD be at risk, and could further distributors also be at risk?

Given that it's basically impossible to distribute an operating system in the United States commercially without infringing patents, sometimes it's worth distributing regardless, and I see that GuixSD has on many other occasions decided to distribute packages which infringe patents, and make reference to trademarks.

In particular, I see that GuixSD also includes many tools which include other registered trademarks, among them:
gtk-vnc (VNC is a registered US trademark)
idle3-tools ("Change or disable Western Digital hard drives' Idle3 timer")
libbluray (owned by Sony, no less)
libtorrent (".. BitTorrent ...")
libvisio ("... Microsoft Visio ...")
etc.

With the exception of idle3-tools, all of them go so far as to incorporate the trademark directly into their name. None of these are created by the trademark holder, but are compatible. Mupen64 and the like are in a similar situation, and are less blatant about including the trademark directly in their name. What makes Nintendo special, especially from a legal point of view, outside the usual menacing notice on their website?

This isn't even getting into the gnarly software patent issues. It appears GuixSD includes ffmpeg, which clearly has limitations on how it may be used for profit in the United States due to MPEG LA's patent portfolio.

Why are they distributed by GuixSD?

So free software does not forbid anyone selling the software. In that
regard software is commercial and may be considered such by the court.

There are various methods how trademark owner may attack the party, it
need not be based on "commercial" factor at all.

There is term such as "dillution of trademark". Read here:
https://en.wikipedia.org/wiki/Trademark_dilution

Unless someone proposes money changing hands, under US law trademark dilution cannot occur.

"If someone sues you for trademark dilution, you can argue that your use of the famous trademark was "noncommercial." Congress created this defense, found at 15 U.S.C. § 1125(c)(3)(C), out of concern that dilution claims would impinge on the First Amendment rights of critics and commentators. Following Congress's lead, the courts have interpreted this defense broadly, holding that the term "noncommercial" applies to any speech that does more than propose a commercial transaction."

Source: http://www.dmlp.org/legal-guide/using-trademarks-others

Furthermore, at least in the United States, such efforts have failed:
https://en.wikipedia.org/wiki/Sony_Computer_Entertainment,_Inc._v._Connectix_Corp.

Yes, that is good example. But example cannot be generalized.

I have provided arguments in order to avoid such court processes. A
court process is very particular to the case in question. With just
slight differences, there can be totally different result, and judgement
could be different.

Short of a going to the expense of consulting counsel, precedent is by far the best way we have at hand to determine how a future court would rule. In this case, a court happens to have ruled on something exceedingly similar.

It is impossible to simply say "such efforts have failed", you should
not use that in plural and generalize. One particular effort has failed
in that particular case. Court proceedings may be very costly.

My arguments are for the helpful attorneys who may give the
clarification on what is best to do.

I don't think that my arguments on usage of trademarks in free software
distributions shall be made by voting, or based on opinions, it shall be
rather legally verified. 

Distributions do not have unlimited legal resources. I'm not certain who is making the decision to spend time on it, but it may well be your prerogative.

Lest you think I'm able to sit back and criticize without putting myself in harm's way, I previously was a packager for BLAG (on GNU's free distro list) and we did decide to distribute Mupen64, FreeCIV, ZSNES, etc. with no issues that I was aware of.

Today, emulators using Nintendo system names continue to be available in
large markets (i.e. Google Play), despite having 'SNES' in their title, such
as:
https://play.google.com/store/apps/details?id=com.explusalpha.Snes9xPlus&hl=en
Or, others sold commercially (and under a proprietary license) describing
themselves as an "N64 emulator":
https://play.google.com/store/apps/details?id=paulscode.android.mupen64plus&hl=en

You should be very very precise when making such statements, such as I
was. If you mention SNES, you should look up the SNES trademark, does it
exist?

By doing 4 seconds research on the USPTO website, I did not find that
"SNES" exists as trademark. So you cannot compare SNES to NINTENDO DS or
NINTENDO.

I stand corrected regarding SNES.

I could not also find any reference to N64 being a trademark.

Here's the relevant trademark:
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4805:zmjlie.9.4

And I have not mentioned anything in regards to SNES mark or N64 mark. I
was very particular and precise.

N64 is trademarked and will work as an example.

The first relates to trademark infringement for a physical, commercial good
which very much did cause confusion.

GPL software IS commercial.

Software designed for sale is commercial software. It does not matter if
you don't get the money for it, by giving it to your friend free of
charge. If it is designed to be commercial, it is commercial. Further,
many companies produce free software as part of their commercial
activities. 

As I mentioned above, US courts disagree. Given such a high standard, there are other barriers to distributing and using GuixSD for commercial use, as mentioned above in relation to other trademarks and patents.

And I do not look onto such software from the first step, of
distributing it from a website, free of charge. The distribution and
software inside shall be free for companies to sell it, to use it
commercial, in the second step, or tenth step.

It is not only matter if GuixSD or other free software distribution is
"non-commercial", but what about the users who maybe wish to sell the
software? They become unable legally in that case. They should not be
prevented selling software as such in commercial manner.

They are not prohibited by the terms of anything within GuixSD to do so.

Realistically, Nintendo has no legal basis to enforce their trademarks and
if they show no signs of enforcing it against commercial users, it is
extremely unlikely that noncommercial distributors would be targeted.

It seems to be that you would simply use trademarks as you wish, and
wait for the worst to happen?

"The worst" appears to be a rather unlikely cease and desist in this case. In that case, one can cease and desist.

I am rather for the legal review of my arguments.

Jean Louis

Regards,
Stephen