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

Tue Nov 1 17:58:31 UTC 2005

On 11/1/05, Daniel Mayer <maveric149 at yahoo.com> wrote:
>
> 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).

 I don't understand how you can expect to maintain a trademark without
someone authorized to make decisions about what is OK and what isn't. I
don't see how this type of decision can be made ahead of time because it is
so dependent on the specific circumstances. Not allowing anyone to use the
trademarks for any commercial purpose would obviously be unacceptable, and
if you're going to let people do whatever they want, then there's no sense
in having the trademark in the first place (and supposedly you'd lose it
anyway).
 But I don't know. Jean-Baptiste Soufron is an IP lawyer, and thinks we
don't need one, so I'd defer to his opinion. I should note though that he
says it "can be easily done
by any officer of the Foundation, or local chapter representative." So
really I think the only question is whether to have someone dedicated to the
task or someone who does it as one of his/her many duties. You could also
have a bunch of people doing the same thing without having a single person
tasked with coordinating things, which is probably what's being done now,
and probably isn't a good idea.

> 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.

 Actually, I think there's probably a good argument that Brion isn't
actually an employee. If he does whatever he thinks is best, sets his own
hours, and uses his own tools (computers and such owned by him), then he's
probably not an employee. But that just opens up a whole different can of
worms, so forget I mentioned it.
 Anyway, Robert Scott Horning seems to disagree with me, but I don't see how
you can read the law any way other than that work by an employee within his
scope of employment is anything but a work made for hire, regardless of any
agreement to the contrary.

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).

 I think the IRS did away with amortization of software which isn't acquired
from another entity. But don't quote me on that. You'd have to do some
research or talk to someone more knowledgable about that stuff.

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).
>
> -- mav

 You can access the 990 for the FSF and most other non-profits at
www.guidestar.org <http://www.guidestar.org>. It's free, but you need to set
up an account. That'd give you a good idea how the FSF runs its books.
 Anthony