[OSM-legal-talk] Trademark applications

Peter Miller peter.miller at itoworld.com
Mon Jan 19 22:18:55 GMT 2009


On 19 Jan 2009, at 21:06, SteveC wrote:

> Peter of course knows all of this because he's been repeatedly  
> bombarding board and team members with threatening emails. It's  
> unfortunate that his core, often valid, concerns and objections are  
> so often overtaken by personal attacks and bridge burning exercises.

Saying 'bombarded' is hardly fair. For the record I email the board on  
the 23rd Dec and received no reply. I emailed again on the 8th Jan  
requesting a response to my earlier email and threatening to object  
the following day. I had a response but it was not clear. I requested  
clarification on the 13th (no reply), again on the 17th (no reply) and  
so today we objected to the application on about the last day that it  
was safe to do so given the deadline of the 21st Jan. I did finally  
get a list of applications from the team today but only after we  
informed them of our actions. I used that information as the basis of  
the TradeMark article to which I referred earlier.

Other readers of this list might be interested in the questions I  
asked the board in relation to trademark prior to their board meeting  
of the 23rd Dec (for which we are still waiting to see the minutes):

---
Have all the trademark applications made by SteveC, or by any other  
directors or knowingly being made by any other people associated with  
any directors now been transfered to the foundation or withdrawn?

To be clear the  trademark 'applications' would be transfered to the  
foundation not the successful trademark after award.

These following trade mark applications were still shown as being in  
Steve's name as of the 17th December:

UK trademark
"The application for the mark (application number 2500154) has been  
Examined, but there is no indication that the application has been  
rejected. This does not mean that the mark has necessarily been  
accepted for publication (the next stage in the registration  
procedure), it could be that the applicant is arguing to overcome the  
objections which you mentioned in your e-mail. However, until the  
Registrar of Trade Marks formally rejects the application for the mark  
we must treat the application as being on-going.

"The application for the logo (application number 2500155) has been  
accepted and was advertised  with a publication date of 21st November  
2008. Third parties now have a period of two months from the  
publication date to object to registration of the logo. This period  
can be extended by a month by submitting a notice of intention to  
object, this does not commit one to making an objection.

Community Trade Mark Application
"One application has been filed on behalf of Steve Coast for the mark  
“OpenStreetMap”, again in class 41.

"Once published there will be a three month period from the  
publication date for third parties to object to registration of the  
mark.

I believe that it imperative that the trademark 'applications' are  
transfered and I also believe it is the duty of the directors of the  
foundation to protect the assets of the project and to ensure that  
this happens. To be clear, should any individual or organisation end  
up owning the trademarks in any jurisdiction then the project would  
need to request permission from that person to use the trademark and  
that request could be confused. Should that person die the assets will  
pass with their estate to another person, organisation or possibly end  
up intestate. With a project of this scale we should not take that risk.

Could the foundation please establish and publish answers to the  
following:

1) In what jurisdictions trademarks have been applied, when were they  
applied for and what is the application number in each case.
2) Has the necessary paperwork has been processed to transfer the  
applications to the foundation in all cases
3) Has an independent director of the foundation (ie one not linked in  
any way to CM) independently confirmed the transfer


If any applications have not already been transferred then they should  
be transferred as a matter of urgency and this transfer should be  
confirmed as described above.

If people believe I am over reacting, I suggest you glance of this  
unpleasant case involving an open source project and a trademark held  
in the name of the founder.

"Yesterday, 2008-10-27: 21:00 GMT, just a minute before the regular  
TWiki release meeting, the company TWIKI.NET announced unilaterally  
that the best for the TWiki.org project would be for them to take over  
governance. With it comes a complete lock down of the community site.  
 From that minute on, all long-time contributors have lost access to  
their code. Counter-reaction: the community has left the building,  
leaving TWIKI.NET without a contributing community. Question: is it a  
sensible move for a venture capital firm that depends on a healthy  
Open Source community to lock it out?

"Access to the site is only granted if contributors agree to a set of  
newly installed terms and conditions dictated by TWIKI.NET, a company  
founded by Peter Thoeny 12 months ago. His power to do so grows out of  
two sources: (a) he is the sole owner of the trademark on TWiki and  
(b) he is sponsoring the server hardware and thus had root access.

"And now he has triggered the trademark gun and fired the TWiki  
community. He even repeatedly threatened people on the #twiki IRC  
channel that "[he has] been advised by one of [his] investors, Wilson  
Sonsini Goodrich and Rosati, that [they] need to protect [their]  
trademark". Clearly, their VC people have no picture of the situation  
other than their own return of investment. Sure, protecting a  
registered trademark is what it is all about. But threatening the  
community that has been working on TWiki on a volunteer basis for the  
recent 10 years that way is a bit strong. Too strong for the TWiki  
community.
http://blog.wikiring.com/Blog/BlogEntry28
http://news.cnet.com/8301-13505_3-10078682-16.html

I am not saying SteveC would behave in such a way, but there is a  
precedence and I don't like the fact that Wilson Sonsini who were  
'investors' in Twiki are now acting for the foundation at the  
instruction of SteveC who has a stake in a VC backed business.

For the avoidance of doubt ITO will formally object to the trademark  
applications early in the new year unless the situation is clarified  
before then.


>

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://lists.openstreetmap.org/pipermail/legal-talk/attachments/20090119/65f2d434/attachment.html>


More information about the legal-talk mailing list