TM/UCC distractions [Was Re: in support of axfr-clarify]

["Michael Froomkin - U.Miami School of Law" <froomkin@law.miami.edu>]

Oh dear. Trademarks. UCC.  May a law professor step in?  Maybe this way we
can get back to the things that matter in this thread -- like what to do
about a 'clarification' that I gather breaks some substantial quantity of
deployed software...

On Sat, 30 Nov 2002, Danny Mayer introduced the UCC to this thread as
follows:

[...]
> 
> > > >An applicant for a trademark must declare that he is using, or intends to
> > > >use, the mark in commerce. See 37 C.F.R. 2.33.
> > >
> > > Your statement does not include the word sell, for profit or otherwise.

"in commerce" is different from "commercial" -- it pretty much means any
course of conduct of repeated and continuous selling, trading, or
shipping.

Note well: "Sell" is not required; you can trademark a thing you will give
away. See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188
(11th cir. 2001), http://laws.findlaw.com/11th/0010872opn.html, which
holds that an owner's distribution of software for end-users over
Internet, even absent any sales thereof, was sufficient to establish
trademark rights in software's name.

> > > There are many non-profits in the US that have trademarks. You also

Yes.  some even sell things; some don't.  

> > > seem to be restricting yourself to the US. Are you saying that ISC
> > > cannot trademark the name whereever they please?
> >
> >This says nothing of the sort.
> >
> >Non-profit is not the same as "non-commercial". The ISC uses names in
> >commerce: it seeks donations, owns property, hires employees, and (if I
> >recall, either offers either support or directions to Vixies consulting
> >operations), and promotes the Bind, Inn, and DCHPD packages.
> >
> >ISC claims (rightly or wrongly) a trademark on Bind. That indicates that
> >it intends to use "Bind"  in commerce.  Whether it makes a profit or not
> >is irrelevant.  Bind is a product of ISC.
> >
> >Whether that trademark claim is invalid (by prior public domain use by
> >UCB), is irrelevant.  Once ISC makes a declaration of a trademark, it
> >can't later say the "product" is not commercial.
> 
> Assuming that you are in the US, you know nothing about UCC. I suggest

OK.  Listen up: <rant> THIS HAS NOTHING TO DO WITH THE UCC</rant>.  This
is a question of Trademark law pure and simple.  And under trademark law,
having a trademark tells you nothing about whether the product is
"commercial" -- it only says it was alleged to be "used in commerce".

> an introductory course in the Uniform Commercial Code before you discuss
> this so knowledgably. Please point me to a site that is selling BIND on
> behalf of ISC.
> 

See above.  UCC is simply irrelevant.  


> Of course, it is relevant to point out that if BIND were a commercial product
> it would cost more, in real money, to have it changed than for djbdns to be
> changed. Since djbdns is apparently a non-commercial product and noone
> is employed to make changes or fixes to it, it costs nothing to change and
> we have therefore chosen the cheapest alternative.
>

This is absurd.  The mind boggles.  If this were true there would be no
commercial software at all since it's always the low cost producer.

 

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A. Michael Froomkin   |    Professor of Law    |   froomkin@law.tm
U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
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