Wikimedia Foundation (WMF) acts as a steward on behalf of the community of volunteers who work every day to build the reputation that the Wikimedia marks represent. To ensure that our actions reflect the sentiment of the community with respect to the Community logo, we have started this request for consultation. The question is whether the Wikimedia Foundation should continue with the trademark registration of the Community logo as a collective membership mark.
The position of the WMF legal team
This Saturday, September 21, a few individuals (including the original creator of the logo) announced their intent to file an opposition on Monday, September 23, against Wikimedia Foundation’s trademark registration of the Community logo. The original discussion may be found at Community Logo/Reclaim the Logo. Contrary to suggestions in that discussion, the deadline to file an opposition to the registration of the Community logo is December 22, 2013 - not September 23. We would like to provide the community with a somewhat more nuanced summary of the situation to facilitate an informed discussion on how the Community logo should be protected. The below represents a summary of our postings (one, two, three) over the past days on this issue.
User:WarX created the Community logo in 2006 and released it into the public domain for copyright purposes. The logo was meant to represent the community’s work, and, in 2008, the community adopted it as the official logo for Meta-Wiki.
After the Community logo was adopted as the official Meta logo, it was added to the list of Wikimedia logos in September 2008. In April 2009, the Board of Trustees adopted a resolution directing WMF staff “to register and protect the Wikimedia marks,” which by then included the Community logo. Pursuant to this resolution, WMF started filing trademark registrations for the Community logo last year as part of its ongoing work to protect our 20+ trademarks.
If we do not register the community logo, someone else may try register it in a jurisdiction without common law trademark rights and later restrict the community’s use of the logo. This is particularly relevant when the logo designer, like here, released the logo into the public domain (i.e. when copyright protection is unavailable). In fact, we recently had a problem with a company that had registered a puzzle globe in China (after Wikipedia adopted the puzzle globe as its logo), preventing Wikimedia from protecting and potentially using the Wikipedia logo there. We had to spend significant resources to persuade the company to agree to our use of the logo. Fortunately, this company agreed to cooperate, but others may not be so accommodating. Dropping the trademark registration of the Community logo may therefore jeopardize the community’s ability to continue using it.
The trademark registration further does not change the Community logo’s public domain status under copyright law. Copyright and trademark protection serve very different purposes. Copyright prevents a particular design from being reused, while trademark protects the connection between a logo and the work that it represents. So while the Community logo was released into the public domain by WarX for copyright purposes, the logo was meant to represent the community’s work. For that reason, trademark registration makes sense to protect the use of the Community logo for its intended purpose.
Collective membership mark
Over the last couple of months, the legal team has been working on a solution to allow community members to maximize their use of the Wikimedia marks. We are looking to establish the Community logo as a collective membership mark. This would allow community members to use the mark freely to show their connection to the Wikimedia movement, while still protecting the mark against abuse from non-community parties.
A collective membership mark can be used to indicate membership in an association - in our case, it would be the Wikimedia movement. Unlike with a regular trademark, the trademark holder does not need to issue trademark licenses to individuals who want to use a logo. Instead, the trademark holder simply needs to identify them as members. So it could allow Wikimedia community members to use the Community logo to identify themselves as members of our movement. But we would still be able to enforce the mark against non-community members that abuse the logo. The collective membership mark is a very unusual category of marks that is used by organizations like Rotary International and Toastmasters. Our hope is that this model may lend itself to our unique situation and promote flexible use by community members.
We are also in the midst of re-drafting our trademark policy to include more permissive provisions that allow freer use of other Wikimedia marks, including free use of the Community logo by the community in furtherance of the Wikimedia mission.
We would like to take this opportunity to once again acknowledge that we would have liked to have communicated better about the initial registration of the Community logo. That said, we still believe that registering this logo as a community mark is the right decision for the community. We will follow the clear direction from the wider community and the Board, and we are willing to drop the registration as well as the protection of the logo. In our professional judgment, however, we do not recommend abandoning the trademark registration for the reasons set out above.
Thanks for your time and consideration,
The WMF legal team
Counterargument (not supported by the legal team)
See Community Logo/Reclaim the Logo for more.
We believe that the registration of the logo as a trademark contradicts the reasons behind its creation and is contrary to the way it has been used and modified in the past. Having witnessed the complexity and lengthiness of the trademark authorisation process, we are quite sure that the mere fact of the logo being a trademark will have a negative impact on the community’s ability and freedom to use it.
We understand the importance of holding trademark rights to the logos of the projects to prevent harmful activities that could damage their reputation. With regard to the community logo, however, we feel that neither the Wikimedia Foundation, nor any other organisation that is part of the Wikimedia movement should hold trademark rights to it. Every community member should have unrestricted freedom to use it for any purpose, as has been the case for many years.
We also believe that the logo's special history and the unrestricted ability to use and modify it for one's own purposes have made it an inherent part of the shared identity of the Wikimedia community. The Foundation's suggestion that—due to their registration of the community logo as a trademark — we should create a new one so that it could be used without their authorisation or prior approval is, in our feeling, proof of ignorance and disrespect for its history and role.
We understand that the registration of the logo as a trademark isn't therefore a service to the community, despite good faith. Had the community needed a trademarked logo, it would have asked for one to be created; conversely, had the Foundation wanted to offer one, they would have created it on their own instead of registering the existing logo.
- The period to file an opposition started on September 21, which rolled over to September 23. It continues for 3 months and ends on December 22, 2013. (Please see: http://www.wipo.int/romarin/ - search International Registration number: 1152038). As always, the WMF legal team cannot provide legal advice to other parties in a legal action, so those who were planning to file this opposition may want to consult again with their counsel.