Discussão sobre as práticas de marca registrada
As marcas registradas da Wikimedia significam a alta qualidade, a integridade e a abertura dos projetos do movimento Wikimedia e impedem atividades fraudulentas, danosas e confusas que poderiam prejudicar nossa missão. A Fundação Wikimedia atua como um administrador em favor da comunidade de voluntários que trabalham todos os dias para construir a reputação que as marcas representam. Nós somos legalmente responsáveis por manter e proteger os direitos de marca registrada através de nossa política e prática. Também queremos tornar tão fácil quanto possível para os membros da comunidade utilizar as marcas para avançar nossa missão.
Here, we outline some practices that we believe are going relatively well. After that, we provide some considerations for reflection. Finally, we list a few specific questions to open the conversation. If you don't want to read all this, you can head straight to the talk page and just give us your comments.
What we think is being done well today
One key purpose of trademark law is to protect users, letting them know that they may expect a certain standard of quality and integrity. Our trademarks make it easier for people to identify genuine Wikimedia projects and articles as well as mission-oriented movement activities. There are positive things about our trademark practice and policy that we would like to retain and improve upon. For example:
- Our policy embraces the work and creativity of community volunteers, allowing them to use Wikimedia marks without seeking permission in many situations. Chapters, for example, may use the marks in most daily activities. They may communicate their association with the movement and use the marks for marketing and solicitation of donations and grants. Users may link directly to Wikimedia websites by using banners and buttons created from our trademarks. Community members are free to place the marks on clothes, desktop wallpaper, and even cakes (yes!, even cakes), which they may share with friends as long as they do it for free.
- We are liberal in approving trademark uses that support our mission. We strive to quickly and professionally approve specific one-off community requests for use of our trademarks. Since February 2010, only about 10% of all requests have come from community members or movement organizations. We have approved about 4 out of 5 community requests; the rare denial is given in response to uses inconsistent with our mission (see example below). We believe that the low percentage of requests from community members is largely due to the broad range of community uses that do not require special permission under our trademark policy.
- Examples of approved uses:
- Creation of Bokor Jozsef prize
- Online photo contest Wiki Loves Public Art
- A conference organized by Wikipedia Club Pune
- Wikimedia Conference Japan 2013 event hosted by the Wikimedian Society of Tokyo
- Software Freedom Day event hosted by the Free and Open Source Software (FOSS) Nepal Community
- Wiki Loves Monuments Romania 2012 event
- Examples of denied community request:
- Request to purchase a private domain name with the word "Wikipedia" to contact Wikipedia volunteers (it was denied because of the potential for confusion about the identity and affiliation of the sender)
- Our trademark licensing with third parties reinforces mission values. When parties without connection to the movement want to use our trademarks, such as a movie studio for placement of a Wikipedia article in a film, we have an internal process to ensure that the requested uses are consistent with our mission values. We protect our trademarks by negotiating, drafting, and executing detailed trademark agreements to ensure proper use and protection of the reputation that community volunteers have built up.
- We fight misuse of our trademarks. Each year, community members send us over 100 reports of trademark violations for fraudulent or other inappropriate purposes.  Experts, like MarkMonitor, survey the web and alert us to such misuse. We also employ outside legal counsel to help protect our trademark portfolio globally. Within our resource constraints, our legal team pursues misuses of our marks to ensure that the Wikimedia logos remain distinctively associated with the Wikimedia community. After careful and sensitive evaluation, we send out cease-and-desist letters, which are usually effective. In the few instances that cannot be resolved by other means, we consider litigation to protect our marks. We have won all cases against cybersquatters that have tried to leverage our mark for their personal or commercial purposes.
- Registering our trademarks supports our international community. Our brand is global. To support all of our community members, we have followed an international registration strategy, with funds allocated to register our various trademarks throughout the world. Trademark registration in the U.S. allowed us to recover the @Wikinews Twitter account, which is now updated daily by members of the Wikinews community. Because we initially didn't register our trademarks internationally, we have had to oppose when others tried to register the Wikipedia puzzle globe in Australia and Brazil, which could have precluded the community from using the mark in those jurisdictions. International registration helps avoid costly oppositions and prevents others from improperly trying to take our mark for their own. In our strategic approach to registrations, we emphasize the marks most commonly used by the movement.
Some considerations for any update of our trademark policy and practice
We do our best to protect and administer the marks according to community values and legal parameters. That said, we feel that we can improve our policy and update some practices to be even more consistent with community needs and values.
We welcome all comments and encourage you to provide feedback as you think best. We would, however, like to share some of the issues we are considering:
- Our community values should guide any new trademark policy. The goodwill supporting the Wikimedia brand has been created by a strong, welcoming, self-policing volunteer community. Our goal is to have a trademark policy that supports community use of our trademarks in line with our mission values and prevents third party use that does not support our mission.
- Our current trademark policy tries to balance the need to ensure that our trademarks remain reliable indicators of free, neutral, and high-quality content with the desire to welcome our community members, movement organizations, and others with whom we associate to reliably communicate their relationship with us. In 2009, the WMF Board provided the following guidance for drafting the current trademark policy, which we believe should apply to any new version:
- The Wikimedia Foundation is committed to enabling our mission through a wide network of chapters, community members, and organizational partners who are all able to better achieve their goals by identifying themselves with the Wikimedia community. Because of these efforts, there is a large amount of value and goodwill associated with the name and marks. Trademark law in the United States and internationally requires that the holder of a mark take affirmative steps to protect the integrity of the mark. However, because of our commitment to openness and community empowerment, we wish to do this in a way that allows chapters and community members to be able to continue to identify themselves with Wikimedia marks without being unnecessarily restrictive.
- Trademark rights need to be preserved to fight misuse. As noted, we receive numerous reports of misuse of our marks. Our marks have been misused to create Wikipedia-like sites plastered with advertisements, to facilitate false surveys, to endorse or promote products commercially, to commit fraud through phishing scams, and to create fake Wikipedia pages that confuse visitors. Misuses can result in less-than-positive press, such as this article stating that "[i]n a new pain-free approach to cybercrime, email spammers are playing off Wikipedia's instant brand recognition to sell some instantly recognizable brands — Viagra, Lipitor, Celebrex — of their own."
- Without trademark rights, we could not fight misuses. We could not reclaim Wikimedia-appropriate domain names stolen by cybersquatters. If we simply reject the notion that we should protect our trademarks, the special values and reputation of Wikimedia projects would be obscured to those outside of our community. We need to keep this in mind as we think about a new trademark policy and practice that are consistent with our values.
- Naked licensing must be avoided in policy and practice. To avoid misuses of our marks, we need to preserve our trademark rights, which requires us to control the quality of trademark use when we permit others to use our marks. Courts have found that the lack of quality control — the so-called "naked licensing" — can result in the loss of trademark rights.
- Our trademark policy and practice must address this risk head on. To protect our trademarks, it is important to maintain the level of quality that the community has worked hard to develop, especially when the marks are licensed to third parties. This includes ensuring that the trademark license contains quality control mandates, requiring consistent maintenance of quality, allowing monitoring of quality through inspections and community reporting, and ensuring the ability to terminate the license if the use does not meet the quality standards. While community members help to ensure that the usage of our marks within the community is consistent with our mission, certain third party uses may require additional vigilance and control. All this can be costly and resource intensive. Without these protective measures, however, we risk losing the trademarks to those who do not follow or understand our community principles.
- The existing trademark policy can be improved. Here are some possible modifications:
- More straightforward presentation in plain, translatable English with less legalese.
- Clarification of when prior permission is necessary and how community members can easily obtain it.
- Simple list of "dos" and "don'ts" for our community.
- Short and consistent explanatory examples.
- Specific guidance for (1) the various movement entities (chapters, thematic organizations, movement partners, and user groups); (2) community members; and (3) third-parties, including commercial parties.
- Consistency between the trademark policy and the FAQs.
- While realizing that we have unique community needs in a global environment, there are a few policies to which we might look for guidance and ideas:
- We hope that you'll let us know if you know about other like-minded sources.
- Distinctive community logos are important and useful for our movement. We have followed and participated in the discussion about the trademark registration of the community logo used on the Meta page. Although we should have communicated better on this issue, we registered this logo because registration allows us to prevent non-community, non-mission oriented use of the mark. The community logo also shares a combination of colors and symbols that are strongly associated with other registered principal Wikimedia marks. Failure to register the community logo could in theory result in loss or dilution of our principal marks. That said, trademark registration does not preclude the community from using the marks broadly, as long as that use is in furtherance of our mission. We seek community input on what kinds of trademark use should and should not be permitted with this community mark.
- Realizing that this is a community decision, we are open to the community proposing a new logo that is not so easily identifiable with our existing trademarks but nevertheless shows affiliation with the Wikimedia movement. One example of this is the distinction between Red Hat marks and the more permissively licensed Fedora mark. If the community felt such a logo was appropriate, the Foundation would be willing to put resources toward that effort. This logo could represent community values, but could be used — per the trademark policy — by any community member for any purpose related to the projects without any authorization or control by WMF. It would be issued with the understanding that, by having no restrictions or oversight, we may lose our right to that mark eventually. However, it would provide a frictionless approach to its use without previous approvals from the Foundation.
- Minimizing friction is critical for large-scale projects. In the open source world, we need to find solutions that move large-scale projects forward without introducing unnecessary administrative or legal obstacles. For almost all GLAM projects, we are able to provide easy one-off trademark approvals because of their manageable numbers. But some projects are difficult to scale, like the planned use of our trademarks on QR codes, conceivably with hundreds of towns and museums. When our trademarks are used in conjunction with QR codes, the trademark agreement is with a third party (museum or town), requiring a separate negotiated trademark license and a non-community third party to effectively monitor and enforce the use of the trademark. Given the number of museums and towns potentially involved, it could require a large volume of trademark licenses. We need to centralize this licensing function to avoid costly mistakes (see below).
- With a couple of museums, we have seen successful use of our plain text "Wikipedia" mark in the context of QR codes which does not require case-by-case approval. We could also approve QR code projects that use our trademarks, when they have particularly high community support, such as GLAM support, because of the institutions involved or other prevailing factors. A distinctive community mark for specific projects may be another answer to these large-scale projects. We need to find scalable solutions, like the use of our plain text trademark by the museums or a distinctive community logo for the daily operations of these types of projects.
- Our trademark practices should be constructed to minimize costly mistakes in trademark licensing. Trademark maintenance is complex. It is surprisingly easy to lose trademark rights permanently through mistakes in management of trademark licensing. This is why it is problematic to decentralize the drafting of licensing agreements. While finding frictionless solutions is important, we also need to ensure a coordinated and efficient approach that does not forfeit the trademarks that community members have built up.
- Financial and other conflicts of interests must be declared. Some of our volunteers may also be affiliated with institutions that wish to use our trademarks. They come in all shapes and sizes, such as Wikipedians in Residence, community members working as museum representatives, and consultants who seek to promote particular towns and cities for both tourism and mission-related purposes. We don't presently believe there should be a uniform approach other than to underscore that community members should declare their financial interests and other potential conflicts of interests in their trademark application. When there is a potential conflict of interest, we may also ask for additional support for approval, such as evidence of community support and consistency with mission goals. We believe the trademark policy should reflect this view, but are interested in the community's perspective on the issue.
- Trademark use in names of movement organizations and groups raises special considerations. For completeness, we note that there is an ongoing discussion about the use of our trademarks in the names of thematic organizations and user groups. You can find Geoff's thoughts here, here, and here. The Affiliations Committee is working with the legal team on this point and has established a process for naming user groups based on these considerations.
- Our trademark may not be used to represent work that is not controlled by movement organizations. A trademark licensed to a chapter could potentially be used to represent the work of an unaffiliated organization. Our policy should be clear that movement organizations may not use our trademarks to represent activities they don't host or control, as this potentially causes confusion and may result in a misrepresentation of our trademarks.
- Logo redesign is a possible future project. Some have suggested that not all of our logos are eye-catching or memorable, and that we should test brand visibility and study impact and priority. Our present trademark strategy is based on Wikimedia's existing marks, with a focus on those most in use by the community. We would like to know if the community is interested in changing our brand and logos in part or comprehensively. If we go down that path, we will need to request significant budget allocations in the next planning cycle to support the study and creation of the marks and to register them globally.
Enough talking by us … we would love to hear your comments and concerns about a new updated trademark policy and protocol
We have shared our thoughts and would like to hear yours. Here are some questions to open the conversation. Please feel free to respond to any or none of them on the talk page.
- Do you have any concerns regarding the current trademark policy and practice?
- Do you have any proposals or suggestions for the new trademark policy and future practices?
- What kinds of use of our trademarks would you consider misuse and want the Foundation to help prevent?
- How do we further our movement values with free use of our trademarks in the community while avoiding real naked licensing risks, costly mistakes, and friction-filled process?
- How do you feel about pursuing a community logo that does not share the same colors and symbols with established Wikimedia logos, in order to permit frictionless use by and with community projects?
You should also feel free — as we know you do — to raise any new issues or concerns on the talk page.
Many thanks for your time, reflections, and wisdom.
- More background on trademarks and trademark law can be found here:
*United States trademark law
- The turn-around on the approval process is relatively short, often falling within 15 business days. While this is well within industry norms, we do experience exceptions to this rule and are always looking for ways to expedite the process.
- Michelle Paulson wrote a piece that touches on this issue in the context of licensing.
- For example, the Python community — which maintains the popular, widely-used programming language — risked losing their mark in the UK because of a failure to register. Similarly, when Linux was still on the rise, an unrelated third party registered the mark before Linux International, creating legal problems for them.
- Within resource constraints, apart from the trademark policy, we should also consider developing our partnership and community outreach to ensure we are serving the needs of our community in our trademark protocols.
- For example, a fake page was used to mimic a Wikipedia article, but it was an advertisement for a highly-questionable company; in another case, a fake page was used to look like a Wikipedia article that offered a method to win at Roulette with links to questionable sites.
- Some of the misuses are also criminal fraud, but, by retaining our trademark rights, we can act to protect readers without having to first persuade the criminal justice system.
- "[When a] licensor fails to exercise adequate quality control over the licensee, ‘a court may find that the trademark owner has abandoned the trademark, in which case the owner would be estopped from asserting rights to the trademark.'" Barcamerica Intern. USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 596 (9th Cir. 2002) (quoting Moore Business Forms, Inc. v. Ryu, 960 F.2d 486, 489 (5th Cir. 1992)).
- See, e.g., Christopher Dolan, IP: The Bare Facts on Naked Licensing (Sept. 6, 2011).
- The current policy, for example, includes conflicting guidance on when T-shirts can be sold for compensation (compare the section on merchandise and FAQ), and does not clearly explain how the policy applies to chapters, thematic organizations (as well as other types of movement groups, such as user groups and thematic organizations).
- Images may be under a free copyright license, or in the public domain, but still subject to trademark law if used to represent a good or service. Trademark law and copyright law serve different purposes. While copyright law protects original works of expression, trademarks are used to inform users of the source of particular goods or services. A work of original expression may be in the public domain or under a free copyright license, but can still serve as a source indicator. Thus, the same work of original expression that users may be free to use under copyright law may still be subject to trademark law restrictions. See this link for more information.