VLC icons & DVD logo

[Jon Lech Johansen]

On Tue, Apr 30, 2002 at 09:27:02PM +0200, Christophe Massiot (massiot at via.ecp.fr) wrote:
> Dear friends,
> 
> Stéphane Sudre has sent me an icon for .vob files under Mac OS X. I 
> like the logo and would love to integrate it, but it contains the DVD 
> official logo, and I wondered what our legal position would be. The 
> logo is of course a trade mark. Do we care about that ?

I care, and I think the registered owner of videolan.org also cares,
since that's who they'd sue :-)

Now, a quick introduction to US trademark law:
(from www.bitlaw.com/trademark)

"A mark is infringed under U.S. trademark law when another person uses a
device (a mark) so as to cause confusion as to the source or sponsorship
of the goods or services involved. Multiple parties may use the same
mark only where the goods of the parties are not so similar as to cause
confusion among consumers. Where a mark is protected only under common
law trademark rights, the same marks can be used where there is no
geographic overlap in the use of the marks. Federally registered marks
have a nation-wide geographic scope, and hence are protected throughout
the United States."

"The elements for a successful trademark infringement claim have been
well established under both federal and state case law. In a nutshell, a
plaintiff in a trademark case has the burden of proving that the
defendant's use of a mark has created a likelihood-of-confusion about
the origin of the defendant's goods or services. To do this, the
plaintiff should first show that it has developed a protectable
trademark right in a trademark. The plaintiff then must show that the
defendant is using a confusingly similar mark in such a way that it
creates a likelihood of confusion, mistake and/or deception with the
consuming public. The confusion created can be that the defendant's
products are the same as that of the plaintiff, or that the defendant is
somehow associated, affiliated, connected, approved, authorized or
sponsored by plaintiff."

IANAL, so your opinion on whether or not we would be violating US
trademark law is just as good mine.

Since videolan.org is hosted in France, let's move on to some French
trademark law. From http://www.chaillot.com/En/pages/p10.html :

"In order to determine the infringement of a mark (or the validity of a
mark with respect to a prior mark), it is necessary :
- to compare both marks ; and
- to compare the goods and/or services to which the marks are applied.

In the case of an infringement, it is also necessary to examine whether
there has been an act of infringement.
The acts of infringement are listed in Articles L. 713-2 and L. 713-3 of
the Industrial Property Code" 

"Art. L. 713-2. The following shall be prohibited, unless authorized by
the owner :

(a) the reproduction, use or affixing of a mark, even with the addition
of words such as : "formula, manner, system, imitation, type, method,"
or the use of a reproduced mark for goods or services that are identical
to those designated in the registration ;

(b) the suppression or modification of a duly affixed mark."

"Art. L. 713-3. The following shall be prohibited, unless authorized by
the owner, if there is a likelihood of confusion in the mind of the
public :

(a) the reproduction, use or affixing of a mark or use of a reproduced
mark for goods or services that are similar to those designated in the
registration ;

(b) the imitation of a mark and the use of an imitated mark for goods or
services that are identical or similar to those designated in the
registration."

Again, your opinion is just as good as mine. Unless we can get an
opinion from a French lawyer, the person who would end up getting sued
should be the one who decides whether or not we should include the icon.

One should also keep in mind that even if we are on the right side of
the law, it doesn't mean they won't sue us :-)

-- 
Jon Johansen
nanocrew.net

http://www.eff.org/support/jonfund.html

MR. LEVY:  I'm sorry, your Honor. I actually have a technology expert
  with me. Would the Court like to or would they agree to hear a very
  brief statement on this point from that expert?
THE COURT: No.    -- MPAA v. Reimerdes injunction hearing, 2000/01/21

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