TL;DR:

The Software Freedom Conservancy is responding appropriately to a surprising and unwarranted trademark action from SFLC (the Software Freedom Law Center).

SFLC’s action is especially indefensible given their role in helping set up the Conservancy in the first place. SFLC’s own public statement on the matter does not stand up to scrutiny. If you’re just following this from the bleachers and aren’t sure which side you’re on, then support Conservancy. They’re behaving responsibly in this unexpected situation. For more details, read on.

The Full Story:

If you’re still reading, then you’d like to know more about what happened. I can offer some information and context that may be helpful to you. But first, you should read Conservancy’s short post of Nov. 3, which explains the bare facts of what happened.

The rest of my post is an analysis of SFLC’s public followup of Nov. 6, which I reproduce in full below in order to comment on it. Please take the time to read all of what they wrote, even if you don’t read all of my analysis. I’ve highlighted some particularly egregious passages, but my comments are not exclusively about the highlighted parts — SFLC’s post is, as the saying goes, a “target-rich environment”, unfortunately. Even so, I must leave many things unresponded to, because there’s just too much there.

Concerning a Statement by the Conservancy

By Eben Moglen & Mishi Choudhary | November 6, 2017

On Friday, while we were putting on our annual conference at Columbia Law School, a puff of near-apocalyptic rhetoric about us was published by SFLC’s former employees, Karen Sandler and Bradley Kuhn, who now manage the Conservancy, which was originally established and wholly funded by SFLC, and still bears our name. We were busy with our conference when this happened, which seems to have been the point. We are glad to have the chance now, after a little much-needed rest, to help everyone avoid unnecessary hyperventilation.

A couple of points:

First, the line “and still bears our name” is a lovely example of what in classical rhetoric is called petitio principii and in English we call “begging the question”. The whole dispute here is about whether SFLC should get an exclusive trademark on the phrase “software freedom” in this domain. How convenient for the USPTO that the SFLC can already state as fact that the phrase belongs to SFLC — I guess we can all go home now.

Second, SFLC had a choice about the timing here. If SFLC didn’t want to deal with this until after their conference, then they could easily have delayed their USPTO filing until after the conference. It’s true that Conservancy didn’t respond to the filing immediately, but that’s understandable: it takes time to prepare a formal response at the USPTO and an appropriate public statement. No organization turns that kind of stuff around on a dime. I don’t know whether Conservancy intentionally timed their statement to go up during SFLC’s conference — I haven’t asked them — but even if they had, who could blame them? I would certainly have done so in their shoes: that’s when the statement would be most effective, after all. It’s a little hard for me to work up sympathy for SFLC on this one (and it’s not as if SFLC gave Conservancy any warning about the original action in the first place — more on that below). It seems kind of nervy for SFLC to blame Conservancy for a timing opportunity that was basically SFLC’s choice.

In general I won’t comment on matters of tone, except to say once here at the start that SFLC’s tone is arrogant and condescending: “…a puff of near-apocalyptic rhetoric…”, “We are glad to … help everyone avoid unnecessary hyperventilation”, and so on.

Wait a moment: SFLC just asked the U.S. government to essentially force Conservancy to change the name it has been using publicly for over a decade. I do not think that Conservancy’s well-reasoned and basically calm opposition to this bizarre proposal counts as “hyperventilation”.

What Has Happened?

At the end of September, SFLC notified the US Patent and Trademark Office that we have an actual confusion problem caused by the trademark “Software Freedom Conservancy,” which is confusingly similar to our own pre-existing trademark. US trademark law is all about preventing confusion among sources and suppliers of goods and services in the market. Trademark law acts to provide remedies against situations that create likelihood of, as well as actual, confusion. When you are a trademark holder, if a recent mark junior to yours causes likelihood of or actual confusion, you have a right to inform the PTO that the mark has issued in error, because that’s not supposed to happen. This act of notifying the PTO of a subsequently-issued mark that is causing actual confusion is called a petition to cancel the trademark. That’s not some more aggressive choice that the holder has made; it is not an attack, let alone a “bizarre” attack, on anybody. That’s the name of the process by which the trademark holder gets the most basic value of the trademark, which is the right to abate confusion caused by the PTO itself.

The holder of the junior mark causing the confusion has of course a full range of due process rights to defend the mark that it has registered, as it should have. So the result is very like a trial, and is conducted before an administrative tribunal called the Trademark Trial and Appeals Board. Its job is to decide whether the PTO wrongly registered a mark likely to cause confusion, which the PTO isn’t statutorily authorized to do. The process is formal, conducted under rules like the Federal Rules of Civil Procedure, and its records are publicly accessible. This is not a proceeding in which anyone is seeking an injunction or claiming damages. The only question being asked is whether the PTO should have issued the trademark.

The junior mark causing the confusion was applied for in November 2011, almost a year after SFLC ceased representing the Conservancy; the Conservancy had its own lawyer, who signed the trademark application.

From reading this, you’d never guess that SFLC was fine with the name from 2006 until recently, and had even served as Conservancy’s counsel until 2011, with the name “Software Freedom Conservancy” in active use the entire time, would you?

By no means does this situation justify the tone of defensive overreaction we heard from the Conservancy management on Friday, which was like reading a declaration of war issued in response to a parking ticket.

Two points:

One, there was nothing resembling a declaration of war, at least not by Conservancy (re-read their post and see for yourself). Conservancy is understandably opposed to a trademark action filed against them, and they rightly question the wisdom of a supposed ally in taking that action. If their response is a “declaration of war”, then I’m Marie of Roumania.

Two, this is much more serious than a “parking ticket”. It is not an overreaction to be very irked when an ally — an ally that had never expressed a problem with the organization’s name in all the years before — suddenly goes straight to the top and asks the USPTO to cancel the trademark. SFLC’s simile does not convince.

Why Didn’t You Settle This Between the Organizations?

We too think this is a very good question. We have tried repeatedly for almost three years to get a meeting with Karen and Bradley in order to discuss this and other claims we have concerning their and the Conservancy’s activities. In all that time, they have never once agreed to meet with us to hear and discuss our concerns. They have presented transparently dilatory responses, such as being “too busy,” or even “always too busy” when we asked them to set their own time. Sometimes we have not been offered so much as the courtesy of a refusal.

We have asked intermediaries—friends, business associates, comrades in the free software movement, other alumni of SFLC—to stress to Bradley and Karen the importance of opening negotiations. One would think this unnecessary with people who talk so frequently about the importance of communication and opening connections with respect to “compliance enforcement.” But here, when the shoe is on the other foot, no efforts on our part have gotten us the slightest progress in bringing about discussions to resolve differences.

We think that waiting more than thirty months after initial contact—and after repeated efforts at both direct and mediated communication seeking to open negotiations—is not too little time to allow before beginning to bring our claims.

These paragraphs are disingenuous in several ways.

First, Conservancy has consistently been willing to meet, but merely insisted as a ground rule that the conduct of the meeting must be professional and civil. This was both responsible and a smart move on their part. The meeting isn’t going to be productive if it involves shouting and insults, and they had reason to believe that was a real possibility.

If you don’t know the personalities involved here, you might not understand why such a ground rule would be necessary. Let me simply say this: I have known Conservancy’s Executive Director, Karen Sandler, for a decade now, and worked very closely with her on a number of efforts, some of which involved contentious counterparties. I have never seen Karen lose her temper nor engage in personal insults or ad hominem arguments, not even with parties who frankly deserved it. She has consistently gone out of her way to keep dialogue constructive, to treat people with respect, and wherever possible to find solutions that work for everyone, even in very difficult conversations. If Karen is unwilling to meet with someone without getting agreement on ground rules, there must be a very serious reason for that.

So when SFLC says “they have never once agreed to meet with us”, I read that as “Conservancy wasn’t willing to waste time on a pointless face-to-face meeting on SFLC’s home turf with no written agenda and with SFLC refusing to explicitly commit to basic ground rules of civil discourse”. If I were running Conservancy, I would have made exactly the same decision.

Second, regarding SFLC’s claim that they tried to communicate about this specific trademark complaint:

I think I am probably one of the intermediaries referred to in SFLC’s post, and as I don’t wish to violate any confidences, I cannot go into detail about the conversation in which I was asked to be a go-between. But I can state the conclusion that I immediately drew from that conversation, which was that there was no point trying to be an intermediary. SFLC’s view of things was so different from Conservancy’s, and so far removed from anything I could recognize as reality, that I could not carry any useful message to Conservancy other than “I don’t understand what you should have done differently”. I can also state that this trademark issue was not raised then. The dispute at that time was about something else entirely (and, for the record, that other matter was also an instance where I felt that SFLC had acted poorly toward Conservancy, though it was not nearly as serious as this trademark claim).

I never heard a word about this supposed trademark problem from either party before SFLC filed their public protest at USPTO. Now, I talk to people at Conservancy all the time, sometimes multiple times a week. We discuss all sorts of things, including occasionally matters that they have asked me to keep in confidence. If SFLC had sent Conservancy some kind of notice, written or verbal, that they had a trademark issue with Conservancy and would like to discuss it, I am pretty sure I would have heard about that. Actually, let me state that more strongly: I am positive I would have heard about that. There is just no way something so important wouldn’t have come up in our conversations. It’s too big. If I didn’t hear about it, the obvious conclusion for me to come to is that Conservancy hadn’t heard about it either.

So SFLC’s claim that they have been trying to get in touch with Conservancy “in order to discuss this and other claims we have concerning [their] activities” is misleading. Notice how carefully SFLC worded it. They do not quite say that SFLC did something to make Conservancy aware of this specific trademark claim before filing a protest at the USPTO. If you read the post quickly, of course, you might get that impression, but if you read it carefully, like a lawyer, you realize SFLC hasn’t actually said that at all. What they’ve said is that they tried to get a meeting, and that they (SFLC) knew what they wanted that meeting to be about. But they don’t actually say that they informed Conservancy of the agenda, and my belief is that they did not — because if they had, their post would surely quote the email or document they had sent. SFLC shows us no such quote, and they don’t show it because it doesn’t exist.

From the evidence I’m aware of, and based on SFLC’s own post, I don’t believe the SFLC gave Conservancy any warning about their trademark complaint, let alone tried to raise the issue in a good-faith way before resorting to a USPTO filing. I would be happy to be corrected by SFLC or by anyone else possessing the requisite information on this point.

In any case… come on, it’s 2017: if you need to communicate something to someone, there are lots of ways to do it that don’t involve an in-person meeting. Send an email — then you get a date-stamped digital record, as a bonus. Send old-fashioned registered mail through the U.S. Postal Service. Send a courier; the two organizations are both in New York City, so it won’t be expensive. Or, if it’s so important that it be in person, ask to meet on neutral ground with some trusted third party present. To the best of my knowledge, SFLC did none of these things. Again, corrections welcome.

When Conservancy says they were surprised by the USPTO filing, they mean it — for them, it came out of the blue. Conservancy’s exact words on this: “… SFLC made no efforts — over the last eleven years since Conservancy was formed, nor in the last five years since we registered our name as a trademark — to express any concerns about our name, or a desire for us to change our name. We first learned of SFLC’s complaints from this surprise attack of legal action.”

I have never known anyone at Conservancy to lie.

Safety For Others

Friday’s response from the Conservancy’s management is grossly disproportionate, and—in view of their long-maintained refusal to communicate with us—irresponsible. The first responsibility of asset managers, who have others’ rights and valuables in their keeping, is prudence. One would hardly associate the word “prudent” with either their statement on Friday or the course of conduct over the last three years that it culminates.

Special concern should be expressed about the aspect of their statement darkly suggesting that we are creating risks for projects associated with the Conservancy. The driver of any risk, it seems to us, is the reckless refusal of the Conservancy’s management to negotiate with us for settlement of our claims, which has left us to pursue last-resort approaches we have done everything we could to avoid.

But we absolutely agree that within the free software community we must protect projects producing software from any avoidable risks in the organizational or legal situation around them. That’s what our law practice at SFLC is always about. Any project working with the Conservancy that feels in any way at risk should contact us. We will immediately work with them to put in place measures fully ensuring that they face no costs and no risks in this situation.

I was shocked when I read that. I mean, is this a trademark dispute or a 1930’s-style Stalinist whispering campaign?

This is a transparent attempt to undermine Conservancy’s mission by sowing fear, uncertainty, and doubt among its members and supporters. It is unlikely to have any harmful effect on Conservancy, fortunately. My prediction instead is that SFLC will one day come to understand that including that not-particularly-subtle attack was an unwise and deeply unprofessional non sequitur.

For what it’s worth: I’m pretty familiar with Conservancy’s operations, and have sat on their Evaluation Committee for several years (the Evaluation Committee assists Conservancy by providing third-party evaluation of applications by free software projects to become members; the position is unpaid). I cannot imagine an organization having higher ethical standards and levels of care regarding the management of member projects’ assets. Anyone who knows Conservancy staff personally knows how seriously they take their work, and how they bend over backwards to make sure they always behave with utmost responsibility. If the Software Freedom Conservancy were a bank, I would sleep soundly at night knowing my accounts were there. The idea that software projects should suddenly worry about Conservancy, and should contact SFLC of all places to assuage that worry, is risible.

What Should Happen Next?

Everyone observing this situation, we suspect, knows the answer to this question. But we cannot bring to the table counterparties who have so far refused to meet us, and who on Friday used their communications energies greatly and unnecessarily to increase polarization, thus making diplomacy harder. We recognize this pattern in their conduct from other situations. We have spent the last eighteen months preparing to bring our claims in the various relevant fora. We are now, as we have been throughout, fully prepared to meet immediately for a discussion of all outstanding issues without preconditions. Otherwise, it seems evident that more shoes will drop.

It wouldn’t be a Stalinist whispering campaign without the thinly veiled threat at the end, would it?

I am very familiar with both organizations. Though I’m somewhat more familiar with Conservancy these days, as I’ve worked more closely with them in recent years, I have watched (and learned from) SFLC for a long time as well, and have even been represented by them. I have utmost confidence in Conservancy’s ethics and sense of responsibility regarding both their mission and their members. If a defense fund becomes necessary as a result of this action, I will contribute to it and will urge others to do the same.

Now comes the sad part of this post.

When I moved to New York City in 2008 (I stayed there until 2012), I was both professionally and financially at a low point. I knew I cared deeply about free software, but I didn’t really have a game plan or much in the way of resources. New York is a tough place to land in that condition.

SFLC’s founder and Executive Director, Eben Moglen, was extraordinarily supportive. He let me use some space — private space, with a door! — at SFLC’s offices in Manhattan. This was much more than just a desk and somewhere to go in the morning: it was a community of like-minded people, many of whom remain friends and colleagues of mine to this day. My (now) business partner James Vasile was one of them; so was Karen Sandler and so was Bradley Kuhn, now both at the Software Freedom Conservancy.

Eben didn’t just give me a space and a community. He gave generously of his time and attention, even when he had plenty else on his own plate. He has a fine strategic mind, and knows how to combine that with his broad knowledge of history to see whole that which others — myself included — see only in parts. He would ask questions and share his thoughts; I benefited from his advice and perspective many times, and have continued to do so, albeit less often, even after leaving New York.

It pains me to pay back his help and friendship with this post. I have written in an angry tone because I am angry; SFLC’s treatment of Conservancy has been unacceptable for a while now, and this trademark action was the last straw for me. These two organizations should be allies, working together where they agree on tactics and respectfully parting ways where they do not. Conservancy has consistently demonstrated a willingness to do that; SFLC should too.

Update 2017-11-11: Eben Moglen and I have now talked about this post. We discussed many things, and he made two points that I felt were undeniable. One was that in my original version I mentioned a previous matter in which SFLC had “acted in bad faith” toward Conservancy. This was both too strong and simply inaccurate, as it was not bad faith. I have reworded that passage to say instead “acted poorly toward Conservancy” — and apologized to Eben: acting in bad faith is a serious accusation, and I should have not have used those words. He also pointed out that it would have been both proper diligence and proper friendship to call him and ask about the trademark matter (and anything else) before posting. I agree, and he has my apology for not having done so.

Unrelated to the above, I made a minor change after initial publication, to clarify one point. I don’t think the change is very important, but for the sake of transparency, here’s the diff.