[SciPy-Dev] Matlab trademark - was: Re: [SciPy-User] SciPy-User Digest, Vol 82, Issue 49

[Joe Harrington]

I am copying this to scipy-dev, where documentation policy discussions
belong, as it proposes a policy decision on the use of trademarked
words in the documentation.

I have exchanged email with Natasha Hellerich in UCF's Office of
General Counsel about how to refer to MATLAB® in our documentation.
As noted previously, our use, without their specific permission, falls
under "fair use".  Fair use requires good faith, which in turn
requires that we follow the trademark holder's (reasonable) requests
for how to use the term and acknowledge that the trademark is theirs.

It also requires that we restrict ourselves to descriptive use of the
trademarked term.  Calling a module "matlab", even as part of
"scipy.io.matlab", might not be in line with the latter requirement,
since the thing referred to is not a product of The MathWorks®, but
rather our own module for reading the MATLAB file format.
Possibilities that seem more nominative to me include "matlabcompat",
"matlabfilecompat", or something else that indicates that the module
is not MATLAB nor any part of it and was not written by/at The
MathWorks.  I have not consulted a lawyer about this specific issue
but that might be advisable once the community has decided which
naming alternatives would be OK.  The advantage of doing this now
would be to have some time with a deprecation warning on the old name.
If we made the change in response to a cease-and-desist letter, we
might not have that luxury.  Picking a naming convention that works
with other software's file formats that we could implement in the
future (e.g., for IDL® save files; IDL is a registered trademark of
ITT, Inc.) would be good.

The two relevant messages from our lawyer (minus lengthy quoted
discussion that appeared after her signature) are below, forwarded
with her permission.  The first includes instructions for the use of
"MATLAB" and the text of the trademark statement, which differs from
that proposed earlier on scipy-user.  Note that the US URL for the
page she references is:

http://www.mathworks.com/company/pressroom/editorial_guidelines.html

I tried hard to get her to agree that we did not need to use the
R-in-a-circle symbol at all.  However, her second email below notes a
case in which someone was forced by a US court to include the
R-in-a-circle symbol in a fair use of someone else's registered
trademark:

G.D. Searle & Co. v. Hudson Pharm Corp 715 F.2d 837, 839( 3rd
Cir. 1983)

However, use of the symbol is only required on the first use in a
document, at least in this case.

Regarding placement of the first use of the term and the trademark
statement, NumPy is a single entity imported into Python in a single
command:

import numpy as np

The docs are separately available as a single PDF and a book-format
HTML document tree.  Each entity is thus a single item requiring a
single trademark acknowledgement statement and R-in-a-circle symbol.

In the PDF and HTML, the right place for the trademark statement and
the use with the ® symbol is in the front matter.  Then, all the uses
in the main text, including all docstrings, are simply "MATLAB",
unadorned by the ® symbol.  I would suggest putting the trademark
statement on page 1 of the PDF version, below the release number and
date, right before Chapter 1, but any location would be fine as long
as it is before chapter 1 and before any other use of the term.  I
would also suggest adding a copyright statement and an appropriate
Creative Commons or loosely similar license to the PDF and HTML.

The help() function in the software itself is merely an index browser
into the collection of docs, capable of jumping around in the docs at
random but not of actualy reordering the docs.  The notion of "first"
seems best addressed by the help(np) page (np.__doc__), since the
PDF/HTML front matter does not exist in the help() system and since
that page offers somewhat of an index into the rest of the docs.  I
suggest ending np.__doc__ with:

  The NumPy documentation occasionally refers to MATLAB®, which is a
  registered trademark of The MathWorks, Inc.

The UCF lawyer's recommendation seems well in line with the web sites
cited earlier in this thread.  If anyone has any reason to object, now
is the time to do so.  Otherwise, I propose that we make the lawyer's
recommendation our policy.

Note that this is all based on US trademark law.  If the law is
different in your country, please speak up now so we can see if there
is a policy that satisfies all countries' laws.

Thanks,

--jh--
Prof. Joseph Harrington
Planetary Sciences Group
Department of Physics
MAP 414
4000 Central Florida Blvd.
University of Central Florida
Orlando, FL 32816-2385
jh at physics.ucf.edu
planets.ucf.edu


Date: Mon, 21 Jun 2010 13:14:10 -0400
From: "Natasha Hellerich" <nhelleri at mail.ucf.edu>
To: "gcounsel" <gcounsel at mail.ucf.edu>,
	"Tanya Perry" <tperry at mail.ucf.edu>,<jh at physics.ucf.edu>
Subject: Re: Fwd: use of TM and R in computer documentation
In-Reply-To: <wl839wgtki4.fsf at glup.physics.ucf.edu>
Mime-Version: 1.0
Content-Type: text/plain; charset=UTF-8
Content-Disposition: inline

Just as is stated on their website
http://www.mathworks.co.uk/company/pressroom/editorial_guidelines.html

MATLAB® - MATLAB should always be written with all letters in
uppercase. Use the ® symbol on the first reference. 

Also, the statement MATLAB® is a registered trademark of The MathWorks,
Inc. should be included.  

Please do not include any additional statements that were included on
your previous email, such as "We use this trademark without permission
from The MathWorks, etc." I specifically recommend AGAINST this
statement.  

With respect to the computer documentation the employee is writing, I
don't really know what this looks like, so it is difficult for me to
judge whether to consider that as a single entity for purposes of
following The MathWorks, Inc. guidelines with respect to using the ®
symbol on the first reference.  You are in a better position to judge
whether this documentation constitutes a single entity.  If you consider
it as such, you can then make that argument.  

Also, not knowing the particulars surrounding this, my advice is
limited to the trademark/symbol usage issues raised.

Natasha


Date: Wed, 16 Jun 2010 13:24:36 -0400
From: "Natasha Hellerich" <nhelleri at mail.ucf.edu>
To: <jh at physics.ucf.edu>
Cc: "gcounsel" <gcounsel at mail.ucf.edu>,
	"Tanya Perry" <tperry at mail.ucf.edu>
Subject: Re: Fwd: use of TM and R in computer documentation
In-Reply-To: <wl8zkz5s8qr.fsf at glup.physics.ucf.edu>
Mime-Version: 1.0
Content-Type: text/plain; charset=US-ASCII
Content-Disposition: inline

Good afternoon,

With respect to your follow-up question, I can offer the following information:

As previously recommended, I took a look at the MathWorks website.  They in fact provide the specific guidelines as to how they wish for others to refer to their trademarks, including when and how to include the circle R symbol.  Please see the link below.
http://www.mathworks.co.uk/company/pressroom/editorial_guidelines.html 
I recommend looking to other companies' web sites for guidance as well or contacting the entity at issue for the use of trademarks other than those owned by MathWorks.

Generally, 17 United States Code (USC) Section 107 sets forth the concept of fair use. 
Fair use would be a defense to someone using another person's
trademark.  Fair use is the legal concept that would allow you to use another's trademark, within the parameters of fair use.  So the fair use defense is one way to argue that you are not infringing a trademark, but it would require that the use is descriptive and in good
faith and is used to describe the goods and services of another.  If someone
knows the other trademark is registered, then good faith use would show the
use of the symbol.  

There is at least one court case G.D. Searle & Co. v. Hudson Pharm
Corp 715 F.2d 837, 839( 3rd Cir. 1983) where a defendant in a trademark
infringement case was ordered by the court to refer to his competitors'
products using the registration symbol of R with a circle.

I will ask Tanya Perry, our paralegal, to research additional case law regarding rules with respect to using another person's or entity's trademark in research articles or other
commentary, as well as in other scenarios, i.e. whether there is additional case law out there that discusses the use of appropriate trademark symbols every time the trademark is mentioned vs. maybe just once at the beginning.

Again, if a company already sets forth its own specific rules regarding use of trademark symbols when referring to their trademarks (such as MathWorks does via their web site), then those rules obviously should be followed.

Tanya - please advise on what you can find regarding this issue.

Thanks,
Natasha