The 28 July letter from Perth lawyer Jeremy Malcolm asks vendors to either confirm they had already purchased a licence from the Linux Mark Institute (LMI) to use the term or sign a statutory declaration waiving any claim to exclusive rights to its use. In return for a signature, Malcolm said, the LMI would ratify the vendor's use of the term Linux and waive all rights regarding any previous trademark infringement. That vendor would then, however, be required to obtain a licence costing between US$300 and US$600 from LMI for continued use of the term.
The LMI -- appointed by Torvalds as the "worldwide exclusive licensee of the Linux trademark for the purposes of protecting that trademark from misuse" -- and local body Linux Australia have been involved in an 18-month struggle to register the term as a trademark in Australia.
"You may or may not be aware that it is your legal responsibility to obtain a licence from the [LMI] before you are allowed to use the word 'Linux' as part of your product or service name or brand," Malcolm's letter said.
The lawyer told ZDNet Australia this morning that acceptance by recipients of the letter to its conditions would help in making Torvalds' case for legal ownership of the term Linux to IP Australia, the local intellectual property regulator. "The success of Mr Torvalds' application for registration of 'Linux' as a trademark depends on your assistance," reads the letter.
Malcolm did, however admit this time last year Australian companies using the word 'Linux' to promote and sell their products weren't legally obliged to pay royalties to LMI as long as they weren't trading their wares internationally.
Malcolm's letter attracted a mixed response from some targeted vendors.
"I haven't signed any similar statutory declaration for any other products, vendors or trademarks that I deal with commercially," Linux vendor Si2's principal consultant, Marc Englaro, told ZDNet Australia , adding he would be investigating the issue further.
However, Steve D'Aprano, operations manager at prominent open source vendor Cybersource, told ZDNet Australia his company would sign the statutory declaration.
"If Linux were to fall out of trademark protection, there would be nothing to prevent unauthorised, shady and unscrupulous individuals and organisations from using the term for cheap knock-offs cashing in on the name or other products which harm the reputation of Linux, and by association, ourselves," he said.
Malcolm dismissed initial speculation from some Linux community members that the letter was fraudulent, pointing out he had the backing of both Linux Australia and the LMI.
"If it was just me writing then no-one would pay any attention," he said. "But I think Linux Australia is going to put out a press release about it, just to confirm it's legitimate."
Malcolm admits the possibility exists the trademark will not be granted to Torvalds.
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"If that's the case it means that nobody will be able to have exclusive rights to the word," he said, "which also means we won't be able to stop people using it in a misleading way." Jeremy Malcolm's letter on the use of the Linux trademark in Australia.
I act for Linus Torvalds, and I am writing to you about your use of the trade mark "Linux". This is not a letter of demand, but rather a request for your assistance, and an attempt to inform or remind you of the rights and obligations associated with the use of the trade mark "Linux".
My client is the owner of the trade mark "Linux", which is a registered trade mark in the United States and various other countries, and currently an unregistered (or "common law") trade mark in Australia.
Please click here for the full version of this letter (in PDF).
Companies have been asked to waive any claim to exclusive rights to the use of the "Linux" name.Please click here for the full version of the statutory declaration (in PDF).
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