Yesterday marks three years that I have been trying to negotiate a peaceful settlement with my ex-employees, Karen Sandler and Bradley Kuhn, of various complaints SFLC and I have about the way they treat us. After all this time when they would not even meet with us to discuss our issues, the involvement of the Trademark Trial and Appeals Board in one aspect of the matter has at least created a space for structured discussion. Intermediaries both organizations work with and trust have generously taken the opportunity to communicate our settlement proposals, and we have initiated discussion through counsel. As transparency is, indeed, a valued commitment in the free software world, we think it is now time to publish our offer:
We propose a general peace, releasing all claims that the parties have against one another, in return for an iron-clad agreement for mutual non-disparagement, binding all the organizations and individuals involved, with strong safeguards against breach. SFLC will offer, as part of such an overall agreement, a perpetual, royalty-free trademark license for the Software Freedom Conservancy to keep and use its present name, subject to agreed measures to prevent confusion, and continued observance of the non-disparagement agreement.
We think these are terms that any pair of organizations and their managers could honorably accept for the resolution of claims such as ours. We agree that resources should not be expended on contestation where such a settlement is possible. We do not think that any organization’s welfare or any principle would be served by preferring litigation to this settlement, and we don’t. But as a lawyer I have the same obligation of zealous representation to the organization I created and led for the last thirteen years that I have to any other client. If we cannot settle swiftly on these evidently fair and respectful terms, litigation must continue.
The Trademark Case as It Stands
When you apply for a trademark in the United States, you must make certain declarations under oath, including that to your knowledge and belief there are no other persons entitled to use the mark or any mark so similar to the mark you are seeking to register that it will or might create “confusion, deception or mistake.” You must also acknowledge on the registration application that false certifications are a federal felony under 18 U.S.C. Section 1001.1
When Anthony K. Sebro, the Conservancy’s in-house counsel, applied for the trademark at issue, in November 2011, the certifications he made were false. This does not mean that a false and fraudulent statement was made in order to acquire a trademark wrongfully. Perhaps Mr Sebro did not know about the organizational history of SFLC and SFC. Perhaps Mr Sebro was not aware of the “Software Freedom Law Center” trademark. His supervisor, the executive director, Bradley Kuhn, had actual knowledge of these matters. So did the Conservancy’s corporate secretary and board member Karen Sandler. Perhaps whatever Mr Sebro did instead of talking to them constituted inquiry reasonable under the circumstances and gave him an evidentiary basis for the false certifications that he made. Also, perhaps not.
On the application, a potential trademark registrant must also make a full and complete disclosure of the goods and services it offers under the proposed mark. Though the Conservancy was at the time advertising on its website that it offered “legal services”, Mr Sebro omitted “legal services” (and only “legal services”) from the list of services on the application, perhaps in order to make it more difficult for the PTO examiner to find the likelihood of confusion with our pre-existing mark.
Now, in his affidavit accompanying the Conservancy motion for summary judgment on its affirmative defenses, Mr Kuhn declares that he instructed Mr Sebro to file the trademark application.
In paragraph 32 of their answer to our petition, however, the Conservancy through its counsel declares that any false statement made on the trademark application was solely the act of Mr Sebro, not of the Conservancy.
In view of this evidence and the sworn pleading submitted by the Conservancy, we have now moved to amend our petition, to state as a second ground for the cancellation that the trademark was obtained by fraud.
One need not have spent more than three decades teaching law in Ivy League law schools to know that the real purpose of Conservancy’s summary judgment motion was to delay our taking discovery. The Conservancy has also applied for new trademark registrations, declaring that they have a bona fide intention to use “The Software Conservancy,” both as a word mark and as a design mark with their tree symbol. (Despite his stated commitment to transparency, Mr Kuhn in his rather extensive blog post omitted to mention that.)
Settlement is the only outcome that makes sense here. Continuance of litigation cannot possibly benefit my former employees, let alone the organization they manage, or its board. We have put a fair offer for comprehensive peace on the table. We hope it will be swiftly accepted.
The full text of the certification required was:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true."
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