Re: Misuse of the ASF's OFBiz trademark

[Pierre Smits]

Hi Jacopo,

To me your email comes across as from a group of OFBiz contributors not
protecting the interest of the ASF (and/or the Apache OFBiz project), but
rather as a means to protect the (personal) interests of several OFBiz PMC
members and other privileged OFBiz contributors (those with only the commit
bit).

This per:

1. several PMC Members (Anil Patel, Ashish Vijaywargiya, Scott Gray, and
you) being employees of (or performing payed work for) of HotWax Systems,
which violates the Apache trademark by owning the top level domain ‘ofbiz.us’
[1] (Us OFBiz) since 2010.
Even worse, both Anil and you are part of the management team of HotWax
(resp. as Chief Operating Officer and Chief Technical Officer)…
2. a PMC Member (Michael Brohl) owning several ‘ofbiz-community’ top level
domains [2] which don’t (re)direct towards ofbiz.apache.org but instead
lures potential OFBiz visitors away to another site, and thereby lessens
the OFBiz experience;
3. another PMC Member (Hans Bakker) owning (or having owned) several top
level domains which don’t (re)direct towards ofbiz.apache.org, but have
(for years) been redirecting traffic towards the website(s) of his company;
4. Another PMC Member and several committers (Nicolas Malin - PMC Member,
Julien Nicolas, Gil Porteseinge) are employees of (or perform payed work
for) Nereide (in France) which owns the domain ‘ofbiz.fr’ [4].

The above disqualifies you and the mentioned PMC members as the guardians
of the interests of the OFBiz project.
In my book, this constitutes a conduct unbecoming an Officer of the ASF (of
you, as VP of the project). And the same (conduct unbecoming a PMC Member)
goes for your fellow PMC Members.

Also, given the fact that the OFBiz trademark is not owned by the project
but by the Apache Software Foundation, the email should not have come from
you at all.

It is my viewpoint that potential ASF trademark infringement cases should
never be handled by the PMC of a project under the umbrella of the ASF. A
project consists of contributors, which may have conflicting interests.
Also, a PMC of an ASF project can’t extend or decrease the regulations of
the higher governing body (the Board).
Having a PMC of a project handling potential trademark infringement cases
(prosecuting, judging, jurying, etc) is like a butcher proofing his own
meat. But, like anybody else, a PMC Member can bring a potential trademark
infringement case forward to the ASF. Where is should be handled by an
office that is independent from the project.

Nevertheless, thank you for bringing this to my attention. You correctly
identified me as the owner of the website and the social media account.
This is, I assume, based on statements made by me in postings sent to the
various (public) mailing lists of the ASF. And, already for quite some
time, my emails (made from my email account at gmail dot com) sport a
reference to the site.

Let me respond to the listed remarks in your email regarding potential
trademark infringements.

1. Use of a stylised version of the Apache Feather logo.

First of all, I don’t use the stylised version of the Apache Feather logo
(past or present).
Neither website nor the social media account use a variant of the OFBiz
logo (past and present).  A variant would something be as displayed [5].

My website and social media account display an image that, in part,
consists of a multi-coloured leaf on a contrasting tile (shaped as an
oval). Combined with the other elements of the image it is an image that
carries enough distinction from the logo of Apache OFBiz for any
independent observer. Furthermore, a part of an logo is not the logo.

2. The site name  ‘OFBiz Extensions Marketplace, The OFBiz Contributors
Initiative.
Thank you for pointing out a typo (Contributors, instead of Contributor’s)
to me.
I will correct the situation. After adjustment the tag line into ‘The
Contributor’s Initiative’ I expect the tagline to be in line with the
trademark requirements of the ASF as I *am* a contributor of the OFBiz
project. The use of the function word 'the' does not imply that I am the
only contributor. There is proof abundant that I am not.

3. and 4. regarding the ‘contributor’ reference.
I will review the data set, and correct where necessary, to ensure that the
correct contributor/provider is referenced.

5. Dislaimer
I will review and adjust the disclaimer (and it's font size), to ensure
that the viewing consumer is aware of the fact that I don’t imply that the
ASF (and thus the Apache OFBiz project) is endorsing/sponsoring/approving
the site and/or any of it content and that it is more prominent visible.

6. About Us section
As far as I can tell, there is no legal obligation to state ownership in
the page. Details of who owns (I, me) can be found through whois functions.

7. Summary OFBIZCI-OEM twitter account
I will adjust the tagline.




[1] see: whois ofbiz.us
[2] see: whois ofbiz-community.biz, whois ofbiz-community.com, whois
ofbiz-community.net, whois ofbiz-community.org, whois ofbiz-community.de
[3] see whois ofbiz.in, whois ofbiz.asia, whois, ofbiz.cloud, whois
ofbiz.info
[4] see: whois ofbiz.fr
[5] http://ofbiz.us

Best regards,

Pierre Smits

ORRTIZ.COM <http://www.orrtiz.com>
OFBiz based solutions & services

OFBiz Extensions Marketplace
http://oem.ofbizci.net/oci-2/

On Wed, Dec 28, 2016 at 10:17 AM, Jacopo Cappellato <[hidden email]>
wrote:

> Dear Pierre,
>
> the OFBiz PMC is writing to you as the owner of the initiative named
> "OFBiz Extensions Marketplace, The OFBiz Contributors Initiative":
>
> website: https://oem.ofbizci.net/oci-2/main
> Twitter: https://twitter.com/OFBizCI_OEM
>
> The OFBiz PMC is concerned that the title and branding of the initiative,
> the content of the site and the summary of the Twitter account may mislead
> the users by providing the wrong impression that Apache OFBiz and the ASF
> are contributing to the initiative or endorsing or approving it, which is
> not the case.
>
> The website and Twitter account may be improperly using our Apache OFBiz
> trademark(s) in the following cases:
>
> 1. Use of a stylized version of the Apache Feather logo
>
> This logo looks like a variant of the previous OFBiz logo and the
> impression it conveys is that there is an official association with the
> OFBiz project.
>
> 2. The site name "OFBiz Extensions Marketplace, The OFBiz Contributors
> Initiative"
>
> This title may imply that this is *the* extension marketplace for the
> OFBiz project rather than one (of potentially many) attempts, by companies
> not endorsed by the OFBiz community or the ASF, to create a space where
> project extensions are shared or offered.
> Similarly the subtitle “The Contributors Initiative” is also misleading as
> it implies that this initiative is endorsed by the project and its
> contributors where in fact it is not.
>
> 3. Usage of the term "Contributor”
>
> Many of the extensions / products offered on the site have a prominent
> attribute titled "Contributor: Apache OFBiz". The "Contributor" term may
> suggest that Apache OFBiz is contributing to this initiative, which is not
> the case
>
> 4. Product Details
>
> There are several products / extensions claiming to be contributed by
> Apache OFBiz that are linking to non official repositories.
>
> An example is as follows:
>
> This component has been setup with Contributor=Apache OFBiz
>
> https://oem.ofbizci.net/oci-2/products/oem-promotions/p_ofbi
> z-manufacturing
>
> It has the title "MRP solution by the OFBiz project" clearly stating that
> the product is created by the OFBiz community; however in the "Product
> Url(s)" section, the "Code Repository" url points to an unofficial
> repository, not owned by the ASF.
>
> 5. Disclaimer
>
> The disclaimer section in the footer of the website is very small and
> visitors can easily miss this important information.
>
> 6. About Us section
>
> This page does not describe who or which company actually owns the site.
> There are contact details to a Dutch address but no mention of any actual
> company.
>
> 7. Summary of the Twitter account OFBizCI_OEM
>
> The summary states:
>
> "Promoting @ApacheOFBiz and #OFBiz related extensions, solutions &
> services"
>
> without clarifying that the initiative and account are not endorsed,
> sponsored and approved by the ASF and the OFBiz PMC.
>
> We trust that this misuse is inadvertent, but we nonetheless must insist
> that you update the content of the site to prevent any risk of confusion
> and correct your use of Apache trademarks, including Apache OFBiz, in a way
> that complies with the ASF's trademark policies [*].
>
> In particular, we ask that you change the following:
>
> 1. Remove the Apache feather from your logo and do not use stylized
> versions of the Apache OFBiz project or ASF logos
> 2. Change the site name from "OFBiz Extensions Marketplace”
> 3. Remove the title "The OFBiz Contributors Initiative"
> 4. Either remove all the components credited to Apache OFBiz from your
> site or use another term instead of "Contributor: Apache OFBiz"; for
> example "Developed by Apache OFBiz"
> 5. If Apache OFBiz is the source of any of the extensions then they must
> be downloaded from an official OFBiz download page
> 6. Increase the text size of the disclaimer and make it more prominent
> 7. Include your name and company details in your About Us section
> 8. Change the twitter account details for OFBizCI_OEM to indicate that it
> is not endorsed, sponsored or approved by the ASF or the OFBiz PMC
>
> Please provide written assurance that you will comply with ASF’s policy
> and guidelines for trademarks and graphic logos and cease this misuse of
> Apache trademarks within the next 3 weeks (21 days). If you believe that
> you have received this letter by mistake and that your use of Apache OFBiz
> does comply with ASF’s policy and guidelines, please provide an email
> response detailing your compliance instead.
>
> Please Reply-All to include all appropriate ASF committees with your
> response; the trademarks@ and private@ addresses are privately archived.
> This letter is made without prejudice to any other rights or remedies that
> may be available to ASF.
>
> Thank you for your time,
>
> Jacopo Cappellato
>
> Vice President, Apache OFBiz
> The Apache Software Foundation
>
> [*]
> http://www.apache.org/foundation/marks/
> http://www.apache.org/foundation/marks/faq/#products
>
>

[Vice President, Brand Management]

(Moving dev@/user@ to bcc: to avoid mixing public/private lists)

A few clarifications:

- The ASF has a policy for the use of domain names that include Apache
trademarks, which I would suggest people review when using any domain
names that include "ofbiz" or other Apache project names:

  https://www.apache.org/foundation/marks/domains


- The email included below comes from the Apache OFBiz PMC as a whole,
not from individual members.  The PMC was following the documented
procedure for addressing issues with Apache trademarks:

  https://www.apache.org/foundation/marks/reporting#pmcs

Jacopo signed the email with his ASF title, and already included the
private@ and trademarks@ mailing lists, so the appropriate people across
the ASF were already aware of this.


- The ASF's Brand Management Committee does not discuss potential
trademark enforcement actions in public.  This is to avoid the common
case where an outside party was unaware of our policy, and simply
replies to our request with an "ooops, sorry, we'll fix it".  Contacting
outside parties in private allows everyone to save face.

That being said, the ASF and the PMC are aware of the other domain names
in question and will take action on them as needed.


In any case, I'll sign this email with my ASF title, and will ask you -
formally on behalf of the ASF, since you brought the matter up here on
public lists - to take action on the entire request from the PMC.

--
- Shane Curcuru
  Vice President, Brand Management
  The Apache Software Foundation
  http://www.apache.org/foundation/marks

Pierre Smits wrote on 1/3/17 5:44 AM:

> Hi Jacopo,
>
> To me your email comes across as from a group of OFBiz contributors not
> protecting the interest of the ASF (and/or the Apache OFBiz project),
> but rather as a means to protect the (personal) interests of several
> OFBiz PMC members and other privileged OFBiz contributors (those with
> only the commit bit).
>
> This per:
>
> 1. several PMC Members (Anil Patel, Ashish Vijaywargiya, Scott Gray, and
> you) being employees of (or performing payed work for) of HotWax
> Systems, which violates the Apache trademark by owning the top level
> domain ‘ofbiz.us <http://ofbiz.us>’ [1] (Us OFBiz) since 2010.
> Even worse, both Anil and you are part of the management team of HotWax
> (resp. as Chief Operating Officer and Chief Technical Officer)…
> 2. a PMC Member (Michael Brohl) owning several ‘ofbiz-community’ top
> level domains [2] which don’t (re)direct towards ofbiz.apache.org
> <http://ofbiz.apache.org> but instead lures potential OFBiz visitors
> away to another site, and thereby lessens the OFBiz experience;
> 3. another PMC Member (Hans Bakker) owning (or having owned) several top
> level domains which don’t (re)direct towards ofbiz.apache.org
> <http://ofbiz.apache.org>, but have (for years) been redirecting traffic
> towards the website(s) of his company;
> 4. Another PMC Member and several committers (Nicolas Malin - PMC
> Member, Julien Nicolas, Gil Porteseinge) are employees of (or perform
> payed work for) Nereide (in France) which owns the domain ‘ofbiz.fr
> <http://ofbiz.fr>’ [4].
>
> The above disqualifies you and the mentioned PMC members as the
> guardians of the interests of the OFBiz project.
> In my book, this constitutes a conduct unbecoming an Officer of the ASF
> (of you, as VP of the project). And the same (conduct unbecoming a PMC
> Member) goes for your fellow PMC Members.
>
> Also, given the fact that the OFBiz trademark is not owned by the
> project but by the Apache Software Foundation, the email should not have
> come from you at all.
>
> It is my viewpoint that potential ASF trademark infringement cases
> should never be handled by the PMC of a project under the umbrella of
> the ASF. A project consists of contributors, which may have conflicting
> interests. Also, a PMC of an ASF project can’t extend or decrease the
> regulations of the higher governing body (the Board).
> Having a PMC of a project handling potential trademark infringement
> cases (prosecuting, judging, jurying, etc) is like a butcher proofing
> his own meat. But, like anybody else, a PMC Member can bring a potential
> trademark infringement case forward to the ASF. Where is should be
> handled by an office that is independent from the project.
>
> Nevertheless, thank you for bringing this to my attention. You correctly
> identified me as the owner of the website and the social media account.
> This is, I assume, based on statements made by me in postings sent to
> the various (public) mailing lists of the ASF. And, already for quite
> some time, my emails (made from my email account at gmail dot com) sport
> a reference to the site.
>
> Let me respond to the listed remarks in your email regarding potential
> trademark infringements.
>
> 1. Use of a stylised version of the Apache Feather logo.
>
> First of all, I don’t use the stylised version of the Apache Feather
> logo (past or present).
> Neither website nor the social media account use a variant of the OFBiz
> logo (past and present).  A variant would something be as displayed [5].
>
> My website and social media account display an image that, in part,
> consists of a multi-coloured leaf on a contrasting tile (shaped as an
> oval). Combined with the other elements of the image it is an image that
> carries enough distinction from the logo of Apache OFBiz for any
> independent observer. Furthermore, a part of an logo is not the logo.
>
> 2. The site name  ‘OFBiz Extensions Marketplace, The OFBiz Contributors
> Initiative.
> Thank you for pointing out a typo (Contributors, instead of
> Contributor’s) to me.
> I will correct the situation. After adjustment the tag line into ‘The
> Contributor’s Initiative’ I expect the tagline to be in line with the
> trademark requirements of the ASF as I *am* a contributor of the OFBiz
> project. The use of the function word 'the' does not imply that I am the
> only contributor. There is proof abundant that I am not.
>
> 3. and 4. regarding the ‘contributor’ reference.
> I will review the data set, and correct where necessary, to ensure that
> the correct contributor/provider is referenced.
>
> 5. Dislaimer
> I will review and adjust the disclaimer (and it's font size), to ensure
> that the viewing consumer is aware of the fact that I don’t imply that
> the ASF (and thus the Apache OFBiz project) is
> endorsing/sponsoring/approving the site and/or any of it content and
> that it is more prominent visible.
>
> 6. About Us section
> As far as I can tell, there is no legal obligation to state ownership in
> the page. Details of who owns (I, me) can be found through whois functions.
>
> 7. Summary OFBIZCI-OEM twitter account
> I will adjust the tagline.
>
>
>
>
> [1] see: whois ofbiz.us <http://ofbiz.us>
> [2] see: whois ofbiz-community.biz <http://ofbiz-community.biz>, whois
> ofbiz-community.com <http://ofbiz-community.com>, whois
> ofbiz-community.net <http://ofbiz-community.net>, whois
> ofbiz-community.org <http://ofbiz-community.org>, whois
> ofbiz-community.de <http://ofbiz-community.de>
> [3] see whois ofbiz.in <http://ofbiz.in>, whois ofbiz.asia
> <http://ofbiz.asia>, whois, ofbiz.cloud, whois ofbiz.info
> <http://ofbiz.info>
> [4] see: whois ofbiz.fr <http://ofbiz.fr>
> [5] http://ofbiz.us
>
> Best regards,
>
> Pierre Smits
>
> ORRTIZ.COM <http://www.orrtiz.com>
> OFBiz based solutions & services
>
> OFBiz Extensions Marketplace
> http://oem.ofbizci.net/oci-2/
>
> On Wed, Dec 28, 2016 at 10:17 AM, Jacopo Cappellato <[hidden email]
> <mailto:[hidden email]>> wrote:
>
>     Dear Pierre,
>
>     the OFBiz PMC is writing to you as the owner of the initiative named
>     "OFBiz Extensions Marketplace, The OFBiz Contributors Initiative":
>
>     website: https://oem.ofbizci.net/oci-2/main
>     <https://oem.ofbizci.net/oci-2/main>
>     Twitter: https://twitter.com/OFBizCI_OEM
>     <https://twitter.com/OFBizCI_OEM>
>
>     The OFBiz PMC is concerned that the title and branding of the
>     initiative, the content of the site and the summary of the Twitter
>     account may mislead the users by providing the wrong impression that
>     Apache OFBiz and the ASF are contributing to the initiative or
>     endorsing or approving it, which is not the case.
>
>     The website and Twitter account may be improperly using our Apache
>     OFBiz trademark(s) in the following cases:
>
>     1. Use of a stylized version of the Apache Feather logo
>
>     This logo looks like a variant of the previous OFBiz logo and the
>     impression it conveys is that there is an official association with
>     the OFBiz project.
>
>     2. The site name "OFBiz Extensions Marketplace, The OFBiz
>     Contributors Initiative"
>
>     This title may imply that this is *the* extension marketplace for
>     the OFBiz project rather than one (of potentially many) attempts, by
>     companies not endorsed by the OFBiz community or the ASF, to create
>     a space where project extensions are shared or offered.
>     Similarly the subtitle “The Contributors Initiative” is also
>     misleading as it implies that this initiative is endorsed by the
>     project and its contributors where in fact it is not.
>
>     3. Usage of the term "Contributor”
>
>     Many of the extensions / products offered on the site have a
>     prominent attribute titled "Contributor: Apache OFBiz". The
>     "Contributor" term may suggest that Apache OFBiz is contributing to
>     this initiative, which is not the case
>
>     4. Product Details
>
>     There are several products / extensions claiming to be contributed
>     by Apache OFBiz that are linking to non official repositories.
>
>     An example is as follows:
>
>     This component has been setup with Contributor=Apache OFBiz
>
>     https://oem.ofbizci.net/oci-2/products/oem-promotions/p_ofbiz-manufacturing
>     <https://oem.ofbizci.net/oci-2/products/oem-promotions/p_ofbiz-manufacturing>
>
>     It has the title "MRP solution by the OFBiz project" clearly stating
>     that the product is created by the OFBiz community; however in the
>     "Product Url(s)" section, the "Code Repository" url points to an
>     unofficial repository, not owned by the ASF.
>
>     5. Disclaimer
>
>     The disclaimer section in the footer of the website is very small
>     and visitors can easily miss this important information.
>
>     6. About Us section
>
>     This page does not describe who or which company actually owns the
>     site. There are contact details to a Dutch address but no mention of
>     any actual company.
>
>     7. Summary of the Twitter account OFBizCI_OEM
>
>     The summary states:
>
>     "Promoting @ApacheOFBiz and #OFBiz related extensions, solutions &
>     services"
>
>     without clarifying that the initiative and account are not endorsed,
>     sponsored and approved by the ASF and the OFBiz PMC.
>
>     We trust that this misuse is inadvertent, but we nonetheless must
>     insist that you update the content of the site to prevent any risk
>     of confusion and correct your use of Apache trademarks, including
>     Apache OFBiz, in a way that complies with the ASF's trademark
>     policies [*].
>
>     In particular, we ask that you change the following:
>
>     1. Remove the Apache feather from your logo and do not use stylized
>     versions of the Apache OFBiz project or ASF logos
>     2. Change the site name from "OFBiz Extensions Marketplace”
>     3. Remove the title "The OFBiz Contributors Initiative"
>     4. Either remove all the components credited to Apache OFBiz from
>     your site or use another term instead of "Contributor: Apache
>     OFBiz"; for example "Developed by Apache OFBiz"
>     5. If Apache OFBiz is the source of any of the extensions then they
>     must be downloaded from an official OFBiz download page
>     6. Increase the text size of the disclaimer and make it more prominent
>     7. Include your name and company details in your About Us section
>     8. Change the twitter account details for OFBizCI_OEM to indicate
>     that it is not endorsed, sponsored or approved by the ASF or the
>     OFBiz PMC
>
>     Please provide written assurance that you will comply with ASF’s
>     policy and guidelines for trademarks and graphic logos and cease
>     this misuse of Apache trademarks within the next 3 weeks (21 days).
>     If you believe that you have received this letter by mistake and
>     that your use of Apache OFBiz does comply with ASF’s policy and
>     guidelines, please provide an email response detailing your
>     compliance instead.
>
>     Please Reply-All to include all appropriate ASF committees with your
>     response; the trademarks@ and private@ addresses are privately
>     archived. This letter is made without prejudice to any other rights
>     or remedies that may be available to ASF.
>
>     Thank you for your time,
>
>     Jacopo Cappellato
>
>     Vice President, Apache OFBiz
>     The Apache Software Foundation
>
>     [*]
>     http://www.apache.org/foundation/marks/
>     <http://www.apache.org/foundation/marks/>
>     http://www.apache.org/foundation/marks/faq/#products
>     <http://www.apache.org/foundation/marks/faq/#products>
>
>

[jacopoc]

On Tue, Jan 3, 2017 at 11:44 AM, Pierre Smits <[hidden email]>
 wrote:

>
> 1. [...] HotWax Systems, which violates the Apache trademark by owning the
> top level domain ‘ofbiz.us’ [1] (Us OFBiz) since 2010.

2. [...] several ‘ofbiz-community’ top level domains [2] which don’t
> (re)direct towards ofbiz.apache.org
> 3. [...] several top level domains which don’t (re)direct towards
> ofbiz.apache.org
> 4. [...] Nereide (in France) which owns the domain ‘ofbiz.fr’ [4].
>
>
(Moving dev@/user@ to bcc: to avoid mixing public/private lists)

Users should report potential trademark misuses of the OFBiz marks to the
private list as explained here:

http://www.apache.org/foundation/marks/reporting#users

The OFBiz PMC, with the help of the Apache Trademarks group, is actively
working at protecting the project's marks by researching for and logging
potential misuses (the ones you have reported above will be added to the
list if not already there), reviewing and analyzing them and then privately
contacting the third parties for which the violations have been confirmed
(like we did with your site).

Jacopo Cappellato
Vice President, Apache OFBiz
The Apache Software Foundation
http://ofbiz.apache.org