WGS and the Linux Mall are proud to announce that the dispute of ownership regarding the Linux Trademark has been settled. The trademark now belongs to Linus Torvalds, as it well should.
Following is the official press release:
Ownership of LINUX Trademark Resolved
FOR RELEASE at Noon EDT - August 20, 1997
Monterey, California, August 20, 1997 - A long standing dispute over ownership of the LINUX operating system trademark has just been resolved. As a result of litigation brought by a group of five LINUX companies and individuals against William R. Della Croce, Jr. of Boston, Massachusetts, Della Croce has assigned ownership of the registered mark to Linus Torvalds, the original author of LINUX, as part of a settlement agreement.
The plaintiffs in the suit were Linus Torvalds; WorkGroup Solutions of Aurora, Colorado; Yggdrasil Computing, Inc. in San Jose; Specialized Systems Consultants, Inc. (the "Linux Journal") of Seattle; Linux International, Amherst, NH; Non-plaintiffs Red Hat Software, Inc., Metrolink Inc., and Digital Equipment Corporation supported the litigation and contributed to the cost of the litigation.
The five plaintiffs brought suit against Della Croce in the U.S. Trademark Trial & Appeals Board, in November 1996. Della Croce had obtained registration of the LINUX mark in September 1995, which created a storm of protests by the LINUX community, who felt the mark belonged to Torvalds or the LINUX community and not to any individual. In an attempt to correct the situation, the plaintiffs retained the internationally known intellectual property law firm of Davis & Schroeder of Monterey, California, who handled the case on a greatly reduced fee basis, as a service to the LINUX community.
The five plaintiffs, through their attorneys, announced today that (1) the matter has been settled by the assignment of the mark to Linus Torvalds, on behalf of all Petitioners and LINUX users, and the dismissal with prejudice of the pending PTO Cancellation Proceeding; and (2) that Respondent was reimbursed for his trademark filing fees and costs by Petitioners. The other terms of the Settlement Agreement are confidential.
All inquiries should be referred to Petitioners' law firm, Davis & Schroeder at 408-649-1122 or by email at email@example.com. A copy of the original Cancellation Petition filed in the TTAB, can be found at http://www.iplawyers.com/text/linux.htm .
# # # # #
---------------------------------------------------------------------- Public Update: 12/24/96 ---------------------------------------------------------------------- Gerry, In the interest of a providing a complete record of the Trademark activity to the interested Linux public, I would like to post the following on my web site. I would like to place this file as publicly available. I understand that all this *IS* a matter of public record. As the attorney for this case, may I have your permission to do this? As you know this has been my intent since the beginning, even before we added the other co-petitioners. Thanks Mark ====Posting Approval given by Gerry Davis, via e-mail: 01/01/97 ====================================================================== Information on the status of the Linux Trademark dispute. A more complete record of activities than has been previously posted. Includes letters written between attorneys. ====================================================================== A Person by the name of William R. Della Croce, Jr. claims to own the Linux Trademark. He will be referred to henceforth for brevity in the narrative as "Della Croce". Della Croce has through an attorney requested payment from many Linux related companies for the use of his trademark. In this posting will be facts, and letters as they have occurred, and between rows of equals "=" signs will be contained the narrative. (R) means the Registered Trademark Symbol ====================================================================== Initial Letter from Della Croce to WorkGroup Solutions, Inc. ====================================================================== Global American PO Box 1963 Boston MA 02205-1963 Publisher WorkGroup Solutions, Inc. div General Computer Services, Inc. P.O. Box 460190 Aurora, CO 80046-0190 July 30, 1996 Dear Sir, This is to inform you that LINUX(R) is proprietary. Information about obtaining approval for it's use and/or making payment for past use may be obtained by writing the following address: Legal Dept. c/o Global American PO Box 1963 Boston, MA 02205-1963 Sincerely, (signature) William R. Della Croce, Jr. Proprietor LINUX(R) ====================================================================== After Mark Bolzern of WGS, received this letter, he then obtained the following results of a Trademark Search, showing that indeed Della Croce had filed for Trademark, and officially obtained it. The trademark registration information follows: ====================================================================== Trademark Name: LINUX Status: REGISTERED Status Date: SEPTEMBER 5, 1995 Register Type: PRINCIPAL REGISTER Active/Inactive: ACTIVE International Class: 9 (ELECTRICAL AND SCIENTIFIC APPARATUS) - SECONDARY CLASS U.S. Class: 38 (PRINTS AND PUBLICATIONS) - PRIMARY CLASS Goods/Services: COMPUTER OPERATING SYSTEM SOFTWARE TO FACILITATE COMPUTER USE AND OPERATION (INTERNATIONAL CLASS: 9; US CLASS: 38) First Use Date: AUGUST 2, 1994 (INTERNATIONAL CLASS: 9; US CLASS: 38) First Commerce Date: AUGUST 2, 1994 (INTERNATIONAL CLASS: 9; US CLASS: 38) Registration Number: 1916230 Registration Date: SEPTEMBER 5, 1995 Serial Number: 74-560867 Filing Date: AUGUST 15, 1994 Publication Date: JUNE 13, 1995 Correspondent: WILLIAM R. DELLA CROCE, JR. 33 SNOW HILL ST. Owner: CROCE, WILLIAM R. DELLA, JR. (UNITED STATES INDIVIDUAL) 33 SNOW HILL ST. BOSTON, MA 02113 Registrant: CROCE, WILLIAM R. DELLA, JR. (UNITED STATES INDIVIDUAL) 33 SNOW HILL ST. BOSTON, MA 02113 OWNER DATE NOT AVAILABLE Applicant: CROCE, WILLIAM R. DELLA, JR. (UNITED STATES INDIVIDUAL) BOSTON, MA AS OF AUGUST 15, 1994 State of Registration: MASSACHUSETTS ====================================================================== Mark Bolzern then replied with the following letter, and also discovered that other Linux vendors were getting the same letter that WGS had gotten. Attempt below to simulate WGS letterhead in text for completeness. None of the Letters from Della Croce and his attorney were on letterhead, but rather on plain white paper. ====================================================================== WGS | PO Box 460190, 80046-0190 | http://www.wgs.com | firstname.lastname@example.org WorkGroup Solutions, Inc. | Tel 303-699-7470 | Fax 303-699-2793 William R. Della Croce Jr. c/o Global American PO BOX 1963 Boston, MA 02205-1963 Dear Sir, You sent me a letter claiming that Linux is your proprietary trademark, and that I should request approval for using and paying for this trademark. This letter is written to request this "information" that you allude I must obtain. (Signature) Mark Bolzern President ====================================================================== In reply WGS got the following letter ====================================================================== Joel R. Davidson Attorney at Law 223 President's Lane Quincy, MA 02169-1919 August 20, 1996 Mr. Mark Bolzern President WorkGroup Solutions, Inc. P.O. Box 460190 Aurora, CO 80046-0190 Dear Mr. Bolzern This letter is in response to your letter requesting information regarding Linux(R) as a proprietary trademark. Linux(R)'s Registration Number is 1,916,230 and was duly registered by William R. Della Croce Jr. If you have been using Linux(R) in the past, we will want to bill you for past use. For total and honest cooperation, we will bill you a discounted fee of 10% of your total gross revenues for every year that you derived income from the use of Linux(R). Please have your CPA submit a certified statement indicating gross revenues from Linux(R) for every year that you have been using this product. Very truly yours, (Signature here) Joel R. Davidson ========================================================================== The above letters were posted to COLA, by Mark Bolzern, and also shared with the board and officers of Linux International. By result a number of people offered help, including G. Gervaise Davis III, (Gerry) a prominent Intellectual Property rights attorney. WGS retained Gerry to respond to Della Croce's Attorney, and after duly researching the situation the following letter was sent to Della Croce's attorney. ========================================================================== Law Offices Davis & Schroeder A Professional Corporation George L. Schroeder Professional Building G. Gervaise Davis III 215 W. Franklin Street, 4th Floor John D. Laughton Post Office Box 3080 Robert T. Daunt September 12, 1996 Monterey, California 93942 Jonathan W. Romeyn Voice (408) 649-1122 Catherine McCauley-Leibert Facsimile (408) 649-0566 VIA FACSIMILE: 1-617-770-0930 Joel R. Davidson Attorney at Law 223 Presidents Lane Quincy, Massachusetts 02169-1919 RE: Linux Background/Alleged Della Croce Trademark Dear Joel: The enclosed material, being herewith sent by fax, is a follow-up to our several phone conversations starting late Tuesday afternoon, and concluding Wednesday morning. It is my understanding from our last conversation that you and your client's present position is that his trademark is valid, and that he is unwilling to do anything to avoid our filing a petition for cancellation with the Patent and Trademark Office in Washington. You have indicated, however, that you wanted to think about the matter, and I strongly recommend that you consult with a competent trademark counsel on this issue. You have promised to call me on Monday to give me your best judgment on the situation, and your client's decision as to what he plans to do. In light of the fact that you are thinking about the matter, and may not have background in it, I thought you would find interesting the enclosed article from the San Jose Mercury News, together with a number of links on the World Wide Web indicating that literally hundreds of people were involved in development, marketing and use of the product. You will note that the article indicates very clearly that the origin of the Linux operating system was with Linus Torvalds, starting in 1990, that in 1991 he began distributing it in various forms, and that by 1992 and 1993 it had become very popular and world wide. Your client's claim to first use is in 1994, which is years after the commencement of use of this name and product. I guess one of the purposes of this letter, besides the enclosures to you, is to ask whether you and your client are really prepared to take on this gigantic community of people, all of whom, except for a few companies, are involved in essentially free distribution of this public domain product. I have been told by various members of the Linux community that I can get affidavits from nearly everybody connected with this, as shown on the list, as to the origin, timing, and other matters relating to the use of Linux as a name for the operating system. If and when you talk to a trademark attorney, I hope that you will make it a point to give him this information, in case he is not familiar with the history of this mark. I look forward to talking with you on Monday, and hope that this information is helpful to you in advising your client. Very Truly Yours Davis & Schroeder P.C. (Signature) G. Gervaise Davis III (E-mail: email@example.com) GGD/ks Enclosures Visit our Internet Web Page at http://www.iplawyers.com ========================================================================== Note: There are two minor errors in the letter above. Linux is not public domain, it is under GNU. The companies selling Linux, are not selling the software itself but rather their value-add. Both however are close enough to the truth that in the context of the letter there is not an issue. They have been clarified only for accuracy's sake. Also the enclosures have been left out of this record, as they are materials that are otherwise available on the Internet regarding the history of Linux. Below is a reply from Della Croce's attorney. ========================================================================== Joel R. Davidson Attorney at Law 223 President's Lane Quincy, MA 02169-1919 617-773-9092 617-770-0930 September 16, 1996 Mr. Gerry Davis, Esquire Davis & Schroeder, P.C. P.O. Box 3080 Monterey, CA 93924 Dear Gerry: This is to confirm in writing that we have talked about Linux. I have no plans to take any further steps on behalf of my client, William Della Croce, Jr., at the present time. Very truly yours, (Signature) Joel R. Davidson ========================================================================== Note that in the above letter, the registered trademark symbol was not used. This letter was responded to by Gerry as follows: ========================================================================== Law Offices Davis & Schroeder A Professional Corporation George L. Schroeder Professional Building G. Gervaise Davis III 215 W. Franklin Street, 4th Floor John D. Laughton Post Office Box 3080 Robert T. Daunt September 26, 1996 Monterey, California 93942 Jonathan W. Romeyn Voice (408) 649-1122 Catherine McCauley-Leibert Facsimile (408) 649-0566 VIA FACSIMILE: 1-617-770-0930 Joel R. Davidson Attorney at Law 223 Presidents Lane Quincy, Massachusetts 02169-1919 RE: Your letter dated September 16, 1996 - William Della Croce, Jr. Dear Mr. Davidson: Thank you for your above referenced letter. Unfortunately, I cannot tell from the language whether you are saying that you no longer represent Mr. Della Croce, in which case I will address correspondence directly to him, unless he has retained other counsel, or, if you are still representing him, in which case I will send it to you. Accordingly, could you please confirm who, if anyone, is representing him as legal counsel, so that I can abide by the normal rules of ethics of the legal profession. Specifically I want to contact him for the purpose of finding out whether he will provide us with copies of his current and original product in order that we may verify his statement that he had a product at the time. You had indicated you might do this and that you would discuss it with him, but you have not responded in that regard either. We are in the process of preparing a petition for cancellation, which we would expect to file in due course. Therefore, I would appreciate your prompt response. Very Truly Yours Davis & Schroeder P.C. (Signature) G. Gervaise Davis III (E-mail: firstname.lastname@example.org) GGD/ks Enclosures Visit our Internet Web Page at http://www.iplawyers.com ========================================================================== On October 15th this showed up on Gerry's fax machine ========================================================================== Joel R. Davidson Attorney at Law 223 President's Lane Quincy, MA 02169-1919 617-773-9092 FAX: 617-770-0930 MEMORANDUM To: Gerry Davis, Fax No. 1-408-649-0566 From: Joel Davidson, Fax No. 1-617-770-0930 Date: October 15, 1996 Subject: My letter of September 16, 1996 --------------------------------------------------------------------- Dear Gerry: It seems to me that my promise to refrain from taking any further steps on behalf of my client ought to be conditioned upon a corresponding promise from you to refrain from taking any further steps against my client. Why don't you promise not to file the petition to cancel my client's registration, or in the alternative, if you have already filed the petition, why not plan to withdraw your petition to cancel my client's registration? Let's mutually agree to suspend any and all activity on behalf of our clients in order to give ourselves a chance to stand back and look at the situation in order to better evaluate it? What do you say? ========================================================================== And Gerry responded as follows: ========================================================================== Law Offices Davis & Schroeder A Professional Corporation George L. Schroeder Professional Building G. Gervaise Davis III 215 W. Franklin Street, 4th Floor John D. Laughton Post Office Box 3080 Robert T. Daunt October 15, 1996 Monterey, California 93942 Jonathan W. Romeyn Voice (408) 649-1122 Catherine McCauley-Leibert Facsimile (408) 649-0566 Joel R. Davidson Attorney at Law CERTIFIED MAIL, 223 Presidents Lane RETURN RECEIPT REQUESTED Quincy, Massachusetts 02169-1919 RE: Linux Trademark Dispute Dear Mr. Davidson: I have your fax memorandum received this morning on the above subject, referring back to your letter of September 16,1996. I must confess that I am now even more confused by your recent fax than I was when I wrote my letter dated September 26, 1996, in response to your September 16th letter. In my recent letter I asked a simple question - do you still represent Mr. Della Croce? I asked that question because it was not clear from your earlier letter what you meant by what you said about "not taking any further steps." Your recent fax seems to indicate that what you meant by that is that you are still representing him, and that, as a result of our discussions, you were not going to write any more letters demanding royalties on his behalf. This is a totally unacceptable solution to the situation, which could have been resolved some time ago by your responding in writing to my request about whether I should contact him, or you concerning our plans to file a petition for cancellation. We appreciate the conciliatory tone of your fax, however, the reality is that your client filed an application for trademark with the U.S. Patent and Trademark Office which appears to contain false statements. This registration cannot be permitted to stand since it deprives millions of users of the right to use a name that is generic and which was in use by numerous people long before Mr. Della Croce filed his erroneous application. So that there is no misunderstanding on your part or his, I am enclosing a draft of the Petition to Cancel, subject to further revisions, which we intend to file within the very near future with the U.S. Patent and Trademark Office. We believe this will result in the cancellation of the of the U.S. Trademark in question. This process will be expensive and drawn out, and could well result in proceedings against your client because of what would appear to be false statements in his application. If Mr. Della Croce wishes to avoid the cancellation proceeding, there are only two alternatives available. First, his agreement to immediately assign ownership of the Trademark to Linus Torvalds, or any person or entity that Mr. Torvalds feels is the appropriate one to hold the mark, in order to prevent it from being improperly used against people that are working with the Linux Operating System. Alternatively, his formal request to the PTO to cancel and abandon the mark without delay. If your client informs us either directly, or through you, that he is willing to take one or the other of these steps, we will prepare the necessary documentation at no cost to him, and send it to you for the appropriate signature. This offer is only good until the 25th of October, since after that date we intend to file the Petition with the U.S. Patent and Trademark Office, or an appropriate federal district court. If Mr. Della Croce insists on putting us to that trouble, we will take all steps available to our clients to recover the legal fees and costs of such proceeding, and to see to it that appropriate action by the Trademark Office is taken against him for filing his erroneous application. If you have any questions, please address them to me in writing at the above address, so that there is no misunderstanding. I will be happy to discuss the matter with you on the phone, but, in light of the existing problems, I think it is important that all communication be in writing since you and your client seem to have an unusual view of the current situation. You will note that the enclosed petition is being brought by a number of people intimately connected with the Linux Operating System, so I would assume that such proceeding would generate a great deal of public interest in the Linux community, since it will be a matter of public record. We would think Della Croce would prefer to avoid the embarrassment of this event, which is why we make this final offer of settlement before filing. Sincerely, Davis & Schroeder P.C. (Signature) G. Gervaise Davis III (E-mail: email@example.com) GGD/ks Enclosure cc: Linus Torvalds WorkGroup Solutions, Inc. Yggdrasil Computing, Inc. Specialized Systems Consultants, Inc. dba The Linux Journal Linux International Visit our Internet Web Page at http://www.iplawyers.com ========================================================================== The draft of the petition was left out at this point, as the petition will appear in it's final form later, and including it here would be highly repetitive. ========================================================================== Joel R. Davidson Attorney at Law 223 President's Lane Quincy, MA 02169-1919 617-773-9092 FAX: 617-770-0930 MEMORANDUM To: Gerry Davis, Fax No. 1-408-649-0566 From: Joel Davidson, Fax No. 1-617-770-0930 Date: October 25, 1996 Subject: Linux Trademark Dispute ---------------------------------------------------------------- Dear Gerry Davis: I am in receipt of your fax and your letter dated October 15, 1996 with the accompanying draft petition to cancel. Please don't file this petition as I am in the process of earnestly consulting with trademark counsel as to the best option to take with regard to my client's situation and I need more time to consult and decide which is the best option to take. Please give me a 10 day extension. Thank you very much. ========================================================================== Following the Reply by Gerry ========================================================================== Law Offices Davis & Schroeder A Professional Corporation George L. Schroeder Professional Building G. Gervaise Davis III 215 W. Franklin Street, 4th Floor John D. Laughton Post Office Box 3080 Robert T. Daunt October 28, 1996 Monterey, California 93942 Jonathan W. Romeyn Voice (408) 649-1122 Catherine McCauley-Leibert Facsimile (408) 649-0566 Joel R. Davidson, Esq. 223 Presidents Lane Quincy, Massachusetts 02169-1919 VIA FACSIMILE 617.770.0930 RE: William R. Della Croce/LINUX Trademark Cancellation Dear Mr. Davidson: This letter is in response to your faxed letter of October 25, 1996 in which you request that I hold off filing the PTO Cancellation Petition while you work with other counsel to resolve the matter. In our telephone conversation this AM you indicated that you had tried to get your client to agree to abandoning the TM, but that he would not do so, so you have withdrawn. You stated that you are, as of this date no longer representing him in any capacity. I told you I would confirm this fact and respond to your earlier request today. First, in light of the problems with your client in the past, my clients are unwilling to grant any extension of time without full disclosure of what your client intends to do in the time requested. You tell me that you cannot help in that regard, since Della Croce is no longer your client. Accordingly, be advised that we are NOT granting him any extension of time in which to further study the issues, and are going to proceed with filing the Petition at the first opportunity. Second, please immediately provide me with an accurate and current residence address and telephone number for William R. Della Croce, so that I may contact him directly. I have several numbers which have voice mail on them for which he refuses to answer. I also have an address for him on Global Management but can find no record of that business in Boston, and again, no one answers the phone. It is important that I have this information so that I can advise him directly of the consequences of his activities. I believe under your local law, similar to that in California, you are obligated to give me this information at once. Sincerely, (Signature) G. Gervaise Davis III ========================================================================== Shortly after the above letter was written, the following announcement was made publicly available. ========================================================================== Petition to Cancel filed against Linux Trademark Members of the LINUX community have been up in arms during the past six months over the efforts of an individual named William R. Della Croce, Jr. from the Boston area to collect 10% royalties on sales from businesses marketing Linux products. He bases his written demands on a US trademark which he claims to hold on the name "LINUX" for a computer operating system. He, in fact, holds such a registered trademark, based on his claim made under penalty of perjury that he is the owner and first user of the mark for operating systems, and that he was not aware in 1994 or 1995 of any other person who might claim or be using this name and mark for an operating system. This claim is absurd on its face. WorkGroup Solutions, Yggdrasil Computing, Linux International, SSC/Linux Journal, and Linus Torvalds have retained an internationally known software industry attorney, G. Gervaise Davis III, of the Davis & Schroeder law firm in Monterey, CA to seek cancellation of this registration on the grounds that it is fraudulent and obtained under false pretenses. Mr. Davis and his firm are handling the case on a vastly reduced fee basis, because of their long standing relationship with the U.S. software industry. Davis was the original attorney for Gary Kildall and Digital Research of CP/M fame in the 1980s. A Petition to Cancel was in fact filed with the Trademark Trial and Appeals Board in Washington, DC. on November 27, 1996, detailing the improper actions of Della Croce and setting out the true facts with a number of exhibits and attachments. Mr. Davis advises us that we can expect to have further steps taken by TTAB, under their complex procedural rules over the next few months. TTAB will first notify Della Croce of the filing and permit him time to respond, then evidence can be collected and depositions taken, and then the parties can file briefs and other responses. Often these cases take more than a year to be resolved by a TTAB decision. All of our industry is fully aware that Linus Torvalds developed Linux and that it has become one of the world's most popular operating systems during the past six years. The participants in this proceeding expect the TTAB to cancel the registration, after hearing and seeing the massive evidence demonstrating that Della Croce had no conceivable legal basis for his claim to the mark. The petition itself is available here and on the websites of each of the petitioners and Mr. Davis' law firm at www.iplawyers.com. We urge that interested persons read it, and distribute it and this message to all members of the LINUX community so that they will be aware of what is being done about this outrageous trademark claim. We will try to keep everyone posted on developments in the case through user groups and webpages. We will continue to keep you updated on the happenings in this action. Check back here for the latest updates. ========================================================================== Other Credits: Please note that Red Hat, Digital, and Metro-X also donated money to the cause of raising this defense, even though they were not explicitly petitioners, and therefore were not mentioned above or in the petition. Before WGS received the first of the letters requesting 10% royalties on gross income, there had been some other activity on this front as reported in the following piece taken from the Linux Journal Web site. This was discovered by WGS after we had started our own action, and we therefore agreed to combine forces. ========================================================================== Is Linux Trademarked? Several readers asked Linux Journal about the registered trademark symbol after Linux, in particular after noting the R[registered] symbol after Linux on IDG Books' Linux Secrets, written by Naba Barkakati. The book's cover says: ``Linux is a registered trademark of William R. Della Croce, Jr.'' Is there really a registered trademark on the word Linux? (See a separate press release about the trademark.) IDG Books Worldwide, Inc. told Linux Journal that they did a trademark search as they always do when deciding what to put on a book cover, and although surprised to find a registered trademark on Linux, they printed the information resulting from their search. Their intent was in no way to reinforce the registered mark, but to comply with trademark requirements. In July, 1996, we at LJ tried to contact the person who had filed for the trademark, Mr. William R. Della Croce, Jr., via phone and left a message giving our e-mail address and telephone number. Mr. Della Croce e-mailed back a brief note to us, stating that ``LINUX'' was proprietary to him and that we would be hearing from his attorney. We e-mailed Linus Torvalds about the matter. Linus reiterated his determination that Linux remain in common use or be trademarked by some trustworthy organization or individual. We investigated the trademark, which was registered August 8, 1995, with a first use date of August 2, 1994. Since this date is long after others have used the term ``Linux'', it seems there are ample grounds to protest this trademark. In August 1996, Linux Journal and other Linux companies reported that they had received letters from Mr. Della Croce informing them that: LINUX(tm) is proprietary. Information about obtaining approval for use and/or making payment for past use may be obtained by writing to the following address:... Yggdrasil Computing filed for a trademark on their book title Linux Bible in March 1995. Their trademark was turned down because Linux was already a trademark registered to Mr. Della Croce. Adam says that in March 1996, Yggdrasil Computing filed a letter disputing Della Croce's trademark and showing that Linux was a generic term and that Yggdrasil's use was prior to Della Croce's in any event. Yggdrasil also asked to have the Linux trademark by Della Croce canceled. Yggdrasil Computing should hear back by the end of September, 1996. The trademark office usually doesn't cancel trademarks without separate action taken. It is very likely this fall, after we hear of the result of Yggdrasil Computing's actions, that Linux companies and individuals will band together to fight to return the word Linux back to the Linux community. -- Linux Journal (G. Gervaise Davis III, Business and Intellectual Property Lawyer, is fighting the apparent trademarking of Linux on a pro-bono basis, with WorkGroup Solutions paying his expenses. Find out more about intellectual property trademark information from the web page at http://www.iplawyers.com.) ========================================================================== Following is a copy of the actual petition to cancel the Trademark as filed ========================================================================== IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Trademark Registration No. 1,916,230 For the mark "LINUX" Date Registered September 5, 1995 Linus Torvalds, an individual; WorkGroup Solutions, Inc., a Colorado corporation; Yggdrasil Computing, Inc., a California corporation; Specialized Systems Consultants, Inc., doing business as Linux Journal, a Washington corporation; and, Linux International, a New Hampshire unincorporated association, PETITIONERS vs. William R. Della Croce, Jr., RESPONDENT Cancellation No.________________________ PETITION TO CANCEL REGISTRATION PETITIONERS Petitioners are a representative group of the vast number of individuals and companies that create, use, write about, distribute, and sell "Linux" computer operating systems software. They have come together in order to defend the generic "Linux" name for unrestricted use by the Linux computer operating system community. The petitioning parties are: 1. Linus Torvalds, a Finnish computer scientist and educator residing in Finland, whose mailing address is Linus Torvalds, Faculty Member, Computer Science Department University of Helsinki PB 26 University of Helsinki Finland 2. WorkGroup Solutions, Inc., a Colorado corporation whose mailing address is P.O. Box 460190 Aurora, CO 80046-0190. 3. Linux International, a New Hampshire unincorporated association whose mailing address is 80 Amherst St. Amherst, NH 03031-3032. 4. Specialized Systems Consultants, Inc., a Washington corporation doing business as "Linux Journal", whose business address is 7723 24th Ave. NW Seattle, WA 98117. 5. Yggdrasil Computing, Inc., a California corporation, located at 4880 Stevens Creek Blvd., Suite 205 San Jose, California 95129 To the best of the Petitioners' knowledge, the name and address of the current owner of the registration is William R. Della Croce, Jr. 33 Snow Hill St. Boston, Massachusetts 02113 The above-identified Petitioners believe that they are or will be damaged by the above-identified registration and they hereby petition to cancel same for the detailed reasons set forth herein. AS GROUNDS FOR THIS PETITION, IT IS ALLEGED THAT: STATEMENT OF FACTS 1. DESCRIPTION OF REGISTRANT'S REGISTRATION: Filed on August 15, 1994, for the mark LINUX; registered on September 5, 1995 on the Principal Register, in class 9, for "computer operating system software to facilitate computer use and operation"; claiming first use in interstate commerce on August 2, 1994. 2. On or before the Fall of 1991, Linus Torvalds, a Finnish computer programmer and one of the Petitioners herein, made available worldwide on the Internet the source code for a freeware computer operating system he named, at the time of release, "LINUX". It has continuously been referred to by this name since its first release, both by Torvalds and by hundreds of thousands, if not millions, of users worldwide. 3. Since its inception in 1991 the Linux operating system has been freely available and distributed in source code format to users in the United States and elsewhere worldwide. This allows programmers around the world to use, modify, and develop the Linux operating system as their needs dictate. [See PCWeek Article dated October 7, 1996, incorporated herein by reference as Exhibit A] 4. The Linux operating system can be freely modified and sold by anyone, with the only requirement that it remain an open and changeable system. Therefore, there are many different groups, companies and individuals, including some petitioners herein, who market various Linux operating systems, Linux programming tools, and Linux reference materials. [See San Jose Mercury News Article dated September 8, 1996, incorporated herein by reference as Exhibit B] 5. The "Linux" name was chosen by Linus Torvalds as a combination of his first name, Linus, and the word MINIX. MINIX was a clone of the UNIX computer operating system. Since Linus Torvalds modeled the Linux computer operating system for PC based computers after the UNIX computer operating system, which ran mostly on main frame computers, it was an abbreviated way to denote the combination of Linus and MINIX, a variation of UNIX. [See Minnesota Technology Article dated March 1994, incorporated herein by reference as Exhibit C] 6. Mr. Della Croce's registration was for "Computer Operating System Software to Facilitate Computer Use and Operation". [See Patent Trademark Office Registration No. 1,916,230, incorporated herein by reference as Exhibit D] This is exactly what the Linux operating system is and does, created by Linus Torvalds years before the claimed first use by Mr. Della Croce took place. [See Exhibit B San Jose Mercury News article] 7. By the fall of 1994, when petitioner claimed first use in interstate commerce, there were already approximately 100,000 existing users of Linus Torvalds' Linux program worldwide. [See Exhibit B San Jose Mercury News article] From 1991 through 1994 many publications in the computer industry discussed Linus Torvalds' operating system. By early 1994 there were several businesses that existed which solely depended on selling and supporting Linus Torvalds', then existing, "Linux" computer operating system.[See Exhibit C] 8. Petitioners have been unable to locate any evidence of any Linux trademarked products, of any kind, ever having been offered by the Registrant for sale to the public. It appears no such product(s) from Registrant is available for purchase or license at this time. Registrant has declined to provide exemplars of any such products to establish the bona fide nature of his claim to first, or continuing, use of the mark, in spite of the Petitioners' repeated requests, both directly and through his attorney, that he do so. Registrant does not answer phone calls requesting product information, nor to discuss this matter, although numerous messages have been left on the answering machine at the phone number which he designated in his letters, and under which he is listed in the Boston area telephone directories. 9. Petitioners' legal counsel has unsuccessfully attempted to obtain information about any evidence of the existence of Registrant's alleged Linux product through direct contact with his then attorney, Joel R. Davidson of Quincy, Massachusetts. Mr. Davidson has declined to respond in writing, or otherwise, as to the status or existence of his client's products. Davidson has since advised Petitioners' legal counsel, by letter and by phone call, that he no longer represents Della Croce, because he will not follow his advice to agree to the cancellation of the registration. Davidson has also failed to respond to several requests that he confirm the address and phone of his former client, so that Petitioners can talk directly with Della Croce. 10. The Registrant, both directly and through legal counsel, Joel R. Davidson, began sending letters, in the summer of 1996, to various companies engaged in the sale and promotion of the Linux operating system demanding 10% royalty payments for the use of the Linux name. [See letter dated July 30, 1996 from Global American signed by Registrant to WorkGroup Solutions, Inc. dated July 30, 1996. incorporated herein by reference as Exhibit E] [See letter from Joel R. Davidson to Mark Bolzern, President, WorkGroup Solutions, Inc., dated August 20, 1996 incorporated herein by reference as Exhibit F ] 11. Counsel has also sought evidence that either Registrant or Global American are licensed to do business in the Boston, Massachusetts area, and third parties have placed calls to Registrant, at the request of legal counsel for Petitioners, seeking information on his business and the availability of his alleged trademarked products. Of the two possible phone numbers listed in public records, both are answering machines with messages not indicating any business name or identification. Absent more information or confirmation by attorney Davidson, Petitioners have had to assume that one or the other of these numbers was that of Registrant/Respondent Della Croce, since he never personally answers the phone and has never responded to messages left there. A person purporting to be Della Croce has telephoned Petitioner Torvalds and spoken with him about Torvalds authorship of Linux, in the past. PETITIONERS' STANDING TO FILE Standing of the various Petitioners is as follows: 12. Linus Torvalds: As indicated above, Petitioner Linus Torvalds was the original creator of the Linux computer operating system. He holds the copyright to the majority of the source code of the Linux operating system and continues to guide the development of the Linux operating system. Further, he is a well known computer scientist and educator who lectures worldwide regarding his Linux computer operating system. 13. WorkGroup Solutions, Inc.: Petitioner WorkGroup Solutions Inc. is engaged in the development and sale of operating systems, software, languages and enhancements. One of its chief product lines involves the operating systems and related tools from the Linux genre. Petitioner WorkGroup Solutions Inc. sells over five different computer operating system packages based on the Linus Torvalds Linux operating system kernel, as well as a variety of tools, books, and other reference materials, all bearing the "Linux" name. [See Internet web page printout of wgs.com which includes Linux Shopping Mall, incorporated herein by reference as Exhibit G] 14. Linux International: Petitioner Linux International is an organization made up of companies and individuals whose goal is the promotion of the use of the Linux computer operating system. Members of Linux International include, among others: Caldera, Digital Equipment Corporation, Metro Link, X-Inside, WorkGroup Solutions Inc., H& L Software, Interactive Software Engineering, Just Logic, Linux Journal, Red Hat Software, and Tower Technology Corporation. 15. Specialized Systems Consultants, Inc., doing business as the Linux Journal: Petitioner Specialized Systems Consultants, Inc. is a Washington State corporation established in 1985. Linux Journal, which publishes articles concerning Linux, has been continuously published since March of 1994, which date is prior to the alleged date of first use by Registrant/Respondent. [See Linux Journal Volume #1 Editions #1 and #2, incorporated herein by reference as Exhibit H] 16. Yggdrasil Computing, Inc.: Petitioner Yggdrasil Computing, Inc. is a California corporation established in 1992. It produces a variety of Linux computer operating system products including the Linux Bible, Plug and Play Linux, Linux Internet Archives, and Linux -- Installation and Beyond. [See Internet web page printout of www.yggdrasil.com, incorporated herein by reference as Exhibit I] SPECIFIC GROUNDS ALLEGED FOR CANCELLATION 17. Linux has been a generic term of art in that segment of the computer industry of which Petitioners are members, since at least 1991 or early 1992. It is estimated that there are currently between one million and two million computers using the Linux computer operating system. None of the users of these computers ever heard of Registrant or this alleged "Linux" software until his recent demands for royalties for trademark use were made, and the Linux user groups on the Internet are all expressing outrage at what they consider a fraudulent claim by Della Croce. The term "Linux" was and still is used generically to describe all the variants of the operating system developed by Petitioner Linus Torvalds. Thus, "Linux" differentiates an entire genre of computer operating system software from such operating systems as Microsoft DOS, Microsoft Windows, or Apple Macintosh. It is not a proprietary product of Registrant and never has been, in spite of Registrant's letters to some users, demanding royalties, and his false claim filed with the PTO. 18. Registrant's alleged registered mark is the common descriptive name of all Linux computer operating system and related products. It is the generic name of all such goods produced and sold by every company or person engaged in such business. Therefore, Petitioners allege that Registrant's registered mark does not function to identify Registrant's goods (if in fact Registrant has any) nor distinguish them from goods offered by others. Petitioners are likely to be damaged by the existing registration of said generic term, in that the existence of said registration tends to impair Petitioners' legal right to use of the said term, and because Petitioners have been involved for some time in the manufacture, sale, and distribution of Linux software products, as to which the Petitioners have a valid and legal right to refer to by its common descriptive name, Linux, selected by Petitioner Torvalds in 1991. 19. On information and belief, Petitioners allege that Registrant's registration was obtained fraudulently in that in the formal application papers filed by Registrant, under oath pursuant to 18 USC 1001, states that Registrant's first use in commerce took place on August 2, 1994. Despite extensive searching and repeated efforts by Petitioners' counsel to contact Registrant, Petitioners' counsel can find no evidence whatsoever of Registrant's alleged product ever having had any bona fide use in commerce. On information and belief, Petitioners allege that no such product from Registrant ever existed, neither on the asserted date of first use, nor as of the date of filing the application for registration, nor at this time. On information and belief, Registrant's statements as to ownership, use, and knowledge of others using the same mark are intentionally false, and constitute perjury under 18 USC 1001. 20. On information and belief, Petitioners further allege that Registrant's registration was obtained fraudulently in that in the formal application papers filed by Registrant, under oath pursuant to 18 USC 1001, states that to the best of his knowledge and belief no other person, firm, corporation, or association has the right to use the Linux mark in commerce. Said statement was false because if Registrant was a computer programmer capable of creating, or commissioning, an operating system he either knew or should have known that there was a widely distributed computer operating system with the identical name which does exactly what the Registrant claimed his registration covers. On information and belief, said statement was made by the Registrant with knowledge and belief that said statement was false. On information and belief, said false statement was made with the intent to induce authorized agents of the US. Patent and Trademark Office to grant said registration. Reasonably relying upon the truth of said false statements, the U.S. Patent and Trademark Office did, in fact, grant said registration to Registrant. On information and belief, Petitioners were damaged by said false statements and the registration issued in reliance thereon in that Petitioners, since as early as 1991, some or all of them, have continuously used the mark Linux on software product packages. Petitioners' continued and legal use of said mark is being and will be impaired by the continued registration of said mark of Registrant. 21. Registrant now claims a 10% royalty on all Linux sales, past and present, from Petitioners and others in the industry, which is an attempt to use his fraudulently obtained trademark registration to demand royalties from something he cannot own, all to the damage of Petitioners and to the general public. 22. If falsely obtained, the use of the U.S. trademark registration, by Registrant Della Croce, to demand money (royalties) under false pretenses by correspondence through the U.S. mail, also constitutes federal mail fraud pursuant to 18 U.S.C. 1341, a crime punishable by up to five years in prison and a fine of $1,000. WHEREFORE, Petitioners pray that Registration No. 1,916,230 be canceled immediately, and that this Petition for Cancellation be sustained in favor of Petitioners, with costs and legal fees awarded, if appropriate, pursuant to the Federal Rules of Civil Procedure and the Rules of the PTO and the TTAB. DAVIS AND SCHROEDER, A California Professional Law Corp. BY_____________________________ G. GERVAISE DAVIS III, Esq. ROBERT T. DAUNT, Esq. CATHERINE McCAULEY-LIBERT, Esq. ATTORNEYS FOR Linus Torvalds, WorkGroup Solutions, Inc., Yggdrasil Computing, Inc., Specialized Systems Consultants, and Linux International ========================================================================== *Note by WGS, any trademarks in this document are those of their owners, except Linux(R), which in our humble opinion was wrongly registered to William R. Della Croce, Jr. *If anyone who knows Della Croce reads this document, please suggest to him that it would be in his best interest to release the trademark voluntarily, as not doing so could lead to criminal charges being filed if the Trademark office rules in our favor. ========================================================================== -- Mark Bolzern : firstname.lastname@example.org WorkGroup Solutions, Inc. Find all your Linux needs at the All-Linux Shopping Mall, online at our site mailto:email@example.com, http://www.wgs.com, ftp://ftp.wgs.com Telephone: 303-699-7470 Fax: 303-699-2793 Orders: 800-234-7813