Linux Trademark dispute resolved, Linus Torvalds is owner!


Public Update: 08/20/97

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:

=========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 ggd@iplawyers.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 | info@wgs.com  
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: ggd@iplawyers.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: ggd@iplawyers.com)
                          
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: ggd@iplawyers.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 :  mark@wgs.com    WorkGroup Solutions, Inc. 
 Find all your Linux needs at the All-Linux Shopping Mall, online at our site
       mailto:info@wgs.com, http://www.wgs.com,  ftp://ftp.wgs.com
    Telephone: 303-699-7470  Fax: 303-699-2793  Orders: 800-234-7813


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