513252 - Automated check for "Gmail" use in add-ons for DE locale

Status: RESOLVED WONTFIX

(addons.mozilla.org Graveyard :: Developer Pages, defect, P3)

Description

[Rey Bango]

We received a cease and desist letter from a Mr. Giersch regarding the AMO extensions with Gmail in the title. Mr. Giersch holds the trademark "G-Mail" in Germany. We took steps to manually address certain add-ons that contained references to the name "Gmail".

We are on notice that Mr. Giersch has the trademark to Gmail in Germany and he
has not licensed the trademark to us; therefore, we are required to actively
monitor our content in the German site to make sure no future add-ons get on
there with Gmail in its name.

Legal has requested that we look into an automated way to check for references to "Gmail" in the DE locale.

Possible options are:

1) Ensure that the user has entered alternative text & screenshots in the DE locale via the Developer Tools if the term "Gmail" is used.
2) Run an cron job to scan the DB nightly for any references of "Gmail" that don't have an alternative name

The checks must extend to the add-on name, long & short description, & screenshots. Basically, any area where the developer updates info for the add-on should be considered. User-contributed reviews don't need to be checked.

Comment 1

[Catherine C. Brady]

In order to avoid any future liability to Mr. Giersch, it's important that we make sure that no new add-ons get on the German site using "Gmail".  It should be Google Mail if the add-on is referring to Google's email client, Gmail.  If the add-on is referring to Mr. Giersch's product, G-mail, no need to change the name.

We are on notice that this is an issue and need to actively monitor the add-on on the German site for compliance.  Using an automated tool will be more effective and efficient than reliance on the human eye and memory.

Thanks for pushing this through.

Comment 2

[Wil Clouser [:clouserw]]

An automated tool for name, description, and summary should be possible - if cron is good enough, that sounds like the easiest way.  I don't think you'll find a reliable way to automate detecting "gmail" in screenshots.

Comment 3

[Catherine C. Brady]

That's okay about the screenshots.  We'll just have to check manually for that.

Comment 4

[Rey Bango]

Ok. So it sounds like we can go with a cron job that will alert us to a possible problem and then we'll go in and review the add-on manually. 

Does that work Catherine?

Comment 5

[Catherine C. Brady]

Sounds good.  From a liability perspective, the screen shots are a much lower risk then using the name "Gmail" in the product name or description.

Comment 6

[fcp]

Are you going to check also for the case where the name/summary/description of an add-on is not localized to German and the default locale contains “Gmail”?

Comment 7

[Catherine C. Brady]

I'm not sure I understand the question. This restriction only applies to add-on listed on (https://addons.mozilla.org/de/firefox/search?q=gmail&cat=all), whether or not the add-on has been localized.

Comment 8

[fcp]

Thanks.  Now I understand that this bug is about checking for the occurrences of “Gmail” as part of the name/summary/etc. of add-ons appearing on the AMO website in German, no matter whether the name/summary/etc. is written in German or not.  I was confused because the summary of the bug was somewhat ambiguous.

Comment 9

[Stephen Donner [:stephend] Not actively reading bugmail]

Wil: this is assigned to James; did you mean to instead assign to Jeff? (Or someone else?)

Comment 10

[Wil Clouser [:clouserw]]

(In reply to comment #9)
> Wil: this is assigned to James; did you mean to instead assign to Jeff? (Or
> someone else?)

Nope

Comment 11

[Justin Scott [:fligtar]]

Jorge, can you take a look at this?

Comment 12

[Jorge Villalobos [:jorgev] (he/him)]

Obviously I'm no expert in the matter (trademark, copyright, etc), but isn't it the burden of the owner of the trademark to actually look for offending uses and notify them to us? Isn't that how it works for sites like YouTube?

I can certainly see the case for changing all the current add-ons, but I feel that these restrictions can grow to a point where they will be very hard to manage.

Comment 13

[Jorge Villalobos [:jorgev] (he/him)]

Does it matter if the add-on itself references gmail in any way? This bug seems to apply to the strings shown on AMO only. Is that something that AMO is responsible for as well, or each individual author?

Comment 14

[Catherine C. Brady]

(In reply to comment #12)
> Obviously I'm no expert in the matter (trademark, copyright, etc), but isn't it
> the burden of the owner of the trademark to actually look for offending uses
> and notify them to us? Isn't that how it works for sites like YouTube?
> 
> I can certainly see the case for changing all the current add-ons, but I feel
> that these restrictions can grow to a point where they will be very hard to
> manage.

You're thinking of copyright and the DMCA process. The issue and response for trademarks is different.  We are on notice.

Comment 15

[Catherine C. Brady]

(In reply to comment #13)
> Does it matter if the add-on itself references gmail in any way? This bug seems
> to apply to the strings shown on AMO only. Is that something that AMO is
> responsible for as well, or each individual author?

I'm not sure what you mean "if the add-on itself references gmail."  Do you mean if the code uses 'gmail'?  If so, then that is not a problem.  The add-on name may not contain the word "gmail" nor should it appear in the description.

Comment 16

[Jorge Villalobos [:jorgev] (he/him)]

> I'm not sure what you mean "if the add-on itself references gmail."  Do you
> mean if the code uses 'gmail'? 

No, I mean more like what happens if the add-on has a visible menu or toolbar item that says Gmail.

Comment 17

[Catherine C. Brady]

Not ideal - but we can live with it.

Comment 18

[Jorge Villalobos [:jorgev] (he/him)]

I have messaged the authors of all add-ons that currently contain the string "Gmail". I have given them 2 weeks to update their descriptions.
I'll follow up on this then and see what further measures we should take.

Comment 19

[Wil Clouser [:clouserw]]

I just got your email but it doesn't say what add-on(s) you are talking about or what part of the add-on.  I didn't think I had any add-ons that had Gmail in them but maybe I do?  I don't want to sort through each one of them though and I imagine others feel the same way.

or maybe I got a test email or something?

Comment 20

[Jorge Villalobos [:jorgev] (he/him)]

Wil, I sent a very generic e-mail so that I could generate it quickly and BCC all involved. There are close to 200 authors that needed to be contacted, and most have very few add-ons so it won't be a big problem (I hope).

You can reply and ask which add-on refers to gmail.

Comment 21

[Wil Clouser [:clouserw]]

5.2 is closing today so I'm kicking this out of it and solely into Jorge's capable hands.

Comment 22

[Jorge Villalobos [:jorgev] (he/him)]

I've been doing regular checks for "gmail" usage, and notifying the authors personally, which has been effective IMO: https://addons.mozilla.org/de/firefox/search?q=gmail&cat=all

I'd rather continue doing this rather than rely on an automated solution.

Is this acceptable from a legal standpoint?

Comment 23

[Liz Compton [:liz]]

Yes, as long as it gets done regularly, that's fine. Thanks so much for doing this. If you find it gets to be a burden, make sure we find another solution before you stop doing it ;-). Should this bug be closed now?

Comment 24

[Jorge Villalobos [:jorgev] (he/him)]

OK, I'll close this for now. If there's a need for an automated system in the future, we can reopen this.