Re: Update on the Trademark Actions

This blog post is a reply to this statement, as published by the PostgreSQL Association of Canada (PGAC).

No actions against the Community: actions FOR the Community

PGAC mentions in its public statement that “Fundación PostgreSQL” has taken actions against the PostgreSQL Community. This is an unsubstantiated claim, no actions have been taken against the Community. As a leading open-source Community, there should be drastic transparency in communications and Core should document publicly the damage they claim has been done and all hostile actions that Fundacion has been accused of.

The only action that we have taken is an action FOR the Community: securing trademarks for the Community. Here’s our public policy about them. They are offered for free usage by anyone of the Postgres Community, akin to PGAC and PGEU’s policies with their respective Postgres trademarks.

The only concrete harm is the waste of Community resources in the form of time and attorney fees. Fundación did never start, expect nor want a conflict. Fundación has always tried its best to have amicable conversations. Core rejected them from day one.

As a matter of fact, without any prior formal or personal communication, Fundación received on July 20th, 2020, a letter from PGAC and PGEU’s attorneys. Our response was an email from our President, Álvaro, to both boards, which literally mentioned:

“TBH, I’m quite surprised and disappointed about the way this has been communicated (lawyers, proceedings, legal threats…). I know most of you personally. We have met many times and with many of you I share a good deal of personal relationship. If there would be any disagreement or concern about these brands registration (or anything else, for that matter), I feel the best way to approach it would have been personal contact first. I’m not hard to find and my email/chat/phone are always open.”

PGAC and PGEU’s response? A second letter from their lawyers, seven days later, mentioning that “If steps to surrender/withdraw the Fundación Marks are not taken by this time, invalidation/opposition proceedings may commence without further notice”. That’s not an “amicable” resolution. Those were actions taken to intentionally create, and then escalate, an unnecessary and avoidable conflict.

Falsehoods, half truths, and censorship

PGAC’s update stated that “Fundación PostgreSQL through its counsel indicated that they had no interest in honoring its word on withdrawing the trademark applications”. This is completely and demonstrably false.

PGAC’s statement does not clarify what clauses of the agreement were found unacceptable by Fundación. For full transparency, these are our two main reasons:

• Fundación is being coerced to sign a License Agreement regarding the use of Postgres trademarks and domain names which is much more restrictive than PGAC’s public Trademark Policy, which binds everyone else in the Community.

• Attorney legal fees claimed by PGAC and PGEU. The agreement states that Fundación must cover five digit numbers fees. This legal escalation was completely avoidable; and it was PGAC and PGEU who turned it into a legal issue. Fundación has never asked our legal fees to be covered.

A note on what we believe is a healthy Community with democratic principles: a Democracy would not exclude the right to reply. However, Fundación has been denied this essential and fair right. Core first and PGAC later have published statements on the postgresql.org site (Community News section) that are also sent to a large mailing list, reaching a very wide audience. However, an attempt to publish a response to the first statement by Fundación on the same channels was censored by the Core Team, on the basis that “it was reserved only for Community news”. The only fair rule in a Community is that if there’s a conflict within it, all parties of the Community in conflict must be equally heard.

Next steps

Fundación PostgreSQL has always been committed, and remains committed, to reach a resolution that is beneficial to the whole Postgres Community. And we keep intact our public compromise to honor the will of the majority of this Community as, above all, we are devoted to the Postgres Project by our foundational goals.

As of today, there are two ongoing trials due to the judicial proceedings initiated in Spain by PGAC and PGEU against Fundación. No further action related to the trademarks can be taken until the trials are resolved; or the judicial proceedings are withdrawn by PGAC and PGEU.

On Postgres trademarks

Other than the PostgreSQL Community Association of Canada, there are at least eight other entities/individuals that hold a total of sixteen active Postgres or PostgreSQL-related trademarks. Most of them are commercial entities, and only two are NPOs (Non-Profit Organizations). Only these two NPOs (being one of them Fundación PostgreSQL) have offered their trademarks for free usage by anyone in the Postgres Community. The rest of the trademarks are used exclusively by their respective (for-profit) owners.

But out of all these entities, only one has been called out publicly, sued in court and referred to as “a third party to the Community”, that is “attacking the Community”: Fundación PostgreSQL. This is surprising. We have registered Postgres-related trademarks and all that we have done is to donate them for public and free usage by the Postgres Community, as clearly stated in our Trademarks web page.

What makes Fundación’s trademark registration so different from the other trademark registrations? Given that Fundación is a NPO of the Postgres Community, why is it called an “attack against the Community” that needs to be resolved in Court? Isn’t it clear enough that Fundación is offering the trademarks publicly for free usage? What makes the other entities –all but one commercial entities– to be absolutely fine, with registered trademarks as generic as “PostgreSQL Experts” or “Postgres Conference”? How is this scenario consistent with PGAC’s Trademark Policy? Core needs to publicly clarify this.

The table below (Annex I) summarizes the active registered trademarks (for both “PostgreSQL” and “Postgres” marks) and other Postgres or PostgreSQL-related trademarks; identifying the marks, Nice classes (type of product or service) and owners of those trademarks. The list is, potentially, not exhaustive.

Annex I: Postgres and PostgreSQL-related active trademarks

This table is ordered chronologically by the first trademark registered by the holder entity. Source: WIPO Global Brand Database.

Annex II: The Supplemental Registry

It is also important to understand that PGAC’s registrations for the trademarks “PostgreSQL” and “Postgres” in the US are only approved on USPTO’s Supplemental Registry, and not the Principal Registry. IANAL but essentially this means that they are non-distinctive marks. This is due to the fact that these terms were already widespread in 2018, when PGAC decided to register them (why so late if they were such an important asset for the project?). Given they were already widespread, and used in many places, they were no longer distinctive.

Unfortunately, the Supplemental Registry offers limited protection when compared to the Principal one in that it includes no exclusive rights to use the mark. In other words: Postgres trademarks are not as valuable as we may otherwise believe; and PGAC holds no exclusive rights to the mark despite their (Supplemental Registry) registration.