Setting the record straight: More updates on a trademark dispute

Posted on 2023-07-27 by PostgreSQL Community Association
Community PostgreSQL Project

The PostgreSQL Community Association (PGCA) is issuing a news announcement to clarify recent comments around an ongoing trademark dispute.

On 24th July 2023, Álvaro Hernández posted a blog on the Fundación PostgreSQL website regarding the PostgreSQL Core Team's request that the website moderation team reject any submitted content linking to Fundación PostgreSQL or their events.

The Core Team requested this on the advice of legal counsel, because of the ongoing legal action to invalidate PostgreSQL related trademarks registered by Fundación PostgreSQL which conflict with those held by the project (through the PostgreSQL Community Association, or PGCA).

Anyone who has owned a trademark is aware that it is essential to defend them, otherwise you risk losing them. The PostgreSQL Project holds trademarks to help ensure PostgreSQL is held in the highest regard and remains free and Open Source. We have a trademark policy which allows free use of the marks in many cases under "fair use", and we have a number of organisations that have licence agreements to allow them to use the trademarks in other ways.

In this post, we will go through various claims made in Hernández's blog post and point out inaccuracies, irrelevancies, and misdirection. Quotes from the blog are shown as block quotes.

In 2023, after the pandemic, Fundación PostgreSQL is organizing the second edition of Postgres Ibiza with the same core tenets, website and goals. Yet this time the Core Team is trying to shut it down, despite admitting that it complies as a Postgres Community Event.

This is incorrect. The Core Team stated "that it mostly complies", because there are some aspects of the policy that it does not comply with, for example, at the time of writing the organisation committee was not fully disclosed; it is simply listed as "Fundación PostgreSQL" with a link to the organisation's website which mentions Álvaro Hernández in a significant number of places, but offers no other names. As a second example, Fundación PostgreSQL adopted the PostgreSQL code of conduct but referred matters to their own code of conduct committee without disclosing who was on it.

The Core Team is banning Fundación from using “Postgres” as part of the “Postgres Ibiza” name for the conference.

This is incorrect. The PostgreSQL Trademark Policy clearly requires fair-use users of the trademarks not to seek to register any conflicting marks: "Do not seek to register any trademark containing one of our marks or a variant thereof."

One might ask why there are other organisations that own PostgreSQL-related trademarks that are not in a public dispute. Reasons include that these organizations have existing licence agreements with PGCA or are NPOs who follow the community NPO guidelines, such as PostgreSQL Europe, who are working with PGCA to adopt pre-existing marks into the community framework.

Even commercial database vendors allow user groups to use their names to refer to events for the Community. For example, Oracle User Groups (OUGs) include in their name the word “Oracle”.

This is correct, but a search of the Oracle website does show that their trademark policy also forbids user groups from registering trademarks.

In reality, the conference name “issue” is no more than a smokescreen. Their real motivations are revealed at the end of their public communication: “The PostgreSQL community is willing to support Fundación PostgreSQL’s event should it end its infringement of the PostgreSQL brands”. So it’s not about the event. This is just a tactic to strong arm Fundación in an unrelated (to the conference) legal dispute.

This is incorrect. By using and applying to register PostgreSQL trademarks in contravention of the PostgreSQL Trademark Policy, we have no option but to assert and defend our legal rights.

Core Team’s Trademark Policy includes under “Fair Uses That Don’t Require Prior Approval” uses that “accurately advertise PostgreSQL® software-related content in a public event”. Therefore, Postgres Ibiza 2023 falls under their own fair use policy and doesn’t even require prior approval.

This statement conveniently ignores the part of the policy (in the "How To Use Our Marks" section) that says "Do not seek to register any trademark containing one of our marks or a variant thereof.".

"POSTGRES" trademark was only registered by the Postgres Association of Canada (PGAC) in 2018, when it was already a commonly used term and was thus a “non-distinctive mark” (it is instead a descriptive one). That’s why the trademark registration was denied in the Principal Register and only granted in the Supplemental Register. This means that there is no presumption of ownership, validity or exclusivity of the mark. With less legalese this means that they cannot enforce exclusivity of a brand that has been used by everyone that uses or talks about Postgres and its ecosystem for decades.

This is misleading. The EU trademark office (EUIPO) does not operate Principal and Supplemental registers. That is something that the US trademark office does - and they work under very different rules and processes.

This current dispute is in the EU, where the trademarks held by the PostgreSQL Community Association are fully valid and apply where the event in question is being held.

Trademarks have classes. And classes matter. "Postgres" could be a valid trademark for cars, since it is in a different class, and there’s no chance for a consumer to be confused between the database software and a car. The Postgres Association of Canada has no trademarks registered on Class 41 ("Education; providing of training") which is where conferences belong to. They only have the registration for Class 9 ("recorded and downloadable media, computer software").

This is correct, but there can still be confusion between marks in different (but complementary) classes. In this case, training on software often goes hand-in-hand with the software itself and is therefore complementary / similar in nature.

This is one of the reasons why the Spanish court has already invalidated two of Fundación PostgreSQL's trademarks in Spain and the EU (the third case is still pending), despite them being in different classes.

The PostgreSQL Community Association, like the Core Team, would welcome an end to this dispute. We have to protect our marks or risk losing them. Hernández talks about "what is best for the community", without regard to that fact, or the fact that this dispute has cost the PostgreSQL Project tens of thousands of dollars to date, as well as hundreds of hours of time from senior community members.

Hernández has offered to sign over the trademarks to the PostgreSQL Community Association on multiple occasions, both privately and publicly - but has never followed through on that offer. We invite him to reconsider, and bring this dispute to an end for the good of the PostgreSQL Project, instead of continuing to create distractions and incur costs in time and money that the PostgreSQL community can use to advance the project.

For more information about the PostgreSQL Community Association and to help us continue to keep PostgreSQL free and open, please visit the website and consider donating.