Safe as Milk

Trademarks

April 28, 2008 4:55 pm Dave Neary freesoftware

Funny, this post has been in my drafts for months… in relation to my earlier post, and since a trademark issue is at the heart of much of the recent OpenSolaris controversy, the time felt right to finish & publish it.

Many moons ago, there was a discussion on the FLOSS foundations mailing list about trademarks for the Nth time, after Simon Phipps proposed having a BOF on the subject at OSCON.

My initial reaction was “I hope that people find something new to talk about”, I’ve been involved in many conversations on the application of trademark law to free software projects, and typically, the range of reactions is:

• Defending trademarks is important, and the (US) law requires aggressive defense (the Mozilla or Wikipedia position).
• Defending trademarks is important, and we can draft guidelines which allow some community uses of the trademark, but we have to disallow a wide range of things to avoid opening a loophole for malicious use (the GNOME position – the degree to which we’ve succeeded is debatable – or the Perl Foundation).
• Defending our community is important, but that doesn’t require a trademark (the Postgres position, or Chris Messina’s community mark idea)

There are lots of data points between all of these (Linux, Open Source, Eclipse, Java, …) which go from the “we didn’t register the mark, and we regret it” which perhaps apply to Linux and Open Source, to “our trademark is a certification mark” for Java. I would say the most common reaction is “we have to register the trademarks! But we have no idea why, or what that means for the project.”

Given the wide range of experiences that different organisations have had with trademarks, there may be some way to distill that information into a nice bite-sized document which lists what it means for a free software project to register a trademark. What is the cost of having an enforceable trademark? What are the benefits of an enforceable mark? What is the down side if the mark becomes unenforceable? Is the project willing to pay the cost of having an enforceable mark to avoid the down side?

The SFLC legal guide to Free Software is a good starting point. In the section “Others’ use of your Mark”, the cost of registering a trademark is clear:

If you believe that someone is using your mark in a manner protected by your exclusive rights and has not obtained your authorization to do so, you should take action even if you do not object to their use. If you do not object, you should enter into an explicit license agreement with the other party, clearly defining the parameters of their use.

The cost of enforcing a trademark is not just the financial cost of registering it. It is the cost of entering into a legal agreement with any user group who wants to make t-shirts, and any user who wants to put up a “GNOME Rules” website. It is the cost of being aware of  every usage of your trademark, and explicitly protecting the quality of that usage with a legal agreement.

This is why the protection of the Mozilla Firefox mark is so problematic. Firefox is free software, so people have the right to modify it. But if they ship a modified version, they must have an agreement with Mozilla assuring the quality of the product, or they may not use the name. The OpenJDK project is protecting their trademark by insisting that all implementations of Java pass 100% of their conformance test suite.

In the case of OpenSolaris, several mistakes were made. The final mistake was the adoption of the name OpenSolaris for project Indiana. Once OpenSolaris as a name was associated with a product shipped by Sun (as opposed to a community project), Sun were put in a position where they had to protect the mark or lose it.

The first mistake, though, was the use of OpenSolaris as the name of the community. Sun *could* have chosen a name which didn’t have a direct link to Solaris – or which has a related but unmistakable name (say Supernova?), which would have lightened the trademark load, since they would not have been obliged to protect the Solaris name though the OpenSolaris project.

The key message to take away from all of this, though, is (as I said back when the feed icon and the Web 2.0 trademarks were exploding onto the scene) that trademarks are hard – especially for free software projects. It is very easy to mess up and handicap a young community by applying rules which are perfectly normal in the corporate world to community dynamics.