4:55 pm 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.

3 Responses

  1. Chris Messina Says:

    Thanks for highlighting these issues, Dave. We clearly still don’t have a great legal or enforcement situation for non-profit, non-commercial or independent open source projects.

    Clearly protecting a community’s mark is important, and making sure that the value of the mark isn’t diluted by offensive uses is somewhat key to the longevity or integrity of communities. Still, for the last several years we’ve seen the FOO/BarCamp name(s) get used in many different contexts and only in a few circumstances, were the usages offensive; even then, with community intervention, the damage was minimized. In other words, legal protections probably would have both been more costly and damaging to both parties than the simple act of out reach and education.

    This approach works less well in commercial settings where business interests often collide, but it’s something to remember that not all remedies must be executed through the legal system.

  2. Mark Wielaard Says:

    Hi Dave,

    “The OpenJDK project is protecting their trademark by insisting that all implementations of Java pass 100% of their conformance test suite.”

    You are confusing the OpenJDK trademark license, with the TCK compatibility and the usage of the Java trademark.

    The trademark license the (the free software – distrubuted under the GPL) OpenJDK project uses to indicate when a derived work can still be called OpenJDK is here:
    The key notion is that “the vast majority of the Software code is identical”.

    The license for usage of the (non-free) TCK (Test Compatibility Kit) which you can use to verify and claim that your derived OpenJDK work is compatible is here:
    The key notion is that the tests are secret and you cannot claim partial compatibility.

    And finally you will have to enter into an agreement with Sun about labeling your product with Java (TM) and usage of the logo itself. As far as I know there is no public license for this last step.

  3. Simon Phipps Says:

    Mark is right – OpenJDK is piloting a new approach to trademark licensing that we devised after the OSCON workshop you mention. The OpenJDK mark can be used by derivatives for which “the vast majority of the Software code is identical”. This is the important liberalization that made it possible today for Sun, Red Hat and Canonical to jointly announce the presence of OpenJDK in their operating system distributions.

    There’s still plenty of thinking to do round the subject, but we hope this sort of practical experimentation will push the subject forwards. Tiki, Rich and I would all welcome comments about the OpenJDK trademark license Mark links to.