Click here to close now.



Welcome!

Linux Containers Authors: Martin Etmajer, Gary Kaiser, Liz McMillan, Flint Brenton, Talend Inc.

Related Topics: Linux Containers, Java IoT

Linux Containers: Article

i-Technology Viewpoint: Mark My Words - Trademarks and Open Source

i-Technology Viewpoint: Mark My Words - Trademarks and Open Source

In programmer heaven, all software is open source software. Solving problems is as easy as downloading the code you need - none of which comes with any nasty copyright baggage - and the only part you need to write for yourself is the coolest, most interesting algorithm, which compiles, runs, and works on the first try. Naturally, there aren't software patents in heaven, either: I don't think there are any patent examiners who could get through the pearly gates, do you?

When you get there though, I would think twice about using that little red hat logo.

Programmers, now politicized by the free software movement, spend a lot of time arguing about copyrights and patents - whether they're morally right or wrong and how widely they should be enforced. But they don't think much about trademarks. Trademarks, in a way, are the most bulletproof form of intellectual property: more effective than copyright, cheaper to enforce than patents.

What's in a Trademark?

Trademarks are really all about consumer protection. This is why trademark laws are so strong and the penalties for violating them can be so high. When you infringe a trademark, you're not just hurting the owner of the trademark, you're hurting all consumers, everywhere. There are two basic kinds of trademark infringement: passing off and reverse passing off. If you write your own operating system from scratch and call it Red Hat Linux, don't answer the doorbell. That's called "passing off" your goods as those of another - in this case a company with a valuable trademark and a strong reputation, whose lawyers will be paying you a visit.

If you take Red Hat Linux and repackage it unadulterated as God Bless You-nix, that's reverse passing off, or claiming another's product as your own. In each case, consumers are being fooled as to the source of what they are buying.

Trademarks in the Open Source World

All of this works pretty much as expected in a commercial setting. However, when it's combined with an open source software model, things get a bit, well, interesting. For instance, by definition, any open source software project lets you modify and distribute its software royalty-free. But most open source projects will be more conservative about letting you use their trademarks. Take a look at the policies for the use of the red hat, the GNOME footprint, the Debian swirl, or the Mozilla red lizard (www.redhat.com/about/trademark_guidelines.html, http://mail.gnome.org/archives/foundation-list/ 2003-November/msg00098.html, www.debian.org/logos/, and www.mozilla.org/foundation/licensing.html, respectively). All of them impose some kind of criteria for products bearing the mark. These criteria range from quality, to interoperability, to the amount of open source code the product contains.

The most popular logo in the open source world, of course, is the penguin named "Tux." This trademark has not been managed with systematic trademark use policies. Consequently, the reputation and trademark strength associated with the mark are weak. The use of the penguin has provided fodder for plenty of amusement (see the discussion of the meaning and history of Tux on http://en.wikipedia.org/wiki/Tux), but it is not consistently applied. The most common representation is the bowling-pin shaped tuxedo-marked cartoon bird designed by Larry Ewing, but even the average computer programmer, much more so than the average consumer, would be hard pressed to tell you exactly what product it represents. The only conditions for use of this logo are acknowledgment of the author of the logo - no conditions regarding the product on which it is placed. This type of condition is associated more with copyright than trademark.

There is, of course, a copyright in the appearance of any logo. But a logo that represents neither a source for products nor a level of quality for products is, in the end, not really a trademark. Tux is usually described by the software community as a mascot rather than a trademark, and that's probably closer to the truth.

"Linux," on the other hand, is a trademark registered by Linus Torvalds. The use of the Linux mark is policed by the Linux Mark Institute, www.linuxmark.org. The institute was created after a dispute over ownership of the trademark arose. This dispute arose because the mark was not being policed and was not registered - a state of affairs that allowed others to claim rights in it. Linux has been used more consistently than the Tux logo. However, some would argue that it's generic.

Confusion over what constitutes a "Linux" product is evidenced by the ubiquitous reexplanation of the difference between Linux and GNU/Linux.GNU describes a set of tools promulgated by the GNU Project. These tools are usually part of a product distribution that contains the Linux kernel. See Wikipedia's definition of "Linux": "Strictly, the name Linux refers only to the Linux kernel, but it is commonly used to describe entire Unix-like operating systems (also known as GNU/Linux) that are based on the Linux kernel and libraries and tools from the GNU project" (http://en.wikipedia.org/wiki/Linux).

We see that the open source business community handles the issue of passing off much as any other industry. They do the same for reverse passing off. Even the most noncommittal of open source agreements, the BSD license, contains an express statement limiting your right to use trademarks. For instance, the form of BSD license available on the Open Source Initiative Web site says: "Neither the name of the <ORGANIZATION> nor the names of its contributors may be used to endorse or promote products derived from this software without specific prior written permission." In other words, no trademark license. This might lead you to think that any organization granting such a license is not worrying about reverse passing off. Remember, though, that even the BSD license requires you to display appropriate copyright notices, and earlier versions contained the "advertising requirement" that became so unpopular and disused in the open source community.

There is a good reason for the similarities between trademarks in the open source world and in the rest of the business world. It's not because open source projects are trying to give with one hand and take away with the other. Trademark law is different from copyright or patent law. It is, loosely put, a "use it or lose it" regime. To be more accurate, it's a "use it correctly, or lose it" regime. This rule, in legalese, is called dilution or blurring. If you own a trademark, and you let others use it on their products without supervision, you will eventually lose your rights in it. The legal way of putting this is that a trademark owner must exercise quality control, or his trademark rights may be diluted to the point that his trademark rights are no longer enforceable. The hobby horse example here is "aspirin," once a trademark, now a generic designation with no trademark value.

While an open source license may give you complete freedom to modify and distribute code, it can never give you freedom to distribute modified code under the licensor's trademark, or the rights in the trademark will eventually evaporate - an event that will benefit no one. Remember that this is all about consumer protection. If consumers trusted Red Hat to distribute a robust, reliable product, and Red Hat let everyone use its name, consumers would no longer know if they could trust a product called "Red Hat." That's dilution in a nutshell.

When the Sky Fell

I know what you're thinking: I worry too much. If you think open source and trademarks can't collide, think again. Once upon a time, AT&T licensed Unix to lots of universities in source code form, and those universities openly shared improvements and adaptations of the code. Translation: Unix was very much like an open source product, though that phrase would not be coined for another 20 years. One of the recipients of Unix was the University of California at Berkeley, which modified Unix extensively, most notably developing networking code that made Unix work with TCP/IP-based networking products. Then AT&T stopped licensing the Unix source code, turned Unix into a proprietary product, and began charging high prices for licenses. Berkeley, responding to popular demand, began distributing its own version of Unix, called "Networking Release 1," under the BSD license. (To be precise, the facts were more complicated. Berkeley tried to engineer all of AT&T's copyrightable code out of the product. Whether they succeeded is a moot point, given the disposition of the lawsuit.)

A few versions later, Berkeley Software Design, Incorporated, was formed to distribute a commercially supported version of the Berkeley code. That product, sensibly, was known as BSD Unix. AT&T released its own, closed-source, version of Unix, System V. But BSDI was selling its open source product for 90% less. So AT&T sued BSDI, making both copyright and trademark claims. The court found that AT&T had lost its copyright interest in the Unix code used by Berkeley. The case was settled. Essentially, BSDI won. But BSDI promptly agreed to stop using the trademark Unix. (Once again, the facts were debated. Whether BSDI actually used the Unix trademark in an infringing way was disputed - and mooted by BSDI's agreement to cease using the mark.)

The moral of the story is that copyrights are fragile. They can be lost and engineered around. (It is not so easy to lose them today. AT&T lost its copyright under the pre-1978 rule, under which publication without copyright notice caused a work to fall into the public domain. This rule has changed; today, a positive statement ceding a work to the public domain is necessary to lose a copyright.) Patents, too, can be engineered around, and half of them are invalidated when their owner tries to enforce them. Patents, and to a lesser degree copyrights, can expire, but trademarks can last forever. Trademarks claims are often so fearsome that a defendant in a trademark infringement suit will give up without a fight. BSDI fought AT&T's copyright claims and won. It gave up the trademark battle with barely a squeak.

The sky fell once. Having to change brands in midstream is the business equivalent of the sky falling. A company's trademark is usually considered its most important and valuable piece of intellectual property. The conventional wisdom is that the single most valuable piece of intellectual property in the world is the trademark Coca-Cola - not the formula for the product, the trademark. Changing a trademark for a successful product can be more expensive and more damaging to the value of a business than reengineering the product. Part of this is a cautionary tale. Never assume that you can use a trademark with impunity, even when you have a license to use the copyrights that form the basis of the trademarked product. The open source projects that control the red hat, the footprint, and the lizard will not let you do that. They can't, because they are the custodians of those marks for the consumer's benefit.

The Next Battleground?

This is more than a cautionary tale; it's a peek into the realities behind how intellectual property works for open source in the business world. Ask anyone how to make money in the open source space and they will tell you roughly the same thing: services, support, and widget frosting. Are those things protected by copyright or patent? Maybe, maybe not. But they are definitely protected by trademark. Companies can, arguably, exercise even more control over their licensees via trademark than they can via copyright. Trademark owners can - and must - supervise all use of their marks. Supervision, however, is anathema to free software, which is premised on the ability to modify software freely, without supervision.

All this would not be so troubling, but the idea of officially sanctioned versions is, in a way, even more important in the open source world than it is elsewhere. In the open source world, reputation is everything.

Skeptics often ask what keeps open source code from forking infinitely. After all, everyone has the right to create his or her own version of open source code. To those familiar with open source, the answer is simple: people trust the official releases of open source code because of the reputation of the gatekeepers of the source tree. Remember, trademark is the same as reputation. Some forking has taken place in the open source world, and trademark battles have not ensued. But what if two factions wanted to release competing versions of Linux - or any other open source project? Which faction would get the right to designate their version with the trademark?

The day may come when those who determine the official versions of large open source projects like Linux will control one of the most valuable pieces of intellectual property in the world - its trademark. Is this the next intellectual property battle in the open source world? Many people are poised to fight a patent fight - but is anyone prepared for the havoc that a trademark fight could cause?

It's a distressing possibility. So distressing, that it makes me think perhaps there are no trademarks in programmer heaven. If there are, I suppose, the question is which one: cross, star, many-armed god? I think, with all due respect, these are all too valuable, too controversial, and too weighed down with historical baggage. I would bet on the only free one: the penguin.

The author's professional bio can be viewed here.

More Stories By Heather Meeker

Heather Meeker is a shareholder at the Silicon Valley office of Greenberg Traurig, LLP, an international law firm well known for its intellectual property practice. She specializes in drafting and negotiating intellectual property transactions for software and other technology clients, with an emphasis on open source software. She is co-chair of the ABA committee to open source. Heather was a programmer/analyst before becoming an attorney.

Comments (6) View Comments

Share your thoughts on this story.

Add your comment
You must be signed in to add a comment. Sign-in | Register

In accordance with our Comment Policy, we encourage comments that are on topic, relevant and to-the-point. We will remove comments that include profanity, personal attacks, racial slurs, threats of violence, or other inappropriate material that violates our Terms and Conditions, and will block users who make repeated violations. We ask all readers to expect diversity of opinion and to treat one another with dignity and respect.


Most Recent Comments
Aldo Castaneda 11/17/04 07:50:11 PM EST

Ms. Meeker,

I appreciate your response to my comment.

I'm actually working on the "you need a lawyer to do it" part as I'm in my second year of law school.

As to brand "dilution." In your opinion does that concept apply equally to brands whose value arguably derives from trusted functionality and/or reliability (the code in this case) as it does to commercial consumer brands such as say Coke whose value dervies from consumer associations to more abstract lifestyle values which given their more subjective qualities are perhaps substantially more prone to dilution?

One more question if you'll indulge me (That makes two questions I suppose)?

Do you think the nexus of Open Source/Trademark/Financing is fertile ground for a law school thesis? If so is there a particular topic that you view as particularly timely?

Thank you.

Thank you.

-Aldo Castaneda

Heather Meeker 11/17/04 06:30:49 PM EST

Mr. Castaneda, thanks for your comment. It seems to me that the open source community has been, in general, quite tolerant of the development of brand value on open source projects. Most people who view open source as a viable business model would stress that branding is very important, and the way to develop a valuable business is by developing a valuable brand. If you are one of a "loosely assembled team of developers" working on an open source project, and you hope to create commercial value in the project, it's very worthwhile to put some time into mapping out a branding strategy -- whatever it may be. Licensing trademarks for profit is tricky, though. (It is one of those "don't do this at home" things -- you need lawyer help to do it.) You can leverage a brand, but only so much -- before it becomes diluted and loses its value.

I hope that helps, and thanks for reading the article.

Aldo Castaneda 11/17/04 12:42:59 PM EST

So given your conclusion with regard to the importance of trademark rights as to Open Source projects - Do you think that the early co-development of code along with trademarks is the key to unlocking the distributed economic potential in open source development?

In other words, can a loosely assembled team of developers open code gain financial leverage by selling rights to trademark usage and at the same time let the code be "free"?

Is trademark the goose that laid the Open Source Golden egg?

Seems it would not be too hard, assuming the release of an official version of code to figure out share ownership as a function of code developed. So that when trademark rights are licensed financial returns (this could be from speculative financing as well) could be distributed accordingly.

Is this already being done? Assuming this might work are problems around defining "share ownership" as a function of code contributed too subjective? Is valuation of the trademarket too nebulous? Would the "community" be adverse to this notion, as it is a for profit concept, albeit one that does't impede the end-user access to functionality?

Thank you 11/13/04 04:24:51 AM EST

Nice article. Hopefully the Groklaw community will enjoy this one too. Thank you Heaather!

Good Job! 11/13/04 04:16:09 AM EST

Great article to wake up to on a Saturday morning, thanks!

Good Job! 11/13/04 04:15:35 AM EST

Great article to wake up to on a Saturday morning, thanks!

@ThingsExpo Stories
SYS-CON Events announced today that Commvault, a global leader in enterprise data protection and information management, has been named “Bronze Sponsor” of SYS-CON's 18th International Cloud Expo, which will take place on June 7–9, 2016, at the Javits Center in New York City, NY, and the 19th International Cloud Expo, which will take place on November 1–3, 2016, at the Santa Clara Convention Center in Santa Clara, CA. Commvault is a leading provider of data protection and information management...
SYS-CON Events announced today that Alert Logic, Inc., the leading provider of Security-as-a-Service solutions for the cloud, will exhibit at SYS-CON's 18th International Cloud Expo®, which will take place on June 7-9, 2016, at the Javits Center in New York City, NY. Alert Logic, Inc., provides Security-as-a-Service for on-premises, cloud, and hybrid infrastructures, delivering deep security insight and continuous protection for customers at a lower cost than traditional security solutions. Ful...
SYS-CON Events announced today that VAI, a leading ERP software provider, will exhibit at SYS-CON's 18th International Cloud Expo®, which will take place on June 7-9, 2016, at the Javits Center in New York City, NY. VAI (Vormittag Associates, Inc.) is a leading independent mid-market ERP software developer renowned for its flexible solutions and ability to automate critical business functions for the distribution, manufacturing, specialty retail and service sectors. An IBM Premier Business Part...
The cloud promises new levels of agility and cost-savings for Big Data, data warehousing and analytics. But it’s challenging to understand all the options – from IaaS and PaaS to newer services like HaaS (Hadoop as a Service) and BDaaS (Big Data as a Service). In her session at @BigDataExpo at @ThingsExpo, Hannah Smalltree, a director at Cazena, will provide an educational overview of emerging “as-a-service” options for Big Data in the cloud. This is critical background for IT and data profes...
With an estimated 50 billion devices connected to the Internet by 2020, several industries will begin to expand their capabilities for retaining end point data at the edge to better utilize the range of data types and sheer volume of M2M data generated by the Internet of Things. In his session at @ThingsExpo, Don DeLoach, CEO and President of Infobright, will discuss the infrastructures businesses will need to implement to handle this explosion of data by providing specific use cases for filte...
Fortunately, meaningful and tangible business cases for IoT are plentiful in a broad array of industries and vertical markets. These range from simple warranty cost reduction for capital intensive assets, to minimizing downtime for vital business tools, to creating feedback loops improving product design, to improving and enhancing enterprise customer experiences. All of these business cases, which will be briefly explored in this session, hinge on cost effectively extracting relevant data from ...
SYS-CON Events announced today that Interoute, owner-operator of one of Europe's largest networks and a global cloud services platform, has been named “Bronze Sponsor” of SYS-CON's 18th Cloud Expo, which will take place on June 7-9, 2015 at the Javits Center in New York, New York. Interoute is the owner-operator of one of Europe's largest networks and a global cloud services platform which encompasses 12 data centers, 14 virtual data centers and 31 colocation centers, with connections to 195 ad...
Most people haven’t heard the word, “gamification,” even though they probably, and perhaps unwittingly, participate in it every day. Gamification is “the process of adding games or game-like elements to something (as a task) so as to encourage participation.” Further, gamification is about bringing game mechanics – rules, constructs, processes, and methods – into the real world in an effort to engage people. In his session at @ThingsExpo, Robert Endo, owner and engagement manager of Intrepid D...
SYS-CON Events announced today that Fusion, a leading provider of cloud services, will exhibit at SYS-CON's 18th International Cloud Expo®, which will take place on June 7-9, 2016, at the Javits Center in New York City, NY. Fusion, a leading provider of integrated cloud solutions to small, medium and large businesses, is the industry's single source for the cloud. Fusion's advanced, proprietary cloud service platform enables the integration of leading edge solutions in the cloud, including clou...
As enterprises work to take advantage of Big Data technologies, they frequently become distracted by product-level decisions. In most new Big Data builds this approach is completely counter-productive: it presupposes tools that may not be a fit for development teams, forces IT to take on the burden of evaluating and maintaining unfamiliar technology, and represents a major up-front expense. In his session at @BigDataExpo at @ThingsExpo, Andrew Warfield, CTO and Co-Founder of Coho Data, will dis...
With the Apple Watch making its way onto wrists all over the world, it’s only a matter of time before it becomes a staple in the workplace. In fact, Forrester reported that 68 percent of technology and business decision-makers characterize wearables as a top priority for 2015. Recognizing their business value early on, FinancialForce.com was the first to bring ERP to wearables, helping streamline communication across front and back office functions. In his session at @ThingsExpo, Kevin Roberts...
Eighty percent of a data scientist’s time is spent gathering and cleaning up data, and 80% of all data is unstructured and almost never analyzed. Cognitive computing, in combination with Big Data, is changing the equation by creating data reservoirs and using natural language processing to enable analysis of unstructured data sources. This is impacting every aspect of the analytics profession from how data is mined (and by whom) to how it is delivered. This is not some futuristic vision: it's ha...
WebRTC has had a real tough three or four years, and so have those working with it. Only a few short years ago, the development world were excited about WebRTC and proclaiming how awesome it was. You might have played with the technology a couple of years ago, only to find the extra infrastructure requirements were painful to implement and poorly documented. This probably left a bitter taste in your mouth, especially when things went wrong.
Learn how IoT, cloud, social networks and last but not least, humans, can be integrated into a seamless integration of cooperative organisms both cybernetic and biological. This has been enabled by recent advances in IoT device capabilities, messaging frameworks, presence and collaboration services, where devices can share information and make independent and human assisted decisions based upon social status from other entities. In his session at @ThingsExpo, Michael Heydt, founder of Seamless...
The IoT's basic concept of collecting data from as many sources possible to drive better decision making, create process innovation and realize additional revenue has been in use at large enterprises with deep pockets for decades. So what has changed? In his session at @ThingsExpo, Prasanna Sivaramakrishnan, Solutions Architect at Red Hat, discussed the impact commodity hardware, ubiquitous connectivity, and innovations in open source software are having on the connected universe of people, thi...
WebRTC: together these advances have created a perfect storm of technologies that are disrupting and transforming classic communications models and ecosystems. In his session at WebRTC Summit, Cary Bran, VP of Innovation and New Ventures at Plantronics and PLT Labs, provided an overview of this technological shift, including associated business and consumer communications impacts, and opportunities it may enable, complement or entirely transform.
There are so many tools and techniques for data analytics that even for a data scientist the choices, possible systems, and even the types of data can be daunting. In his session at @ThingsExpo, Chris Harrold, Global CTO for Big Data Solutions for EMC Corporation, showed how to perform a simple, but meaningful analysis of social sentiment data using freely available tools that take only minutes to download and install. Participants received the download information, scripts, and complete end-t...
For manufacturers, the Internet of Things (IoT) represents a jumping-off point for innovation, jobs, and revenue creation. But to adequately seize the opportunity, manufacturers must design devices that are interconnected, can continually sense their environment and process huge amounts of data. As a first step, manufacturers must embrace a new product development ecosystem in order to support these products.
Manufacturing connected IoT versions of traditional products requires more than multiple deep technology skills. It also requires a shift in mindset, to realize that connected, sensor-enabled “things” act more like services than what we usually think of as products. In his session at @ThingsExpo, David Friedman, CEO and co-founder of Ayla Networks, discussed how when sensors start generating detailed real-world data about products and how they’re being used, smart manufacturers can use the dat...
When it comes to IoT in the enterprise, namely the commercial building and hospitality markets, a benefit not getting the attention it deserves is energy efficiency, and IoT’s direct impact on a cleaner, greener environment when installed in smart buildings. Until now clean technology was offered piecemeal and led with point solutions that require significant systems integration to orchestrate and deploy. There didn't exist a 'top down' approach that can manage and monitor the way a Smart Buildi...