|By Heather Meeker||
|November 13, 2004 12:00 AM EST||
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 WorldAll 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 FellI 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.
|Aldo Castaneda 11/17/04 07:50:11 PM EST|
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?
|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!
SYS-CON Events announced today that MangoApps 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. MangoApps provides modern company intranets and team collaboration software, allowing workers to stay connected and productive from anywhere in the world and from any device. For more information, please visit https://www.mangoapps.com/.
May. 29, 2016 10:15 PM EDT Reads: 1,030
SYS-CON Events announced today that EastBanc Technologies 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. EastBanc Technologies has been working at the frontier of technology since 1999. Today, the firm provides full-lifecycle software development delivering flexible technology solutions that seamlessly integrate with existing systems – whether on premise or cloud. EastBanc Technologies partners with p...
May. 29, 2016 10:00 PM EDT Reads: 2,392
In his session at 18th Cloud Expo, Bruce Swann, Senior Product Marketing Manager at Adobe, will discuss how the Adobe Marketing Cloud can help marketers embrace opportunities for personalized, relevant and real-time customer engagement across offline (direct mail, point of sale, call center) and digital (email, website, SMS, mobile apps, social networks, connected objects). Bruce Swann has more than 15 years of experience working with digital marketing disciplines like web analytics, social med...
May. 29, 2016 06:00 PM EDT Reads: 1,451
SYS-CON Events announced today that ContentMX, the marketing technology and services company with a singular mission to increase engagement and drive more conversations for enterprise, channel and SMB technology marketers, has been named “Sponsor & Exhibitor Lounge Sponsor” of SYS-CON's 18th Cloud Expo, which will take place on June 7-9, 2016, at the Javits Center in New York City, New York. “CloudExpo is a great opportunity to start a conversation with new prospects, but what happens after the...
May. 29, 2016 04:45 PM EDT Reads: 1,317
WebRTC is bringing significant change to the communications landscape that will bridge the worlds of web and telephony, making the Internet the new standard for communications. Cloud9 took the road less traveled and used WebRTC to create a downloadable enterprise-grade communications platform that is changing the communication dynamic in the financial sector. In his session at @ThingsExpo, Leo Papadopoulos, CTO of Cloud9, will discuss the importance of WebRTC and how it enables companies to fo...
May. 29, 2016 04:15 PM EDT Reads: 2,593
SYS-CON Events announced today Object Management Group® has been named “Media 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.
May. 29, 2016 04:00 PM EDT Reads: 2,661
The IoT is changing the way enterprises conduct business. In his session at @ThingsExpo, Eric Hoffman, Vice President at EastBanc Technologies, discuss how businesses can gain an edge over competitors by empowering consumers to take control through IoT. We'll cite examples such as a Washington, D.C.-based sports club that leveraged IoT and the cloud to develop a comprehensive booking system. He'll also highlight how IoT can revitalize and restore outdated business models, making them profitable...
May. 29, 2016 02:00 PM EDT Reads: 2,975
The IoTs will challenge the status quo of how IT and development organizations operate. Or will it? Certainly the fog layer of IoT requires special insights about data ontology, security and transactional integrity. But the developmental challenges are the same: People, Process and Platform. In his session at @ThingsExpo, Craig Sproule, CEO of Metavine, will demonstrate how to move beyond today's coding paradigm and share the must-have mindsets for removing complexity from the development proc...
May. 29, 2016 01:00 PM EDT Reads: 1,989
Customer experience has become a competitive differentiator for companies, and it’s imperative that brands seamlessly connect the customer journey across all platforms. With the continued explosion of IoT, join us for a look at how to build a winning digital foundation in the connected era – today and in the future. In his session at @ThingsExpo, Chris Nguyen, Group Product Marketing Manager at Adobe, will discuss how to successfully leverage mobile, rapidly deploy content, capture real-time d...
May. 29, 2016 12:45 PM EDT Reads: 1,686
What a difference a year makes. Organizations aren’t just talking about IoT possibilities, it is now baked into their core business strategy. With IoT, billions of devices generating data from different companies on different networks around the globe need to interact. From efficiency to better customer insights to completely new business models, IoT will turn traditional business models upside down. In the new customer-centric age, the key to success is delivering critical services and apps wit...
May. 29, 2016 10:30 AM EDT Reads: 1,299
Join us at Cloud Expo | @ThingsExpo 2016 – June 7-9 at the Javits Center in New York City and November 1-3 at the Santa Clara Convention Center in Santa Clara, CA – and deliver your unique message in a way that is striking and unforgettable by taking advantage of SYS-CON's unmatched high-impact, result-driven event / media packages.
May. 29, 2016 10:00 AM EDT Reads: 2,551
In his keynote at 18th Cloud Expo, Andrew Keys, Co-Founder of ConsenSys Enterprise, will provide an overview of the evolution of the Internet and the Database and the future of their combination – the Blockchain. Andrew Keys is Co-Founder of ConsenSys Enterprise. He comes to ConsenSys Enterprise with capital markets, technology and entrepreneurial experience. Previously, he worked for UBS investment bank in equities analysis. Later, he was responsible for the creation and distribution of life ...
May. 29, 2016 09:45 AM EDT Reads: 2,043
SYS-CON Events announced today that BMC Software has been named "Siver 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. BMC is a global leader in innovative software solutions that help businesses transform into digital enterprises for the ultimate competitive advantage. BMC Digital Enterprise Management is a set of innovative IT solutions designed to make digital business fast, seamless, and optimized from mainframe to mo...
May. 29, 2016 09:30 AM EDT Reads: 2,320
SYS-CON Events announced today that MobiDev 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. MobiDev is a software company that develops and delivers turn-key mobile apps, websites, web services, and complex software systems for startups and enterprises. Since 2009 it has grown from a small group of passionate engineers and business managers to a full-scale mobile software company with over 200 develope...
May. 29, 2016 08:15 AM EDT Reads: 2,773
SoftLayer operates a global cloud infrastructure platform built for Internet scale. With a global footprint of data centers and network points of presence, SoftLayer provides infrastructure as a service to leading-edge customers ranging from Web startups to global enterprises. SoftLayer's modular architecture, full-featured API, and sophisticated automation provide unparalleled performance and control. Its flexible unified platform seamlessly spans physical and virtual devices linked via a world...
May. 29, 2016 07:00 AM EDT Reads: 2,316
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...
May. 29, 2016 06:45 AM EDT Reads: 2,967
As cloud and storage projections continue to rise, the number of organizations moving to the cloud is escalating and it is clear cloud storage is here to stay. However, is it secure? Data is the lifeblood for government entities, countries, cloud service providers and enterprises alike and losing or exposing that data can have disastrous results. There are new concepts for data storage on the horizon that will deliver secure solutions for storing and moving sensitive data around the world. ...
May. 29, 2016 06:00 AM EDT Reads: 1,373
Companies can harness IoT and predictive analytics to sustain business continuity; predict and manage site performance during emergencies; minimize expensive reactive maintenance; and forecast equipment and maintenance budgets and expenditures. Providing cost-effective, uninterrupted service is challenging, particularly for organizations with geographically dispersed operations.
May. 29, 2016 06:00 AM EDT Reads: 2,186
SYS-CON Events announced today TechTarget has been named “Media 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. TechTarget is the Web’s leading destination for serious technology buyers researching and making enterprise technology decisions. Its extensive global networ...
May. 29, 2016 05:15 AM EDT Reads: 3,281
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...
May. 29, 2016 04:30 AM EDT Reads: 3,267