Welcome!

Linux Authors: Pat Romanski, Liz McMillan, Elizabeth White, Ignacio M. Llorente, Trevor Parsons

Related Topics: Linux, Java

Linux: 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
Connected devices and the Internet of Things are getting significant momentum in 2014. In his session at Internet of @ThingsExpo, Jim Hunter, Chief Scientist & Technology Evangelist at Greenwave Systems, examined three key elements that together will drive mass adoption of the IoT before the end of 2015. The first element is the recent advent of robust open source protocols (like AllJoyn and WebRTC) that facilitate M2M communication. The second is broad availability of flexible, cost-effective storage designed to handle the massive surge in back-end data in a world where timely analytics is e...
How do APIs and IoT relate? The answer is not as simple as merely adding an API on top of a dumb device, but rather about understanding the architectural patterns for implementing an IoT fabric. There are typically two or three trends: Exposing the device to a management framework Exposing that management framework to a business centric logic Exposing that business layer and data to end users. This last trend is the IoT stack, which involves a new shift in the separation of what stuff happens, where data lives and where the interface lies. For instance, it's a mix of architectural styles ...
The Internet of Things will put IT to its ultimate test by creating infinite new opportunities to digitize products and services, generate and analyze new data to improve customer satisfaction, and discover new ways to gain a competitive advantage across nearly every industry. In order to help corporate business units to capitalize on the rapidly evolving IoT opportunities, IT must stand up to a new set of challenges. In his session at @ThingsExpo, Jeff Kaplan, Managing Director of THINKstrategies, will examine why IT must finally fulfill its role in support of its SBUs or face a new round of...
We are reaching the end of the beginning with WebRTC, and real systems using this technology have begun to appear. One challenge that faces every WebRTC deployment (in some form or another) is identity management. For example, if you have an existing service – possibly built on a variety of different PaaS/SaaS offerings – and you want to add real-time communications you are faced with a challenge relating to user management, authentication, authorization, and validation. Service providers will want to use their existing identities, but these will have credentials already that are (hopefully) i...
Cultural, regulatory, environmental, political and economic (CREPE) conditions over the past decade are creating cross-industry solution spaces that require processes and technologies from both the Internet of Things (IoT), and Data Management and Analytics (DMA). These solution spaces are evolving into Sensor Analytics Ecosystems (SAE) that represent significant new opportunities for organizations of all types. Public Utilities throughout the world, providing electricity, natural gas and water, are pursuing SmartGrid initiatives that represent one of the more mature examples of SAE. We have s...
"Matrix is an ambitious open standard and implementation that's set up to break down the fragmentation problems that exist in IP messaging and VoIP communication," explained John Woolf, Technical Evangelist at Matrix, in this SYS-CON.tv interview at @ThingsExpo, held Nov 4–6, 2014, at the Santa Clara Convention Center in Santa Clara, CA.
The Internet of Things will greatly expand the opportunities for data collection and new business models driven off of that data. In her session at @ThingsExpo, Esmeralda Swartz, CMO of MetraTech, discussed how for this to be effective you not only need to have infrastructure and operational models capable of utilizing this new phenomenon, but increasingly service providers will need to convince a skeptical public to participate. Get ready to show them the money!
One of the biggest challenges when developing connected devices is identifying user value and delivering it through successful user experiences. In his session at Internet of @ThingsExpo, Mike Kuniavsky, Principal Scientist, Innovation Services at PARC, described an IoT-specific approach to user experience design that combines approaches from interaction design, industrial design and service design to create experiences that go beyond simple connected gadgets to create lasting, multi-device experiences grounded in people's real needs and desires.
P2P RTC will impact the landscape of communications, shifting from traditional telephony style communications models to OTT (Over-The-Top) cloud assisted & PaaS (Platform as a Service) communication services. The P2P shift will impact many areas of our lives, from mobile communication, human interactive web services, RTC and telephony infrastructure, user federation, security and privacy implications, business costs, and scalability. In his session at @ThingsExpo, Robin Raymond, Chief Architect at Hookflash, will walk through the shifting landscape of traditional telephone and voice services ...
Scott Jenson leads a project called The Physical Web within the Chrome team at Google. Project members are working to take the scalability and openness of the web and use it to talk to the exponentially exploding range of smart devices. Nearly every company today working on the IoT comes up with the same basic solution: use my server and you'll be fine. But if we really believe there will be trillions of these devices, that just can't scale. We need a system that is open a scalable and by using the URL as a basic building block, we open this up and get the same resilience that the web enjoys.
The Internet of Things is tied together with a thin strand that is known as time. Coincidentally, at the core of nearly all data analytics is a timestamp. When working with time series data there are a few core principles that everyone should consider, especially across datasets where time is the common boundary. In his session at Internet of @ThingsExpo, Jim Scott, Director of Enterprise Strategy & Architecture at MapR Technologies, discussed single-value, geo-spatial, and log time series data. By focusing on enterprise applications and the data center, he will use OpenTSDB as an example t...
The Domain Name Service (DNS) is one of the most important components in networking infrastructure, enabling users and services to access applications by translating URLs (names) into IP addresses (numbers). Because every icon and URL and all embedded content on a website requires a DNS lookup loading complex sites necessitates hundreds of DNS queries. In addition, as more internet-enabled ‘Things' get connected, people will rely on DNS to name and find their fridges, toasters and toilets. According to a recent IDG Research Services Survey this rate of traffic will only grow. What's driving t...
Enthusiasm for the Internet of Things has reached an all-time high. In 2013 alone, venture capitalists spent more than $1 billion dollars investing in the IoT space. With "smart" appliances and devices, IoT covers wearable smart devices, cloud services to hardware companies. Nest, a Google company, detects temperatures inside homes and automatically adjusts it by tracking its user's habit. These technologies are quickly developing and with it come challenges such as bridging infrastructure gaps, abiding by privacy concerns and making the concept a reality. These challenges can't be addressed w...
Explosive growth in connected devices. Enormous amounts of data for collection and analysis. Critical use of data for split-second decision making and actionable information. All three are factors in making the Internet of Things a reality. Yet, any one factor would have an IT organization pondering its infrastructure strategy. How should your organization enhance its IT framework to enable an Internet of Things implementation? In his session at Internet of @ThingsExpo, James Kirkland, Chief Architect for the Internet of Things and Intelligent Systems at Red Hat, described how to revolutioniz...
Bit6 today issued a challenge to the technology community implementing Web Real Time Communication (WebRTC). To leap beyond WebRTC’s significant limitations and fully leverage its underlying value to accelerate innovation, application developers need to consider the entire communications ecosystem.
The definition of IoT is not new, in fact it’s been around for over a decade. What has changed is the public's awareness that the technology we use on a daily basis has caught up on the vision of an always on, always connected world. If you look into the details of what comprises the IoT, you’ll see that it includes everything from cloud computing, Big Data analytics, “Things,” Web communication, applications, network, storage, etc. It is essentially including everything connected online from hardware to software, or as we like to say, it’s an Internet of many different things. The difference ...
Cloud Expo 2014 TV commercials will feature @ThingsExpo, which was launched in June, 2014 at New York City's Javits Center as the largest 'Internet of Things' event in the world.
SYS-CON Events announced today that Windstream, a leading provider of advanced network and cloud communications, has been named “Silver Sponsor” of SYS-CON's 16th International Cloud Expo®, which will take place on June 9–11, 2015, at the Javits Center in New York, NY. Windstream (Nasdaq: WIN), a FORTUNE 500 and S&P 500 company, is a leading provider of advanced network communications, including cloud computing and managed services, to businesses nationwide. The company also offers broadband, phone and digital TV services to consumers primarily in rural areas.
"There is a natural synchronization between the business models, the IoT is there to support ,” explained Brendan O'Brien, Co-founder and Chief Architect of Aria Systems, in this SYS-CON.tv interview at the 15th International Cloud Expo®, held Nov 4–6, 2014, at the Santa Clara Convention Center in Santa Clara, CA.
The major cloud platforms defy a simple, side-by-side analysis. Each of the major IaaS public-cloud platforms offers their own unique strengths and functionality. Options for on-site private cloud are diverse as well, and must be designed and deployed while taking existing legacy architecture and infrastructure into account. Then the reality is that most enterprises are embarking on a hybrid cloud strategy and programs. In this Power Panel at 15th Cloud Expo (http://www.CloudComputingExpo.com), moderated by Ashar Baig, Research Director, Cloud, at Gigaom Research, Nate Gordon, Director of T...