Welcome!

Wireless Authors: Shelly Palmer, Kevin Benedict, Carmen Gonzalez, Roger Strukhoff, Peter Silva

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
The 3rd International Internet of @ThingsExpo, co-located with the 16th International Cloud Expo - to be held June 9-11, 2015, at the Javits Center in New York City, NY - announces that its Call for Papers is now open. The Internet of Things (IoT) is the biggest idea since the creation of the Worldwide Web more than 20 years ago.
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...
The Internet of Things (IoT) is going to require a new way of thinking and of developing software for speed, security and innovation. This requires IT leaders to balance business as usual while anticipating for the next market and technology trends. Cloud provides the right IT asset portfolio to help today’s IT leaders manage the old and prepare for the new. Today the cloud conversation is evolving from private and public to hybrid. This session will provide use cases and insights to reinforce the value of the network in helping organizations to maximize their company’s cloud experience.
Disruptive macro trends in technology are impacting and dramatically changing the "art of the possible" relative to supply chain management practices through the innovative use of IoT, cloud, machine learning and Big Data to enable connected ecosystems of engagement. Enterprise informatics can now move beyond point solutions that merely monitor the past and implement integrated enterprise fabrics that enable end-to-end supply chain visibility to improve customer service delivery and optimize supplier management. Learn about enterprise architecture strategies for designing connected systems tha...
IoT is still a vague buzzword for many people. In his session at Internet of @ThingsExpo, Mike Kavis, Vice President & Principal Cloud Architect at Cloud Technology Partners, will discuss the business value of IoT that goes far beyond the general public's perception that IoT is all about wearables and home consumer services. The presentation will also discuss how IoT is perceived by investors and how venture capitalist access this space. Other topics to discuss are barriers to success, what is new, what is old, and what the future may hold.
Whether you're a startup or a 100 year old enterprise, the Internet of Things offers a variety of new capabilities for your business. IoT style solutions can help you get closer your customers, launch new product lines and take over an industry. Some companies are dipping their toes in, but many have already taken the plunge, all while dramatic new capabilities continue to emerge. In his session at Internet of @ThingsExpo, Reid Carlberg, Senior Director, Developer Evangelism at salesforce.com, to discuss real-world use cases, patterns and opportunities you can harness today.
All major researchers estimate there will be tens of billions devices – computers, smartphones, tablets, and sensors – connected to the Internet by 2020. This number will continue to grow at a rapid pace for the next several decades. With major technology companies and startups seriously embracing IoT strategies, now is the perfect time to attend @ThingsExpo in Silicon Valley. Learn what is going on, contribute to the discussions, and ensure that your enterprise is as "IoT-Ready" as it can be!
Noted IoT expert and researcher Joseph di Paolantonio (pictured below) has joined the @ThingsExpo faculty. Joseph, who describes himself as an “Independent Thinker” from DataArchon, will speak on the topic of “Smart Grids & Managing Big Utilities.” Over his career, Joseph di Paolantonio has worked in the energy, renewables, aerospace, telecommunications, and information technology industries. His expertise is in data analysis, system engineering, Bayesian statistics, data warehouses, business intelligence, data mining, predictive methods, and very large databases (VLDB). Prior to DataArcho...
Software AG helps organizations transform into Digital Enterprises, so they can differentiate from competitors and better engage customers, partners and employees. Using the Software AG Suite, companies can close the gap between business and IT to create digital systems of differentiation that drive front-line agility. We offer four on-ramps to the Digital Enterprise: alignment through collaborative process analysis; transformation through portfolio management; agility through process automation and integration; and visibility through intelligent business operations and big data.
There will be 50 billion Internet connected devices by 2020. Today, every manufacturer has a propriety protocol and an app. How do we securely integrate these "things" into our lives and businesses in a way that we can easily control and manage? Even better, how do we integrate these "things" so that they control and manage each other so our lives become more convenient or our businesses become more profitable and/or safe? We have heard that the best interface is no interface. In his session at Internet of @ThingsExpo, Chris Matthieu, Co-Founder & CTO at Octoblu, Inc., will discuss how thes...
Last week, while in San Francisco, I used the Uber app and service four times. All four experiences were great, although one of the drivers stopped for 30 seconds and then left as I was walking up to the car. He must have realized I was a blogger. None the less, the next car was just a minute away and I suffered no pain. In this article, my colleague, Ved Sen, Global Head, Advisory Services Social, Mobile and Sensors at Cognizant shares his experiences and insights.
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) ir...
Can call centers hang up the phones for good? Intuitive Solutions did. WebRTC enabled this contact center provider to eliminate antiquated telephony and desktop phone infrastructure with a pure web-based solution, allowing them to expand beyond brick-and-mortar confines to a home-based agent model. It also ensured scalability and better service for customers, including MUY! Companies, one of the country's largest franchise restaurant companies with 232 Pizza Hut locations. This is one example of WebRTC adoption today, but the potential is limitless when powered by IoT. Attendees will learn rea...
From telemedicine to smart cars, digital homes and industrial monitoring, the explosive growth of IoT has created exciting new business opportunities for real time calls and messaging. In his session at Internet of @ThingsExpo, Ivelin Ivanov, CEO and Co-Founder of Telestax, will share some of the new revenue sources that IoT created for Restcomm – the open source telephony platform from Telestax. Ivelin Ivanov is a technology entrepreneur who founded Mobicents, an Open Source VoIP Platform, to help create, deploy, and manage applications integrating voice, video and data. He is the co-founder ...
The Internet of Things (IoT) promises to create new business models as significant as those that were inspired by the Internet and the smartphone 20 and 10 years ago. What business, social and practical implications will this phenomenon bring? That's the subject of "Monetizing the Internet of Things: Perspectives from the Front Lines," an e-book released today and available free of charge from Aria Systems, the leading innovator in recurring revenue management.
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.
There’s Big Data, then there’s really Big Data from the Internet of Things. IoT is evolving to include many data possibilities like new types of event, log and network data. The volumes are enormous, generating tens of billions of logs per day, which raise data challenges. Early IoT deployments are relying heavily on both the cloud and managed service providers to navigate these challenges. In her session at 6th Big Data Expo®, Hannah Smalltree, Director at Treasure Data, to discuss how IoT, Big Data and deployments are processing massive data volumes from wearables, utilities and other mach...
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 Internet of @ThingsExpo, Erik Lagerway, Co-founder of Hookflash, will walk through the shifting landscape of traditional telephone and voice s...
While great strides have been made relative to the video aspects of remote collaboration, audio technology has basically stagnated. Typically all audio is mixed to a single monaural stream and emanates from a single point, such as a speakerphone or a speaker associated with a video monitor. This leads to confusion and lack of understanding among participants especially regarding who is actually speaking. Spatial teleconferencing introduces the concept of acoustic spatial separation between conference participants in three dimensional space. This has been shown to significantly improve comprehe...
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, will discuss 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...