Skip to main content

Trademarks and Open Source

Posted by timboudreau on May 10, 2009 at 10:19 PM PDT

Simon Phipps posted a URL to this interesting article on PCWorld, Trademarks: The Hidden Menace. Having been involved in Sun's open source projects from the beginning, and dealt with lawyers on trademark issues over the years, I have a few thoughts - and some serious disagreements with some of the comments.

Since article comments are less often read, I am posting my comments in expanded form here. This comes with the usual caveat: I am not a lawyer (I don't even play one on TV), and my opinions are my own.

Ironically, most of what I am discussing does not help the author of that PC World article, since his issue was with using the trademark of a Linux distribution. In the article, however, he brings up the subject of the licensing of the word "linux" — which touches on a legal rats' nest in open source licensing that I have seen cause a great deal of trouble.

I've been saying for years that somebody needs to do for trademarks what the free software and open source movements have done for licensing. At Sun Microsystems, I have watched trademarks wreak havoc with various open source projects.

I disagree strongly with the comments such as "Trademark laws are critical to the success of open source software." I have seen them be harmful or benign, but I have never seen them provide a positive benefit.


Siamese Cat style="border-style:solid;border-width:12px;border-color:white;"
/>

Names are important - software is for human beings, and human cognition requires that a piece of software have a name - ideally a sayable, memorable name. Especially with open source projects, where there may be multiple distributions, name recognition builds perceived ubiquity. Without a name, potential users and community members cannot find each other.

Imagine if every Linux distribution had to have a different name that didn't use the word "linux" (think: Joe's Operating System, Foobar Corp. OS), would linux have ever become popular? In the early '90s I used Slackware Linux, and later RedHat Linux. If these things had not used "linux" in their names, how would I have even known that they could be somewhat interchangeable, or how to find help on using them? As a Linux user, there have been plenty of times that documentation from, say, Gentoo Linux, has helped me solve a problem in my install of Ubuntu Linux, or vice-versa. If I didn't have the noun "linux", would I have ever found that documentation? Or would I have given up at some point and not even be a linux user today?

In the real world, I have never seen trademarks be good for open source. At best, they're sometimes not harmful.

One response said:I can download Ubuntu for free, but how do I know I am getting the real thing

You know where you are downloading it from. And that's the point - a trusted source for software is much more reliable than a trusted name when it comes to open source software. Open source software can be recompiled by anyone to create the same binary. The distributor, or the point of distribution, is the brand. The name of the software belongs, or should belong, to the community.

To pick on one of Sun's own projects for a minute (let the hate mail come), the kind of mess trademarks can cause when they meet open source can be seen in action with OpenSolaris where alternative distributions are required not to use the word "solaris". This is suicidally stupid for the health of the project, particularly for distributions - there is no way for people who don't already know that multiple distributions are really the same thing to find out. That puts a very low cap on the amount of adoption it is ever going to receive, by undermining the ability of distributors to even indicate what it is they are distributing.

Go to the OpenSolaris download page. There are distributions called BeleniX, Jaris, MartUX mBE, MilaX, NexentaOS and SchilliX. Who would ever guess that these are names for the same thing?

Each of those vendors would probably like to become the 10,000 pound gorilla which takes over the operating system world. But none of them are today. If these things could say, in their name, what they are, these distributions could synergize each others' popularity. They would still compete, and there would be winners and losers. But the common name creates the competitive playing field. It facilitates competition. Without it, all of the burden to connect the dots and figure out that all of these distributions are versions of the same thing is put on the potential customer. That's too much work to ask of people - the lack of a common vocabulary, a common noun, ends up being a massive barrier to adoption. The result is an order of magnitude fewer potential customers.

Tulip style="border-style:solid;border-width:12px;border-color:white;"
/>
The Apache license's requirement that distributions of Apache software be named something different seems similarly wrongheaded and destructive. I can think of 6 or 7 Linux distributions, off the top of my head. I can think of 1 Apache web server distribution — WebSphere.

Demanding that users of software figure out on their own that five different things with five different names are actually the same thing is demanding that human nature be violated. If we want the open source software we create to compete viably with commercial software, this is like trying to run a marathon with untied shoes.

In other words, the way trademarks are currently handled in open source projects stifles competition and hurts smaller or less-known vendors. The name of the software is the way a vendor communicates what they are adding value to.

There is a fundamental tension between an open source project's name, and how it is subsequently branded. It is somewhat expressed by the fact that the person who posted the above comment used "Ubuntu" several times as a noun (which is actually verboten for the trademark holder if they want to protect their trademark). A small vendor creating a distribution benefits from name recognition of the underlying software - if I am familiar with Linux, I am much more likely to try something called Acme Linux, because my expectations are set by the use of the word Linux. If it were called Acme Super Operating System, I would be much less likely to ever hear of it, or find it in a search, much less consider it something I might want to use. Which is exactly the situation with OpenSolaris - how would I ever figure out that a distro called Nexenta is actually Solaris? I have to start by knowing about Nexenta, which is exactly where their potential customer does not start.

As a particular distribution increases in ubiquity, the vendor is less dependent on the name of the underlying software, because it has developed independent brand recognition. When a distribution reaches a level of popularity where many people will just use the name "Ubuntu", unqualified, in a forum post, and can have a reasonable expectation that others will know what they are talking about, the vendor has less interest in using the name of the underlying software, and more interest in protecting the brand belonging to their distribution.

The respective value of the vendor's brand and the name of the underlying software, to the vendor, changes over time. So does the value of the vendor's work to the underlying project. Yet trademark law assumes a fixed and permanent value for both — one which must be vigorously and labor-intensively defended from the start. In doing so, it pits two parties in a mutually beneficial relationship against each other — and in fact creates an advantage for closed-source vendors who suffer no such conflict. While this might make such vendors happy, reducing competition definitely does not benefit the consumer.

This is particularly a problem when smaller vendors are creating the software - they cannot afford a massive marketing campaign to build recognition of their "brand". For small vendors, brand growth has to happen virally. That fairly guarantees that the trademark must be violated, as a condition of success. Especially in the early stages of an open source project's lifespan, you have a no-win situation with the way trademarks are currently handled: You have a trademark which gains its value over time by being violated. And if it is not violated, it will most likely never develop any value at all. If people had not been allowed to use the word "linux", there would be no Linux today - it would have never become a competitive force.

In some ways this is analogous to how pirated copies of Microsoft Windows were the thing that made it ubiquitous — the success of the software actually depends on others violating the rights, as they are currently legally defined, of its creator.
Revising the legal framework to take into account the actual behavior of the market seems to me to be a reasonable response.

Especially early in an open source project's life, other people using the name is a sign of success - in fact it is necessary for the project to succeed. Someone else calling their distribution "Ubuntu Linux" helps the "Linux" brand (and I think it would be safe to say that there would be no Linux as a force in the O/S marketplace if the name "Linux" had not been freely usable in the '90s).

I work on NetBeans. Now, if someone creates spam-mailing software and calls it NetBeans, trademark law is a way to stop that. But if someone is redistributing NetBeans, why on earth would I want to stop them from using the name? It can only enhance NetBeans brand equity to allow that — and a cease-and-desist letter from your lawyers is not a nice thing to do to people who are helping you. The best decision we ever made for NetBeans was to stop having Sun "branded distributions" of NetBeans — nobody could figure out that Forte for Java Internet Edition cum Sun Java Studio actually was NetBeans — it just fragmented the user base and guaranteed that no distribution was successful because NetBeans was competing with itself! Now, I still think creating rebranded versions of something you own the brand and the code to is mind-bogglingly stupid, but if these things had at least been called Something NetBeans, it wouldn't have been as disasterous as it was. From those times, I have first-hand experience of how much damage not having a common name can do — and we wouldn't even have been violating our own trademark to do it!

The problem is that the way the law handles trademarks is exactly backward for the needs of open source - the requirement is that the trademark holder treat all third-party uses of their trademark as violations and pursue them aggressively, even when the trademark holder benefits from the third party usage.

An open source project needs permissive trademark licensing - at worst, no more difficult than filling out a web form with contact information, a description and a URL - while still having recourse to pursue clear abuses of that trademark.

I wonder if something like that is possible, even within the framework of existing U.S. trademark law — I suspect some creative lawyering is possible. Given my experiences with regard to trademarks, at least with Sun's lawyers, I suspect nobody has tried — or stated succinctly what the problem is. It does look like LinuxMark.org is pretty close to what would be needed.

While not as broken as patent law is, with respect to software, long-term, trademarks do cause significant problems — problems that are a greater burden to open-source than closed-source projects, and which hurt new projects and small vendors disproportionately. What is really needed is trademark law that better fits how trademarks work in practice. In the meantime, it would be nice if our industry could develop some best practices for mitigating the harm.

Comments

I definitely agree with your points about the confusion caused by not being able to use a trademark in open source. I am also not a lawyer, but I know that if a trademark owner doesn't take steps to prevent others from using the name, people may begin to use that name to refer to a class of products rather than a specific product. When this happens, the trademark can be declared "generic" and the trademark owner loses exclusive rights to use it. In fact, I believe "aspirin" is an example of this -- it was once the trademark of a specific product from Bayer, but is now a generic term to refer to the active ingredient. Since open source software actually encourages people to create derivative works and using a different name might cause confusion, this is an instance where existing trademark law doesn't provide a good solution.