Software Pluralism

Software Pluralism

Trademark and OSS

Abstract

Trademarks are intellectual property tools that protect both merchants and consumers. Open source software providers, despite their general goal of providing a public service in the form of non-proprietary software, are motivated to maintain their reputations for quality and therefore to maintain the strength of their trademarks. They are motivated to keep enough control over their trademarks to ensure they are a sign of quality and safety.

What is a Trademark?

A trademark is commonly described as a distinctive symbol, pictorial representation or words that merchants put on their goods to identify and distinguish their goods. Trademark status can come about from a variety of specific features, including unique packaging, color combinations, and stylistic devices. A trademark owner has the exclusive right to use that trademark on the owner's product or products. A service mark is analogous to a trademark, but is meant to distinguish services rather than tangible products. Trademark law is primarily based on a policy of protecting consumers of products from confusion about the meaning of trademarks, and only secondarily based on a policy of protecting the owner of a mark.

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How Does Trademark Law Intersect with Open Source Software?

The cornerstone of an open source software project is that it allows users to modify and to distribute the software at no cost. That project's trademark, however, is likely not distributable or freely useable. Red Hat's red hat, for example, cannot be used in conjunction with any modification of its product: "The trademarks, logos and service marks ('Marks') displayed on this website are the property of Red Hat or other third parties. You are not permitted to use these Marks without the prior written consent of Red Hat or such third party which may own the Mark….Red Hat does not permit or consent to any use of its trademarks in any manner that is likely to cause confusion by implying association with or sponsorship by Red Hat." Mozilla, on its website, explains its goals for its trademarks: "We need to keep enough control over our trademarks to make sure they are a sign of quality and safety. It needs to be impossible, for example, for someone to release a product called 'Firefox' that has added spyware. We want to avoid someone building a highly-optimized but unstable build and passing it off as official. We need to allow community members, Linux distributions and companies we work with to label their products as Firefox, without causing them either practical or legal difficulties." As Ms. Meeker says regarding open source projects, "[a]ll of them impose some kind of criteria for products bearing (their) mark. These criteria range from quality, to interoperability, to the amount of open source code the product contains."

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Some Specific Examples

Trademark issues such as these abound in various open source projects. While the goal of many open source projects is to give users freedom to collaborate, to create a viable, high-quality software system, and to prevent the software's code from becoming proprietary, the projects are only viable and trustworthy in the estimation of their users if their trademarks are as strong as those in the proprietary world. Some licenses are criticized as going overboard, however. One example is the Academic Free License, whose trademark guidelines are incompatible with the GPL because their rules regarding trademark use appear to go beyond what statutory trademark law requires in many countries, thereby prohibiting what would be considered legally fair use of a trademark.

In the realm of more standard trademark licenses is osCommerce, an open source entity that uses the GNU General Public License. On its website, it states: "Although osCommerce is released under the GNU General Public License, we do enforce our trademark rights concerning the osCommerce name and logo. This means that, while you have considerable freedom to modify and redistribute osCommerce, there are restrictions placed on the usage of the osCommerce name and logo…. The GPL does not provide any license or right to use an osCommerce mark in any form or media. Thus, although a GPL licensee may redistribute the underlying software, a GPL licensee may not use an osCommerce mark in doing so that does not conform to the osCommerce trademark policy without written permission of osCommerce."

The same approach is true of Linux, as articulated by Mårten Mickos, CEO of MySQL AB. "Trademark protection also holds true for Linux. Linus Torvalds decided not to attempt to control the business in and around Linux, but he does own the trademark. He owns the trademark and he and his peers govern the development of Linux. To customers this means that 'Linux' is something they can trust. They know that the name cannot suddenly be used in the wrong context, and they know that the name stands for a reliable, convenient operating system." MySQL also has a comprehensive trademark information page. It goes so far as to specify how, exactly, to use the trademark in the event that permission to use it is granted:

Always use MySQL AB Marks as proper adjectives. A trademark is an adjective and must not be used as a verb or noun or in the possessive or plural forms. Every MySQL AB Mark has a 'product descriptor' that follows the trademark.

Examples of Proper Use: MySQL software, MySQL database server, MySQL database management system, MySQL code, MySQL source code, MySQL binaries, MySQL training classes, MySQL support, MySQL services, MySQL partner.

Examples of Improper Use: MySQL's source code, MYSQLs, I MYSQL-ed my system.

Do not alter MySQL AB Marks. When using a MySQL AB Mark, never vary the spelling, add hyphens, make one word two, or use a possessive or plural form of the MySQL AB Mark. Do not abbreviate a MySQL AB Mark to create an acronym.

When using a MySQL AB Logo, you must never modify the design, add or delete any words, or change any colors or proportions. The logo may be scaled proportionally. The logo may in its entirety be displayed in black on white background OR in white on dark - black or one-coloured - background. The typesize of the trademark notice symbol may be adjusted.

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Conclusion

While open source software providers are usually not primarily motivated by profit incentives, they do tend to want to retain control over the reputation of their product and therefore tend to preserve strict rules regarding the use and distribution of their trademarks.

References

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