Trademarks and OSS - FOSDEM 02 #

So the first talk I went to ended up being in the legal dev room on trademarks in open source projects. The speaker had a background mainly in US American trademark law and quite some background when it comes to open source licenses.

To start Pamela first showed a graphic detailing the various types of trademarks: In the pool of generic names there is a large group of trademarks that are in use but not registered. The amount of registered trademarks actually is rather small. The main goal of trademarks is to avoid confusing costumers. This is best seen when thinking about scammers trying to trick users into downloading users pre-build and packaged software from third party servers demanding a credit card number that is later charged based on a subscription service the user signed by clicking away the fine print on the download page. Canonical example seems to be e.g. the Firefox/Mozilla project that was effected by this kind of scam. But also other end-user software (think Libre/Open Office, Gimp) could well be targets. This kind of deceiving web pages usually can be taken down way faster with a cease and desist letter due to trademark infringement rather than due to the fraud they do.

So when selecting trademarks – what should a project look out for? One is the name should not be too generic as that would lead to a name that is not enforceable. It should not be too theme-y as the names that are themed usually are already taken. The time to research should be contrasted with the pain it will cost to rename the project in case of any difficulties.

There are few actual court decisions that relate to trademarks and OSS: In Germany it was decided that forking the ENIGMA project and putting it on set-op boxes but keeping the name was ok for as long as the core function would be kept and third party plugins would still work.

In the US there was a decision that keeping the name of re-furbished SparkPlugs is ok for as long as it is clearly marked what to expect when buying them (in this case re-furbished instead of newly made).

Another thing to keep in mind are trademarks are naked trademarks – those that were not enforced and have become too ubiquitous. In the US that would be the naked license trademarks, in Greece the recycling mark “Der Grüne Punkt” has become too ubiquitous to be treated as a trademark any more.

Trademark law already fails in multinational corporation setups with world wide subsidies. It gets even worse with world wide distributed open source projects. The question of who owns the mark, who is allowed to enforce it, who exercises control gets worse the more development is distributed. When new people take over trademarks there should be some clear paper transferral document to avoid confusion.

Trademarks only deal with avoiding usage confusion: Using the mark when talking about it is completely fine. Phrases like “I’m $mark compatible”, “I’m running on top of $mark” care completely ok. However make sure to use as little as possible – there is no right to also just use the logos, icons or design forms of the project you are talking about – unless you are talking about said logo of course.

So to conclude: respect referential use, you can’t exercise full control but should avoid exercising too little control.

There is a missing consistent understanding of and behaviour towards trademarks in the open source community. Now is the time to shape the law according to what open source developers think they need.