Technically Legal

Keir Thomas, of PC World, recently posted Trademarks: The Hidden Menace, arguing that trademark rights conflict with open source software.

Shortly after Mr. Thomas released the Ubuntu Pocket Guide and Reference, he designed a website to promote his book. He wanted his website to appear familiar to users of Ubuntu, and so used both the Ubuntu name and logo extensively.

But, during a friendly conversation, a person from Ubuntu gently told Keir that he had gone too far, using Ubuntu’s logo more often than he should have — or, legally, could have.

Mr. Thomas expressed dismay and penned his article. Is his analysis correct?

Purpose of Trademark Law. Before we go on, let’s define why we have trademark law. Trademark law serves two goals:

1. Protect companies’ goodwill in their names and marks.
2. Protect consumers from confusion in the marketplace.

For example, Coca-Cola has spent a lot of money developing its trademark, generating a lot of goodwill towards the mark. Trademark law protects Coca-Cola, so that some company out of nowhere can’t use the Coca-Cola name or a confusingly similar name (e.g., Koka-Kola). Trademark law also protects consumers, like you and me, from accidentally buying a Coca-Cola knockoff, instead of the real deal.

Trademark law does not protect against fair uses of the mark. But trademark fair use — also called, nominative fair use — differs from copyright fair use. If I were to make and sell peanut butter cookies with Hershey Kisses in the middle, Hershey’s couldn’t stop me from saying that they were made with Hershey Kisses. I’m just using their trademark to accurately describe my product.

Keir Thomas’ use of Ubuntu in the title of his book was fair use. It is the Ubuntu Pocket Guide and Reference. There’s really no other way to describe what the book is a Pocket Guide and Reference for. He got into trouble when he started using the mark outside of this fair use.

The Straw Man. The first example he gives is a lawyer who, in 1994, law that Linux was unregistered. The Lawyer registered the mark, and sued. The mark was promptly, and properly, turned over to Linus Torvalds, who created Linux. Linus started a group to manage use of the mark, which now grants free licenses. This is just a bad example of trademark abuse. Here, a bad actor tried to exploit trademark law — not use it properly — and he failed.

A Contract Argument. The article also points out that Red Hat is engaged in some behavior that may go outside the proper scope of the trademark. Their “EULA does not permit User to distribute the Programs or their components using Red Hat’s trademarks, regardless of whether the copy has been modified.” This is an restriction by license or contract, and not a trademark law restriction. Trademark law would probably allow redistribution with the existing trademarks under fair use.

A Forking Argument. When the Debian folks forked the open source Firefox browser, Mozilla Foundation asked that they stop using the Firefox name on the product. Keir Thomas suggested this was an inappropriate use of trademark in open source. We disagree. It sounds like a great use of trademark. If the Mozilla foundation don’t have control over the forked source, they can’t control use of the mark. They also don’t have control of the quality or the source of the product. They cannot be blamed for not wanting their trade name attached to a product over which they have no control. Trying to assert trademark rights when you don’t have control over the goods usually results in loss of rights.

A Policy Argument. If we want open source software to become a robust and integral part of our future, strong trademark protection and policing is necessary. People don’t trust software, they trust sources of software. Trademarks allow makers of software to ensure that the goods they deliver are solid products, and they prevent people from modifying those goods and redistributing possibly unsecured or unstable software under the trademark.

It’s important to mention that trademark doesn’t prevent anyone from modifying open source software and recompiling it on your own computer. I just prevents you from doing that and then redistributing it under the same name. This is why changes get sent back to the project managers who decide if they are committed to the software or not. It’s their job to protect the trademark.

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