Trademark Law and Free Software

-- By NickFlath - 09 Jan 2010

Patent law and copyright law grant exclusivity to the holder. These laws theoretically benefit consumers indirectly by promoting innovation. But trademark law directly protects consumers by allowing them to associate particular words and images with particular manufacturers and service providers. Professor Moglen convinced me that anarchic production of functional goods leads to better goods when zero marginal cost distribution channels exist. A corollary of this statement is that proprietary software is obsolete in the age of the internet. But does trademark law still serve its intended purpose?

• This is not a useful question unless the "intended purpose" is agreed, and it does not change as the context changes. Neither assumption is evident.

This question has not been un-debated in the free and open source software communities. The Software Freedom Law Center hosts a primer for companies seeking to release software under a free or open-source license, which counsels maintenance of trademarks ("If you believe that someone is using your mark in a manner protected by your exclusive rights and has not obtained your authorization to do so, you should take action even if you do not object to their use"). But this primer also notes the contradiction inherent in releasing software under a free or open-source license while using trademark law to, for instance, shut down a website critical to the software ("FOSS projects are not built by people who value censorship, and there is a strong belief within most FOSS communities that projects should thrive on their merits, and not use legal weapons to silence critics and competitors").

• So it would be less misleading if the first quotation were put in context. It's not "counsel" in the sense of "recommendation," but rather in the sense of statement of law, because in context the point is that unless you do so you are at risk of being unable to bring dilution claims with respect to your mark for failure to police it as the law requires holders to do.

Keir Thomas argues that trademark law is "almost totally incompatible with the essential freedom offered by open source" because it creates a bottleneck that forces would-be competitors to negotiate over permissions in "back-room deals." He sees no difference between trademark, copyright and patent.

• Someone who sees no difference among these quite different types of law isn't trying or isn't well-informed.

Joe Brockmeier responds to Thomas by pointing out that the "four freedoms" of the Free Software Foundation say nothing about the ability for competitors to use a company's brand and reputation against it. Brockmeier argues that the problem with trademarking is not that there is too much of it, but rather that there is too little of it, and that there should be an initiative, similar to the GPL for copyright, to standardize an open source trademark policy so that start-up projects would not have to reinvent the wheel.

• A reasonable point. SFLC is working on such a policy, which I believe we will publish during 2010.

Thomas makes several good points. Red Hat's trademark policy is restrictive enough that it prompted the creation of CentOS, which is merely Red Hat without the logo.

• Quite inaccurate. CentOS? repackages the Red Hat commercial distribution, Red Hat Enterprise Linux (RHEL) byte for byte for those users who do not want to purchase Red Hat service contracts. Red Hat's trademark policy is irrelevant, except that it quite sensibly provides that you can't distribute "Red Hat" independent of the Red Hat service organization, but can redistribute all the software, at any rate all the free software, without limitation.

Red Hat has built a profitable business out of selling software as a service: and it should be able to profit from this brand. But to Thomas it seems fundamentally unfair and misleading that Red Hat can use its trademark policy to restrain the use of the RHEL code. Although it is all available on Redhat's ftp site, there is no "download" link from the Red Hat homepage, only a "purchase" link.

• It doesn't restrain use of the code. You can get the code from Oracle, with commercial service as Unbreakable Linux, from CentOS? without service, and from anyone who wants to give it to you. Whoever "Thomas" is, he either doesn't understand or is deliberately trying to make Red Hat look restrictive.

Wikipedia's "Linux" page and this article by Richard Hillesley tell the story of William R. Della Croce, Jr., a Rhode Island attorney who attempted to extort royalty payments from Linux distributors by anticipating them in registering the "Linux" trademark in America in 1994. Hillesley goes on to describe the creation of the Linux Mark Institute, which now protects the "Linux" trademark, as the solution to the problem. But Thomas discusses the case as an example of the un-freedom caused by trademark law: "However, make no mistake: If you want to use the word 'Linux' in any commercial way related to computers, you need to get a license. The word 'Linux' is nowhere near as free as the software it represents."

These are two different points: the first is that Red Hat is using trademark policy to make distribution of its GPL'd work product more difficult.

• No, it isn't. That's just wrong.

The second is that trademark policies as adopted by the Linux Mark Institute and by other free and open source software projects require affirmative negotiations before licensing the project's name for commercial use.

• Are you sure? How do you know?

Drupal, an open-source content management system, provoked community opposition by posting a trademark policy that prohibited the use of the "Drupal" name in URLs that were derogatory towards Drupal, and that hinted license fees might be required for commercial use of the trademark. This opposition is documented by Hillesley. One website that came under the policy is "Freedrupal5hosting.com", which until recently hosted a website called "drupalsucks.com" as a deliberate test of the trademark policy. The possible payment of license fees is in contrast to, for instance, the Linux Mark Institute's posted sublicense, which is free, perpetual, and worldwide, and which imposes substantively only the condition that the sublicensee conspicuously pronounce, pursuant to clause 3.1, that it uses the Linux mark pursuant to a sublicense from LMI, which is licensed to administer the mark by Linus Torvalds.

Current United States trademark law leaves trademark enforcement entirely to the discretion of the trademark holder. There is great power there. Brockmeier argues that debates about trademark policy are orthogonal to the "four freedoms" of the free software movement and that Thomas is "conjuring up an imaginary 'fifth freedom,' the right to benefit from branding associated with code." But this is a strawman. I don't think Thomas would dispute the ability of Red Hat to "mark its territory" in providing software as a service. Instead, he objects to Red Hat's ability to use trademark law to put obstacles in the way community exercise of GPL distribution rights.

Brockmeier's recommendation for a standardized trademark policy is a good one. Proliferation of name-recognizable standardized trademark policies would allow the community to exert leverage on project leaders. Will the project leaders maintain absolute discretion to change their enforcement policy at any time? Will they require license fees, or will license applications be a mere formality to prevent genericide/abandonment? How aggressively will the project leaders use trademark law to squelch community debate on the merits of the software? New projects should have to disclose their intentions regarding branding, so that developers and business owners could make informed investment decisions.

• But you haven't asked why trademarks matter in a world in which names can be changed easily and there's no investment in brands. All our clients who have avoided trademark fights over the years by changing their projects' names proved this. The issue isn't in the production of anything, it's in the commercial distribution of what could just as well be distributed non-commercially. So the role of trademark isn't actually in determining how the technology works or changes, but only in the relation between service business models and the traditional brand economy.