Review of Trademarks and Your FOSS Project

Karen’s talk covers a lot of the same ground as the chapter in FOSS Legal Primer that I reviewed previously, but does so in a way that motivates, persuades, and explains with consistent use of examples, which I found much more persuasive and engaging.

Who: Karen Sandler (Executive Director of the Software Freedom Conservancy, formerly Executive Director of the GNOME Foundation, an attorney, and former general counsel at the Software Freedom Law Center).

What: A 45 minute talk given at the All Things Open Conference 2014.

Where: Available on YouTube.

When: Given 10/22/2014 and Published on 11/14/2014.

The Good

• She gives the following key factors to consider in trademark cases:

  • How similar are the marks?

  • Are they in the same market?

  • What is a user’s impression?

  • Is there any actual confusion?

  • What is the community impact?

  • Is it really just “nominative use” (parallel to “fair use” in copyright cases)

• She made a clear distinction between copyright and trademarks:

  • Trademark is a word or picture that preserve brand recognition and earned through use.

  • Whereas copyright you earn through creation and is intrinsic once you establish it a tangible medium.

• It was really cool how a logo can both be freely licensed for modifications while still being trademarked and she gave a really good example of that with the GNOME logo where another company that did fish pedicures took the GNOME foot and turned it into a fish. Since they are in a completely different domain and there is no opportunity for actual confusion (as well as made changes) they are actually completely fine with this. Which is awesome example of open source design.

• It was good to hear her say that anti-disparagment clauses probably won’t stand up in court at lest in US jurisdictions, because of free speech laws.

• She gave several strong examples of cases where trademarks have actually protected consumers, whether that be driving people away from free software to proprietary versions by using the same mark or making malicious versions of free software and marketing it as if it was the same product.

• Examples! Examples everywhere. This what I’m always looking for in legal matters like this.

The Bad

• Unrelated to trademark talk she almost went on a free software rant after a guy made the empirically true statement that copyleft is more difficult to integrate into a business than a permissive license. This should be obvious just by the name (it’s permissive after all), but is also true by definition just by the sublicensing clause in most permissive licenses. There are certainly a number hoops to jump through to maintain a copyleft license by design and the pervasiveness of the Linux kernel does nothing to change this fact.

Also a number of large external companies to refuse to use copyleft code, whether this is because of misunderstanding or not, this is the case (Apple for instance only uses software with MIT or BSD like licenses).

Questions

• Was anyone able to find the starter kit she referred to in the talk? I did a cursory search, but came up without much luck.

• Both trademark reading we did were completely US-centric, how do trademarks work globally in comparison? I think this is especially important for free software, because the internet is a global community without country boundaries. If you decide trademarks are mission critical for your software it seems like you should be concerned with more than just the country you happen to be in at the time.

Final Thoughts

I thought this talk meshed really well with the previous reading, it actually answered several of the questions I came away with from the reading and gave me the examples that I needed to really be persuaded of the relevancy of trademarks and FOSS projects.

Really liked it, highly recommend: 9/10.