The Necessity of Preparing Open-source Trademark Strategies

In addition to the open-source code, the names and logos of open-source projects, communities, and software play an important role in brand identification. From a commercial perspective, protecting these names and logos through trademark registrations helps effectively differentiate them from competitors in the market, enhancing the visibility and brand value of the open-source projects, communities, and software. From a defensive standpoint, trademark registrations also help prevent misuse of such names and logos and provide efficient legal remedies in case of infringement, thus protect the economic interests and reputation of stakeholders.

Strengthening Brand Recognition and Driving Development

At its core, a trademark is a sign that distinguishes the goods or services of one natural person, legal entity, or organization from those of others. For open-source projects, community managers, and contributors, establishing a stable association between their work and their brand is critical to standing out in a competitive landscape. Registering the names and logos of open-source projects, communities, and software as trademarks is a proven, efficient, and convenient way to leverage the exclusivity of trademarks in specific jurisdictions, ensure clear differentiation, and increase brand value.

Moreover, while open-source projects, community managers and contributors do not directly profit from selling OSS or related value-added services, they can accumulate significant social capital by fostering user loyalty and community engagement, thus catalyzing further development. It’s important to note that this social capital is embodied in the names and logos of open-source projects, communities, and software. Therefore, in the context of an increasingly prosperous and competitive open-source ecosystem, trademark registration and brand building are essential steps for stakeholders to ensure the precise return of social capital and prevent the dilution of open-source project names into generic terms.

Preventing Infringement and Misuse

With the rapid growth in the number of global open-source projects, communities, and software, and their increasing popularity, it is foreseeable that more infringement cases related to their names and logos will emerge. These infringements can be categorized into three main types: (1) unauthorized use of the names and logos of open-source projects, communities, and software for promotional purposes; (2) unauthorized removal of the names and logos from the OSS and replacement with other names and logos for promotion; and (3) unauthorized use of the Open Source Initiative (OSI) logo on licenses not approved by OSI.

In such cases, registering the names and logos as trademarks can provide legal protection for open-source projects, community managers and contributors, preventing infringement and confusion, maintaining their good reputation, and ensuring the independence and innovation of developers or communities. Conversely, if stakeholders fail to register trademarks in advance, they may find themselves in a disadvantaged position due to trademark squatting.

The "Linux" trademark dispute from nearly thirty years ago serves as a cautionary tale. Linux is one of the most well-known open-source operating systems globally. In October 1991, the Linux kernel was first released by Linus Torvalds, and then quickly became a popular open-source operating system. However, at that time, Linus Torvalds didn’t plan on gaining trademark protection. In 1994, an American named William R. Della Croce Jr. registered the "Linux" trademark and then requested licensing fees from companies and developers producing Linux-related software products. To resolve the threat posed by Della Croce's actions to the free distribution of Linux, Linus Torvalds, along with several companies using Linux, filed a lawsuit challenging Della Croce's trademark ownership. In the case, the plaintiffs argued that "Linux," as the name of an OSS, was generic and belonged to the public domain, and should not be monopolized by a particular individual. In 1997, the U.S. court ultimately ruled that the "Linux" trademark belonged to Linus Torvalds. Linus Torvalds subsequently entrusted the management of the "Linux" trademark to the Linux Mark Institute to ensure fair use and maintenance of the name. This case, a landmark legal event in open-source history, further promoted the global adoption and application of Linux and successfully raised awareness of the importance of open-source trademark protection among open-source communities.

Addressing Gaps in Open-source License Regulations

Currently, most mainstream open-source licenses around the globe provide only minimal provisions regarding trademarks. For example, the 3-Clause BSD License states that “Neither the name of the copyright holder nor the names of its contributors may be used to endorse or promote products derived from this software without specific prior written permission.” The Apache License, Version 2.0 states that “This License does not grant permission to use the trade names, trademarks, service marks, or product names of the Licensor, except as required for reasonable and customary use in describing the origin of the Work and reproducing the content of the NOTICE file.” Additionally, licenses such as GNU General Public License Version 2 and 3, GNU Lesser General Public License Version 3 and 2.1, and 1-Clause BSD License do not explicitly address trademark licensing.

In summary, mainstream open-source licenses generally allow descriptive and indicative uses of open-source trademarks while prohibiting "free-riding" behaviors that exploit goodwill. However, these provisions are not clear or detailed, and there is no consensus on the norms for using open-source trademarks in different scenarios. Given the complexity of trademark registration and practice, it is even more necessary for stakeholders to register trademarks in advance to properly enforce and protect their legal rights.

Key Considerations in Developing Open-source Trademark Strategies

The complexity of the open-source ecosystem further complicates trademark registration and protection. Key factors to consider include, but are not limited to, the following:

Comprehensiveness

According to the Nice Classification, OSS names can be registered as trademarks under Class 9 (computer software) or Class 42 (design and development of computer hardware and software), and enjoy exclusive trademark rights. Without special declarations, users are not allowed to directly use OSS contributors’ trademarks, trade names, or service marks for product promotion.

In addition to the key names and logos of OSS, communities, and projects, stakeholders should also register trademarks for various specific identifiers or names used by OSS on corresponding product or service categories. Cross-category registration should also be considered in advance to build a comprehensive brand asset portfolio.

Territoriality

The development and use of OSS are global; once released, developers worldwide can immediately use and continue developing the software. In contrast, trademark protection is territorial, meaning that trademark rights are limited to the specific jurisdiction where the trademarks are registered. Additionally, different countries and regions have significant and diverse differences in trademark regulations and enforcement standards, making the protection of open-source trademarks more complex.

Compliance

Open-source trademark strategies must align with both open-source licenses and trademark laws. Stakeholders must conduct a professional and thorough analysis on trademark-related provisions of open-source licenses and open-source organizations, as well as trademark laws and prior registrations in target jurisdictions to ensure compliance. 

Recommendations for the Development of Open-source Trademark Strategies and Their Enforcement

First, to ensure global protection of open-source trademarks, stakeholders should register their trademarks in multiple key markets worldwide as early as possible, including regions with active developers, major user markets, and areas with commercial potential. The Madrid System for the International Registration of Marks can be utilized to simplify the process of applying for and managing open-source trademarks in multiple countries and regions. However, it is essential to conduct trademark searches in each target jurisdiction in advance to avoid conflicts with existing trademarks and prevent infringement disputes. Additionally, stakeholders should recognize that international registration does not equate to international trademark protection. Specific enforcement actions must be tailored to the legal requirements of each designated country or region.

Second, to uphold the spirit of open-source while safeguarding their legal rights, stakeholders should establish clear, transparent, and publicly accessible trademark usage policies. These policies should define the rules for using trademarks in both commercial and non-commercial contexts, such as whether third parties are allowed to use the trademarks for promotional purposes. Furthermore, stakeholders should develop tiered licensing agreements for different scenarios of open-source trademark use, such as partnerships and derivative products. For commercial users of OSS in particular, separate trademark licensing agreements should be signed to retain control over the legality of trademarks and brand image.

The trademark dispute between the Mozilla Foundation and the Debian community serves as an illustrative example. In this case, the Mozilla Foundation developed the well-known open-source browser Mozilla Firefox and registered the "Firefox" trademark. The Foundation explicitly stated that unauthorized modified versions of Firefox could not use the name or logo. The Debian community, famous for the Debian-based Linux distributions, provided a modified version of Firefox while retaining the "Firefox" name and logo. The Mozilla Foundation then issued a warning, demanding that Debian cease using the "Firefox" name and logo unless the modified version received Mozilla's approval. The Debian community, adhering to the principles of free software, argued that it had the right to modify the software while retaining the "Firefox" name. Ultimately, the Mozilla Foundation and the Debian community reached an informal agreement. The Debian community renamed its modified version of Firefox to "Iceweasel" and removed all Mozilla trademark-related content. In 2016, the Mozilla Foundation revised its trademark policies, on the basis of which Debian switched to the official Firefox version and reverted to the "Firefox" name. This outcome reflects a balance between the openness of OSS and the protection of open-source trademarks.

Finally, for unauthorized uses of open-source trademarks, rights holders should adopt a multi-faceted enforcement strategy, including issuing cease-and-desist notices, filing lawsuits to stop the use of open-source trademarks, and seeking damages. During the enforcement process, rights holders should clearly inform unauthorized users that trademark rights are private rights, and except for limited fair use cases stipulated by law, the use of trademarks requires explicit authorization. Even if open-source licenses do not explicitly address trademark issues, it does not mean that OSS users or others can reasonably obtain open-source trademark rights. Additionally, in the daily maintenance of open-source projects and communities, operators should promote awareness of intellectual property rights, fostering a culture of compliant open-source trademark use.

The "Apache Spark" trademark infringement case provides another example. In this case, the plaintiff, the Apache Software Foundation (ASF), manages and maintains several open-source projects, including the renowned Apache HTTP Server, Hadoop, and Spark. In order to protect its brand and project reputation, ASF registered several trademarks such as "Apache" and "Apache Spark." ASF later noticed that the defendant company frequently used the name "Apache Spark" in the marketing and promotion of its products without authorization or indicating that its project was based on ASF's open-source project. ASF then sent a cease-and-desist notice to the company, stating that, products developed based on the Apache Spark project must comply with ASF’s trademark policy, including clearly identifying the source and adhering to licensing terms. When the company refused to comply with the demands in the notice, ASF took the defendant to court, providing evidence that the infringing actions not only violated ASF's trademark policy, but also were likely to cause market confusion and other consequences. In the end, the parties reached a settlement, with the defendant agreeing to modify its product name, stop using the "Apache Spark" trademark, and clearly indicate in future marketing activities that its product was a derivative of Apache Spark rather than an official version provided by ASF.

Summary

Although trademark rights are private rights, they are not in conflict with the free and open spirit of open-source. They serve different purposes and work together to protect the open-source ecosystem and safeguard the legal rights of stakeholders. Open-source trademark protection is not only a legal issue but also a crucial part of community management and brand strategy. For open-source projects, community managers and OSS contributors, clarified licensing policies, reasonable trademark strategies, and effective enforcement actions are essential to maximize open-source brand value and promote the continued prosperity of the open-source ecosystem.

References:

1. 2024 China Open-source Development Status by China OSS Promotion Union

2. Everything about Open-source by Jiansheng Li : “History of Open-source" Part 1/5/4: A Brief History of Trademark and Brand Protection in the Open-source Area

3. Trademark Issues in Open-source Software by Bo Le

4. Typical Intellectual Property Risks in OSS and Recommendations by the National Administration of State Secrets Protection

5. Why Don’t Open-source Licenses Grant Trademark Rights? by Tison

6. A Brief Discussion on Intellectual Property Risks in Open-source Software by Chen Xiangyue