LFCS 2012: Trademarks for free software projects

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When last we covered a trademark talk by Karen Sandler, she was a lawyer on staff at the Software Freedom Law Center (SFLC), and part of her job was to deal with trademark issues for free software projects. She is still a lawyer, of course, but has switched her focus now that she is the executive director of the GNOME Foundation, and that gives her some new perspectives on trademarks. She came to the Collaboration Summit to talk about "Real World Trademark Management for Free Software Projects" on April 4.

By way of an introduction, Sandler gave the usual disclaimers (I am not your lawyer and this is not legal advice), while noting that lawyers are also known for saying "it depends". While it can be somewhat annoying to get that answer from a lawyer, she said, it really is true. Lawyers can tell you what the "general situation is in the law", but each case is different.

Beyond her work for GNOME, she is also a pro bono counsel for SFLC and the Software Freedom Conservancy (SFC). She is an advisor for the Ada Initiative, as well as a mentor for the GNOME outreach program for women. She noted that the latter had recently dropped the GNOME from its name when the SFC joined the project. She is also a self-described cyborg and interested in software transparency for medical devices.

What are trademarks?

There are a lot of misunderstandings in the community about trademarks, but it is a fairly straightforward idea. A trademark is bound up in branding and identity so that consumers can recognize the brand at a glance. A trademark can be words, pictures, or both, but it needs to be incorporated into the product itself (packaging, etc.) in order to make the association in a consumer's mind.

Unlike copyright, which is granted as soon as the work is "fixed in a tangible medium", a trademark actually needs to be used. If you make a logo in your room, don't associate it with any product, and don't show it to anyone, it's not really a trademark, while doing the same things will get you a copyright on that logo. Even if you don't register a trademark, you still get some protection based on it being used on a product of some kind. Patents, of course, are completely separate as they cover ideas and inventions.

There is an inherent tension between protecting trademarks and the ideals of free software. Free software is all about remixing and building on top of the work of others, and our licenses are very clear on that point. But trademarks are different, and projects need to think about the ways they want to allow their trademark to be used.

Trademarks and identity

Everything about trademarks is connected to identity. If someone repackaged some parts of GNOME, with other, possibly proprietary or malicious code, would there be confusion if it used the GNOME trademarks? The tricky part is to allow all of the things that the project wants to allow without letting people abuse the trademark. It is "really tough" to draw that line, so her suggestion is that a project make policies that explicitly say what is a permissible use of the trademark.

It is important to note that there are some trademark concepts that need to be considered. One is the idea of "naked licensing", which comes into play if a mark holder allows it to be used too widely. The example she gave was a wine company that allowed other winemakers to use its name, without having any real connection to its brand—in fact the trademark holder never even sampled the wine in question. If that happens, one can lose control of the trademark.

A related idea is that of "generic-izing" a name. If a brand becomes too popular and the brand name is used to refer to a number of different products in the same category, control over the trademark can be lost. The classic examples of this (at least in the US) are Kleenex for facial tissue and Xerox for photocopiers. In both cases, consumers and others started using the trademark name generically ("xerox that document" rather than copy or photocopy it), which meant that they were no longer associating it with the brand. You can be "too successful and consequently lose your mark", Sandler said.

Policies

Whatever policies a project devises, they will get tested "all the time". There will be questions that live on the boundaries of the policy. She handled some of that at SFLC and now does a lot of work on that for GNOME. It is difficult to anticipate all of the ways that people might want to use a trademark. She said that she is an optimist by nature, but has been trained to be a pessimist when it comes to trademarks and other legal matters.

It is best to have a policy with as many parameters as possible. Start by stating exactly what can be done with the mark and different projects will have their own ideas about usage of trademarks. For example, it might state that one can use "based on GNOME" when it is substantially unmodified from the upstream code. If it is modified, the policy may want to say that the mark should not be used at all.

Another common problem is whether it is permissible to use the mark in another name, like fooPlus or DifferentFoo. That's a particularly problematic question she said, because you generally want to err on the side of restricting the use of the mark, but you also want to ensure that the software is freely usable. Another area that any policy should address is merchandise (T-shirts, hats, stickers, etc.); can the logo or name be used on those? It is good to put a kind of "catch-all" phrase in the policy as well ("so long as there is no likelihood of confusion" for example), which can catch a lot of edge cases.

GNOME trademarks

For GNOME, both the name and footprint logo are trademarked. Each is a separate registration and only applies in a certain field of use, which is software for GNOME. The project cannot prevent all uses of the term "gnome", like for garden gnomes or the band mr. Gnome, only for things in the software realm. Again, the key is not confusing consumers.

Sandler gets all kinds of requests to use the GNOME trademarks, for stickers, papers, web sites, domain names, and so on. She handles them on a case-by-case basis and tries to work with the requester to find a mutually agreeable solution. In the end, most of the people are excited about GNOME, which is why they are asking, so it's important not to dampen their enthusiasm while still protecting GNOME's mark.

One web site wanted to put the GNOME logo next to its own on the site, but the GNOME logo was huge and all the way at the top, so it dwarfed the site's logo. She suggested they make their own logo bigger, to put it above GNOME's, and to add a disclaimer that it wasn't an official site. Domain names are messy, she said, and she has not really seen a situation where it made sense for a non-official site to have GNOME as part of its domain name. Usually, once she outlines the problem, the domain owner turns it over as a gift to the foundation.

With sites and domains, the problem is whether someone new to the community will be confused when they land on the site. Once that's explained, people are generally understanding, she said. But, once in while, she does have to put "nastygrams" in the mail.

One of her favorite stories about the GNOME logo is when she heard from a contributor about a company that had modified the logo and was using it on their mobile pedicure-by-fish (having small fish eat dead skin from the feet) van. The main part of the footprint was replaced by a fish (seen at right with the GNOME logo from Sandler's slides [PDF]) The logo itself has a free copyright license, so it is not a copyright violation to use it, and it is clearly outside of the software world. It is exactly the kind of use that should be (and was) allowed. No one will be confused that GNOME has suddenly veered off into the fish-pedicure world.

Companies often say that they are "forced" to defend their trademark. She heard it frequently at the SFLC, but now that she is with the GNOME Foundation, she can see the problem. The law itself is fairly simple, with simple concepts, but there are some requirements to uphold. Most problems are handled fairly easily; she asks someone to stop using the mark in an inappropriate way and they do.

Another interesting situation arose from a combination of the Debian and GNOME logos (seen at right). It is a "really cool" logo, she said, but is a violation of the GNOME trademark policy. The problem is that it's difficult for those who are unfamiliar with the communities to parse out what it means. If you do know the communities, it's completely clear what it means, but that's not the problem. There is also a question as to whether it reduces the brand for both Debian and GNOME by combining things that way. So far, that situation has not been resolved, she said.

Key factors

There are some key factors that are usually considered when deciding whether a trademark is being violated. The Debian GNOME logo is complicated under those factors, while the fish pedicure logo is bit more obvious. The first factor is the similarity of the marks, which is clear in the fish pedicure example, but less so for Debian GNOME. The markets for Debian and GNOME are quite similar at some level, while fish pedicure clearly isn't, which is another factor to consider. Like the "similarity" test, there is another for "overall impression", which for both of these cases it is fairly clear that the overall impression is similar to the GNOME logo.

Another factor that can be considered is whether there has been actual confusion for consumers or in the market because of the possibly infringing use. One can ask if there is evidence of real confusion. For trademarks, there is also a notion akin to the "fair use" of a copyright: nominative use, that is using the mark to identify a product. For example, it is perfectly reasonable to take a photo of an Apple laptop, which shows the Apple logo, and post it on web page to sell the laptop. You can also use the name "Apple" in the text of your ad. Those are nominative uses.

Trademarks are not "just some legal detail" to avoid or ignore, even though that's an attitude she finds in the community—and sometimes in herself. Dealing with trademarks is an opportunity to recognize issues with the brand of your project, and to clearly delineate the values that your project holds. The Debian GNOME logo question is a perfect example of that; the projects generally hold similar values, but neither wants to lose its brand identity. In general, free software projects will want it to be permissible and easy to use our software and brands, but we have to be careful that some bad actor doesn't misrepresent our projects.

Community non-profits should band together to work on these kinds of problems, she said. There should be more cross-communication between projects. One area for collaboration might be an organization to hold trademarks for projects, especially those that are newly formed.

In answer to a question from the audience earlier in the talk, Sandler said that she thinks it's important to register trademarks early on in a project's life. But, it is also important that those marks be held by a neutral organization of some kind, as we have seen project disputes because one party holds the trademark (often the founder) and wants to use it in ways that other project members find objectionable. An organization that held the mark and helped form and enforce policies on those marks could be beneficial.