Trademarks

Trademark law as applied to open source projects does not differ significantly from trademark law as applied elsewhere. This sometimes surprises people: they think that if the code can be copied freely, then that can't possibly be consistent with some entity controlling a trademark on the project's name or logo. It is consistent, however, and below I'll explain why, furnishing some examples.

First, understand what trademarks are about: they are about truth in labeling and, to some degree, endorsement. A trademarked name or symbol is a way for an entity — the entity who owns or controls that trademark — to signal, in an easily recognizeable way, that they approve of a particular product. Often they are signaling their approval because they are the source of the product, and purchases of that product provide a revenue stream for them. But that is not the only circumstance under which someone might want to enforce accurate attribution. For example, certification marks are trademarked names or symbols that an entity applies to someone else's product, in order to signal that the product meets the certifying entity's standards.

Importantly, trademarks do not restrict copying, modification, or redistribution. I cannot emphasize this enough: trademark is unrelated to copyright, and does not govern the same actions that copyright governs. Trademark is about what you may publicly call things, not about what you may do with those things nor with whom you may share them.

One famous example of trademark enforcement in free and open source software demonstrates these distinctions clearly.

Case study: Mozilla Firefox, the Debian Project, and Iceweasel

The Mozilla Foundation owns the trademarked name "Firefox", which it uses to refer to its popular free software web browser of the same name. The Debian Project, which maintains a long-running and also quite popular GNU/Linux distribution, wanted to package Firefox for users of Debian GNU/Linux.

So far, so good: Debian does not need Mozilla's permission to package Firefox, since Firefox is open source software. However, Debian does need Mozilla's permission to call the packaged browser "Firefox" and to use the widely-recognized Firefox logo (you've probably seen it: a long reddish fox curling its body and tail around a blue globe) as the icon for the program, because those are trademarks owned by Mozilla.

Normally, Mozilla would have happily given its permission. After all, having Firefox distributed in Debian is good for Mozilla's mission of promoting openness on the Web. However, various technical and policy effects of the Debian packaging process left Debian unable to fully comply with Mozilla's trademark usage requirements, and as a result, Mozilla informed Debian that their Firefox package could not use the Firefox name or branding. No doubt Mozilla did so with some reluctance, as it is not ideal for them to have their software used without clear attribution. However, they could have given Debian a trademark license and yet chose not to; presumably, this is because Debian was doing something with the code that Mozilla did not want accruing to their own reputation.[107]

This decision by Mozilla did not mean that Debian had to remove Firefox from their package system, of course. Debian simply changed the name to "Iceweasel" and used a different logo. The underlying code is still the Mozilla Firefox code, except for the minor bits Debian had to change to integrate the different name and logo — changes they were perfectly free to make, of course, because of the code's open source license.

It is even consistent to license your project's logo artwork files under a fully free license while still retaining a trademark on the logo, as the following story of the GNOME logo and the fish pedicure shop (I'm not making this up) illustrates.

Case study: The GNOME Logo and the Fish Pedicure Shop

The GNOME project (https://gnome.org/), which produces one of the major free software desktop environments, is represented legally by the GNOME Foundation (https://www.gnome.org/foundation/), which owns and enforces trademarks on behalf of the project. Their best-known trademark is the GNOME logo: a curved, stylized foot with four toes floating close above it.[108]

One day, Karen Sandler, then the Executive Director of the GNOME Foundation, heard from a GNOME contributor that a mobile fish-pedicure van (fish pedicure is a technique in which one places one's feet in water so that small fish can nibble away dead skin) was using a modified version of the GNOME logo. The central foot part of the image had been slightly modified to look like a fish, and a fifth toe had been added above, so that the overall logo looked even more like a human foot but cleverly made reference to fish as well. You can see it, along with discussion of other trademark issues GNOME has dealt with, in the Linux Weekly News article where this story is told in full: https://lwn.net/Articles/491639/.

Although GNOME does actively enforce its trademarks, Sandler did not see any infringement in this case: the fish-pedicure business is so distant from what the GNOME Project does that there was no possibility of confusion in the mind of the public or dilution (if you'll pardon the expression) of the mark. Furthermore, because the copyright license on GNOME's images is an open source license, the fish pedicure company was free to make their modifications to the graphic and display the results. There was no trademark violation, because there was no infringement within GNOME's domain of activity, and there was no copyright violation, because GNOME's materials are released under free licenses.

The point of these examples is to merely show that there is no inherent contradiction in registering and maintaining trademarks related to open source projects. This does not mean that a trademark owner should do whatever they want with the marks, ignoring what other participants in the project have to say. Trademarks are like any other centrally-controlled resource: if you use them in a way that harms a significant portion of the project's community, then expect complaints and pushback in return; if you use them in a way that supports the goals of the project, then most participants will be glad and will consider that use to be itself a form of contribution.



[107] In fact, that was indeed the reason, though we do not need to go into the details here of exactly what changes Debian makes to the Firefox code that Mozilla disagrees with strongly enough to want to dissociate their name from the result. The entire saga is recounted in more detail at https://en.wikipedia.org/wiki/Mozilla_Corporation_software_rebranded_by_the_Debian_project. Coincidentally, I'm writing these words on a Debian GNU/Linux system, where Iceweasel has long been my default browser — I just used it to check that URL.