[HN Gopher] Why trademark Open Source software
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Why trademark Open Source software
Author : samtuke
Score : 68 points
Date : 2021-02-24 12:42 UTC (10 hours ago)
(HTM) web link (lightmeter.io)
(TXT) w3m dump (lightmeter.io)
| burnt1ce wrote:
| I can't view the article (seeing "Error establishing a database
| connection"). But isn't trademark prohibitively expensive and
| (traditionally) applies to just one country?
| veesahni wrote:
| Some trademarks (like those for EU) cover all member states.
|
| Getting "global protection" for your trademark is expensive and
| requires filing in multiple countries. It does rack up both
| legal and filing fees.
|
| But just a US trademark is not prohibitively expensive... and
| would mean you would get registered trademark rights that could
| be enforced in a US court.
| tmmxyz wrote:
| Your cert is self-signed and (my) FireFox blocks the webpage.
| ilovetux wrote:
| Not the OP, but thats strange I'm on Firefox/Android and I'm
| seeing a valid letsencrypt issued cert.
| eythian wrote:
| Yep, years ago I was loosely involved (as a Koha developer
| working for one of the organisations involved) in this:
| https://www.rnz.co.nz/news/national/230631/koha-trademark-ca...
|
| It was a lot of work by a lot of people involved to get the right
| conclusion, which (in 20/20 hindsight) could perhaps have been
| avoided by doing it "right" in the first place.
| mimixco wrote:
| This is spot-on! It took a year to get our trademarks for our
| open source software, including negotiating with another claimant
| and waiting for yet another potential claimant to drop out of the
| race. It was not fun or cheap but totally worth it.
|
| I just got our "ribbon copy" (with the gold seal) yesterday!
| pid_0 wrote:
| Error establishing a database connection (TM)
| sodimel wrote:
| https://web.archive.org/web/20210224124603/https://lightmete...
| jmathai wrote:
| I think setting up contributor license agreements (CLA) is a lot
| more important and valuable than getting a trademark.
|
| We had an open source business without having CLAs in place and
| it took several months to get everyone who contributed (around
| 200 people) when we sold our company.
|
| CLA Assistant easily plugs into any Github repository to make
| this painless.
|
| https://cla-assistant.io/
| teh_klev wrote:
| I mostly agree with the sentiment of the article and it's fair
| enough to allow a Free Software project and its maintainers to
| defend themselves from being misrepresented by using trademarks.
|
| This bit is trickier though:
|
| _Neither the terms "Open Source" nor "Free Software" are
| themselves trademarked, which unfortunately allows anyone to use
| them to describe anything - companies regularly exploit this to
| undermine public understanding of the freedoms which the words
| originally conveyed._
|
| Should those terms have been trademarked in the past? They seem
| awfully generic and nebulous. Could you have even gotten a
| trademark for "Open Source" or "Free Software"? Do trademark
| registrations allow you to be specific about what these two terms
| mean?
| LukeShu wrote:
| (IANAL) "Free software" I don't think would have ever been
| granted, but as hard as it is to imagine now: the phrase "open
| source" didn't always exist, and wasn't coined until 1998.
| There's a case to be made that the OSI should have pursued
| trademarking "Open Source" upon their founding in 1998 (I think
| there's also a pretty good case that trademarking it would have
| hurt their mission, as businesses might be afraid of using the
| term).
| samtuke wrote:
| I recall that they did try, but didn't succeed, because it
| was consided to be too generic. But can't find a reference
| for that :\
| LukeShu wrote:
| It seems you are correct
| https://opensource.org/pressreleases/certified-open-
| source.p...
| baybal2 wrote:
| Error establishing a database connection
|
| Did we crash their server?
| Muja wrote:
| Yeah, same for me. They should enable some caching plugin...
| pimterry wrote:
| https://web.archive.org/web/20210224124603/https://lightmete...
| lawl wrote:
| Fully agree. Some distros are packaging my software with bad
| patches constantly and then ignore requests to rename the package
| to make it clear that it's a fork.
|
| Unfortunately for small projects registering a trademark is just
| not feasible. I have considered going from actual open source to
| source available though.
| MeinBlutIstBlau wrote:
| Issues like these are really what make me feel so bummed about
| open source. I can see it's enormous impact in the 90s quelling
| a lot of corporate greed, but now it's to the point that nobody
| respects the work put in anymore.
| dec0dedab0de wrote:
| GPLv3 allows adding a clause that would force them to change
| the name if they make changes. If they do it anyway they're in
| violation of the license, no trademark required.
| lawl wrote:
| Do you happen to have a link with more info on how such a
| clause would look like? That sounds really interesting.
| dec0dedab0de wrote:
| I do not, but I bet you could find a bigger project that
| has a such a clause and ask them if you could copy it.
| lawl wrote:
| Thanks, I did find an example here:
|
| > The Coppermine Dev Team requires as additional term of
| the license Coppermine comes with that modified versions
| of Coppermine conveyed to others should be marked in a
| reasonable way. Modified versions mustn't be conveyed to
| others under the same name as the original Coppermine
| release. Package name, source code and the output
| generated by the modified version should make it obvious
| for potential users that the modified version and the
| original Coppermine version that the modified version is
| based upon differ.
|
| https://coppermine-
| gallery.net/docs/curr/en/copyrights.htm#c...
|
| and a PDF talking a bit more about section 7 here:
| http://www.mmmtechlaw.com/wp-content/uploads/2014/03/PLI-
| Ope...
|
| So I think i understand this a bit better now. Maybe this
| helps someone else too.
|
| (raw GPL legalese is difficult for me to fully parse not
| being a native speaker)
| [deleted]
| mlavin wrote:
| For those asking, it's in section seven, additional clauses:
| Notwithstanding any other provision of this License, for
| material you add to a covered work, you may (if
| authorized by the copyright holders of that material)
| supplement the terms of this License with terms:
| [...] c) Prohibiting misrepresentation of the
| origin of that material, or requiring that modified
| versions of such material be marked in reasonable ways
| as different from the original version; or...
| nightcracker wrote:
| This is (part of) why I use the zlib license.
| laurent123456 wrote:
| The article explains why it's important to trademark, but not how
| or more importantly if it makes sense for the majority of open
| source projects. If you need to hire a lawyer over several months
| to get a trademark, it's probably only possible for companies
| that also publish open source software.
| verdverm wrote:
| It can actually be rather cheap (as far as lawyers go). Mine
| cost about $2k per TM which includes USPTO fees.
|
| It will depend on prior art, how close you are to others, how
| large the search needs to be, how many classes you are applying
| for.
| samtuke wrote:
| Just by starting to use the TM symbol next to words or images
| you intend to trademark is enough to offer some immediate and
| free protection (IANL)
| nickthenerd wrote:
| I think its important to understand what you are also getting
| into with a trademark. They mention: actively
| asserted and defended in order to have legal meaning.
|
| This is a critical piece of owning a trademark. It must be
| defended which means that you have to issue cease and desist
| letters, normally engaging an attorney to do so, or else you risk
| losing your trademark altogether or it becoming genericized, i.e.
| 'Kleenex': https://en.wikipedia.org/wiki/Generic_trademark
| MayeulC wrote:
| This is often repeated, but misguided:
| https://www.eff.org/deeplinks/2013/11/trademark-law-does-not...
|
| Genericides do occur, but they are rather exceptional, and you
| generally can't do much about it (imagine the public starting
| to talk of dashboards as grafanas).
|
| Cease-and-desists should probably be reserbed for severe
| missuse, such as a competitor selling their product as yours,
| etc.
| MaxBarraclough wrote:
| Even if it were really that easy to fall prey to the
| genericide rules, couldn't companies fulfill the enforcement
| obligations more amicably by asking for a nominal fee?
|
| I suppose that might open the door to the party making wider
| use of the trademarked term though.
| forty wrote:
| On this topic, can someone explain how Elasticsearch got
| f*cked by AWS which is using their name for their competing
| hosted ES service?
| zodiakzz wrote:
| Only in 0.000001% of cases when your product is a massive hit.
|
| >A generic trademark, also known as a genericized trademark or
| proprietary eponym, is a trademark or brand name that, because
| of its popularity or significance, has become the generic term
| for, or synonymous with, a general class of product or service.
| ccleve wrote:
| Here's the problem. The article does not say what you have to do
| to trademark something, but it does point to an article on a law
| firm site: https://www.legalteamusa.net/trademark-law-first-to-
| use-v-fi.... The site says that you get trademark rights once you
| "use the mark in commerce". It then goes on to suggest that "use
| in commerce" means an actual sale. There's more here:
| https://www.cohnlg.com/trademark-use-in-commerce-heres-how-i...
|
| So, what does this mean in an open source context? How can you
| meet the "use in commerce" requirement if you never actually
| offer anything for sale?
| ghaff wrote:
| This is a good read about trademarks in a FOSS context:
| https://fossmarks.org/
|
| But, yes, you can trademark open source software even if you
| aren't charging for it. (IANAL)
| ccleve wrote:
| Thanks. So far as I can tell, that site does not address the
| "use in commerce" question.
| ghaff wrote:
| The traditional meaning does seem to involve sales and many
| law firms seem to still use that definition. However,
| trademarks are widely used for upstream open source
| projects. Here's Google's take on the "use in commerce"
| phrase: https://google.github.io/opencasebook/trademarks/
|
| ADDED: The disconnect isn't really that surprising.
| Historically, why would you trademark something if you had
| no intention of selling it? How would it even get broadly
| distributed if you were just giving something away?
| Obviously, those conditions don't necessarily apply today
| even though you have the same issues of confusing different
| goods and services that have always existed. As for the law
| firms, it's mostly an argument that if you want an IP
| lawyer in an open source context, you probably want one who
| actually has experience in the area.
| samtuke wrote:
| Good catch. To quote them: "the court rejected the
| argument that the lack of direct profit from releasing
| software under the GNU General Public License rendered
| the original Coolmail name unenforceable as a trademark,
| holding that distributing software for end-users over the
| Internet satisfies the "use in commerce" requirement."
| hannasanarion wrote:
| Wikipedia doesn't make sales, but they still own their
| trademark.
|
| "Use in commerce" is more about, are you actually making
| things with it, are you publishing those things, are there
| people interacting with your product under that name, etc.
| The fact that most commerce involves money changing hands
| is incidental.
| mimixco wrote:
| I can answer this. You do indeed have to offer the product "for
| sale," even if it's free. To get our trademark[0] for
| downloadable (free) software, we had to prove that we were
| advertising and offering the product for download and that
| someone did, indeed download it. Has to be across state lines,
| too!
|
| For the apparel trademarks (hats, t-shirts) we had to show the
| proof that the clothing sales website was up to the public and
| prove with a transaction and photo of the finished clothing
| that we were, indeed, selling trademarked hats and shirts and
| producing finished goods. You even have to show clothing labels
| with your trademark on it or you won't get apparel marks for
| your software -- so no protection for your logo on swag.
|
| Our hosted product is in a different trademark class because
| the USPTO considers downloaded software to be a product and
| hosted software to be a service. To prove use in commerce in
| the service class we had to offer the product (that one costs
| money, lol) for sale, prove a real transaction took place
| across state lines, and prove that the customer had taken
| delivery (welcome email, etc.)
|
| It's quite a process but, as our trademark attorney (we used
| Tradmarkia) said, if you don't do all this your mark with
| either be denied by the USPTO, accepted and then challenged
| later by them, or contested by another applicant.
|
| [0] https://trademark.trademarkia.com/m-88979084.html
| tidwall wrote:
| I made a walkthrough on cheaply registering a trademark without
| an attorney. It's a couple years old now and the rules and
| processes may have changed. But for what it's worth.
| https://github.com/tidwall/uspto-trademark
| fritzo wrote:
| Can anyone recommend articles that focus more on past examples of
| bad behavior, and that motivate each abstract principle with
| examples of behavior that principle aims to guide. This article
| and the articles linked seem very vague. Maybe some legal
| literature?
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(page generated 2021-02-24 23:01 UTC)