Subject: Re: OSI enforcement? (Was Re: Microsoft use of the term "Open Source")
From: Rick Moen <rick@linuxmafia.com>
Date: Fri, 4 Jan 2008 17:44:58 -0800

Quoting Philippe Verdy (verdy_p@wanadoo.fr):

> To defend Chris here (but also to mitigate what he says), I must admit that
> the OSI cannot claim authority on the *terms* "open source, only authority
> on "Open Source" when used as a distinctive trademark, and to allow such
> claim, the OSI would have to register it and define its scope precisely.
> 
> But I have still not seen any document proving that "OSI" (or "Open Source
> Initiative") owns the trademark "Open Source" alone, with a valid
> registration.

(I'll reserve comment on the basic assumption in both Philippe and
Chris's posts that the legal enforcement of an "open source" trademark
is vital, which for reasons amply discussed over the years is
simply fallacious -- making Philippe and Chris's entire line of
reasoning from that point forward a waste of time.  Suffice it to say
that I concur with Matthew Flasche's separate post on that matter.)

To be blunt, Philippe's views seem no better informed on this matter
to what they were the last time he opined about it in October.  At that
time, it was extremely evident he needed to learn some trademark law,
and also (in particular) unlearn some fallacies, e.g., his bit about
OSI needing to become "the legal owner of the expression" (a meaningless
phrase in trademark context).

Above, Philippe asserts that OSI could not be correctly asserted to own
an "open source" trademark (and no, capital letters are _not_ required)
without "registration", e.g., with USPTO.  Sorry, wrong.

I cannot speak to EU member-states' trademark regimes (it having been a
while since I've read up on those), or other countries', but, in USA
law, registration is not required for a trademark to exist and be
enforceable.  In the USA, one establishes title to a mark _either_ by
being first to use the mark in commerce[1] within a given trade or
industry, or being first to register it for that trade or industry with
USPTO.  The former method is called a common-law trademark, the latter a
Federal one.  Philippe's implicit assumption that the former lacks force
is simply false.  Wrong.

(The annoying thing is that we've already _had_ this discussion, some
months ago.)

Federal registration confers these advantages:

1.  Nation-wide enforceability, as opposed to only in regions where
    the mark has been used (15 USC 1072).
2.  Establishes contructive notice to third-party users of one's claim.
3.  Ability to bring enforcement action in Federal (as opposed to state)
    court (15 USC 1121).
4.  Status of "incontestible" after five years.

Common-law trademarks are every bit as enforceable as are Federal ones;
they simply don't entail the above-cited advantages.



> Now if OSI wants to register it, it will have to restrict the scope of the
> claim because the terms were used in publications signed by lots of authors
> long before OSI even existed, including with the two capitals with the form
> "Open Source" because it was used in titles (of publications or of
> chapters...).  The OSI cannot claim ownership of works made by others before
> in those publications.

This whole bit is irrelevant:  Philippe seems to be confusing copyright
and trademark law.  (Perhaps this is the revival of Philippe's October
2007 notion that trademark is "the legal owner of the expression".)

> So what does this mean?

*sigh*

> Probably:
> * nobody else than OSI can use "Open Source Initiative" or "OSI" or the
> associated logos (because they are registered, and such registration is
> certainly valid)

No, wrong.  That is not what trademark is.

> * nobody else than OSI can now register "Open Source" as a distinctive
> trademark (if such registration is possible, something that is not proven,
> and will be invalidated in many countries)

No, wrong.  The same phrase can be and is registered at (e.g.) USPTO by
different entities in different classes of goods or services.

> * the terms "open source" themselves are free for use by anyone (or at least
> by all the many users that have used in some publication before OSI
> existed), as long as they don't claim this is a distinctive trademark (and
> they can continue to use these terms, in any form including with title case,
> even if this does not comply to OSI rules).

No, this is not quite right, either.  Again, Philippe still needs to
read and understand some trademark law -- same as four months ago.

We could go on, but I think that's rather enough for now.