Subject: Re: Open source and trademarks
From: Rick Moen <>
Date: Sun, 6 Jul 2003 12:11:31 -0700

Quoting Ihab Awad (

> What are the implications of trademark ownership regarding Open Source 
> software? 

Less than you might think.

[You register and use HappySoft as a trademark in a particular field for
a particular piece of software, and publish statements like:]

>   HappySoft and the "smiling person" logo are trademarks of the HappySoft
>   Organization, and may not be used or duplicated without permission.

You can say that -- and might be well advised on self-interest grounds
to aggressively enforce your trademark against anything that even looks
remotely like an infringer (lest you lose it) -- but that does not make
it so, as a matter of law (the Federal Lanham Act, in the USA).

By no means does all third-party use of your trademark constitute
infringement, not even within your specific industry.  A registered
trademark entitles you to a monopoly over brand identity.  That is,
you're entitled to bar _only_ usage of your distinctive mark that
incorrectly suggest your offering and endorsement of someone else's
goods or services (within your specific industry).  

It does _not_, for example, entitle you to bar a notice that...

   This YaySoft[tm] program smoothly interoperates with the HappySoft[tm]
   software suite.  HappySoft[tm] and the smiling-face logo are registered 
   trademarks of Ihab Awad, who neither produces nor endorses this software.

...because that usage doesn't create such a false impression and, to the
contrary, goes to some lengths to prevent it.

My recollection is that the legal standard applicable to trademarks is
that infringing use must tend to create such confusion _not_ in the mind
of a "reasonably prudent" customer.  There are factors commonly
considered, in the case of doubt:

o  Are the two goods/services in competition?
o  Are they marketed through the same stores or channels?
o  Did the alleged infringer appear to intend to "trick" customers?
o  Are the marks similar in appearance, sound, or meaning?
o  Are typical customers of these goods/services sophisticated or not?
o  Do the goods/services appeal to overlapping customer bases?
o  How strong is public recognition of each of the marks?
o  Is there any evidence of actual confusion having occurred?

[establishment of derivative work YaySoft snipped:]

> However, the 
> restricted-usage HappySoft marks remain in the original source code (which, 
> per the applicable license, they should not be required to modify in order to 
> redistribute or include in their derivative work). 

_But_ nothing bars creators of derivative works from either (1) removing
that expression of the HappySoft trademarks, or (2) accompanying it by a
statement like the indented one, above.

>   1. Do the authors of YaySoft in this way infringe on trademark law,
>      or, conversely --

It depends on their product's impression in the minds of "reasonably
prudent" users.

>   2. Do I as the author of HappySoft, by embedding restricted trademarks
>      in the source code, violate the Open Source Definition?

You would not, since it is still eminently possible to use that source
code with all OSD-specified freedoms.

Please note that the Apache licence incorporates protection of the
Apache brand.

(I am not a lawyer.  This is not legal advice.)

Cheers,              First they came for the verbs, and I said nothing, for
Rick Moen            verbing weirds language.  Then, they arrival for the nouns  and I speech nothing, for I no verbs. - Peter Ellis
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