Subject: RE: Open source and trademarks
From: "Lawrence E. Rosen" <lrosen@rosenlaw.com>
Date: Sun, 6 Jul 2003 13:27:36 -0700

Hi Ihab,

A trademark is not a privilege to take a word out of the language, to
prevent people from uttering that word in their source code or on their
entirely different kinds of products, or when comparing their software
to the trademark owner's software.  A trademark is just a word, name,
symbol or device used to identify a company's products and to
distinguish those products from the competition.  

When a trademark is used in a non-trademark way ("she is the apple of my
eye"), or by another company to distinguish entirely different kinds of
products ("Cadillac dogfood"), those uses can coexist without infringing
the trademark.  Anyone is free to use a trademark by way of comparison
("Jello pudding tastes better than Royal pudding") or to make truthful
statements about a product ("this Nokia telephone works on the AT&T
Wireless network").  

If someone uses your mark, "HappySoft," on his or her software so as to
confuse people about the source or origin of that software and to
mislead people into thinking that their software is from you, that's
trademark infringement and an unfair business practice in many
jurisdictions.  The other things you described are just free speech,
which trademark law does not affect.  So the file names you used,
variable names, comments within code, etc., have nothing whatsoever to
do with your trademark and can be changed -- or not changed -- without
worrying about your trademark.  

Someone can truthfully say, "Please buy YaySoft software from me.
YaySoft is my improved version of HappySoft software.  YaySoft is my
trademark, and HappySoft is a trademark of HappySoft.org."  And they
don't have to change your original file or variable names to do that.

The Open Software License (www.rosenlaw.com/osl2.0.html) says this about
trademarks:

   4) Exclusions From License Grant. Neither the names of Licensor, 
   nor the names of any contributors to the Original Work, nor any 
   of their trademarks or service marks, may be used to endorse or 
   promote products derived from this Original Work without express
   prior written permission of the Licensor. Nothing in this License 
   shall be deemed to grant any rights to trademarks ... of Licensor
   except as expressly stated herein.... No right is granted to the 
   trademarks of Licensor even if such marks are included in the 
   Original Work....

   6) Attribution Rights. You must retain, in the Source Code of any
   Derivative Works that You create, all copyright, patent or trademark
   notices from the Source Code of the Original Work, as well as.... 

/Larry Rosen
General counsel, Open Source Initiative

> -----Original Message-----
> From: Ihab Awad [mailto:ihab@ahc.umn.edu] 
> Sent: Sunday, July 06, 2003 11:40 AM
> To: license-discuss@opensource.org
> Subject: Open source and trademarks
> 
> Hi folks,
> 
> What are the implications of trademark ownership regarding 
> Open Source 
> software? Say, for example, that I produce --
> 
>   HappySoft[tm] -- A program promoting happiness
> 
> and I reserve www.happysoft.org, and make a cool logo, and my 
> Java package 
> names (or C++ namespaces) start with --
> 
>   org.happysoft.* or org::happysoft::*
> 
> and my source code, documentation and other material contains 
> a preamble --
> 
>   This file is part of HappySoft[tm], a program promoting happiness.
> 
> Somewhere out there, however, I have reserved the HappySoft 
> trademark by (a) 
> using it; and (b) publishing statements like --
> 
>   HappySoft and the "smiling person" logo are trademarks of 
> the HappySoft
>   Organization, and may not be used or duplicated without permission.
> 
> which, I figure, is to ensure that, even though people can 
> reuse my code, they 
> cannot claim that what they have produced is *the* true 
> "HappySoft" program.
> 
>   *  *  *  *  *
> 
> Now, someone else wants to build a derivative work --
> 
>   YaySoft[tm] -- A program promoting celebration
> 
> based on HappySoft (which is ok, since HappySoft is Open 
> Source). They come up 
> with a new logo and new name, and they publish their work on 
> a separate site 
> called yaysoft.org, and they do *not* claim that their work 
> is HappySoft 
> (beyond perhaps acknowledging the lineage of the code). 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). And the 
> code is still 
> named "org.happysoft.*". So --
> 
>   1. Do the authors of YaySoft in this way infringe on trademark law,
>      or, conversely --
> 
>   2. Do I as the author of HappySoft, by embedding restricted 
> trademarks
>      in the source code, violate the Open Source Definition?
> 
> Thanks a lot & peace,
> 
> Ihab
> 
> --
> license-discuss archive is at http://crynwr.com/cgi-bin/ezmlm-cgi?3
> 

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