On 21 August, Don Armstrong, a Debian developer, accepted my offer to
serve as my delegate in handling trademark issues vis-à-vis the
DCCA. As an employee of
a DCCA member company, I found it wise to
avoid the perception of a conflict of interest. I should stress that any
such perception would merely have been conjectural, however; at no point
have I been asked by anyone to put my thumb on the scales, as it were, and
deal with the DCCA or any of its member organizations in a preferential
way.
It is widely understood within the Debian Project that our
existing trademark
policy, originally formulated in 1998, is too vague, and has not scaled
well to suit Debian's much greater degree of success and market penetration
(on its own, and in the form of derivatives) seven years later.
However, grappling with the issue has proven challenging for Debian's
membership. I believe this is mainly because the Free Software hackers that
comprise our organization have tended to self-educate to a far greater extent
on copyright law, and even patent law, than they have on trademark law.
Recently (within the past year or so), Debian gained access via its
U.S.-affiliated charitable organization,
Software in the Public Interest, Inc. to
a pro bono legal counsel who understands the Free Software culture.
Debian's difficulty with trademark management is not unique — we have
been on the other side of this problem when dealing with the
Firefox and
AbiWord trademarks, since we
customize the codebases of these software projects in our GNU/Linux
distribution, but ship them with their names (and logos) intact. It so
happens in these cases that the originators of the software (who hold the
trademarks) approve of our modifications. One of the essential pillars of
software freedom, however, is the user's right to make modifications that
the authors or rights-holders in the software may not agree with.
Free Software hackers can feel, with some justification, that it is
misleading to uphold the freedom of a work on the one hand (by
using a copyright license such as the GNU GPL), and take it away with the
other (by asserting a trademark on some essential aspect of the work, such
as its name). It is true that a work can be renamed, or descriptive text
changed, to identify itself as distinct from an "official" version of the
work, but this in turn, it is feared, can damage perceptions of the work
through at least two mechanisms.
Firstly, disclaimers about unofficial status may be unnerving to users who
aren't schooled in the vagaries of trademark law, in which — at least
in the United States — you are expected to aggressively defend your
mark lest you lose a future infringement case you bring against a
well-heeled defendant. Users may mistake strident proclamations of
unofficial, unendorsed status in a piece of software as a warning that it
is unsuitable for use, or has known severe flaws.
Secondly, aggressive use of trademarks, or even just the tension observed
above between giving with a copyright license and taking away with a
trademark license, may lead some distributors to rename a work, obscuring
its origins to the casual user. This can happen pre-emptively, before a
distributor even knows whether the modifications they have made (or think
they might make in the future) have met with any objection from the
trademark holders in that work. The "freedom to fork" (i.e., make a
derived version unendorsed by the original author) is an essential part of
Free Software, and while Free Software hackers' sense of community
generally leads them to eschew forking in favor of compromise and
consensus, occasionally a fork ends up growing the userbase or improving
the overall quality of the Free Software landscape. A hacker may fear that
brash trademark assertions by an author constitute mere lip service towards
the freedom to modify the work
without changing its name, and may
be tempted to fork it, leaving the trademark encumbrance behind.
Even among those who do not guard their software freedoms quite so
jealously, the fear can exist that a simple difference of opinion over some
technical programming detail, such as choice of sorting algorithm or
graphical toolkit, will escalate to the point where the trademark license
on the work (implicit or otherwise) is withdrawn. This is the inverse of
the previous situation — instead of a modifier
choosing to
fork a work, the original author of a work (or, at any rate, the holder of
the trademark associated with it), can
force the modifier to fork.
The dilemma this imposes upon the people creating the modified versions
— revert your existing change or be legally compelled to make an
additional one — can rub people the wrong way.
When forking occurs, for whatever reason, and even in the relatively benign
case of "rebranding" to remove legally protected marks, the threat exists
that the competitive strength of the corresponding software will be
diluted. Imagine if each of four major GNU/Linux distributors rebranded
their version of Mozilla Firefox, calling it instead things like
"Lizardfox", "Hatfox", "Swirlfox", and "Hearstfox". How many users would
deduce that the web browsers in question were all "really" Mozilla Firefox,
each one with a fig leaf placed delicately over it so that the
legally-minded types at the Mozilla Foundation and the distributors could
wink at each other? Even the somewhat savvy GNU/Linux user may be more
confused than one might expect, given that other names used for Mozilla's
suite of applications include
Sunbird
and
Thunderbird,
yet there is an independent Free Software project called
Firebird, which was established
prior to the Mozilla Foundation's adoption of its product naming
scheme.
"What's in a name?", you may ask. They're important because they are
simple labels we can use to refer to Free Software success stories.
There's a lot of Free Software to talk about; the phenomenon of copyleft
does much to ensure a competitive culture. It's difficult to achieve an
unnatural monopoly in this environment, because anyone who steers a
software project in a direction the users don't want to go has to cope with
the prospect of seeing a group of those users organize their own community
based around a derived version that does what they want. The hypothetical
hydra-headed Firefox situation described above, however, is an example of
false competition, because the distributors were compelled to
distinguish their Web browsers for legal, rather than technical,
reasons.
In actuality, Mozilla Firefox is a good example of what's right about
Free Software, not just because of its licensing but because a web browser
is a familiar concept to nearly every computer user today. Free Software's
early successes were more esoteric —
GNU Make, the
GNU Compiler Collection, the
GNU C Library,
GNU Emacs, and even
the
Linux kernel are not pieces of
software that the general user can easily conceptualize. It is beneficial
— to say nothing of convenient — to refer to the leading
freely-licensed web browser as "Mozilla Firefox" rather than "a suite of
mostly-compatible, similarly-named Web browsers shipped by the various
GNU/Linux distributors". Those who seek to foment confusion and FUD about
Free Software would doubtless capitalize on such a situation.
These issues are challenging but not insuperable. A coherent policy
will enable the community to establish a set of common practices, whereas
now there are few conventions in the trademark arena. Ultimately, it is my
hope that Debian will be able to promulgate a trademark policy that not
only satisfies our needs, but serves as a model for others.
To establish a successful policy, I suspect we need to build one up from
basic concepts, and formulate explicit answers to fundamental
questions.
- Why even have a trademark? Let's understand what protections the law
affords and determine which, if any, are applicable to our endeavors. In
the U.S., trademarks are managed by the federal government (rather than the
states), and regulated by Title
15, Chapter 22 of the United States Code. International treaties
result in trademark law being roughly similar across most jurisdictions in
the developed nations, but there could exist important differences that we
should learn about.
- What level of Debian involvement should be necessary for an "outside"
organization to use our mark without a fuss from us? Should there be any
situations where people essentially have an automatic trademark license, or
should we use trademark law as an instrument to encourage (or compel)
anyone trading in our name to contact us? We need to consider small-scale
garage-based redistributors who simply move physical copies of our official
ISO images as well as commercial derivative distributions.
- Is it feasible to apply the copyleft concept to trademarks? That is,
is there some way we can turn the restrictive aspects of trademark law into
a kind of compact that upholds the freedoms of a sharing community, while
penalizing the activities of those who would prey upon that community?
Originally published 2005-09-14.
Updated 2005-10-15 to add licensing in comments.