Open source and trademarks

[Don Jarrell]

OK, first, IANAL, TINLA, TSNBCAUPL.  (I am not a lawyer,
this is not legal advice, this should not be construed
as unlicensed practice of law).

What I offer is business commentary, that is, what I
would do in my business in these circumstances, or
what I would advise my business consulting clients
in these circumstances.  As such, I won't answer your
last 2 questions directly.

I will mention the frequent misunderstanding that
many people have about trademark usage.  You describe
HappySoft(TM) as a product or program.  Think of
trademarks as ADJECTIVES, describing a noun.  So, your
hypothetical product might be HappySoft(TM) communication
software.

The practical interpretation of seeing a trademark,
copyright legend, or section of source code in a
delineated section of an Open Source work, attributed
to someone other than you, is that all of that was
placed there by the appropriate party - in this case,
someone "upstream" from you.  Open Source authors are
expected to delineate and mark their contributions,
and the copyright holder shown in the legend can
definitely be a business name that might also be the
subject of a trademark.  From a practical position,
you would be doing what I and my clients have done
repeatedly without encountering any problems.

On other matters, there are several relationships
between products regarding compatibility or dependence
that cross company lines, but still need to be conveyed
to the marketplace and potential licensees/buyers/users.
If someone makes a factual statement that "YaySoft(TM)
celebration manager is based upon HappySoft(TM)
communication software", and gives attribution for the
use of HappySoft, then that is proper and normal business
and marketing communication.  This is similar to the
ever-popular "powered by" usage, which may or may not be
based on some kind of agreement.  This assumes that even
this sort of communication has not been somehow prohibited,
and for that, you should discuss the matter with an attorney.

I hope this helps.  I'm sure several of the attorneys on
the list can provide further answers and, perhaps, legal
advice - if that is what you require.

Cheers.     dj

********************************************************
Don B Jarrell                don at digitalthinkinginc.com
Digital Thinking Inc.        512 266 7126        office
www.digitalthinkinginc.com   972 467 6793        mobile
********************************************************

> -----Original Message-----
> From: Ihab Awad [mailto:ihab at ahc.umn.edu]
> Sent: Sunday, July 06, 2003 1:40 PM
> To: license-discuss at 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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