Trademarks

It was presumptuous of me to suggest earlier in this chapter that the only two brains involved in creating successful software products are the right brain of copyright and the left brain of patent. This leaves out what is sometimes the most important brain of all ”the one that captures consumer attention through effective marketing.

Often the keys to marketing success for open source projects are their product or brand names , or trademarks. More specifically , a trademark is a word, phrase, symbol, or design, or a combination of words, phrases, symbols, or designs that identify and distinguish the source of the goods of one person or company from those of others.

Trademarks are a form of intellectual property. Trademarks are owned, and they can be licensed. Consider, for example, the brand name Linux , a registered trademark owned by Linus Torvalds for:

Computer operating system software to facilitate computer use and operation. (U.S. Trademark # 1916230.)

It is inevitable that more people recognize the Linux operating system by its trademark than would recognize even a single line of its copyrightable code or any patent claims it embodies. The success of Linux in the marketplace , while made possible by the underlying copyrightable and patentable subject matter, is largely now due to good brand recognition and the aura of accomplishment that the brand engenders in the public. As long as the contributors and distributors responsible for Linux software continue to focus on quality and reliability, the Linux brand name will prosper .

Other open source projects and companies also rely on trademark protection. Brand names such as Apache, MySQL, Open Office, JBoss, Red Hat, and Debian identify quality products to open source customers. And now that major software companies are becoming open source contributors and distributors, brand names like IBM, HP, Apple, Sun, Oracle, Novell, and Nokia adorn open source products.

As a matter of trademark law, a trademark would be lost if it were licensed under typical open source license terms. This is because a trademark owner must maintain control over the quality of the goods bearing his or her trademark when the trademark is licensed to others. But an open source licensor cannot control the quality of the licensees ' derivative works. (Open Source Principle # 3.)

Because of that incompatibility between trademark law and open source principles, no open source license includes a trademark license. Some open source licenses even contain an explicit exclusion of trademark license. I will discuss such provisions in due course.