Free Software And Trademarks [LWN.net]

From:		Gervase Markham <gerv-AT-mozilla.org>
To:		letters-AT-lwn.net
Subject:		Free Software And Trademarks
Date:		Wed, 31 Aug 2005 22:53:23 +0100

Sir,

Unfortunately, I went on holiday soon after John Morris' letter on
Trademarks and F/OSS was published in August 18th's LWN, and did not
have a chance to reply immediately. But, as the Mozilla Foundation's
management of the Firefox trademark has been the catalyst for many
recent discussions on the topic, and I am their first point of contact
for trademark issues, I feel I should respond.

Before I begin, I should correct the thesis of the opening paragraph,
which seems rather to underly a lot of what follows. The Foundation did
not establish a wholly-owned subsidiary Corporation to "make themselves
compatible with the rest of the corporate world", no matter what ZDNet
may think. We did it chiefly because there are rules in the USA about
the sources of income for a tax-exempt entity which we were not able to
meet with our current mixture of income sources.

In my view, the general idea of trademarks - that you can label a
product with a name or icon which represents a level of quality in the
mind of the public - is entirely compatible with the principles of Free
Software. Just as some free software licences require appropriate credit
to be given to authors, so it should also be possible to require that
distinguishing marks be removed (assuming that functionality would not
be affected thereby) if the author thinks that a derivative product does
not reflect well on their original efforts.

However, as has been pointed out many times, the way trademark law is
structured makes it a challenge to maintain one's trademark without
inconveniencing, even if just a little, those who wish to use it. This
is unfortunate, but I don't think it's insurmountable if one is careful.

Firefox has an almost uniquely strong (among free software projects)
need for a solid trademark, due to a combination of factors:

- Firefox is by far the most-used piece of consumer free software on the
planet;

- Firefox is extremely popular on Windows, and among people I describe
as those for whom "computing is not their main focus in life";

- Firefox's brand is very well known and respected;

- Firefox is used for financial transactions.

This points together mean that there is a great deal of unscrupulous
interest in our product and brand. Without a strong trademark a
nefarious person could, for example, modify Firefox to send them any
login details for a long list of banks, put up a build and buy Google
Ads saying "Official Firefox Download Site!". As the code is Free, the
only way to prevent such a scenario is to use trademark law - we can't
stop them doing a trojaned build, but we can stop them putting our good
name on it.

The interaction of trademarks with free software in such a high profile
way is a new thing. We are still trying to work out how to manage the
Firefox trademark in a way which protects our nearly 100,000,000 users
and potential users from scenarios such as this one, but yet does not
unduly inconvenience people on the same side as us - our developers,
quality Linux distributions, OEMs, etc. I welcome any constructive input
as to how we can better achieve this without losing control of the mark.

Gerv

(Log in to post comments)

Trademarks will not deter crooks

Posted Sep 2, 2005 16:46 UTC (Fri) by gerv (subscriber, #3376) [Link]

My example was perhaps an extreme one. There are plenty of things which are on the right side of the law but the wrong side of decency - spyware which sends your browsing history off to marketing companies, for example.

In the case of the out-and-out crooks, the additional protection we get is being able to say to Google or others "that's our trademark - please pull their ads", and cut off their air supply. They are much less harmful if no-one knows they exist.

Gerv

Free Software And Trademarks

Posted Sep 1, 2005 8:08 UTC (Thu) by ekj (guest, #1524) [Link]

Stupid (non)argument.

Distributing a browser that secretly collects login-information for banks would be illegal without regard to which name it is distributed under.

Yes, trademark on the name would make it break one more law. But are we honestly to believe that it would be tricky to stop such distribution if it broke "only" X laws, but easy if it breaks X+1 laws ?

There *are* good reasons to support trademarks on free software names (aswell as good reasons to oppose them!) This, however is not one of those.

Free Software And Trademarks

Posted Sep 1, 2005 9:29 UTC (Thu) by MathFox (guest, #6104) [Link]

Distributing a trojaned browser is illegal, but who will be able to sue the one who did it? The victims and the Government. Govenment is slowly taking up proscecuting computer crimes, but will they spend time on bringing such cases to justice? (Expect international criminal investigations.)
With the Firefox trademark protection the Mozilla foundation has a stick to hit the perpretrators. They can sue, ask for a jury trial, and get convictions for breach of contract and/or trademark infringement. The Mozilla foundation stands a far better chance in court than the average victim of a scam, because of the technical knowledge they can tap into; deeper pockets also help a bit.

Free Software And Trademarks

Posted Sep 1, 2005 13:54 UTC (Thu) by Alan_Hicks (subscriber, #20469) [Link]

Distributing a trojaned browser is illegal, but who will be able to sue the one who did it? The victims and the Government. Govenment is slowly taking up proscecuting computer crimes, but will they spend time on bringing such cases to justice? (Expect international criminal investigations.)
With the Firefox trademark protection the Mozilla foundation has a stick to hit the perpretrators.

Indeed. In legal terms, this is called standing. Standing is literally "what you stand on". If some one shot your mother, her death is your standing to bring charges against the killer. If you downloaded a trojan horse and lost all your money, your financial loss is your standing to bring the case to trial. If some one makes a trojan horse and puts your trademarked name on it, you can stand on trademark infringement and shut them down before your good name is damaged beyond repair.

When I was young my father taught me this much:

Son, the most valuable thing in the world is your good name. It's the hardest thing to get, and the easiest to use, so you protect it.

This is only them protecting their good name.

Free Software And Trademarks

Posted Sep 2, 2005 23:06 UTC (Fri) by giraffedata (subscriber, #1954) [Link]

Those are clever arguments, but you'd be better off abandonning them because they're too difficult to defend and unnecessary to your point.

You obviously have a solid understanding of the fundamental purpose of trademark law and how controlling the Firefox trademark serves it. Why go into these creative ways that trademark can be exploited to solve problems it was never intended for?

There's an even more basic counterfeiting scenario than the ones you've proposed so far: A bunch of people, for whatever reason, start making their own variations on Firefox, under the same name. None of them is nefarious, but they don't work very well, and when they do, they all work differently. Now Firefox gets a bad name. People know Firefox as the thing that has more bugs than Internet Explorer and works differently on every computer. So they all cling to IE, losing the chance to use a superior browser: the original Firefox.

Free Software And Trademarks

Posted Sep 10, 2005 8:36 UTC (Sat) by rqosa (subscriber, #24136) [Link]

From a Ubuntu Hoary system:

$ apt-cache search . | wc -l
15811

The vast majority of these aren't trademarked, and it doesn't seem to be a problem for them.

Furthermore, "GNU" isn't a trademark, is it?