Trademarks and their limits [LWN.net]

By Jonathan Corbet
February 5, 2013

A user looking for the Firefox browser on a Debian system may come away confused; seemingly, that program is not shipped by Debian. In truth, the desired software is there; it just goes under the name "iceweasel." This confusing naming is a result of the often controversial intersection of free software and trademarks. Critics claim that trademarks can remove some of the freedoms that should come with free software, while proponents assert that trademarks are needed to protect users from scam artists and worse. A look at the activity around free office suites tends to support the latter group — but it also shows the limits of what trademarks can accomplish.

The core idea behind a trademark is that it gives the owner the exclusive right to apply the trademarked name to a product or service. Thus, for example, the Mozilla Foundation owns the trademark for the name Firefox as applied to "computer programs for accessing and displaying files on both the internet and the intranet"; a quick search on the US Patent and Trademark Office site shows other owners of the name for use with skateboards, bicycles, wristwatches, power tools, and vehicular fire suppression systems. Within the given domain, the Mozilla Foundation has the exclusive right to control which programs can be called "Firefox". The Foundation's trademark policy has been seen by some as being overly restrictive (almost no patches can be applied to an official release without losing the right to the name); that is why Debian's browser is called "Iceweasel" instead. But those same restrictions allow the Mozilla Foundation to stop distribution of a program called "Firefox" that sends credit card numbers to a third party.

The Document Foundation (TDF) owns a trademark on "LibreOffice" in the US, while the Apache Software Foundation (ASF) owns "Apache OpenOffice" and "OpenOffice.org". Both foundations have established trademark usage policies (TDF, ASF) intended to ensure that users downloading their software are getting what they expect: the software released by the developers, without added malware. Without this protection, it is feared, the net would quickly be filled with corrupted versions of Apache OpenOffice and LibreOffice that would barrage users with ads or compromise their systems outright.

How effective is this protection? To a degree, trademarks are clearly working. Reports of systems compromised by corrupt versions of free office suites are rare; when somebody attempts to distribute malware versions, trademarks give the foundations the ability to get malware distributors shut down relatively quickly. It seems hard to dispute that the application of trademark law has helped to make the net a somewhat safer place.

Questionable distributors

One might ask: safer from whom? Consider, for example, a company called "Tightrope Interactive." Tightrope was sued by VideoLan.org (the developers of the VLC media player) and Geeknet (the operators of SourceForge) in 2010; they were accused of "trademark infringement, cyberpiracy and violating California's consumer protection law against spyware". Tightrope had been distributing "value-added" versions of VLC from its site at vlc.us.com; it was one of many unwanted VLC redistributors during that time. That litigation was settled in 2011; the terms are mostly private, but they included the transfer of vlc.us.com over to VideoLan.org, ending the use of that channel by Tightrope.

On Friday, April 15, 2011, Oracle announced that OpenOffice.org would be turned into a "community project" of an (at that point) unspecified nature. On April 18 — the next business day — Tightrope Interactive filed for ownership of the OpenOffice trademark in the US. That application was eventually abandoned, but not willingly; as Apache OpenOffice contributor Rob Weir recently noted in passing, "It took some special effort and legal work to get that application rejected." Companies in this sort of business clearly see the value in controlling that kind of trademark; had Tightrope Interactive been successful, it would have been able to legally distribute almost any software under the name "OpenOffice." The fact that the project successfully defended the trademark in this case should impede the distribution of corrupted versions of Apache OpenOffice in the future.

Sample OpenOffice ads

Or so one would hope. Your editor's daughter recently acquired a laptop computer which, alas, appears to be destined to run a proprietary operating system. After looking for an office suite for this machine, she quickly came asking for help: which version should she install? In fact, one need not search for long before encountering ads like those shown to the right: there is, it seems, no shortage of sites offering versions of OpenOffice and paying for ad placement on relevant searches. One of those — openoffice.us.com — just happens to be run by the same folks at Tightrope Interactive.

A quick search of the net will turn up complaints (example) about unwanted toolbars and adware installed by redistributed versions of OpenOffice, including Tightrope's version. This apparently happens often enough that the Apache OpenOffice project felt the need to put up a page on how to safely download the software, saying:

When we at the Apache OpenOffice project receive reports like this -- and we receive them a couple of times every week -- the first thing I ask is, "Where did you download OpenOffice from?" In today's case, when the user checked his browser's history he found what I suspected, that it was not downloaded from www.openoffice.org, but was a modified version, from another website, that was also installing other applications on his system, programs that in the industry are known as "adware", "spyware" or "malware".

This problem is not restricted to Apache OpenOffice; a search for LibreOffice will turn up a number of similar sites. Given that, one might well wonder whether trademarks are actually living up to the hopes that have been placed on them. Isn't this kind of abusive download site just the sort of thing that trademarks were supposed to protect us from?

One answer to that question can be found on one of the LibreOffice download sites, where it is noted that clicking on the "Download" button will start with the "DomaIQ" installer. This bit of software is described in these terms:

DomaIQ™ is an install manager which will manage the installation of your selected software. Besides handling the installation of your selected software, DomaIQ™ can make suggestions for additional free software that you may be interested in. Supplemental software could include toolbars, browser add-ons, game apps, and other types of applications.

Herein lies the rub. The version of Apache OpenOffice or LibreOffice offered by these sites is, most likely, entirely unmodified; they may well be shipping the binary version offered by the project itself. But the handy "installer" program that runs first will happily install a bunch of unrelated software at the same time; by all accounts, the "suggestions" for "additional free software" tend to be hard to notice — and hard to opt out of. So users looking for an office suite end up installing rather more software than they had intended, and that software can be of a rather unfriendly nature. Once these users find themselves deluged with ads — or worse — they tend to blame the original development project, which had nothing to do with the problem.

The purveyors of this software are in complete compliance with the licensing and trademark policies for the software they distribute; at least, those that continue to exist for any period of time are. That software is unmodified, links to the source are provided, and so on. What they are doing is aggregating the software with the real payload in a way that is quite similar to what Linux distributors do. Any attempt to use trademark policies to restrict this type of aggregation would almost certainly bite Linux distributors first.

Consider an example: a typical Linux distribution advertises the fact that it includes an office suite; it also comes with an installer that can install software that presents advertisements to the user (the music stores incorporated into media players, for example, or Amazon search results from Unity), phones home with hardware information (Fedora's Smolt) or exposes the system to external compromise (Java browser plugins). It is hard to imagine a trademark policy that could successfully block the abuses described in this article while allowing Linux distributors to continue to use the trademarked names. Free software projects are generally unwilling to adopt trademark policies of such severity.

As a result, there is little that the relevant projects can do; neither copyright nor trademark law can offer much help in this situation. That is why these projects are reduced to putting up pages trying to educate users about where the software should actually be downloaded from. The conclusion that one might draw is that trademarks are only partially useful for the purpose of protecting users. They can be used as a weapon against the distribution of overtly compromised versions of free software programs, but they cannot guarantee that any given distribution is safe to install. There is still no substitute, it seems, for taking the time to ensure that one's software comes from a reliable source.

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