A trademark battle in the Arduino community

The Arduino has been one of the biggest success stories of the open-hardware movement, but that success does not protect it from internal conflict. In recent months, two of the project's founders have come into conflict about the direction of future efforts—and that conflict has turned into a legal dispute about who owns the rights to the Arduino trademark.

The current fight is a battle between two companies that both bear the Arduino name: Arduino LLC and Arduino SRL. The disagreements that led to present state of affairs go back a bit further.

The Arduino project grew out of 2005-era course work taught at the Interaction Design Institute Ivrea (IDII) in Ivrea, Italy (using Processing, Wiring, and pre-existing microcontroller hardware). After the IDII program was discontinued, the open-hardware Arduino project as we know it was launched by Massimo Banzi, David Cuartielles, and David Mellis (who had worked together at IDII), with co-founders Tom Igoe and Gianluca Martino joining shortly afterward. The project released open hardware designs (including full schematics and design files) as well as the microcontroller software to run on the boards and the desktop IDE needed to program it.

Arduino LLC was incorporated in 2008 by Banzi, Cuartielles, Mellis, Igoe, and Martino. The company is registered in the United States, and it has continued to design the Arduino product line, develop the software, and run the Arduino community site. The hardware devices themselves, however, were manufactured by a separate company, "Smart Projects SRL," that was founded by Martino. "SRL" is essentially the Italian equivalent of "LLC"—Smart Projects was incorporated in Italy.

This division of responsibilities—with the main Arduino project handling everything except for board manufacturing—may seem like an odd one, but it is consistent with Arduino's marketing story. From its earliest days, the designs for the hardware have been freely available, and outside companies were allowed to make Arduino-compatible devices. The project has long run a certification program for third-party manufacturers interested in using the "Arduino" branding, but allows (and arguably even encourages) informal software and firmware compatibility.

The Arduino branding was not formally registered as a trademark in the early days, however. Arduino LLC filed to register the US trademark in April 2009, and it was granted in 2011.

At this point, the exact events begin to be harder to verify, but the original group of founders reportedly had a difference of opinion about how to license out hardware production rights to other companies. Wired Italy reports that Martino and Smart Projects resisted the other four founders' plans to "internationalize" production—although it is not clear if that meant that Smart Projects disapproved of licensing out any official hardware manufacturing to other companies, or had some other concern. Heise Online adds that the conflict seemed to be about moving some production to China.

What is clear is that Smart Projects filed a petition with the US Patent and Trademark Office (USPTO) in October 2014 asking the USPTO to cancel Arduino LLC's trademark on "Arduino." Then, in November 2014, Smart Projects changed its company's name to Arduino SRL. Somewhere around that time, Martino sold off his ownership stake in Smart Projects SRL and new owner Federico Musto was named CEO.

Unsurprisingly, Arduino LLC did not care for the petition to the USPTO and, in January 2015, the company filed a trademark-infringement lawsuit against Arduino SRL. Confusing matters further, the re-branded Arduino SRL has set up its own web site using the domain name arduino.org, which duplicates most of the site features found on the original Arduino site (arduino.cc). That includes both a hardware store and software downloads.

Musto, the new CEO of the company now called Arduino SRL, has a bit of a history with Arduino as well. His other manufacturing business had collaborated with Arduino LLC on the design and production of the Arduino Yún, which has received some criticism for including proprietary components.

Hackaday has run a two-part series (in February and March) digging into the ins and outs of the dispute, including the suggestion that Arduino LLC's recent release of version 1.6.0 of the Arduino IDE was a move intended to block Arduino SRL from hijacking IDE development. Commenter Paul Stoffregen (who was the author of the Heise story above) noted that Arduino SRL recently created a fork of the Arduino IDE on GitHub.

Most recently, Banzi broke his silence about the dispute in a story published at MAKEzine. There, Banzi claims that Martino secretly filed a trademark application on "Arduino" in Italy in 2008 and told none of the other Arduino founders. He also details a series of unpleasant negotiations between the companies, including Smart Projects stopping the royalty payments it had long sent to Arduino LLC for manufacturing devices and re-branding its boards with the Arduino.org URL.

Users appear to be stuck in the middle. Banzi says that several retail outlets that claim to be selling "official" Arduino boards are actually paying Arduino SRL, not Arduino LLC, but it is quite difficult to determine which retailers are lined up on which side, since there are (typically) several levels of supplier involved. The two Arduino companies' web sites also disagree about the available hardware, with Arduino.org offering the new Arduino Zero model for sale today and Arduino.cc listing it as "Coming soon."

Furthermore, as Hackaday's March story explains, the recently-released Arduino.cc IDE now reports that boards manufactured by Arduino SRL are "uncertified." That warning does not prevent users from programming the other company's hardware, but it will no doubt confuse quite a few users who believe they possess genuine Arduino-manufactured devices.

The USPTO page for Arduino SRL's petition notes pre-trial disclosure dates have been set for August and October of 2015 (for Arduino SRL and Arduino LLC, respectively), which suggests that this debate is far from over. Of course, it is always disappointing to observe a falling out between project founders, particularly when the project in question has had such an impact on open-source software and open hardware.

One could argue that disputes of this sort are proof that even small projects started among friends need to take legal and intellectual-property issues (such as trademarks) seriously from the very beginning—perhaps Arduino and Smart Projects thought that an informal agreement was all that was necessary in the early days, after all.

But, perhaps, once a project becomes profitable, there is simply no way to predict what might happen. Arduino LLC would seem to have a strong case for continual and rigorous use of the "Arduino" trademark, which is the salient point in US trademark law. It could still be a while before the courts rule on either side of that question, however.