Lessons from the GNOME-Groupon trademark battle

At GUADEC 2015 in Gothenburg, Sweden, Pamela Chestek delivered a keynote presentation that provided insight into one of the biggest stories of the past year for the GNOME project: the trademark battle between the GNOME Foundation and the web service Groupon. While the fight was concluded months ago—in GNOME's favor—she pointed out several lessons learned along the way that she thinks can be instructive for other free-software projects.

Chestek began by introducing herself and briefly describing her history with open-source software. She is a US-based attorney who worked for several years in various other corporate environments before entering the technology field. After some time working at proprietary software vendors she landed at Red Hat, at which point, she said, it took about a year to get truly familiar with the distinct differences inherent in open source.

The Groupon case was a major news event in the free-software arena, but its full history may not be familiar to all. Chestek's involvement began on May 22, 2014, when GNOME Foundation Executive Director Karen Sandler sent her an email noting that Groupon had filed for a trademark on "GNOME" for a recently announced point-of-sale tablet product—and asking if she "had any interest in helping the GNOME Foundation out." Looking into it, Chestek found that Groupon had actually filed 10 trademark applications for variations on the "GNOME" name. The product in question was really an iPad in a custom frame, designed to be a competitor to Square's point-of-sale consoles.

Since "GNOME" is a registered trademark in the technology business, Groupon's applications were clearly infringing, Chestek explained. On May 23, Chestek sent a politely worded email to Groupon's attorneys that said, in part, that she was "willing to assume that somehow your company was unaware of the GNOME Foundation's trademark" ... despite the years of continuous usage, millions of installs, multiple active social-media accounts, Wikipedia and press coverage, and so forth. That got a laugh from the audience but, she added, she has no doubt that Groupon was well aware of the GNOME Foundation's trademark when it filed its own—and probably saw that the Foundation was a nonprofit or that GNOME was a "niche" project and assumed it could get away with ignoring the matter.

Groupon's attorneys replied that they felt there was no chance that the two marks would be confusing to consumers, since its product was intended to be pronounced "Gee-nome." That claim meant nothing, Chestek said; the courts would clearly assume the dictionary pronunciation was the default for both marks—and, besides, many people do pronounce GNOME with an emphasis on the "G" due to its association with GNU. In the meantime, Groupon kept filing additional trademark applications. Chestek exchanged multiple letters and phone calls with Groupon's attorneys but, she pointed out, at no point did Groupon offer to drop its applications or change the name of its product.

By late July, the original ten applications had moved into the US Patent and Trademark Office (USPTO)'s "opposition" phase, which meant that they could be formally challenged in a legal proceeding. Sandler raised the possibility of going public with the conflict, which would let Groupon see that—despite what it might have assumed—GNOME was a large and popular product. Also, that would let the Foundation begin to raise money to mount the trademark oppositions: roughly $80,000 would be needed to challenge the original ten applications (although Groupon had continued to file for even more).

Matters came to a head that November. At 8:00p.m. on October 31, Chestek got a call from Groupon's lawyer (an outside attorney, as always, she added; no one inside the company ever responded), who told her that Groupon had filed for several more GNOME-related trademarks "without notifying us," bringing the total to 28. She got copies of the filings a few days later, and on November 9, told the GNOME board that she "was sorry to say that I think it's time to raise money" for a legal fight. She had previously warned Groupon's lawyer that "we haven't gone public yet, and you're not going to like what happens when we do"—which elicited a scoff. What followed, she said, was a testimony to the power of community, and the GNOME and free-software community deserves the credit.

Board member Sriram Ramkrishnan replied to Chestek's email about fundraising with a memorable "Well then: here we go..." and wrote a blog post [Wayback Machine link] explaining the situation. It went live on November 10, accompanied by a tweet; the board prepared to do follow-up work to try and raise awareness and gather donations. Instead, "people just went crazy"—recirculating the story on Twitter, Google+, news outlets, and discussion forums. They called Groupon to complain, many people blogged, and the Freenode IRC network even broadcast a system-wide message alerting users of the service and pointing them to the fundraiser on the GNOME site. Needless to say, none of the public was taking Groupon's side.

By sheer coincidence, Groupon had an investors' meeting on November 11 that highlighted its "GNOME" product, which is amusing in retrospect. But one of the most negative parts of the story also took place on November 11, when an engineer from the Groupon technical blog posted a story presenting Groupon's side, which claimed that Groupon had been "communicating with the GNOME Foundation for months" trying to find an amicable resolution, and that would be happy to find an alternative name. None of those statements were true at all, Chestek said, and worse yet, the claims damaged GNOME by making it look like the aggressor. The Groupon post got picked up by a number of general news outlets.

But less than 24 hours later, two things had changed. The GNOME Foundation fundraiser had already met its $80,000 goal, and the overwhelming public pressure forced Groupon to back down. The company's blog was updated to reflect this, announcing that it was dropping all 28 trademark applications. In terms of success, Chestek said, the fastest relief that they could have hoped for by challenging the marks in the USPTO opposition process would have been 21 months—and that would only have challenged the registrations; it would not have prevented Groupon from using the marks.

Lessons

Ultimately, the free-software community raised over $102,000 for the effort with donations from more than 5,600 people. "I don't know of any other similar effort orchestrated like that," she said. Who else, she asked, would respond in such a way? People only do that for things they are genuinely passionate about. They feel an attachment to a brand, but no one would come to Apple's defense in the way that they came to GNOME's defense. That was the first lesson from the experience.

Although the trademarks were dropped (the Groupon tablet eventually hit the market without a name at all, she noted—"although you always worry, so I've kept an eye on it"), the tale was not yet finished. Chestek continued to seek action from Groupon to rectify the damage it had caused to GNOME's reputation with the blatantly false blog post. That took a lot of iterations, she said, but the company eventually agreed to put out an update to the offending blog post acknowledging that it had, in fact, been notified about the trademark issue by GNOME and apologizing for the misleading statements.

Getting that apology published was indicative of the second major lesson, she said: commercial companies simply don't know what to do with free-software principles. Groupon had wanted to conclude the deal with a sealed agreement that no one would be allowed to discuss in public, since that is the normal process in big business. Chestek had to explain to them that putting a gag order on thousands of individuals worldwide simply wasn't possible—and that it went contrary to GNOME's principles of transparency.

The final lesson was that GNOME is a powerful brand, even within the free-software movement, she said. "I'm not sure how many other projects could engender that kind of passionate response," she said, but it is few, and the project deserves credit for having built something so many people were motivated to come to the defense of.

Chestek took questions from the audience at the end. One audience member asked if any legal action should be brought about the misleading Groupon blog post. She said no, noting that it was in all likelihood someone inside the company who had imperfect, filtered information about the case, and who felt called to come to the company's defense.

Someone else asked why the GNOME Foundation board remained silent about the details of the case for so long. Chestek said that the board agreed to "not go out on the speaking circuit" about the issue because it had no desire to cause long-term business harm to Groupon, who had eventually settled the issue. The board agreed to post an update on the GNOME web site and point people to it, but to otherwise "try to let the issue fizzle out" on its own. It is a delicate balance to strike, she said.

Most of the questions, though, were about what other software projects can do to protect themselves from similar trademark infringement. By far the most important thing, Chestek said, is to register trademarks used by your project. "Part of my mission is to encourage projects to register as many trademarks as they can in as many jurisdictions as they can," she said. Too many developers fail to do so, thinking they will take care of it later, or underestimating the time that it will require. For that reason, she also encouraged developers to set up a formal relationship with a larger project (like GNOME), which can help with legal issues, or to consider joining an umbrella organization like the Software Freedom Conservancy.

But trademark registration can be complicated and, in some cases, expensive. The US is a particularly good jurisdiction for trademarks, she said. The EU is also vital for most free-software projects, but beyond that it can be hard to say how many jurisdictions one should register in. Furthermore, the sad reality is that trademark disagreements, like most areas of the law, often come down to who has the time and money to put up a fight—if indeed it comes to a fight. Unfortunately, not even the GNOME Foundation's successful challenge to Groupon can really do much (such as providing any legal precedents) to prevent similar attacks in the future. But it does illustrate that, despite what anyone might say, a trademark in a free-software project is just as strong as a trademark in a commercial company.

At the end of the session, longtime GNOME veteran Federico Mena-Quintero presented Chestek with a gift on behalf of the project: a handmade wooden plaque inlaid with the GNOME logo. That presentation was, of course, accompanied by a long round of applause from the attendees also expressing their individual gratitude to Chestek.

[The author would like to thank the GNOME Foundation for travel assistance to attend GUADEC 2015.]