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Open Source Doesn't Mean a Trademark Free-For-All
Open-source licenses give you rights to copy, and in some cases, they define patent rights and responsibilities, but when they mention trademarks at all, most of them exclude rights rather than include them.
Forrester Blog Network
August 16, 2024
2 Min Read
Alamy
By Andrew Cornwall
Recently, the Linux company SUSE asked the open-source project openSUSE to rebrand. Rebranding a product involves considerable effort. Open-source projects that rely on volunteer efforts face additional challenges:
They must build community consensus.
To change branding, they need volunteers to do the work. Volunteers can be particularly hard to find if they resent being forced to rebrand.
Sometimes, including with openSUSE, the trademark IP owner contributes to the project both financially and with development resources, further complicating the relationship.
Licenses Aren't All-Encompassing
Open-source licenses give you rights to copy, and in some cases, they define patent rights and responsibilities, but when open-source licenses mention trademarks, most of them exclude rights rather than include them. Just because a project is open source doesn't mean it can't hold trademarks. PureThink argued that Neo4j relinquished its rights over the "Neo4j" trademark by open-sourcing, creating a "naked trademark license." A US court found otherwise.
A few open–source licenses mention trademarks. GPLv3 says that notices about trademarks may be included as "additional terms," but even without that clause, you must be cautious.
Just Ask Debian About Firefox
The SUSE/openSUSE issue isn't a case of an evil corporation wielding tyrannical power over an open-source project. Even open-source projects can have trademarks. Mozilla protects trademarks for its projects, including Firefox. In the past, it had run into bad actors that took the Firefox source code, rebuilt it, and added malware. Mozilla uses its trademarks to thwart this.
But this led to a problem for Debian, a Linux distribution, that wanted to deliver a patched version of Firefox to its users. Debian assures its users that all Debian assets are free to use and have licenses not specific to Debian. Debian understood that this meant Firefox's branding was unavailable, and its compromise was to ship a trademark-free version of Firefox called Iceweasel. Since then, the two parties have resolved the issue amicably, and you can now install Firefox with Debian patches from Debian's package manager.
Make Sure That You're Legal Before You Use a Trademark
There are times when you're free to use a trademark. Trademarks have fair-use exceptions, and open-source projects frequently provide guidelines on proper trademark usage that are even more lenient than fair use. There's no sign that openSUSE will refuse to rename itself, although there will probably be a few grumbles about the work involved. Whether you run an open-source project or a commercial organization that uses open source, understand that the trademark holder must enforce the trademark or risk losing it. Don't put them in that position.
If open source is an issue you're dealing with, Forrester clients can schedule a guidance session with me, Alvin Nguyen, or Naveen Chhabra.
This article originally appeared on Forrester's Featured Blogs.
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