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The Linux® Trademark - Tempest in a Teapot - Updated
Tuesday, August 16 2005 @ 10:42 AM EDT

I got email on this and I see mucho anguish on Slashdot. Why, oh why, some wonder, would lawyers be sending out letters in Australia, asking folks using the mark LINUX to formally license the mark? And *pay* for it? What is this? A violation of the spirit of openness? Doesn't the GPL mean you can do whatever you like with the name? Isn't Linus' policy that people can pretty much use the Linux name as long as they are decent about it?

First, it's coming ultimately from Linus. There is a web site you can visit to verify that policing the mark has been given to the Linux Mark Institute by Linus, and the page is hosted by OSDL:

WHO WE ARE:

As stated in our articles of incorporation, The Linux Mark Institute ("LMI") is an organization established "to protect the public and Linux® users of the world from unauthorized and confusing use of the Linux mark and to issue proper licenses to authorized users of the Linux mark." LMI is not designed to generate profits for anyone, which is why Linus Torvalds has given LMI primary sub-license rights for the mark. We work to protect legitimate uses of the LINUX trademark without burdening Linus Torvalds or any one entity with the financial responsibility of protecting the LINUX community's use of the mark.

The express and only purpose of this organization is to set up a simple, self-funding procedure by which interested companies and individuals developing Linux operating system products and those desiring to sell services, accessories and related Linux paraphernalia can obtain a non-exclusive and simple trademark license for the proper use of the mark.

Jon Hall of Linux International is overseeing disputes about this trademark effort for Linus. I think we can trust them both. So if they are doing this, we can safely assume they have good reasons. What are they?

Let's think about what trademark is and what it is for. Please remember that Linus didn't write trademark law. It is what it is. He can only work within the framework that others have established. Having said that, why would he care about the name Linux and how it is used? And what could happen if he doesn't show an interest in how the name is used by others? I've collected some information for you, so you can breathe normally again.

Why Linus Needs to Care

I don't know about you, but I get disturbed when I see antiLinux folk using the name Linux. For example, I thought it was loathsome to call the newsletter Linux Business Week, when all it was about was antiLinux material. I gather Business Week didn't much care for the name either, so they had to change the name. But what about Linux Insider? All they ever seem to report is antiLinux news. If I owned the Linux trademark, I'd want to make them stop, if I could.

Or let's imagine for a moment. What if Microsoft decided that the ultimate purpose of its Linux Lab (note the name) is to put out a version of Windows, Windows apps running on a twisted, poorly functioning pseudo Linux kernel, and they decide to call it Windows Linux? I know. Impossible. But what if? Or SCO decides their next product line will be called Cymphonix Linux even thought it's actually Unix? I understand Cymphonix is a Linux product, actually, and they are now in a partnership with SCO, so let's just imagine it for a sec. Or what if some porn website sets up a Linux Freaky Sex site or something awful? Could Linus stop them from using the name?

Such use would fall under the legal category of dilution, and here's a page that explains what that is with respect to the Federal Trademark Dilution Act of 1995, which expanded rights for famous marks beyond what the Lanham Act grants to all marks:

Dilution causes of action are normally brought when the defendant's use of the mark causes either
* "Blurring", by which the connection in consumers' minds between the plaintiff's mark and the plaintiff's goods or services is weakened; or

* "Tarnishment", which means that the defendant's use is unsavory or unwholesome, or the mark is used in connection with inferior products.

Obviously, Linus doesn't want either thing to happen to the good name of Linux. But can he stop it? Only if he has a protectable trademark on the name.

When is a Trademark Infringed and How Does is Work?

Bitlaw explains trademark infringement:

A mark is infringed under U.S. trademark law when another person uses a device (a mark) so as to cause confusion as to the source or sponsorship of the goods or services involved. Multiple parties may use the same mark only where the goods of the parties are not so similar as to cause confusion among consumers. Where a mark is protected only under common law trademark rights, the same marks can be used where there is no geographic overlap in the use of the marks. Federally registered marks have a nation-wide geographic scope, and hence are protected throughout the United States.

Trademark law isn't like copyright. It's not automatic. Under trademark law, you simply must control the use of your mark by others or you can lose your mark, even if you've registered it. Bitlaw explains what you have to prove to win a trademark case:

The elements for a successful trademark infringement claim have been well established under both federal and state case law. In a nutshell, a plaintiff in a trademark case has the burden of proving that the defendant's use of a mark has created a likelihood-of-confusion about the origin of the defendant's goods or services. To do this, the plaintiff should first show that it has developed a protectable trademark right in a trademark. The plaintiff then must show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public. The confusion created can be that the defendant's products are the same as that of the plaintiff, or that the defendant is somehow associated, affiliated, connected, approved, authorized or sponsored by plaintiff. [emphasis added]

One of the ways you can show you have a protectable mark is to show that you license it to others using it, that not every Tom, Dick and Harry is out there using the same mark. If they are using it every which way, in what way does the name belong to you? That is what the trademark office or court will ask you. Here's a snip from "Legal Guide for Starting and Running a Small Business" by Fred S. Steingold, on what to do to police your mark properly, one section of a longer list:

* Take prompt legal action if other businesses use your trademark without permission. A trademark may become weakened or even generic if others use it to describe their products and you do nothing about it. You or your lawyer should send a letter by certified mail (return receipt requested) demanding that the infringement cease. If your demand is ignored, be prepared to go to court to seek an injunction - but first do a careful cost/benefit analysis to satisfy yourself that it's worth the expense.

* If you discover that a newspaper or TV program has improperly used your trademark, send them a letter. Keep a copy in your records as proof that you have consistently enforced your trademark rights.

Wikipedia confirms:

Failure to maintain consistent quality can lead to abandonment of a mark, when the law will no longer protect the trademark because it has ceased to function as an indicator of a particular product. Marks may also be abandoned by "naked licensing", which involves the owner granting rights to use the mark to another party without sufficiently controlling how or on what they use it. The mark is then released for general use. (see also below under Policing Trademarks) . . . .

It is important to note that although there are systems which facilitate the filing, registration or enforcement of trade mark rights in more than one jurisdiction on a regional or global basis (eg. the Madrid and CTM systems, see further below), it is currently not possible to file and obtain a single trade mark registration which will automatically apply around the world. Trade mark laws are territorial in nature and generally apply only in the applicable country or jurisdiction, a quality which is sometimes referred to as ‘territoriality’.

The last point is why separate registration and enforcement will have to be by country. Australia's trademark law and policies are explained here.

What's a Trademark For?

The International Trademark Association (INTA) has some great information on the subject, as you would expect. Here's what they say the differences are between trademarks, copyright and patents:

A Trademark (®, ™, SM) protects a word, phrase, symbol and/or design used with a product or service on the market. A trademark is often referred to as a brand. Trademark rights may continue indefinitely, as long as the mark is neither abandoned by the trademark owner, or loses its significance in the marketplace as a trademark by becoming a generic term. For a full definition please see FAQ #1.

A Copyright (©) protects the original way an idea is expressed, not the idea itself. It includes artistic, literary, dramatic or musical works presented in a tangible medium such as a book, photograph or movie. This protection is given to works to prevent unauthorized copying. The general rule for a work created on or after 01-01-1978, is that the copyright lasts for the author's lifetime plus 70 years after the author's death, or 95 years after publication for a work made for hire.

A Patent protects a new and useful idea, which includes a process and/or machine. It is granted by the government, providing an inventor with exclusive rights to make, use and sell a patented invention. Patents have a fixed term, usually 17 to 20 years.

Why Licensing and - Gasp - Fees?

Here's INTA on licensing your trademark:

3. Why is a licensor required to exercise quality control over a licensee's goods and services?

Control is needed because a trademark represents the trademark owner’s reputation for goods and services of a certain level of quality, and consumers tend to rely on this reputation in making purchasing decisions. If a licensor does not exercise sufficient control over the quality of the goods and services offered by the licensee, the trademark may, in some countries (for example, the United Kingdom), become vulnerable to attack by the licensee or a third party. In other countries, such as the United States, the trademark may be deemed abandoned.

A license will provide for quality control by the licensor by including provisions such as:

* Trademark Usage - The licensor may specify the manner in which the trademark will be used on or in connection with the goods and services of the licensee and on advertising and promotional materials. The licensee may be required to obtain the licensor’s permission before using any new presentation of the trademark.

The fees are a method of demonstrating ownership and control. Linus didn't just wake up one morning and decide to cash in on the name. It's about doing what the law looks to when deciding if he has a protectable mark. The fees also pay for the adminstrative tasks involved in policing the mark, registering the mark in various places, and approving licensees, etc. The fees are incredibly low, by the way. Here's the LMI fee structure:

Sliding Scale.

An Annual Fee is applied to each sublicensed trademark. The fee is set according to two factors: A) the for profit/non-profit status of your company or organization, and B) the aggregate gross revenue you expect to earn in the next fiscal year for goods/services associated with the mark in question. Marks grouped in a brand are treated as a single mark.

Non-Profit Tier
Annual Fee = US$200

For Profit/Other Tier 1
[This is a "grandfather clause" for written sublicenses executed prior to August 1, 2004] Annual Fee = $0

For Profit/Other Tier 2
[Total projected annual gross revenue between zero and US $100,000] Annual Fee = US $200

For Profit/Other Tier 3
[Total projected annual gross revenue between US $100,000 and US$200,000] Annual Fee = US $500

For Profit/Other Tier 4
[Total projected annual gross revenue between US $200,000 and US $1 million] Annual Fee = US $1000

For Profit/Other Tier 5
[Total projected annual gross revenue over US $1 million] Annual Fee = US $5000

If you are making between $200,000 and a cool million using the name Linux, do you find it unreasonable that you pay a $1,000 to make sure the name continues to mean something? As you can note, you don't pay anything like that if you are a nonprofit. And you may not need a license anyway. In the US, there is a concept called fair use. If I write about Linux, for example, on Groklaw, I don't have to pay to use the name in a story. You don't either. There are preferred ways of indicating that I know it's a registered mark, however:

How to publicly acknowledge that Linus Torvalds is the owner of the Linux trademark.

Attribution Is For Everyone

If your use of the Linux trademark doesn't fall under the scope of the Linux Sublicense, you should attribute ownership of the mark to Linus Torvalds in two ways:

1. For each web page, advertisement, or publication, the first prominent appearance of LINUX should feature the "circle R" character adjacent to the X, as follows:

Linux®

2. At the end of your web page, advertisement, publication or media broadcast, include the following text in a legible font and size:

Linux® is the registered trademark of Linus Torvalds in the U.S. and other countries.

But if I set up a business selling a Groklaw Linux for Lawyers distribution, let's say, then I'd have to pay to license the use of the name, or change the name. When I think about having to change the name, chancees are I'd rather pay, because the name has value.

Who Needs a License?

LMI has a very clear page all about this. Here's an excerpt:

Who needs a linux® license:

To protect a registered trademark, the owner is required to "police" or control the use of the mark by others, under penalty of loss of the mark. Others may use or refer to a registered mark in some circumstances without a license from the owner if it is for a so-called "fair use," or in other cases they may need to obtain a license for the use. Some examples may help clarify the differences. Linus and LMI are not trying to develop a revenue source from licensing, so our interpretation of the trademark laws may be a bit more liberal than those of other trademark owners.

Examples of Fair Use.

If you are a journalist interested in writing articles that include the term "Linux," you do not need a sublicense. If you are printing up pencils, stenciling T-shirts, or distributing coffee cups with a legend on them like "Linux®is the greatest!" or "Even my Mother uses Linux®!" this is normally considered "fair use".

Trademarks: Use Requiring A Sublicense.

On the other hand, if you plan to market a Linux-based product or service to the public using a trademark that includes the element "Linux," such as "Super Dooper Linux" or "Real Time Linux Consultants" you are required to apply for and obtain a low-cost sublicense from LMI. This is true whether or not you apply to register your trademark with a government.

So, breathing better now? Remember that it's patents that are the bad guys. We depend on copyright to protect and enforce our GPL rights. And trademark is just another word for a good name, a name that stands for something. It's worth protecting. If it gets diluted by use by those with antiLinux agendas, the name won't mean much in the end. And that would be a crying shame.

There's an established way to protect a trademark that is being followed by those delegated to do so. If we all cooperate, we can help Linus protect the good name of Linux.

Sadly, the world isn't a paradise, where everyone loves one another and no one would deliberately do harm to their neighbor. Laws are a coping mechanism, a way to build a protective wall. Linus has no choice but to build that wall. We have to share the planet with those we may not like, but we don't have to let them abuse our good names.

Speaking of abusing someone's good name, Jeremy Malcolm, the attorney in charge of sending out the licensing letters in Australia, has a long history of voluntary and pro bono work for the Internet and open source communities. This includes serving on the boards of the Internet Society of Australia, the Western Australian Internet Association, Electronic Frontiers Australia, the Society of Linux Professionals (WA) and the Australian Public Access Network Association. He also received the Community Award in the 2004 AUUG Australian Open Source Awards for outstanding contribution to the understanding of para-technical and legal issues surrounding open source within the Australian context. He isn't a Scientologist and never has been, by the way, although he believes in freedom of religion for all.

Don't you hate it when the mainstream media doesn't bother to check their facts? Why do what they do, then? The community stands for ethics, does it not?

UPDATE:

For all of you who are still *positive* this is some kind of a "scam", I suggest you read what maddog wrote about it, posted to the Linux Australia email list. The poor man has spent $250,000 of his own money already, and the idea is to set up a self-supporting non-profit to carry the load. Read it and weep, those of you so quick to find fault, and then say you're sorry, please. Here's just a bit:

Since 1995, when an unfortunate incident in the United States showed us that the world is not made of altruistic people and companies, Linux International has been defending the Linux Trademark. At that time an entity had obtained a US trademark on the word "Linux", and was trying to obtain twenty-five percent of the REVENUES of companies that had the word "Linux" in their name, or in their product names. Instead of all the member companies fighting this battle individually, Linux International fought it and won. Unfortunately it cost us a lot of money to do this, despite the pro bono efforts of Gerry Davis, of the law firm of Davis and Schroeder.

Linux International has been defending the Linux Trademark for the world, which due to the costs of registering and obtaining International Trade Marks is VERY expensive. Linux International has spent over 300,000 USD to do this over the years. LI is a non-profit and does not have very much revenue, so some of this money has come from my own personal checkbook. While I can not say how much money I have spent on defending the mark per se, I can tell you that I have spent about 250,000 USD of my own money in keeping LI alive. I am not looking for medals or a chest to pin them on. I am only stating this to show people that this is not a "scam", nor is anyone making any money off this other than the international legal and trademark community, and I am sure that they are necessary and justifiable fees. Certainly Jeremy Malcolm has seemed to be above board and conscientious in all of our dealings with him, as has Jonathan Oxer and the rest of the fine people at LAI.

After a while the board of Linux International recognized the advantage of forming a separate non-profit, the Linux Mark Institute (LMI). We need LMI to be self-funding, and following trademark laws in the 200 countries of the world is very expensive.

You might also like to read Linus explain trademarks.


Linux® is the registered trademark of Linus Torvalds in the U.S. and other countries


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