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To read comments to this article, go here
"Owning" a Trademark - The SugarCRM et al License Debate
Tuesday, July 17 2007 @ 11:59 AM EDT

There is a discussion going on at SugarCRM's forum page, "Why the Sugar license is mad, bad and may be dangerous" -- part of a much larger discussion that Matt Aslett captures well in this article on the current state of such non-OSI-approved licenses -- that reminded me that I've been meaning to explain something to you about trademarks. I keep reading sentences that OSI doesn't "own" the trademark to Open Source. I think such a sentence should be written instead that it doesn't have a *registered* trademark, but here's the thing: you don't have to register a trademark to have one. I think it's important to understand that, so let me show you some materials I've collected for you on this subject.

Here's the USPTO's "Basic Facts about trademarks, and here's what it says about registering one:
Is registration of my mark required?

No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,

* constructive notice to the public of the registrant's claim of ownership of the mark;

* a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;

* the ability to bring an action concerning the mark in federal court;

* the use of the U.S registration as a basis to obtain registration in foreign countries; and

* the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

When can I use the trademark symbols TM, SM and ?

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

As you can see, registering has many advantages, but not registering doesn't mean you can't establish rights in a mark. Considering OSI's long association with OSI-approved lisencing, I doubt any lawyer would tell its client that OSI has no conceivable rights.

Bitlaw explains trademarks is some detail:

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.

What is unique about trademark law is that it is designed to protect the public, not just the owner of the mark. By that I mean that the whole purpose is to let people know if some product or service really is what it claims it is. That's why I can't cook up some cookies and sell them as Famous Amos Cookies. He has that mark, and if I do that, people might buy my cookies thinking they are his. Trademark law is designed to prevent me from doing that. Although I do make good cookies, and you wouldn't be disappointed, you surely would be confused as to who prepared and sold those cookies to you.

Here's Bitlaw's page on common law trademarks:

Trademark rights arise in the United States from the actual use of the mark. Thus, if a product is sold under a brand name, common law trademark rights have been created. This is especially true once consumers view the brand name as an indicator the product's source....

Federal registration, a system created by federal statute, is not required to establish common law rights in a mark, nor is it required to begin use of a mark.

So with the phrase OPEN SOURCE, it has always had a clearly defined meaning, defined by OSI, and the list of OSI-approved licenses has always meant that if you see a license on that list, it has met the definition of Open Source as it has always been defined by OSI and has the right to call itself Open Source. Here's some more background on the debate, also here.

Still think OSI can have no trademark rights because it didn't register the mark?

The issue, then, isn't whether they registered; the issue is, is it so generic it can't be owned by anyone or merely descriptive, and if descriptive, has it nevertheless achieved a secondary meaning that could qualify it as a mark? I'll let Bitlaw explain that last bit:

However, it is possible for descriptive marks to "become distinctive" by achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this "second meaning" (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity. The acquisition of secondary meaning is often proven through the use of consumer surveys, that show that consumers recognize the mark as a brand, such as "FORD", as opposed to a descriptive term, such as "reliable"

Black's Law Dictionary (Fifth Edition) defines secondary meaning like this:

"[A] ... party through advertising or massive exposure ... [establishing] its trademark in the minds of consumers as an indication of origin from one particular source."

Can't you imagine a plausible court argument that Open Source has now achieved secondary meaning, that the public associates it with OSI approval? IANAL, but I sure can. That same page goes on to explain what courts look for in determining if a mark has reached secondary meaning:

Courts examine the following factors in determining whether a name, word, term, or trademark has acquired secondary meaning:
1. The length and manner of use;
2. The nature and extent of advertising and promotion; and
3. The efforts made in promoting a conscious connection between the name, word, term, or mark and the product, service, or business in the minds of consumers.

Do you really think OSI would have any difficulty meeting the requirements of that list? To add to the pot, OSI does have a registered mark on OPEN SOURCE INITIATIVE APPROVED LICENSE, which I can't link to because the USPTO hasn't joined the 21st century yet technically. What that mark means is that no one else can use that complete phrase in the areas that OSI does, and frankly, that would seem to add weight to the secondary meaning argument. No one can claim to meet the OSI credentials without actually meeting them, and for sure no one could assert a claim in the phrase Open Source higher than OSI's, I don't think, because of the well-known history.

To my thinking, it's more like the Open Group, which owns the UNIX trademark. Unix is also arguably a descriptive term, but you can't call your software UNIX without meeting the Open Group's requirements, and that does mean something to people. It means exactly what Open Source means: that the product has met specific requirements set by an entity recognized as having the authority to decide who does and who doesn't meet them.

So, with that background, you will comprehend why Aslett reports that SocialText and others have adjusted their licensing to be OSI-approved. SugarCRM has said it might consider GPLv3, but so far is has made no public change. Hopefully it will, so we can all move on to other discussions. Here's their current license, SugarCRM Public License.

The comment on SugarCRM's forum relates not so much to issues of control of distribution and modification or whether it's OSI-approved, but specifically objects to the requirement in the license that every splash screen show the phrase "Powered by SugarCRM":

However, in addition to the other notice obligations, all copies of the Covered Code in Executable and Source Code form distributed must, as a form of attribution of the original author, include on each user interface screen (i) the "Powered by SugarCRM" logo and (ii) the copyright notice in the same form as the latest version of the Covered Code distributed by SugarCRM, Inc. at the time of distribution of such copy. In addition, the "Powered by SugarCRM" logo must be visible to all users and be located at the very bottom center of each user interface screen. Notwithstanding the above, the dimensions of the "Powered By SugarCRM" logo must be at least 106 x 23 pixels. When users click on the "Powered by SugarCRM" logo it must direct them back to http://www.sugarforge.org. In addition, the copyright notice must remain visible to all users at all times at the bottom of the user interface screen. When users click on the copyright notice, it must direct them back to http://www.sugarcrm.com

Not only can such a requirement result in ridiculous looking splash screens if everyone starts doing this, and the comment includes what such a page could look like, but it also can result in juxtaposition of the mark with content SugarCRM might not really wish to be associated with, as delineated in the forum discussion. And with trademarks, there are rather onerous policing requirements, which in my view can become an unsupportable burden if your mark is now required to be plastered everywhere. Here's a law firm explaining the pragmatic aspect of trademark policing, and it mentions that it costs on average a half million dollars for just one lawsuit to enforce your mark in the US. License terms have consequences, because there is always the implied need to make someone comply, so the more complex your license becomes, the more it is likely to cost to make the world and its dog comply.

So why might a company want such a requirement? Zimbra and others have used similar licenses, and on here is Zimbra's explanation back in 2005:

The Zimbra AJAX Public License (for our AJAX Toolkit) is vanilla Mozilla, but (as you point out), the Zimbra Public License (which is also derived from the MPL) does have a UI attribution requirement that may prove controversial in some quarters. The Zimbra Community is not alone in taking this approach, and moreover, we expect this trend to grow with the proliferation of open source applications that are architected as a rich AJAX/Web 2.0 user-interface married to a supporting server that exports XML bindings to the AJAX client.

Our goal at Zimbra for such attribution was and is to encourage large commercial companies that elect to retarget rich open source UIs like Zimbra's to their own proprietary back-ends to also give some recognition back to the open source projects from which they derived their solutions. Otherwise, we felt there was some risk that a nascent open-source project like Zimbra could become fragmented or co-opted by bigger companies. Our hope is that this strategy will encourage balanced investment in both the client and server technologies necessary for the Zimbra community to be successful.

I think it's not impossible to comprehend or even relate to that worry, but they may not have thought it through. By the way, here's their license.

I can't resist reminding everyone that asking for recognition by requesting that everyone say or write GNU/Linux instead of just Linux is something Open Source folks have derided for years. And while one can request, once you make it a requirement, you have encumbered the code with a requirement that isn't part of the Open Source Definition and that clashes with it. For clarity, I'll remind you that the OSD is not identical to the Free Software Definition, and you won't find Sugar's license on FSF's list either. So SugarCRM is a bit in limbo and would enhance its standing in both communities by clarifying what exactly it is. Hence the question Dana Blankenhorn raised, is this license and others like it really Open Source? By the way, I noticed that Palamida now lists 171 projects that have adopted GPLv3 already.

Can a company say, "It's Open Source enough to me by my personal definition"? Or isn't there already a definition the community has long supported and accepted? So while companies can use any license they wish, the argument is that they ought not to use a phrase that already has a clearly defined meaning and attach it to a new definition, particularly when the phrase isn't theirs to define. Hopefully, this little tour of trademark law will help you understand the arguments on both sides better.


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