The uneasy role of trade marks in free and open source software: you can share my code, but you can't share my brand

Abstract

At first blush, a trade mark for free and open source software (FOSS) is no different from any other trade mark. A trade mark for open source software can be misused like any other trade mark and enforcement against infringers is a necessary task. What is different, however, is the reaction of those against whom enforcement might be sought. Because of the collaborative nature of much open source software development and its culture of sharing, efforts to restrict how a trade mark may be used can meet with resistance, sometimes even challenged on the basis that trade mark enforcement is contrary to the open source licence under which the software is distributed. This article will discuss enforcement of FOSS trade marks, examining both open source copyright licences and trade mark law principles. In furtherance of the collaborative nature of open source code development and use, however, a trade mark owner for an open source software project may also want others to use its mark. This article will also discuss trade mark licensing law principles including when the sharing goes too far, putting trade mark rights at risk of loss. Part I of the article will give a short background on the open source development model, both technical and community aspects. Part II of the article will review the legal aspects of trade mark use for FOSS projects.