Linus Explains Linux Trademark Issues

Normally I avoid posting direct comments from mailing lists here, but since Linus posted this on Kernel-dev and says that he hopes Slashdot picks it up, I think that's permission. This message addresses the recent rumors that have been floating around about Linus' lawyers going after domain squatters abusing the Linux Trademark. It's an interesting issue, and one that I'm sure will divide you guys: we've always hated it when domain names are taken from people by others, but this is our beloved Linux Trademark.

The following was written by Linus Torvalds and posted to kernel-dev

I've been getting tons of email about the trademark thing due to the
action of stopping the auctioning off of linux-related names, so instead
of just answering individually (which was how I started out), I'll just
send out a more generic email. And hope that slashdot etc pick it up so
that enough people will be reassured or at least understand the issues.

And hey, you may not end up agreeing with me, but with the transmeta
announcement tomorrow I won't have much time to argue about it until next
week ;)

Basically, the rules are fairly simple, and there really are just a few
simple basic issues involved:

- I (and obviously a lot of other people) do not want to have "Linux" as
a name associated with unacceptable (or borderline) behaviour, and it's
important that "Linux" doesn't get a name of being associated with
scams, cybersquatting, etc etc. I'd personally hate that, for rather
obvious reasons. I _like_ being proud of Linux, and what has been
achieved. I'd rather not have to apologize for it..

- Trademark law requires that the trademark owner police the use of the
trademark (unlike, for example, copyright law, where the copyright
owner is the copyright owner, always is, and always will be unless he
willingly relinquishes ownership, and even THEN he ends up having
rights).

This is nasty, because it means, for example, that a trademark owner
has to be shown as caring about even small infringements, because
otherwise the really bad guys can use as their defense that "hey, we
may have misused it, but look at those other cases that they didn't go
after, they obviously don't care.."

- Even with things that aren't scams or something like that, VALID uses
of "Linux" may be bad if they mean that other valid uses of "Linux" are
blocked.

Those are the kind of ground rules, I think everybody can pretty much
agree with them..

What the above leads to is

- I'm required to ask people to acknowledge the trademark. When you use
the term "Linux" in official marketing literature etc, you should
acknowledge it as a trademark owned by me. Not because I love seeing my
name in print, but simply because of the "policing" issue (#2) above.

(And no, that does NOT mean that you have to add that to normal,
everyday use of the term. Common sense rules the day, think of the
situations where you see the silly "xxxx is a trademark of yyyy", and
realize that yyyy may not really care except the legal issues force
them to ;)

- _Intent_ matters. It matters a lot.

If your intent is to use the word "linux" as part of a real Linux
project, that doesn't mean that you automatically absolutely have to
get permission from me. That's the LAST thing I want. I want "Linux" to
be as free as possible as a term, and the real reason for having a
trademark in the first place was to _protect_ it rather than use it as
some kind of legalistic enforcement thing.

But, for example, if your intent is to register "mylinux.com" (made up
example, I don't know if it is registered or not) only in the hopes of
selling the domain name for mucho dinero later, then that kind of
intent is not something I (or anybody else, I think) would find really
acceptable, because now the use of "linux" in this case has really been
a question of blocking somebody ELSE from using the term and using it
to get money.

This is where the cybersquatting laws come in, for example, allowing
the use of a trademark as a way to make sure that such squatting
activity does NOT happen.

- Being "specific" is _good_. Being specific largely avoids the problem
of many people/organizations wanting the same name. We had an example
long ago of somebody who would have wanted to register "Linux Expert"
as a servicemark, yet obviously that is a pretty generic term. Not
good, if it means that there will be confusion about who owns the term.

In contrast (to give some tangible examples), something like "VA Linux"
or "Red Hat Linux" oviously isn't a generic term: it's a very
_targeted_ term for something very specific. Those kinds of names do
not detract from other peoples ability to call _their_ Linux company
something else.

- Finally, you have to judge the "officialdom" and the importance of
the business side of your usage. Not because I or anybody else
really cares all that much, but more because of the "pain factor" if
the name is asked for by somebody else.

Basically, ask yourself the question: "What if somebody else had a
project, and happened to chose the same name for his project as I have
for mine, how strong a protection do I want for MY version of the
project?"

Also, ask yourself: "Would anybody ever have reason to question the
name, and do I need to make provisions for protecting this particular
instance of it" (and note that "anybody" may not be me as the trademark
owner myself, but it may be a competitor who wants to make life
uncomfortable for you)

If you decide that you want some official protection from the mark,
that probably means that you want to own your own version of the
trademark, ie a "service mark" or a "combination mark". There are
obvious cases where such a thing is wanted - you should not be
surprised to hear that various Linux companies own their own
combination marks, or have at the very least gotten that ownership
verbally approved by me pending getting the paperwork done.

So basically, in case the trademark issue comes up, you should make your
own judgement. If you read and understood the above, you know pretty much
what my motivation is - I hate the paperwork, and I think all of this is
frankly a waste of my time, but I need to do it so that in the future I
don't end up being in a position I like even less.

And I'm _not_ out to screw anybody. In order to cover the costs of
paperwork and the costs of just _tracking_ the trademark issues (and to
really make it a legally binding contract in the first place), if you end
up going the whole nine yards and think you need your own trademark
protection, there is a rather nominal fee(*) associated with combination
mark paperwork etc. That money actually goes to the Linux International
trademark fund, so it's not me scalping people if anybody really thought
that that might be the case ;)

I hope people understand what happened, and why it happened, and why it
really hasn't changed anything that we had to assert the trademark issue
publically for the first time this week. And I hope people feel more
comfortable about it.

And finally - I hope that people who decide due to this that what they
really want is trademark protection for their own Linux trademark, that
they could just wait a week or two, or contact maddog at Linux
International rather than me. We're finally getting the shroud of secrecy
lifted from transmeta (hey, we'll have a real web-site and zdtv is
supposed to webcast the announcement tomorrow), and I'd rather worry about
trademarks _next_ week.

Ok?

Linus

(*) "Nominal fee". What an ugly sentence. It's one of those things that
implies that if you have to ask, you can't afford it. In reality, it's
more a thing where both intent and the size of the project will make a
difference - and quite frankly it's also a way to slightly discourage
people who aren't really serious about it in the first place.

Comments

Unfortunately, he's right

[Our Man In Redmond]

Under US trademark and copyright laws, if you own a trademark you have to defend every misuse of your product you find. Otherwise, your trademark can become genericized. Here's a glaringly simplified example:

Say I make a product called OMIR's Covert Coke, "the drink for infiltrating and subverting large software companies." It becomes a modest success on campus. Microsoft's legal team thinks it's funny so they don't do anything about it. Coca-Cola's lawyers say we're too small to worry about so they don't bother us either.

Now somebody like R. J. Reynolds makes a cola they call "Coke-A-Rama." Coca-Cola doesn't like their name being associated with a cigarette company, so they try to issue an injunction against RJR making and selling the product under that name. RJR's lawyers can argue to invalidate the trademark on the grounds that, since Coca-Cola knew about OMIR's Covert Coke and didn't do anything about it, they relinquished the rights to the "Coke" trademark. And they would have a very good chance of winning.

Considering how much money Coca-Cola makes off of selling T-shirts, refrigerator magnets, windbreakers and the like with their "Coke" trademark on them, they aren't going to let this happen. It means a lot of money to them.

This leads to things like companies writing in to magazines to inform them that "we enjoyed your article on why photocopiers should be banned, but we wanted to remind you that the word 'Xerox' is a trademark for our particular brand of photocopier and should not be used as a generic synonym for the verb 'to photocopy.'"

Linus is in the same position. In order to defend the Linux trademark, he has to "crack the whip," so to speak. My wife used to have to do this for a company she worked for. It's annoying and time-consuming, but if Linus ever lost the trademark and with it his ability to veto uses of it, he would be sorry he hadn't (probably every time he heard it used for something he wished it wasn't).
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