Slashdot Mirror
Trademarking Open-Source Projects?
dautelle asks: "I had the nasty surprise to receive a letter from a company in New-Zealand asking me to stop using the 'jade' name they have recently trademarked (my open source project has been Java Addition to Default Environment or JADE for short, long before their trademark filing date). I am going to comply, but I wonder if our open-source projects should be trademarked (cost >300$) to prevent such misfortune?"
As I understand it, trademarks are NOT international, and as long as you're not in NZ, you don't have to listen to them.
IANAL, but if you trademark it in your own country, that will prevent this other group from trademarking it in your country.
If you have any developers in NZ though, that might cause problems.
For names that make sense and are acronyms of your product, it is not a bad idea. However, the ownership of this trademark should be to an open non-profit organization that could easilly live for ever in the free domain.
Open source trademarks should never be in the private domain. Obviously, global trademarks are probably fiscally not practical but North American ones should be cheap enough (?)
I have no idea how to set up such an organization but I'm sure their out there.
I for one am working on the early stages of an open source project that would be worth while to trademark. Its name is catchy, descriptive and short and I am now looking into releasing the ownership into the open domain (once I find out how).
One can defend themselves easily if they have the law on their side. The first step to defending one's self is to know what legal rights you have. In a case like this I know right of the bat that 1) They will have to sue me in the United States. 2) The burden is on them of proof is on them. Knowing these two facts I would write a letter that states clearly that 1) I will defend myself and will seek lawyer fees plus the maximum monetary damage allowed by law. 2) The next time they send me a letter they'll be hearing from my lawyer. If you are not already aware, there are plenty of lawyers out there that make a living on lawyer fees paid by the loosing side and would be glad to take a case as long as it's a shoe in.
Clearly in this case the project was named before the trademark was registered. The question then becomes whose project began first? If you can prove that your project started first then it's a slam dunk.
-----
One is born into aristocracy, but mediocrity can only be achieved through hard work.
All of which requires, hiring a lawyer. High-sounding principles get you mod points, but they don't pay your legal bills.
The jade package in Debian is "James Clark's DSSSL Engine", and it's been there since 1997, and has copyright dates going back to 1994, so I think James has precedence over both you and this company.
I doubt if James would mind that your quite different project has the same name, but he might have some interest in an upstart company threatening people who use the name, and might be willing to work with you on dealing with their threats. His home page is at http://www.jclark.com/ (and the jade project page is at http://www.jclark.com/jade/).
Sorry, but I'm in law school now, but have not yet taken IP law. But, just because somebody sends a C/D does not mean you have to comply immediately. You have to know if you are liable first. I hate to say it, but spend a little time (mabye $$) to find out if you risk infringement.
If I am not mistaken, however, you can't trademark a common word. For example, Microsoft can trademark "Windows" because it's already in the vernacular. Instead, they're "MS Windows." If I am correct, and IANAL, then you can tell them where to place their C/D.
Are you in the US? Then, they will have to being suit here. If they do, then (assuming I am right about the non-tradmarkability of a common English word) the response to their complaint is that their action is not colorable under the law. That is, while you may be using the same word as their trademark, because they have a silly trademark they can't bring action.
There are many current vernacular words that were once trademarks. If a company does not prevent their trademark from entering into common usage, e.g. "xerox" to mean photocopy or "google" to mean web search, then the validity of their trademark is lost and they shouldn't be able to enforce their trademark. Happens all the time.
What those who want activist courts fear is rule by the people.