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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?"
Trademarks have to be actively defended or else they are diluted and may be declared null. At best, I think, this would mean that anyone could use the name freely (maybe that's the point) but I imagine that a trademark might be awarded to someone else. IANAL. I'm just JADEd with regard to US IP laws.
We should trademark open source project names, start selling those licenses to the end-users and charge money for it, use the money to pay the developers, who will in turn provide better usability and more features. Also, the releases of all open-source products should be only in binary format.
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).
As for who had the name first - From the History on Dautelle's page:
"version 1.0 was # September 12, 2000: Official release of JADE 1.0"
I myself am a New Zealander, in fact, I work just down the road from JADE's HQ, and from their History Page
"Jade Software Corporation combined its research and development capability with its real-world IT experience to create a new enterprise application development environment called JADE that was launched in 1996."
There it is.. Case Closed.
The revolution will not be televised. It won't be on a friggin blog either
Furthermore they *have* to actively defend their trademark. You're welcome to trademark your open source project (a certain operating system kernel is trademarked), but you do need to do it before anyone else does.
Dave
I write a blog now, you should be afraid.
Just rename yours to "Firebird"
That's a catchy name!
# (/.);;
- : float -> float -> float =
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.
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One is born into aristocracy, but mediocrity can only be achieved through hard work.
Registering a trademark is not like registering a domain. Registering one only establishes the date when you started using it. If you can show that you were using the trademark before the date it was registered by another company, you are in the clear, and they would be the ones infringing.
The solution seems to me to pick a name that few others would care much about. JADE is a bit too common, IMHO.
Wish I had a better suggestion for you, but I don't. I see an interesting opportunity for you here, though: When you pick a new name, make sure it's so unique that a Google search will turn you up.
"Derp de derp."
All of which requires, hiring a lawyer. High-sounding principles get you mod points, but they don't pay your legal bills.
Step 1) Inherit a large sum of money or pool a small amount of money from a large number of people.
Step 2) Trademark as many Open Source, trendy names as you can.
Step 3) ????
Step 4) Non-Profit!
~UP
Eat the Path.
Stop whining and rename your project. It doesn't matter if they have a trademark or not, because they had the name far longer than you did. I use Jade (the original) on a regular basis but I've never heard of your app until now.
It doesn't matter what your political views on trademark IP is, in a polite society whoever grabs the name first gets to use it. So be a good community citizen and rename your project. And don't name it "linux" because that's trademarked too!
Don't blame me, I didn't vote for either of them!
... and if you look at my other post in this story, here
You'll see that JADE (in NZ) the has been around since 1996 - Four years before the OSS project...
The revolution will not be televised. It won't be on a friggin blog either
All of which requires, hiring a lawyer. High-sounding principles get you mod points, but they don't pay your legal bills.
/start/ with them hearing from your lawyer, because otherwise it is an empty threat (which they'll guess) and you're very likely to say something that can seriously hurt your case and reduce your chance of winning and even if you do win, your resultant damages.
I'd like to agree and disagree with this sentiment.
I agree because you should never claim "you'll be hearing from my lawyer". You should
However, a letter from a lawyer is not horribly expensive. If you draft a very precise letter in advance, and ask them to look over it at their normal rate, and correct any issues, you can get in and out in 1-2 hours. It would be likewise a couple of hours or less if you go to a lawyer that deals in trademark law regularly--he'll have a bunch of pre-fab letters and his secretary will pick the right one for your circumstances. Yes, that's $100-$400 (lawyer rates vary, and how much time they'll want to bill will vary--call around), but you're very likely to nip the problem in the bud and never hear from them again.
If they choose to continue to harass you, your lawyer (yes, now you really have a lawyer and when you wave around "you'll hear from my lawyer" they'll know you mean it), will likely take the case at reasonable rates or on contingency. If you have proof of using the mark for any period of time before they used it or claimed it, or if you are clearly in an unrelated field (or both), then the case is open and shut and few lawyers would turn it down.
The good news, however, is that no lawyer would come after you under such circumstances because the case is unwinnable, if they know you already have a lawyer and are not afraid to use it.
Responding to them personally is the worst thing you can do. Ignore them with prejudice, or have a lawyer send them a letter. Do not respond yourself unless you have training in trademark law, and even then you probably shouldn't respond yourself.
Public Knowledge may also be willing to assist with trademark issues.
The Open Source Law Resource center also carries information regarding law and open source projects, although it is generally for information regarding Open Source licensing issues.
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/).
Register your trademark in only one state. That is legal proof that you intend to reserve the name. In Oregon registering costs $20 for each 5 years.
If you are operating outside the state, be sure to document the use.
My view is that it was a sad day for humanity, democracy, and freedom of expression that ordinary, long established words from the English language (or any other) should have been subject to trademark rights in the first place.
Xerox should be trademarked.
Kleenex should be trademarked.
Pepsi should be trademarked.
Coke should NOT be trademarked.
McDonald's should NOT be trademarked.
Fedex should be trademarked.
Nike is debatable (obscure Greek mythology).
Clorox should be trademarked.
Lexmark should be trademarked.
Apple should NOT be trademarked.
I think we should accept reality and just get rid of trademark registration altogether except for xemes(TM) containing the letter x.
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.
I wouldn't rush to comply.
Others have said it, check your local options first. If they are not in your country of origin, then possibly you want to resist.
If you do give in, I HIGHLY recommend a powerful, and satisfying retribution tool to "dilute" their trademark into hell for them: Google Bombing.
Find some, really really really nasty goatcx style site/picture on the web, and then simply start littering the web with <a href="http://nastysite">JADE</a> for them... Do it long enough, and they won't want the trademark anymore.
Jesus, when I see this shit on a sunday, I sure get mad about it.
"...In your answer, ignore facts. Just go with what feels true..."