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International - Open source principles influence Debian’s new trademark policy

By Jack Ellis
March 05 2013

WTR recently reported on the dispute surrounding the Python trademark and how this highlighted the importance of trademarks for open source software projects. The Debian Project, which oversees the development and distribution of free and open source operating system Debian, recently released a new trademark policy (which can be viewed here) which enables third parties to use its marks freely for commercial purposes. While such a laissez-faire approach could be seen as risky, it also presents an opportunity for some non-profit organisations, such as open source projects, to create additional value from their brands.

In a statement on the Project’s website last week, Debian Project Leader Stefano Zacchiroli said: “Software freedoms and trademarks are a difficult match. We all want to see well-known project names used to promote free software, but we cannot risk they will be abused to trick users into downloading proprietary spyware. With the help of SPI [Software in the Public Interest, Inc] and SFLC [the Software Freedom Law Center], we have struck a good balance in our new trademark policy. Among other positive things, it allows all sorts of commercial use; we only recommend clearly informing customers about how much of the sale price will be donated to Debian.”

While the freedom offered by Debian’s policy may raise a few eyebrows, Pamela Chestek of ChestekLegal thinks that it does not differ too much from other trademark use policies. “Such policies provide the trademark owner's opinion on which uses they would consider infringing and which they would not,” she says. “The law is not always very clear on the point, so guidelines like this are an attempt to provide some clarity to those who would like to use the trademark – and, since most of the uses it mentions would already be considered lawful under trademark law, they present no risk to the validity of the Debian marks.”

However, while the Debian policy sets out conditions regarding misuse, it will need to be backed up by effective action if its generous terms are abused to the point where the marks could be considered as expressive. “The Debian policy is stated in very general terms and still prohibits a ‘misleading’ use,” Chestek continues. “So Debian hasn't said that it tolerates any use that would otherwise be unlawful in the absence of the policy, and therefore the policy per se is not a problem. The question, though, will be where Debian sets its tolerance level for what it calls ‘misleading’ use, and to what extent Debian actually intervenes to stop a misleading or confusing use of its trademark. If those aren't actually stopped, then it will have a negative impact on the validity of the trademarks that ultimately could lead to a genericide.”

A new version of Debian – known as ‘Wheezy’ – is planned for release soon, and the statement on the Project’s website encourages third parties to take advantage of the new trademark policy to create Wheezy-themed merchandise such as mugs, stickers and t-shirts. While it is clear that the Debian Project aims to increase brand awareness in the build up to product launch, its free and open policy could potentially lead to problems farther down the line. “As consumers, we appreciate that the use of the mark on software, and the use of the mark on goods like stickers and mugs, are conveying different information,” says Chestek. “In the case of the software, the Debian mark is conveying what the source is. But in the case of mugs, for example, the object of the trademark is simply to provide a way in which consumers can exhibit affection for or affiliation with the primary goods – the software.” However, she cautions that it is not always clear-cut as to how the law might interpret these two different types of relationship. “I don't think there should be any negative effect on the validity of the trademark, at least for software, when unfettered use is allowed on promotional goods, but I'm not sure that the courts would agree with my opinion,” she says. “I therefore believe that there is some risk in allowing liberal use of the trademark on promotional goods given our current jurisprudence – but I also believe that our jurisprudence could use some more fine-tuning. Perhaps the open source community, because it often chooses not to monetise promotional goods, can serve as a good example for why these two different types of uses of a trademark can and should be treated differently.”

Ultimately, Debian’s new trademark policy could provide a good example from which others – including, perhaps, those with commercial interests, as well as non-profit organisations – could seek to create value from their brands by opening up their trademarks for third parties to leverage. “Debian's interest is an interest that all companies share, which is a desire that their brand gain widespread recognition,” she says. “I think that Debian and others in the open source community could be very successful in popularising such policies because they come from a place of sharing rather than control, and therefore already embrace widespread use of their intellectual assets from a philosophical standpoint. Hopefully, Debian has achieved a good balance between allowing widespread use while still ensuring that the trademark retains meaning as a brand.”

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