Friday, March 23, 2007

Trademark news from the Open Source world

eWeek posted a story titled "Is Red Hat Acting Like Microsoft?" Next eWeek posts a story that "Red Hat Responds to Claims It's the 'Next Microsoft'" InfoWorld blog's about eWeek's story as much ado about ...?

So what's going on here. Well, it all started with Bill Dudney's blog post (but eWeek links to another blog, probably because it makes for a better headline) which alleged that Red Hat is preventing Bill's former company from offering "Hibernate Services." Red Hat owns the federal registration for HIBERNATE for "Technical support services, namely, troubleshooting of problems with and consulting services relating to enterprise server software for objective relational mapping."

One commenter posted a cease and desist letter sent by Red Hat to companies offering Hibernate consulting and training:

Dear Sir or Madam:

Red Hat, Inc. has become aware that your company is offering Hibernate training courses. Red Hat does not allow the use of its trademarks without a written agreement.

Red Hat is the owner of numerous trademarks, including but not limited to, its Hibernate mark, U.S. Federal Registration Number 3135582. RedHat has made extensive use of its Hibernate marks in interstate and international commerce in connection with the advertising, promotion, and sale of its goods and services. Due widespread use, advertising and extensive marketing, the RedHat marks have
become famous.

Red Hat requests that you immediately cease offering Hibernate branded training, as well as any other training that may contain Red Hat marks or marks that are confusingly similar. Although you may offer object oriented relational database mapping training, you may not use the Hibernate name to promote and advertise your products and services.

We trust you will understand Red Hat's interest in protecting its valuable intellectual property and ensuring that consumers are not misled as to the source and sponsorship of goods and services sold and/or distributed under the RED HAT marks. We trust this matter can be resolved promptly and amicably and appreciate your attention to this matter.

We look forward to your reply and request a response no later than {WITHHELD}.


Meredith K. Robertson
Legal Specialist
Red Hat, Inc.

Mark Webbink, Deputy General Counsel for Red Hat commented to clarify Red Hat's position:

I am writing to clarify the issues raised by the publication of Ms. Robertson's communication on behalf of Red Hat. First, the letter is not placed into the context of the situation it was addressing. That presents the opportunity for misinterpretation. At the same time, I would agree that the letter is less than precise in defining what has been done wrong and the corrective action that is required. Ultimately, that is my fault as the person in charge of trademark enforcement at Red Hat.

Contrary to Gavin's statements above, you cannot offer HIBERNATE Training or JBOSS Training. This is an improper use of Red Hat trademarks in that the marks are being used (a) either as nouns or (b) to promote a good or service that is directly branded with Red Hat owned marks. What is permissable, and I am sure this is what Gavin meant, is that you are permitted to offer HIBERNATE(R) Object Relational Mapping Software Training or, as another example, JBoss(R) Application Server Training. Here the marks are being applied to the goods in a proper manner and it is clear that the training is being provided for that branded technology, not by the brand owner. As a further common courtesy, it would also be appropriate for those properly using the marks in this manner to make clear that they are not in anyway associated with Red Hat or its JBoss Division.

With that clarification I hope I have resolved the confusion and/or discontent around this issue. More extensive information on the permitted uses of Red Hat marks can be found at

I would also ask, as a courtesy to Ms. Robertson, that the party who posted her letter please indicate that they were the party posting the letter, not Ms. Robertson.

My apologies for any confusion that has been caused.

Mark Webbink
Deputy General Counsel
Red Hat, Inc.

So, Red Hat says you can use Hibernate if you use it properly and disclaim association with Red Hat or its JBoss Division. While the original letter gave the impression that Red Hat is seeking to foreclose all use of Hibernate, it's nice to see Mark take responsibility for the original mispreception and to clarify Red Hat's position. This serves as a good lesson in drafting and sending out cease and desist letters, especially when those cease and desist letter can easily find themselves on the web. Further, there's a good lesson in using the Internet for damage control. Rather than putting an innocuous press release on Red Hat's website, Mark chose to address through a comment. It would be interesting to hear though, if Red Hat sent the original addressee of the c&d a clarifying note, as one commenter named Captain Crunch asked.

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