More on the Red Hat / Hibernate trademark hubbub

Follow up to this post. Just found Bill Dudney's post regarding the adverse reaction to Red Hat's trademark enforcement. Bill offers an excellent analysis on why the open source community reacted as it did. He also argues that "RedHat is not evil for enforcing their trademarks." Hear hear!

Again, they have every right to enforce the use of their trademarks. I’m not arguing against that at all. The issue is ownership. It is one company (and only one company) that owns the trademark. The thousands of developers that invested in groking Hibernate, JBoss etc have zero ownership in that trademark. They can’t do anything with the mark that is not allowed by the owner or law. So from my current understanding I could offer ‘Training for the Hibernate Implementation of JPA’. Some might ask, well is that so onerous to you? Is it that much trouble to put the extra verbiage into the marketing stuff? No its not, and you can bet if I ever publicly offer anything related to Hibernate or JBoss I will be putting that verbiage in.

Side note: be sure to check out the link to Simon Phipps' presentation on The Zen of Open.

Technorati Tags: trademark, open source, brands, branding, commodity, licensing

Trademarks and Open Source

More news on the open source / trademark front. eWeek reports on Ubuntu's trademark policy.

Trademarks have recently become something of an issue in open-source circles. Debian, for example, recently took exception to Mozilla's Firefox trademark rules and called its version of the popular browser, IceWeasel. So, Ubuntu has decided to address possible trademark issues by creating its own trademark policy.

As many of you know, open source licenses generally grant the licensee the right to freely modify and distribute the subject software's source code. In essence, open source takes away the copyright restrictions that so many proprietary software companies use to protect their code.

However, open source licenses do not grant the licensee rights to use the licensor's trademarks. In fact, trademarks rights are enforced strictly by companies that distribute branded open source software.

As Mark Webbink, Red Hat's deputy general counsel and secretary, said in 2004, Red Hat has no problems with anyone using its source code. But Red Hat does have problems with anyone using its name or its trademark "shadowman." That, Webbink said, Red Hat guards zealously. "In the open-source economy, it's the Red Hat brand, as well as its service, that carry value."

Thus, as eWeek points out, while CentOS' operating system is derived from Red Hat's code, it can't use the Red Hat trademark to identify its code. And so CentOS says that "CentOS is an Enterprise-class Linux Distribution derived from sources freely provided to the public by a prominent North American Enterprise Linux vendor."

So open source companies such as Red Hat and Ubuntu sell commodities and build their value by building brands that customers prefer. If the value of these companies exist solely in the brand, then you'd expect them to vigourously protect their trademarks. See excerpt from Open Sources: Voices from the Open Source Revolution talking about Red Hat:

If we do not own intellectual property the way almost all of today's software companies do, and if those companies insist that their most valuable asset is the intellectual property represented by the source code to the software they own, then it is safe to say that Red Hat is not in the Software Business. Red Hat is not licensing intellectual property over which it has ownership. That's not the economic model that will support our customers, staff, and shareholders. So the question became: What business are we in?

The answer was to look around at other industries and try and find one that matched. We wanted an industry where the basic ingredients were free, or at least freely available. ...

We looked at the commodity industries and began to recognize some ideas. All leading companies selling commodity products, including bottled water (Perrier or Evian), the soap business (Tide), or the tomato paste business (Heinz), base their marketing strategies on building strong brands. These brands must stand for quality, consistency, and reliability. We saw something in the brand management of these commodity products that we thought we could emulate. ...

This was Red Hat's opportunity: to offer convenience, to offer quality, and most importantly to help define, in the minds of our customers, what an operating system can be. At Red Hat, if we do a good job of supplying and supporting a consistently high-quality product, we have a great opportunity to establish a brand that Linux OS customers simply prefer. ...

The power of brands translate very effectively into the technology business. We have evidence of this in the Venture Capital investors who have recently invested in several Open Source software companies. The one common denominator between all of the investments to date have been that the companies or their products have great name recognition, and are recognized as being quality products. In other words, they have successfully established a brand.

Technorati Tags: trademark, open source, brands, branding, commodity, licensing

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}.

Sincerely,

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 http://www.redhat.com/about/companyprofile/trademark/

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.


Technorati Tags: trademark "cease+and+desist" PR strategy

A peek into Sun's Open Source Approval Process, with a Trademark Tidbit to Boot

Tim Bray gives us a peek into Sun's internal Open Source Review process. Tim wrote some code he called the Atom Protocol Exerciser, or APE for short. He wanted to release it, but he had to go through Sun's approval process first.

There are a bunch of steps. You have to get approval from your own management chain up to the nearest Vice-President. Along the way, you need sign-off from Brand Management, Trademark Legal, and International Trade Legal (export-control regulations are a cross big companies like Sun have to bear).

And here's the trademark tidbit:

The one that was the most work was the Trademark piece. You just can’t assert “I’ll call this Foobar” and publish the code; lots of good names are taken and if you work for a public company, you really don’t want to accidentally step on someone else’s trademark with your coolio project name because if you do, they’re gonna call their attorneys first thing.

I actually wanted the trademark people to check out both “Atom Protocol Exerciser” and “Ape”; they told me in the politest possible way that this costs real money and real time so would I please bloody well pick one; fair enough. *** Checking out names takes time—a couple of weeks in my case—that’s just a fact of life.

There you have it. Clearing trademarks costs real money and real time. But if you don't take that step, Tim properly states that the first person the owner of the mark you infringe is going to call is their attorney.

Technorati Tags: trademark, search, trademark search, clearance, open source, approval process, Sun Microsystems