November 5, 2004

Trademarks: A threat to free software's freedom?

Author: Bruce Byfield

Do trademarks require a special license for software to be free? That is the question that Debian developers are currently debating. The specific concern is whether AbiWord's recent assertion of trademarks conflict with the Debian Free Software Guidelines (DFSG), the set of principles under which the Debian distribution operates. However, the implications could affect not only Debian's use of other trademarked packages, such as Mozilla, Evolution, and, but other GNU/Linux distributions' use of them as well.

The first clause of the DFSG reads:

The license of a Debian component may not restrict any party from selling or giving away the software as a component of an aggregate software distribution containing programs from several different sources.

Until now, the clause has been interpreted as applying only to software licenses. Now, the question is whether trademarks violate the clause.

In business, when and how trademarks are used is often tightly controlled. Many software companies issue comprehensive style guides about exactly how their slogans, product names, and logos can be used. The intent is to not to control the software, which is already protected by its licenses, but to protect the reputation of the company and its products, and to prevent the use of trademarks by competitors.

Neither AbiWord nor any other project is considering controlling the use of its trademarks so closely, but the concern at Debian is that the existence of trademarks at all could make the software with which they are associated philosophically "unfree." Even if a mark is not officially registered, the fact that a project uses it consistently could, in theory, give the project the right to control its use.

Whether any project plans to use that right does not matter. The issue is that the right exists at all.

If this concern is valid, then the utility of free and open source software licenses is seriously undermined. Unless an alternative solution is reached, distributions like Debian might be forced to one of two options.

The first alternative would be to distribute a modified version of each piece of software associated with a trademark. This move, however, could lead to a fork in the code, and ill-will between the distribution and the original project.

The second alternative would be to stop distributing officially trademarked software altogether. But this solution would leave large gaps in functionality, and still not solve the problem of unregistered trademarks, which could become unforeseen issues.

The first hint of this potential problem was heard in 2002 during a discussion on the Debian-legal list of the inclusion of free Bitstream fonts.

The current issue arose last July when Debian developer Josh Triplett noted that the AbiWord trademarks had recently been transferred to Dom Lachowicz, one of AbiWord's lead developers. Branden Robinson, a long-time Debian developer best known as the maintainer of the X Window packages and for his involvement in licensing issues, drew attention to the issue by filing a bug against Debian's AbiWord packages. Following private discussions with Joshua Kwan, described by Robinson as "a recent and very energetic new recruit" to Debian, Robinson contacted AbiWord.

An IRC chat followed between Robinson, Lachowicz, and several other AbiWord developers. Alternately good-humored and acrimonious, the discussion ended indecisively, with AbiWord developers suggesting that Debian consult a lawyer before discussing the issue further.

Robinson summarized the discussion for other Debian developers, and his remarks were mentioned in Debian Weekly News, prompting a response by Dom Lachowicz on Advogato. Discussion continue in both the Debian and AbiWord projects and, no doubt, in private.

So far, however, the issue -- or whether an issue even exists -- remains unresolved. The idea of a special exemption for Debian was rejected on the grounds that the DFSG requires that all users have equal freedom to distribute the software, regardless of whether they use Debian or not. A proposal that Lachowicz characterizes as "a vague trademark licensing scheme that wouldn't be limited to Debian" might be more promising, but has still to be fleshed out.

Both Robinson and Lachowicz are quick to stress that the two projects are not feuding. "Debian likes AbiWord," Robinson insists. "Copyright-wise, it's above reproach." Lachowicz is equally insistent, saying, "I don't bear any hostility toward Debian, and generally have the utmost respect for them as an organization. They're committed to freeness, which is an admirable goal." Lachowicz, however, cannot resist pointing out that Debian itself has registered trademarks, so that Debian itself might be in violation of the DFSG, but it's obvious both sides wish to avoid a dispute.

Yet the expressions of good will do not make finding solutions any easier. Both Robinson and Lachowicz reject the idea of settling the problem on a case-by-case basis, believing that such an approach could cripple the community. Nor does either believe that the problem can be ignored now that it has been raised. Both are well aware that the issues raised could affect the entire free software and open source communities. "This issue has a much larger scope than anything that might happen between AbiWord and Debian," Lachowicz says. Similarly, Robinson says that, before proposing a general solution, he would "want to get free software luminaries who also happen to be lawyers involved."

For now, the significance of the trademark issue remains to be seen. From one view, Debian is creating needless difficulties for itself because of its rigid adherence to principle. Considering that two years ago Debian rejected the GNU Free Documentation License -- a license approved by the Free Software Foundation -- this view has some validity.

Yet, from another viewpoint, as free software's user base balloons and corporate acceptance increases, the legal status of free and open source software is coming under increasing scrutiny. Considering the ongoing SCO cases and the indemnification issues raised last spring, the relation of trademarks to licensing may simply be another example of the community's growing maturity and importance. Nobody wants the issue, but it may be here anyway. If so, then, as Branden Robinson suggests, "the age of licensing innocence is over."


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