Many, many years ago in this bedroom, I believe it was the third edition, some 2012-13 timeframe.
A talk was given that has been widely considered the seminal most important and best talk
ever given on trademarks and foss.
It is referenced everywhere because it is the best explanation of how trademarks and foss
interact.
So what we are about to learn from our speaker, Pam Chestick, is will today now be the best
most important talk on trademarks and foss or will be the second best talk.
Pam, can you out to yourself?
Give it a try.
Wow, could you set the bar a little higher for me on that?
Please, Louise.
To be one, two, three, four, four, five.
All right.
So here, so here I am, how does hindsight have 80% of a commodity market leveraging trademarks
and free software?
So this is kind of, it is a great introduction because this is kind of a continuation
where we are, you know, 12 years, 10, 12 years later from that sort of trademarks 101
introduction that I first gave.
So just about myself, I have been, I have been practicing trademarks law for about, let me
just do my, for about 25 years and I have been working in free software for about 15 years.
So I know where I am coming from on this.
So just kind of a background are here.
What is a trademark?
Now what I want everyone to do, everybody has these preconceived notions, trademarks are
territorial.
So depending on what country you come from, you have maybe a preconceived notion about
what a trademark is and you probably are thinking about registration and rights and all sorts
of things like that.
I want you to put that aside because what we are drilling down to is fundamentally what
is a trademark and what does it mean?
The trademarks have existed long since laws existed for trademarks and there is a reason
for that.
So this is the premise that I want you to think about.
So a trademark is a word plus the concept of goodwill.
So if I say to you, master done, you're going to think one thing you might think is it's
a prehistoric, prehistoric mammal that is now extinct, right?
That's one meaning of master done.
Given this audience, I suspect that a lot of you jumped to a different conclusion when I
said master done, which was a social media website.
So the difference between the animal and the concept and this concept of social media,
website is the difference between just a word and a trademark.
It is a trademark as a word could be a logo too, but I'm just focusing on words here
that has this additional information that you have a mental association with.
And so that mental association is what's tied to it is reputation.
So it's not just you're sitting here saying, well, I also know that the word master
done means a social media network.
You also may have an emotional response to that word.
You may have positive feelings, so you may have negative feelings about that.
So you may, for example, say, great, it's federated.
I have a positive value for that, or you can say it's really hard to find people to follow
on it, which may be as a negative connotation.
But all brands have, that's what makes it a brand versus a word is this additional association
you have with it.
So that's what I want you to think about is trademarks as having this additional value.
It's not just a word, registration, that's a legal system that's overlaid on top of what
trademarks are.
We're not worried about that right now.
We're just thinking about this fundamental value of a trademark.
So, oh, actually, let me just back up to the second part of that slide.
Which is, see, you've got to go back up there.
So the goodwill is, so that's your reputation.
And when you let someone else your trademark, you are letting them benefit from your reputation.
I think of that about it is if I give my driver's license to someone else and let them
go in the bank, like, would I do that?
No, I don't do that because they're relying on my identity for something and do I trust
them with that?
Yeah, maybe I let a spouse do that, right?
But I'm not going to let a stranger on the street do that, no, I'm not going to.
So that's what this trademark is, is it your reputation?
So just very fundamentally, on a very fundamental, again, sort of, you know, normative basis,
what does trademark law do?
It just protects consumers from confusion.
The focus here is consumers, are they confused about what is what?
That is, essentially, the sole measure of the legal wrong is, is their confusion.
Now, they're all sorts of doctrines around it, there's nominative fair use and there's, you
know, just all these things going on that are ways that the law has distilled out to reach,
to get an answer to this fundamental question.
But really it just boils down to, is, is their confusion or not?
Are the consumers confused with a consumer protection motive behind what's going on?
And so, as a consequence of that, if your trademark practices don't protect consumers from
confusion, that you may lose your trademark rights because it's not performing, it's, it's
not performing, it's function.
And when I talk about confusion, it's not just, there can be, there are several kinds of
confusion, several kinds of relationships.
So it can be confusion about source.
Did the same person make this?
Is this the same item?
When I go to the grocery store and I take a can off the shelf, is this the same manufacturer?
Is the last time I came into the grocery store and took that can off the shelf?
That's source confusion.
I could have confusion about whether or not there is a sponsorship relationship.
So if someone says, if someone endorses, endorsement or sponsorship, so if I stand behind
it, if I say, you know, you see it all the time on websites where these are our customers,
and they have this, what I call a wall of logos.
And that is what they're trying to convey is that these people haven't endorsed us.
They don't, we're not, we're not saying that they made the same product, we're saying
they endorsed us, and we're getting value from that endorsement from them.
So, so, trademark law is not just, you know, you have a lot of people say, well, you
know, only an idiot can be confused, but it's about a larger type of relationship, not
just the manufacturer and relationship.
And the way that it's characterized under European law is to people think that there's
a financial link between these two, and that's the way, I find that very helpful is
that it will people not perceive that someone made it, but are they perceiving that there's
some kind of financial link between these two entities when they see the trademark being
used.
So, next, this is, it's happening less and less, you know, ten years ago, there, I
heard a lot of, so I was doing trademark law on this field, and there was a lot of sort
of like, well, we can solve the trademark problem, we'll just license it the same way
that we license the copyrights.
Like, and there are all these grand schemes on how to do copy, copy, left, trademarks.
That's not, that's not the point.
So trademarks are not just this sort of other pesky IP that's hanging on copyright and
patent that we're trying to figure out how to override or how to release from those
barriers, trademark has an entirely different purpose, which is consumer protection.
So copyright and patents, the laws behind copyright and patents are designed to incentivize
the producer to produce those, that's why those laws exist.
But trademarks, as I said before, trademarks to protect the consumer, so the policy basis
behind the trademarks is entirely different from the policy basis behind, but behind patents
and copyright.
So just, so we need to keep that in mind.
So, yeah, so instead, the user, the intent of the trademark is to protect the users
so that they know what they're getting.
And this is, I'm quoting myself here on this one.
Someone else quoted in a paper and I was like, boy, did I say that, that's not bad.
So trademarks are the only proprietary right that can be fully exercised by open source
products or projects.
You have given a copyright license, you've given patent license, you can't exploit those
for purposes of advantage, the one you can exploit is trademark.
And then this, as an example of this, of sort of the use of a trademark and an open source
project, this, I didn't see a whole lot of press around this, but I thought this was interesting.
So Mike Dolan at the Linux Foundation, testified in court because someone was using the Linux
Foundation Project on X, trademark for phishing.
And so the Linux Foundation cooperated with the US government in order to stop this phishing
program and did it through trademark a lot because consumers were confused, consumers were
being misled by this improper use of the trademark.
So that's, that's sort of the paradigm use of trademarks and we've seen this in, you know,
as Firefox many years ago, also had the same problem.
But it's still alive and still happening is the value of the trademarks to protect the
consumers.
Did it have to be registered for them to be able to exploit this costability?
In the US, no, that's one of the differences that will cross jurisdictions is whether or
not has to be registered in the US, no, and this was a US, but it is registered, I believe
it was a registration, that adds a lot of valuable benefits and this would, you know, this
would be one of them.
So, all right, now that we kind of have, I have you in my universe of what trademarks mean,
we're moving on, all right, great.
So you have a software, you have a free software project and what have you done?
You've created a commodity.
So what do I mean by a commodity?
So a commodity is a basic good and material interchangeable with other goods of the same
type regardless of who produced it.
So free software is a commodity because the copyright license lets anyone copy it.
So, you know, that's kind of the point, that's why we're here, is that anybody gets
to reuse your software.
But what is, so how do you, how do you make money off of something that's a commodity?
What happens all the time?
And this is taken from Robert Young, who was one of the founders of Red Hat and it's a
really interesting chapter in voices from the revolution, if anybody was familiar with
that book.
And in which he said, and they were trying to explore, Red Hat was trying to explore
how do we make money off of software that everybody else in the world can also create
identically.
And he said, and they thought about it and one of the things they thought about, they
said, Heinz owns 80% of the market, not because Heinz tastes better, he said, ketchup
tastes the same.
People don't even like, people in cultures without ketchup don't like ketchup.
But Heinz has 80% of the ketchup market because they have been able to define the taste
of ketchup in the mind of ketchup consumers.
And he goes on to say, like, now we think of ketchup coming slowly out of the bottle as
being a good quality in ketchup, as we can't get it out of the bottle, right?
Because they did a lot of marketing about that, about how thick it was in rich, because
it doesn't come out of the bottle.
Another commodity that I think had a brilliant advertising campaign is Morton Salt.
I don't know outside the US, I don't know if they had the same campaign, but it was the
young girl who had a, she was carrying on umbrella, and she had a canister of salt into
her arm, and it was upside down, so it was pouring out.
And the point being is that the salt doesn't clump up in humidity.
When it rains, it pours, was the tagline for it, but again, Morton Salt captured a huge
amount of the market for a commodity product salt, because they were able to convince consumers
that what they had was the other producers' benefit, and that value is manifested in the
trademark.
So when I go in the store, I buy Morton Salt, because for I've been convinced, you know,
from years, from advertising since I was a little child, that Morton Salt is better than
any other salt, and the reality is it's identical to every other salt, but I buy it.
So now let's bring it back to open source software.
What makes your catch up the one consumer's customers want to buy?
So it's not the software, we've just said it's not that, it's commodity, everybody can
make it.
What are those values?
So, and I do wonder, when we see a lot of, when we see open source software projects who
transition to a proprietary license, or a non-free license, source available, maybe or something,
and maybe I'm wrong about this, this is just my personal thought on it, is that these
are people without imagination, because copyright has been used, because copyright law has
been used as the way to monetize software, the exclusivity, you know, the infringing, if
you don't have a license there, where you have to pay for the license for it, that that
is so baked into our software industry, that when you get venture capital involved or
you get competition involved, people just can't think beyond, I lost my exclusivity,
I need to regain that again, and so they then will switch a license to one that allows them
to do that straight financial transaction of, you pay me money in order to get a license
to use the copyright, like you have to pay for the privilege of that license of that document
that allows me to use it.
So, and to me, that's an absence of creativity, that Red Hat was forced into, because it was,
you know, it was a company that started on an existing software project, had they invented
the software, had they written the code, would they have picked a GPL for it, maybe not,
because maybe they wouldn't have had the vision either, but they sat there with this
product and said, how do we have to, how do we gotta figure out a way to make money from it?
So, this is, I think this is an analogy, so this is about the music industry, and this
is Mick Jagger said in, oh, in 12, oh, one, oh, I'm supposed to be 2010 on the footnote
there.
So, Mick Jagger said, when the stone started out, they didn't make any money out of
records, because record companies didn't pay you.
There was a small period from 1970 to 1997, where people did get paid, and they got paid very
handsomely, they did make money, but now that period is done.
Now, the 1997 there is referring to music fall sharing, and so that was a well, though, that
was very disruptive in the music industry.
I think that he pegs 1970, so recorded music started, what late, late 1800s, early 1900s,
but think about the centuries that there was no recorded music, and music existed, the
musicians made a living, but they didn't make that living off of distributing copies of their
music.
They had other business models that allowed them to monetize their ability to make music.
So I'd just like to think about this, there's a short period of time, from our microscopic
perspective on history, we're familiar with the recorded industry, the recorded music industry,
and that's how they monetize this by selling copies of the music.
But that has not been true for most of the history of music.
So I'd just like to keep that in mind as an analogy to think about.
So now you have your software project, you can't monetize the copyright, because it's free
for everybody to take, everybody gets to copy this software, but you want to make money.
Or you have some other motive that you want to, doesn't necessarily have to be money.
But these are some of the value propositions that you may be able to convey that are going
to be manifested in your brand, or the things that you can sort of sell as what value
you add, what is your value adds to the commodity that other people don't have.
And it's all marketing, this is all 100% marketing, or true, I mean, hopefully, truthful
marketing.
But so you may have greater familiarity with the software, you may have early knowledge
in the mode, the roadmap, you may be able to direct, you may be able to influence the roadmap.
Because of your knowledge, you may be able to customize it more quickly, you can manage
the complexity of it more quickly, particularly for like a distribution of full distribution
rather than a single product, that you can manage it, you may have more accurate, more
reliable builds.
It's your familiarity with the product that is a piece of, that can be a piece of your value
proposition.
Now, this is going to be very specific to the software.
I think if you were thinking of monetizing open source software, the first thing you do
is you sit down and figure, and do the red hat exercise red hat was forced to do, which
is what am I bringing into this, what is my value add, I can't just sell licenses, which
is the easy way out, what is my value add to it that I can bring, and really think
long and hard about what it is that you're going to be bringing to the table, that you
will then market, that will then become associated with the brand.
Another classic statement, no one gets fired for using IBM, you want to be the IBM
that people have.
So even though someone else is offering a better, not a better, I should say, an equivalent
product, because they have exactly the same source code, you have proven that you have
some value that is worth some positive value that is worth having so that people will
be a return buyer, a return user of your product.
I do also want to talk about here, and this is kind of a topic for a second session that
I'm not giving, which is what trademark, so I do want to put in the air, you don't necessarily
have to use the same name as the software project.
There's a desire and a tendency to do that, because you have goodwill that's already been
built up in that software project name, so you want to take that software, you want to take
that and leverage that into your business, so people may be familiar with the software
project, and this is great, I already have brand awareness, I'm going to take this, and
I'm going to use this for the benefit of my commercial business.
I think about that, because once you've done that, what you've done is you have tied
your brand value to the project itself, so when the two diverge, you are kind of stuck
with each other, you're kind of stuck like glue, so I've say the project, and this
applies even if you're both the founder of the project and the founder of the company,
still think about it, because, say for example, there's a catastrophic failure in the software
that causes billions of dollars of harm, and you have your little company over here doing,
do you want to be associated with that, or maybe you want to be able to put some distance
between the two, so just think about what happens if something goes wrong with one of
the other, and what might that do to one or the other, just something, again, another
topic altogether, but just something to think about.
So great, we're going to use trademarks, it's great, we're going to have a brand, we're
going to leverage it, okay, when will you have gone too far?
These are the things that you, as the trademark owner, have to worry about, one is an uncontrolled
licensee who's misleading users, so if you just say, like, everybody gets to use the trademark,
that's called a naked license, and what has happened in all these, these scenarios on this
slide is your trademark has lost its source identification value, if everybody is, if everybody
is using a trademark and claiming to be that thing, then it's lost its value of this
sole source identifier, which is what a trademark is.
I want my name to be on everybody's lips, which we call, once it becomes the generic name
for the product itself, then it's not, again, it's not a source identifier, it's become
the generic name, the ethernet was a trademark, it was a registered trademark, it's not a trademark,
right, ethernet is ethernet, we know what that is, you don't want that to happen, and
then giving permission for something that causes confusion, where you tacitly approve
of someone creating confusion, and that also will be, as a matter of equity, as a matter
of fairness, to someone who relied on your say so that it was fine, you may lose your
trademark rights, and you certainly will not certainly, but you probably lose them against
as to that person, if not altogether.
Just an example of very recent news in the news recently, the original, the terms and conditions
for WordPress said the abbreviation WP is not covered by the WordPress trademarks, and
you are free to use it in any way you see fit, right, right there, anybody gets to use
WP, only now they have changed to say the abbreviation WP is not covered by the WordPress
trademarks, but please don't use it in a way that confuses people, right, they change
that.
So that's a situation of a license, that's a license that was, we can argue it's a license,
it was granted to the WP trademark, did I go, let's see.
And this one slide about WordPress, I don't know if it's on your mind or not, I'm riveted
to it, automatic is trying to leverage its trademark for reasons other than a concern about
trademark infringement.
There was recently a preliminary junction against automatic issued by a US court, because
if it's other behavior, it's sort of like remember they had the checkbox and the log-in,
and they blocked it all, but anybody from WP engine, the court ordered them to reverse
that, to restore it to what it was before, and nothing was said about the trademark in any
of this preliminary junction, and any of the proceedings thus far.
So I think WordPress was just using its trademark, going back to what I say is the only leverage
you have is the trademark, and they tried to leverage that, but maybe in a way that's not
quite right.
Questions?
One question, no, I'm so sorry, tonight.
One question.
Okay, that's difficult.
I go enough time on your slides to leave plenty.
Like, you picture you're going to go through them in 15 minutes, isn't it?
Lazy option, first rule?
Yeah.
So Pam, you said something about trademarks can also be used for controls while
it's branding.
Most famously in the Missile of Versus, Debbie, and I suesle Firefox, but early on in
your talk, you said, Europe regards financial tie as being key to the definition of using
a trademark in the market, and the US is going that way.
In the spat-worth, Missile of Versus, Debbie, and to change the name, there was no financial
tie.
Does that mean the ability of open source to use trademarks to control how their software
is used is going to die in the marketplace in the future, first in Europe, and then possibly
later in the US?
So no, actually, I was using that example as sort of it doesn't have to be source
confusion.
It can be other kinds of confusion, and that other kind of confusion, if you think about
it as a financial link, the Debbie and Versus, Missile was a source confusion situation
because what was in Debbie in Missile's viewpoint was not authentic software.
It was because it had been modified.
So there is a principle of law, like when you modify, it's not the same thing
anymore.
Do you still get to call it the original thing or not?
If I take a Rolex, if I take a time-ex watch, and I put diamonds around the bezel to make
it look like a Rolex, can I call it a Rolex?
Can I call it a Rolex?
No, that's a source confusion problem is what you are saying people are getting is not authentic.
It's basically, what you're saying is it can be a counterfeit, can be considered a counterfeit.
They didn't go that far.
Missile didn't go that far.
So unfortunately, we don't have time for not a question, so thank you very much.
Pam?
Thank you.