The Open Source Alternative: Understanding Risks and Leveraging Opportunities

Chapter 8. Trademarks and Open Source

Trademark Law And Open Source Licensing^[108]

In the open source context, the function of trademarks can be quite complicated. By definition, any open source license allows modification and distribution of software royalty-free.^[109] But that does not mean that these activities are allowed under the trademarks applied to the software. Open source licenses primarily grant rights under copyright and, to some degree, patents. They never include trademark licenses.

To understand the interaction of trademarks and open source, you must first understand trademarks in general—an often misunderstood form of intellectual property. Trademark law is very different from copyright and patent law. In fact, some lawyers do not feel trademarks should be called intellectual property at all, although they usually are. First, in the United States, rights in trademarks do not arise from creation, as they do in copyright or trade secret law. Rights in trademarks arise from use in commerce. In the United States, you can apply for a trademark registration much as you can apply for a patent—and to the same governmental entity, the U.S. Patent and Trademark Office. But unlike patents, trademark registrations are only evidence of ownership, not ownership itself.

Trademark law is easiest to understand when you start from the premise that trademarks are instruments of consumer protection. Owning a trademark allows the trademark holder to sue for damages for trademark infringement, ...