Trade marks – origin not content
Two recent events concerning trade marks, one in New Zealand and one in the US, highlight the same underlying issue, albeit in different ways.
The first incident: local blog Editing the Herald received a cease-and-desist letter from APN, publisher of the NZ Herald, on the basis that EtH was using a modified version of the Herald masthead, a trade mark of APN.
The second incident: the author of a book on Ubuntu, whose website used the Ubuntu logo without authorisation from Canonical (owner of the US Ubuntu trade mark) sparked much comment by claiming that “trademarking is almost totally incompatible with the essential freedom offered by open source. Trademarking is a way of severely limiting all activity on a particular product to that which you approve of.”
Both of these incidents highlight that trade marks are not about “ownership” in the way that copyright is, but are about identity and origin. As the Intellectual Property Office of New Zealand says:
“A trade mark enables businesses to distinguish their products or services from similar products or services offered by competitors.”
If you are the registered owner of a trade mark, then you have the exclusive right to use that trade mark in connection with the products and services that it covers. If anyone else uses your trade mark (or something similar to your trade mark) without your permission in the course of trade, you are entitled to take action against them. Use of a trade mark that is not in the use of trade is not infringement, however the meaning of “in trade” is wide.
It is important to note that a trade mark will usually only apply to the goods and services that it is registered for. That is, it does not amount to a blanket monopoly on a word or phrase. For example, the word Kiwi is registered as a trade mark by a number of companies for different products such as shoe polish, bacon, beer, milk and packaging. If you owned the Kiwi trade mark for beer, you could not prevent someone using the Kiwi name to sell clothing, for example.
The trade mark (logo) for “New Zealand Herald” is registered for the following goods and services:
“printed matter; publications; paper and cardboard; stationery; posters and photographs; instructional and teaching materials (except apparatus)”
and
“publishing; electronic publishing; education, entertainment and cultural activities in this class including (without limitation) the organisation and running of competitions for education and/or entertainment; information services (including, without limitation, on-line information services) relating to education or entertainment”
The terms “publications” and “publishing” are very broad, and would clearly apply to someone publishing a blog. So using the New Zealand Herald logo (or an imitation of it) on a blog without authorisation would infringe the trade mark, if the use is “in trade”. But is a non-commercial blog “in trade”? EtH sums it up well: “I would have at least an arguable case in court but it would cost both money and time, only one of which I have in appreciable amounts”.
Should there be “parody rights” for trade marks? Probably not – trade marks are used to designate origin, not protect content. Copyright, on the other hand, should expressly protect parody as fair use.
As for the trade mark and open source issue, this is far from the first time it has arisen. Indeed, early on in the history of Linux, one opportunistic William R. Della Croce, Jr registered the US trade mark Linux and attempted to extract royalties for its use. Fortunately the matter was soon resolved, and the US trade mark is now owned by Linus Torvalds.
The Ubuntu author’s statement that trade marks are “totally incompatible with the essential freedom offered by open source”, is off the mark. The “essential freedom” of (fully) open source software is that you are free to copy, modify and redistribute the code. If someone releases software under their trade mark, you are free to take their code and re-release it under your own name or trade mark (subject, of course, to any terms and conditions of the specific licence such as attribution). Of course, the trade mark owner may allow you to release it under their name. But that is their choice. The unfettered ability to release software under any given name (and therefore possibly mislead as to its origin) would certainly be a “freedom” but is not the essential freedom.
The inverse makes the point. It would be unfortunate if a someone could simply take any well-known open source project, modify it into a buggy version, and then promote it under the original name. Admittedly, in some cases the issue is slightly less clear cut, as in the Firefox / Iceweasel tussle. In that situation, a more light-handed trade mark policy may have solved the problem.
Ultimately, it is the “essential freedom” that wins the day. If a project becomes too oppressive on a matter such as trade marks, it can be forked and rebranded, the prospect alone of which may help common sense to prevail.
