Recently, the Linux company SUSE asked the open source project openSUSE to rebrand. Rebranding a product involves considerable effort. Open source projects that rely on volunteer work face additionally challenges:
- They must establish a common consensus.
- To change the branding, they need volunteers to do the work. Volunteers can be especially hard to find if they resist the forced rebranding.
- Sometimes, including in the case of openSUSE, the intellectual property owner contributes to the project both financially and with development resources, further complicating the relationship.
Licenses are not all-encompassing
Open source licenses give you the right to copy. In some cases, they define patent rights and obligations. However, when open source licenses mention trademarks, in most cases they exclude rights rather than include them. Just because a project is open source not mean it seriously tilt own brands. PureThink argued that Neo4j had given up its rights to the “Neo4j” trademark through open sourcing and created a “naked trademark license.” A US court found differently.
A couple open–Source licenses mention trademarks. According to GPLv3, trademark references can be included as “additional terms”, but even without this clause you need to be careful.
Just ask Debian for Firefox
The SUSE/openSUSE issue is not a case of an evil corporation exerting tyrannical power over an open source project. Open source projects can have trademark rights too. Mozilla protects trademark rights for its projects, including Firefox. In the past, there have been cases of scammers taking the Firefox source code, rebuilding it, and adding malware. Mozilla uses its trademark rights to prevent this from happening.
However, this created a problem for Debian, a Linux distribution that wanted to provide a patched version of Firefox to its users. Debian assures its users that all Debian assets are free to use and have licenses that are not specific to Debian. Debian was aware that this meant that the Firefox brand was unavailable, and their compromise was to provide an unbranded version of Firefox called Iceweasel. Since then, the both parties have solved the problem amicablyAnd install Firefox with Debian patches out of DebianPackage manager.
Make sure you are legally compliant before using a trademark
There are cases where you can use a trademark freely. There are exceptions to the fair use rule for trademarks, and open source projects often provide guidelines for proper trademark use that are even more generous than the fair use rule. There is no indication that openSUSE will refuse to rebrand, although there will probably be some complaints about the work involved. Whether you are running an open source project or a commercial organization that uses open source, understand that the trademark owner must Enforce the brand or you risk losing it. Don’t put them in that position.
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