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The Courts Government Software News

Trademarking Open-Source Projects? 77

Posted by Cliff from the identity-protection dept.
dautelle asks: "I had the nasty surprise to receive a letter from a company in New-Zealand asking me to stop using the 'jade' name they have recently trademarked (my open source project has been Java Addition to Default Environment or JADE for short, long before their trademark filing date). I am going to comply, but I wonder if our open-source projects should be trademarked (cost >300$) to prevent such misfortune?"
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Trademarking Open-Source Projects? More

Trademarking Open-Source Projects?

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  • Not worth it (Score:3, Informative)

    by Sancho ( 17056 ) on Friday September 17, 2004 @11:27PM (#10283013) Homepage
    Trademarks have to be actively defended or else they are diluted and may be declared null. At best, I think, this would mean that anyone could use the name freely (maybe that's the point) but I imagine that a trademark might be awarded to someone else. IANAL. I'm just JADEd with regard to US IP laws.

  • My opinion (Score:2, Funny)

    by Anonymous Coward
    We should trademark open source project names, start selling those licenses to the end-users and charge money for it, use the money to pay the developers, who will in turn provide better usability and more features. Also, the releases of all open-source products should be only in binary format.

  • Are not trademarks local? (Score:3, Interesting)

    by Guspaz ( 556486 ) on Friday September 17, 2004 @11:34PM (#10283049)
    As I understand it, trademarks are NOT international, and as long as you're not in NZ, you don't have to listen to them.

    IANAL, but if you trademark it in your own country, that will prevent this other group from trademarking it in your country.

    If you have any developers in NZ though, that might cause problems.
  • For names that make sense and are acronyms of your product, it is not a bad idea. However, the ownership of this trademark should be to an open non-profit organization that could easilly live for ever in the free domain.

    Open source trademarks should never be in the private domain. Obviously, global trademarks are probably fiscally not practical but North American ones should be cheap enough (?)

    I have no idea how to set up such an organization but I'm sure their out there.

    I for one am working on the early
    • Getting a trademarks by itself is not too cpstly, it is the required due dilligence beforehand that will cost you money. Also, setting up an open, non-profit organisation is very expensive to do, and to maintain. Then, who would be runniong this organisation? who would decide what product, group of developers, or organisation gets to use the name? for how long? what if a few developers want to go commercial and sell services around the open source product? what happens to the name? what is a second group of

  • JADE NZ was using the name first (Score:5, Informative)

    by Joff_NZ ( 309034 ) on Saturday September 18, 2004 @12:08AM (#10283166) Homepage Journal
    As for who had the name first - From the History on Dautelle's page:

    "version 1.0 was # September 12, 2000: Official release of JADE 1.0"

    I myself am a New Zealander, in fact, I work just down the road from JADE's HQ, and from their History Page [jadeworld.com]

    "Jade Software Corporation combined its research and development capability with its real-world IT experience to create a new enterprise application development environment called JADE that was launched in 1996."

    There it is.. Case Closed.

  • Been called "Jade" forever (Score:3, Informative)

    by WasterDave ( 20047 ) <davep.zedkep@com> on Saturday September 18, 2004 @12:13AM (#10283184)
    Furthermore they *have* to actively defend their trademark. You're welcome to trademark your open source project (a certain operating system kernel is trademarked), but you do need to do it before anyone else does.

    Dave

  • The true cost (Score:4, Insightful)

    by fm6 ( 162816 ) on Saturday September 18, 2004 @12:14AM (#10283189) Homepage Journal
    I wonder if our open-source projects should be trademarked (cost >300$) to prevent such misfortune?
    Standard mistake: "trademarking" and "registering a trademark" is not the same thing. All the registration does is help document that you claimed the trademark at a certain time. What really establishes your right to a trademark is using and protecting it. Which costs a lot more than $300!

  • No worries, mate! (Score:5, Funny)

    by PylonHead ( 61401 ) on Saturday September 18, 2004 @12:16AM (#10283199) Homepage Journal
    Just rename yours to "Firebird"
    That's a catchy name!

  • No need to register (Score:3, Informative)

    by alienw ( 585907 ) <alienw,slashdot&gmail,com> on Saturday September 18, 2004 @12:45AM (#10283330)
    Registering a trademark is not like registering a domain. Registering one only establishes the date when you started using it. If you can show that you were using the trademark before the date it was registered by another company, you are in the clear, and they would be the ones infringing.

  • I dunno man... (Score:3, Insightful)

    by NanoGator ( 522640 ) on Saturday September 18, 2004 @12:56AM (#10283371) Homepage Journal
    The solution seems to me to pick a name that few others would care much about. JADE is a bit too common, IMHO.

    Wish I had a better suggestion for you, but I don't. I see an interesting opportunity for you here, though: When you pick a new name, make sure it's so unique that a Google search will turn you up.

    • ex-nay (Score:4, Insightful)

      by epine ( 68316 ) on Saturday September 18, 2004 @08:20AM (#10284397)
      My view is that it was a sad day for humanity, democracy, and freedom of expression that ordinary, long established words from the English language (or any other) should have been subject to trademark rights in the first place.

      Xerox should be trademarked.
      Kleenex should be trademarked.
      Pepsi should be trademarked.
      Coke should NOT be trademarked.
      McDonald's should NOT be trademarked.
      Fedex should be trademarked.
      Nike is debatable (obscure Greek mythology).
      Clorox should be trademarked.
      Lexmark should be trademarked.
      Apple should NOT be trademarked.

      I think we should accept reality and just get rid of trademark registration altogether except for xemes(TM) containing the letter x.

      • Re:ex-nay (Score:3, Informative)

        by david duncan scott ( 206421 )
        I assume that your objection to Coke as a trademark is that the word "coke" has been around for a jillion years, and of course you're right, but that's not the point of trademarks.

        Consider the case of "Ford", also a common word, and for that matter a common surname. Would you be comfortable if I sold you a car I had whittled in my spare time and which I labeled as a Ford? More realistically, how about brake linings?

        Just because Ford has a trademark doesn't mean that the company controls the word. The Ford

      • I think we should accept reality and just get rid of trademark registration altogether except for xemes(TM) containing the letter x.

        This why companies often phonetically (mis)spell products' names -- so that those names can be trademarked. Just think of products containing made-up words like krispy, cheeze, stix, froot, ....
        • Well, also because they're misleading. They can sell Ajax Brand Cheeze and Froot Snak Mix, hoping you'll think it has cheese and fruit in it. But if you notice that it doesn't, they can say, "We never said it did -- that's just the name."
        • Mmm... krispy cheeze stix...
  • Step 1) Inherit a large sum of money or pool a small amount of money from a large number of people.
    Step 2) Trademark as many Open Source, trendy names as you can.
    Step 3) ????
    Step 4) Non-Profit!

    ~UP

  • Rename your project (Score:4, Insightful)

    by Brandybuck ( 704397 ) on Saturday September 18, 2004 @02:08AM (#10283582) Homepage Journal
    Stop whining and rename your project. It doesn't matter if they have a trademark or not, because they had the name far longer than you did. I use Jade (the original) on a regular basis but I've never heard of your app until now.

    It doesn't matter what your political views on trademark IP is, in a polite society whoever grabs the name first gets to use it. So be a good community citizen and rename your project. And don't name it "linux" because that's trademarked too!
    • Okay, apparently the Jade trademark in question isn't the Jade I'm thinking about. But that doesn't nullify my argument: be a good fellow and rename your project. Why? Because the Open Source Jade project is still far older than yours!
      • Okay, apparently the Jade trademark in question isn't the Jade I'm thinking about. But that doesn't nullify my argument:

        To the contrary, mate; you just blew your whole argument out of the water - boots, boards, buckets and barrels.

        If there are lots of "Jade" projects around, including your pet "Jade" (whichever it is), then it appears that the whole "Jade" trademark experience has become as a practial matter, far too widespread and diluted to be of any real-world value as an exclusive property.
    • Sorry Brandybuck, but perhaps you might want to read a bit ore on trademark law. First, there is the case of international versus local. I have trademarks that are not valid in NZ, or even in Florida.

      Second there is the case of a trademark needing to be confined to a particular line of trade.

      This is why Bob McDonald can open up McDonald's Barber Shop, even create a franchise out of it, and not infringe on McDonald's the burger joint's trademark.

      And no, it isn't necessarily about who gets it first. It is
  • I have a schizoid view of this.
    On one hand, names matter.
    On the other they don't.

    I don't think you ever (shudders) want to party with
    lawyers. My one experience in the early 80's advising
    a lawyer about concepts such as "compiler" made me
    very ill indeed. (I'm a techie as you'd guess).

    If it doesn't hurt your project too much change the
    name. If it does, then there *are* legal entities
    watching slashdot (the groklaw clan) who maybe can
    help.

    This is after all a community. Good luck. You might not think the unwas

  • Actually... (Score:3, Informative)

    by Rope_a_Dope ( 522981 ) on Saturday September 18, 2004 @05:17AM (#10284048)
    You should research on the EFF Website [eff.org]the various laws regarding trademark, and then possible contact them, or others who may be in the know and will help you at no cost to you. (Lawrence Lessig comes to mind, although getting any assistance from him might be difficult).

    Public Knowledge [publicknowledge.org] may also be willing to assist with trademark issues.

    The Open Source Law Resource center [denniskennedy.com] also carries information regarding law and open source projects, although it is generally for information regarding Open Source licensing issues.

  • Jade is the name of the next version of LINC, a crusty old mainframe language popular on Unisys mainframes. Common use of the word Jade to refer to their software rather considerably predates your project (and Java itself), I'm afraid.

    Plus, don't mess with Unisys. <ahem>gif<ahem>

  • jade package in debian is something else (Score:5, Interesting)

    by Xtifr ( 1323 ) on Saturday September 18, 2004 @05:51AM (#10284103) Homepage
    The jade package in Debian is "James Clark's DSSSL Engine", and it's been there since 1997, and has copyright dates going back to 1994, so I think James has precedence over both you and this company.

    I doubt if James would mind that your quite different project has the same name, but he might have some interest in an upstart company threatening people who use the name, and might be willing to work with you on dealing with their threats. His home page is at http://www.jclark.com/ [jclark.com] (and the jade project page is at http://www.jclark.com/jade/ [jclark.com]).

  • Register your trademark in only one state. (Score:3, Informative)

    by Futurepower(R) ( 558542 ) on Saturday September 18, 2004 @05:53AM (#10284107) Homepage

    Register your trademark in only one state. That is legal proof that you intend to reserve the name. In Oregon registering costs $20 for each 5 years.

    If you are operating outside the state, be sure to document the use.

  • Is it a valid trademark? (Score:3, Interesting)

    by Dausha ( 546002 ) on Saturday September 18, 2004 @08:49AM (#10284486) Homepage
    Sorry, but I'm in law school now, but have not yet taken IP law. But, just because somebody sends a C/D does not mean you have to comply immediately. You have to know if you are liable first. I hate to say it, but spend a little time (mabye $$) to find out if you risk infringement.

    If I am not mistaken, however, you can't trademark a common word. For example, Microsoft can trademark "Windows" because it's already in the vernacular. Instead, they're "MS Windows." If I am correct, and IANAL, then you can tell them where to place their C/D.

    Are you in the US? Then, they will have to being suit here. If they do, then (assuming I am right about the non-tradmarkability of a common English word) the response to their complaint is that their action is not colorable under the law. That is, while you may be using the same word as their trademark, because they have a silly trademark they can't bring action.

    There are many current vernacular words that were once trademarks. If a company does not prevent their trademark from entering into common usage, e.g. "xerox" to mean photocopy or "google" to mean web search, then the validity of their trademark is lost and they shouldn't be able to enforce their trademark. Happens all the time.
    • I let a typo slip through. When I said "can trademark 'Windows,' I meant "can't trademark."
    • Sorry, but I'm in law school now, but have not yet taken IP law. .... If I am not mistaken, however, you can't trademark a common word. For example, Microsoft can trademark "Windows" because it's already in the vernacular.

      Well, be sure to ask about this in IP class. In theory, you're right, but in practise, it's not that simple... because Microsoft did a pretty good job of causing trouble to Lindows over alleged "confusion in the marketplace" with Windows. See also: the recurring scuffles between the Be

    • Also IANAL, but...

      IIRC, common dictionary terms can't be trademarked. Which is why "Windows" can't be trademarked. Because they've existed for quite sometime now, thank you (you know those glass thingies in your boss's office that lets the scenery in, but keeps the bugs and weather out ?), not because everyone used the term "Windows".

      Hence, "Jade" can't be trademarked, as its a common term for a precious gem. However, if you use a stylized logo that was similar to the logo that your antagonists use, the

  • You don't have to fear -- sort of (Score:1, Insightful)

    by Anonymous Coward
    If you use the name "Jade Software" as a company name, then the company in New Zealand is correct, and you've got legal problems.

    However, the mere word "Jade" is quite common. For example, just searching for businesses with the word "Jade" in them, in just the Chicago business directory, yields 22 hits. Jade Corporation, Jade Tattooing, Jade Restaurant, Jade Property Management.

    Even the word "McDonald" is part of several business names.

    Where this gets fuzzy is that businesses with the same name can co
  • Perhaps you can rename it from JADE to J-A-D-E or J-ADE. It'll still be pronounced the same and look almost the same, but it's not the same name (IANAL, blah blah). But I do believe that a different spelling wouldn't be trademarked just because it sounds the same.

    That is, if you want to change the name.

    I've never thought of this before, but could some opensource advocacy group trademark a part of a name such as "GNU" or "OS" and anyone that wanted to be protected from trademark infringement could use th
    • It doesn't work like that. If it is close enough to cause confusion it is in violation (e.g. Lindows vs Windows). The courts decide whether or not something is close enough to cause confusion should it go that far.
  • I could be wrong, but wasn't there a new copyright law passed in the US a couple years ago that allows you to copyright somthing just by saying so? As long as it's original, of course.

  • I'd be reluctant to comply. (Score:3, Funny)

    by His name cannot be s ( 16831 ) on Sunday September 19, 2004 @08:37AM (#10290237) Journal
    I wouldn't rush to comply.

    Others have said it, check your local options first. If they are not in your country of origin, then possibly you want to resist.

    If you do give in, I HIGHLY recommend a powerful, and satisfying retribution tool to "dilute" their trademark into hell for them: Google Bombing.

    Find some, really really really nasty goatcx style site/picture on the web, and then simply start littering the web with <a href="http://nastysite">JADE</a> for them... Do it long enough, and they won't want the trademark anymore.

    Jesus, when I see this shit on a sunday, I sure get mad about it.

  • From Webster's Revised Unabridged Dictionary (1913):

    Jade \Jade\, v. t. [imp. & p. p. Jaded; p. pr. & vb. n.
    Jading.]
    1. To treat like a jade; to spurn. [Obs.] --Shak.

    2. To make ridiculous and contemptible. [Obs.]

    I do now fool myself, to let imagination jade me.
    --Shak.

    3. To exhaust by overdriving or long-continued labor of any
    kind; to tire or wear out by severe or tedious tasks; to
    harass.

    The mind, once jaded by an attempt above its powe

  • Just change the name of your product, and be done with it. There may be a legal and/or moral side to this, but you're probably not the right person to make a stand (i.e., you don't have huge funds). When Firebird changed to Firefox, everybody grumbled for a while, but guess what, the right decidion was made. Now, Firefox has strong market recognition, and only a few people care that it was once called firebird.
  • If you were using the name before they were then they have no right to tell you to change their name. I had a silimar situation with a web site I used to run. The lawyer for another company contacted us and said they owned the trademark on the site's name (actually it was worse than that, after several conversations they even tried to claim their copyright was any derivitive of one of the words in the name)...the situation finally came to a head after us refusing thier demands several times. I wrote a ca

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