Trademark Innovation to Support Open Collaboration

Guest Blogger

Stephen LaPorte and Yana Welinder

For the Innovation Law Beyond IP 2 conference, March 28-29 at Yale Law School

Next week, scholars from around the world will gather at Yale Law School to discuss different institutions that impact knowledge production at the Innovation Law Beyond IP 2 conference. One of the topics will be how legal rules and infrastructure can sustain or undermine commons-based peer-production. Trademark law is one such legal regime that is rarely discussed in this context. Unlike copyright law’s Creative Commons and open source licenses, trademark law has not generated new inventions to support collaborative production on the internet. Trademark law provides some support for collaborative projects like Wikipedia and Linux by protecting their brands from imposters and making the brands distinguishable so that the projects can use them to recruit new contributors. But brand protection can also impose restrictions that go against communities’ values and slow down their work. Over the past decade, communities and their lawyers have found different strategies to reconcile their novel forms of knowledge production with the stringent requirements of trademark law.

The core tension between collaboration and trademark law is the requirement of quality control. The quality control requirement is based on the theory that a trademark should be a reliable indicator of a good’s origin. When trademark holders provide permission for someone to use their mark, they usually retain the right to inspect the quality of the goods that carry the mark and impose restrictions on how the mark may be used. Open source and free culture communities, on the other hand, thrive on openness and decentralization. These communities rely on technical tools and social norms to maintain the quality of their project.

In 2010, collaborative communities got a wake-up call with a Ninth Circuit ruling that the Freecycle Network had lost the legal rights in its logo due to non-traditional brand management. Freecycle had failed to enter into proper quality control provisions with affiliate organizations when they gave the organizations general permission to use the Freecycle logo without specific restrictions. The Court found this to be naked licensing, a form of trademark abandonment, that limited the Freecycle Network’s ability to enforce their trademark. This case served as a warning of the risk of naked licensing to collaborative communities that were too open. Since then, collaborative communities have been grappling with how to protect their marks in a manner that fits open source and free culture values.

Trademark innovations by collaborative communities

There is no question that collaborative communities are pros at innovating "beyond IP." They have created infrastructure to support the development of the world’s largest free encyclopedia in hundreds of languages and one of the most widely used operating systems. Their innovation does not rely on traditional incentive models that serve as the rationale for the IP regime. Instead, they are driven by commitment to a grander mission, passion for contributing to a project, or the desire to prove their skill in code development. When faced with the strict confines of copyright law, collaborative communities have innovated out of necessity. They have built “hacks” in the copyright system, such as various free licenses that apply copyright law to power commons-based production. Similarly, collaborative communities have developed a few “hacks” for trademark law.

Trademark registration is an important step in protecting a mark from misuse. But this step is practically difficult for a decentralized community. It would be infeasible -- if not impossible -- for each contributor in an open source project to join an application for a trademark registration. Some projects have faced difficulties after entrusting their trademark registration to a single individual or related for-profit company. To avoid this practical difficulty, some collaborative projects rely on support of an umbrella organization, such as the Software Freedom Conservancy, to hold the project’s trademark as a steward. Other projects are big enough to have formed their own dedicated nonprofit, like the Python Software Foundation, to manage trademark registrations and enforcement.

Some communities have sought to hack the threat of naked licensing by creating two separate brands. While trademark registering one brand and controlling its use tightly, a secondary brand can be unregistered and used more freely by the community. Some open source projects have a mascot for the community, such as Tux the Penguin -- the official mascot for Linux. Two separate brands may make it easier to balance the need for trademark protection with the community’s values of openness and decentralization. But it could also pose potential challenges as most consumers may not understand what each mark represents.

Another hack can be to make trademark restrictions user-friendly. Formal trademark licenses often discuss abstract legal terms, such as goodwill, which are foreign concepts to a community that prefers informality. A collaborative community may be able to address this by focusing on the usability of their trademark policy and reducing unnecessary legalese. Some communities review their trademark policy through their standard decision making processes, such as a discussion on an email list or online forum. These discussions can help the community review their trademark policy using the same style of peer review that they usually use to produce software or content.

Trademark innovations by lawyers for collaborative communities

Some collaborative communities have the benefit of working with trademark lawyers to develop innovative legal strategies that fit the community’s values. These legal strategies aim to meet the requirements of trademark law in a way that does not interfere with knowledge production in open source and free culture projects.

When a collaborative community wishes to design a trademark policy, their lawyers can assess what types of trademark uses the community hopes to encourage and the damaging uses that they want to avoid. Open source communities may want to use their brand to attract new contributors and allow contributors to identify their affiliations. When people work on a project for fun they like to decorate everything from t-shirts to cakes with this logo. When done with good intentions, these uses mostly promote and benefit their project. At the same time, open source communities will want to protect their brand from being associated with incompatible, insecure, or malicious software. Trademark law experts can fit these specific goals with the requirements of trademark law through provisions in a project’s trademark policy that make it easy for the community to do its work.

Another potential trademark hack is a special form of trademark registration called the collective membership mark. This type of trademark is used to show membership in a group. It has been used by organizations like the American Bar Association, Rotary International, and most recently the Freecycle Network after the naked licensing ruling. The collective membership mark could allow community members to use the project mark to indicate their membership without a standard quality control provisions and without the risk of naked licensing. Although not used widely in open source or free knowledge communities yet, this registration may offer a helpful solution for collaborative communities.

We discuss the above hacks as well as others, along with supporting examples from major open source and free culture projects in our forthcoming paper, "Hacking Trademark Law for Collaborative Communities."

A trademark guide for collaborative communities

Collaborative communities and their attorneys have adopted these and other innovative trademark strategies on an ad hoc basis and without much coordination with other communities. Our recent CollabMark project therefore seeks to organize the trademark hacks into a set of comprehensive solutions. Collaborative projects flourish through freely sharing and remixing materials. By collecting trademark strategies and making them available for others, CollabMark aims to empower collaborative communities to focus more on knowledge production than identity protection.

The solutions provided by CollabMark can be used as a starting point for trademark protection. New open source projects often include a LICENSE file to dedicate the project’s copyright for free reuse. But there is no equivalent simple solution for dedicating a project identity to the community. For this, a community needs to adopt a trademark policy that meets the needs of open collaboration. The CollabMark project includes a draft “public license” style policy, which open source or free culture projects can adapt for their work. The best practices for the use of trademarks by collaborative communities are still under development. As groups continue to find innovative models for producing goods and services, we need to ensure that there is matching innovation in trademark law.

Stephen LaPorte is Legal Counsel, Wikimedia Foundation. He may be reached at stephen.laporte at gmail.com.

Yana Welinder is Senior Legal Counsel, Wikimedia Foundation. She may be reached at yanawelinder at gmail.com.

Labels: Beyond IP

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