an unanticipated consequence of
Jack M. Balkin
Jack Balkin: jackbalkin at yahoo.com
Bruce Ackerman bruce.ackerman at yale.edu
Ian Ayres ian.ayres at yale.edu
Mary Dudziak mary.l.dudziak at emory.edu
Joey Fishkin joey.fishkin at gmail.com
Heather Gerken heather.gerken at yale.edu
Abbe Gluck abbe.gluck at yale.edu
Mark Graber mgraber at law.umaryland.edu
Stephen Griffin sgriffin at tulane.edu
Bernard Harcourt harcourt at uchicago.edu
Scott Horton shorto at law.columbia.edu
Andrew Koppelman akoppelman at law.northwestern.edu
Marty Lederman msl46 at law.georgetown.edu
Sanford Levinson slevinson at law.utexas.edu
David Luban david.luban at gmail.com
Gerard Magliocca gmaglioc at iupui.edu
Jason Mazzone mazzonej at illinois.edu
Linda McClain lmcclain at bu.edu
John Mikhail mikhail at law.georgetown.edu
Frank Pasquale pasquale.frank at gmail.com
Nate Persily npersily at gmail.com
Michael Stokes Paulsen michaelstokespaulsen at gmail.com
Deborah Pearlstein dpearlst at princeton.edu
Rick Pildes rick.pildes at nyu.edu
Alice Ristroph alice.ristroph at shu.edu
Neil Siegel siegel at law.duke.edu
Brian Tamanaha btamanaha at wulaw.wustl.edu
Mark Tushnet mtushnet at law.harvard.edu
Adam Winkler winkler at ucla.edu
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, thriveonopennessanddecentralization.
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 aNinthCircuitruling 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 riskofnakedlicensing
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
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’slargestfreeencyclopedia
in hundreds of languages and oneofthemostwidelyusedoperatingsystems.
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 freelicenses that
apply copyright law to power commons-based production. Similarly,
collaborative communities have developed a few “hacks” for
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 SoftwareFreedomConservancy, to hold the
project’s trademark as a steward. Other projects are big enough to
have formed their own dedicated nonprofit, like the PythonSoftwareFoundation, 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 TuxthePenguin -- 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
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.
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 collectivemembershipmark.
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.
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
LICENSEfile 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
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.