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Trademarking Linux: Some Pay License Fee, Some Don't

UPDATED: Should companies be paying a license fee for the use of the Linux trademark?

Red Hat , the number one Linux distributor, said it does not. Novell , the number two Linux distro, has a license but wouldn't publicly comment on whether it pays for it.

Five years after Linus Torvalds and his supporters began to take steps to protect the Linux trademark, the issue has arisen again.

Attorney Jeremy Malcolm has already contacted 90 Australian companies on behalf of Linus Torvalds in order to get them to obtain a license to use the Linux trademark. The letters have brought the issue to the forefront of the open source collective consciousness, yet again.

"You may or may not be aware that it is your legal responsibility to obtain a license from the Linux Mark Institute before you are allowed to use the word 'Linux' as part of your product or service name or brand," the letter states.

Linux trademark licensing is administered on behalf of Torvalds by the Linux Mark Institute (LMI). Fees range from $200 and go up to $5,000 for commercial firms with revenue greater than $1 million. It is important to note that the license is for vendors of Linux products to become a sub-licensee of the Linux trademark. It is not a license for users to use Linux (like SCOsource is advocating).

Though the action has raised the ire of some, the issue is by no means a new one. In fact, the LMI and Torvalds' efforts to protect the trademark date back to at least the beginning of the millennium.

On January 18th, 2000, Torvalds, in an e-mail to the Linux kernel developers list, explained the need to protect the Linux trademark.

At the time, Torvalds noted: "Trademark law requires that the trademark owner police the use of the trademark."

Part of the issue at the time revolved around cybersquating.

Torvalds stated intent was not to force or require all projects that use the term "Linux" to get his permission.

"That's the LAST thing I want. I want 'Linux' to be as free as possible as a term, and the real reason for having a trademark in the first place was to _protect_ it rather than use it as some kind of legalistic enforcement thing," Torvalds wrote in 2000.

Five years later, Torvalds once again posted to the Linux Kernel Developers mailing list why he needs to protect his and the Linux name. Torvalds argued that, regardless of what a Linux distribution may be called, they'll likely want to protect the name, especially if they are a commercial entity.

The two methods of protection, in Torvald's view, are to either a make a unique name (he gives the example of Debian and Red Hat as Linux distributors).

The other method is to "sublicense" the name in combination with something else.

"In the case of 'Linux,' that name is already guaranteed unique by the trademark office," Torvalds wrote.

Torvalds explained that a company could decide not to sublicense and call their product "anything MyLinux but the downside is that you may have somebody else who _did_ protect himself come along and send you a cease-and-desist letter."

It's all about whether someone wants or need protection and "not about whether LMI wants the money or not," according to Torvalds.

Red Hat, the leading enterprise Linux company, currently does not have the Linux license from the LMI. Mark Webbink, Red Hat's Deputy General Counsel, in a statement sent to internetnews.com, said: "We have not taken a license nor do we intend to. Beyond that, we do not wish to comment further at this time on the actions of LMI."

Novell, however, is singing a different tune on the issue. Novell spokesperson Bruce Lowry told internetnews.com: "We do have a license for use of the Linux trademark, but we haven't made public its terms."

Gael Duval, founder of Mandriva Linux, told internetnetnews.com that as far as he knows, Mandriva does not pay to use the Linux trademark.

"The Linux Mark Institute didn't contact us about licensing the Linux trademark and we do not use as a 'standalone' trademark," Duval said. "We sell 'Mandriva Linux' products and are always clear that Linux is a trademark of Linux Torvalds so I don't think there is any issue."

Alex Banh, CEO of Sun Wah Linux, told internetnews.com that the company is in the process of paying for the sublicense and expects to have it completed by the end of the month.

"I believe that what LMI does is good for the whole market as it removes more uncertainty about trademark issue," Banh said. "We are definitely supportive of such an effort. In fact, we are in the process of internal discussion on how to take that effort to Asia."

Open source luminary Bruce Perens, who also runs UserLinux (which is Debian GNU/Linux based effort), is also in support of the LMI. However, he admitted that UserLinux does not currently license the mark either, though it intends to do so soon.

"We're probably going to do it, our objection to the license was procedural," Perens explained. "We'll deal with the procedures. We're not against trademarks and we think we'll be able to work with the Linux Mark Institute."

Perens is also of the belief that other Linux distributions should jump on the Linux trademark bandwagon.

"We don't have to have a parade but I think that they should license," Perens said.

Updates story to include comments from Sun Wah Linux and Mandriva Linux officials and clarify Novell's.