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Moglen: Linux Trademark Needs to be Policed

The founding director of the Software Freedom Law Center says any company in the U.S. using "Linux" as part of a name should sublicense the mark.

Eben Moglen, who is also general counsel for the Free Software Foundation and a law professor at Columbia University, was commenting on the recent issue of whether Linux companies and projects should be sublicensing the use of the Linux trademark.

"The root of the matter in the United States is the Lanham Act, which says that the test of trademark infringement is the 'likelihood of confusion' for consumers as to the source or origin of goods in interstate commerce," Moglen explained to internetnews.com.

The trade marking of Linux popped up in the Linux community recently when Linux creator Linus Torvalds and his supporters began to take steps to protect the Linux trademark.

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).

Attorney Jeremy Malcolm has contacted 90 Australian companies on behalf of Torvalds in order to get them to obtain a license to use the Linux trademark. Some Linux distributors said they planned to get a sub-license, others, such as Novell, wouldn't comment publicly about the payment question.

According to Moglen, in theory all trademark results rest on the answer to a question of social psychology: is there likelihood that consumers would be confused by the unlicensed use of the mark?

The free and open source software movements are such that different parties may be selling similar aggregations of software released under free licenses. That situation may lead to confusion about the source and status of anything called "Linux," in Moglen's view.

"It is therefore likely that in any given case of a product or distributor using 'Linux' as all or part of a trade name, a U.S. court would find likelihood of confusion, and therefore infringement," Moglen said. "So it does indeed behoove anyone in the U.S. using 'Linux' as part of a name to sublicense the mark."

From Moglen's point of view, the efforts of the LMI to protect the Linux Trademark (notably in Australia lately) are not necessarily something that should be applauded or booed.

"Trademark owners, unlike holders of patents and copyrights, have continuing obligations under the law to prevent people from making unlicensed use of their marks."

Moglen explained that Trademark holders need to demonstrate their continuing efforts to "police the mark." Otherwise they risk losing legal standing to bring a claim regarding a particular misuse of the mark, or near substitutes for the mark, which could cause them harm.

"So unlike copyright and patent holders, who are free to ignore activity that harmlessly infringes their rights, trademark owners are compelled to respond, and to do more than respond, in order to maintain their rights."

Part of the outcry surrounding the recent interest in the Linux Trademark and sublicensing via the Linux Mark Institute (LMI)has been about the fees to get a sublicense, which range from $200 to $5,000.

Free and Open Source Software advocate, Jon "maddog" Hall, executive director of Linux International, also helps to run the LMI.

"LMI is not trying to make any money for anyone, not trying to limit the use of 'Linux' (in fact we want more people to use it)," Hall told internetnews.com. "We are trying to make sure that people use names that allow others to join in (i.e. don't tie up namespace needlessly) and don't duplicate names on a world-wide basis."

Moglen said positive obligations of a trademark holder also cost money to fulfill. "Even a holder who is not trying to license for revenue will therefore have to find a revenue source sufficient to maintain the mark," Moglen stated.

"The licensing strategy chosen by the Linux Mark Institute, which, as far as I know, has not changed -- despite the recent uptick in interest -- is well-designed to meet that requirement without unduly burdening any business that wants to identify itself and its goods as 'Linux.'"