The battle for the SOFTWARE FREEDOM name

There’s a conflict happening right now over the future of what SOFTWARE FREEDOM means that you’re probably not aware of. Like many conflicts over trademarks, it’s complicated – but it’s critically important to any open source project that wants to keep their own name and branding.

By Mari Helin-Tuominen on Unsplash

Why does this matter?  Because it may affect who can call themselves SOFTWARE FREEDOM® in the marketplace.

The Conflict Today Over SOFTWARE FREEDOM

The Software Freedom Law Center (SFLC, a non-profit) recently petitioned the USPTO to cancel the trademark registration for SOFTWARE FREEDOM CONSERVANCY, which is used by the Software Freedom Conservancy (Conservancy, a non-profit) as, well, their organization’s name.  The Conservancy has responded to the filing and posted publicly about their astonishment about SFLC’s legal move to cancel their registration without previously asking about it.

UPDATED: The SFLC posted a rather astonishing blog post today responding to Conservancy’s rather measured posting last week.  Wow.  This is not going to be fun for anyone involved, sadly. See also my timeline of eventslegal-ish analysis, and community-focused analysis.

Gee, that’s… a lot of legal mumbo jumbo – what does it mean?

SFLC is complaining that Conservancy’s name is too similar to their own and that Conservancy shouldn’t be allowed to use SOFTWARE FREEDOM in their name. SFLC’s filing states:

24. Registrant’s (Conservancy) registration should be canceled because it consists of or comprises a mark which so resembles Petitioner’s (SFLC) previously used and registered SOFTWARE FREEDOM LAW CENTER Mark as to be likely, when used in connection with Registrant’s goods and services, to cause confusion, mistake, or deception within the meaning of 15 U.S.C § 1052(d), and to cause damage to Petitioner thereby.

Essentially, if SFLC is successful with this action, the Conservancy would likely be forced to remove the “Software Freedom” from it’s “Conservancy” name.  That’s the importance of protecting your trademark – if you don’t, there’s a chance with someone else who has a similar name making you change your name.

Even more so than most court cases, this is a complicated and lengthy process, so don’t expect any news soon. This isn’t in Federal court, either – the action is happening in the USPTO’s Trademark Trial and Appeal Board (TTAB), which has its own rules for deciding trademark cases.

 

Why This Happened Now

Competition.  The SFLC recently announced they would start offering incorporation-as-a-service to free software projects.  This is a great service – helping independent FOSS projects better structure governance and fiscal services and donations for themselves as individual non-profits. That’s similar – but subtly different – then what Conservancy does, which is serve as a single fiscal sponsor for multiple free software projects.

Note that a number of FOSS Foundations that already offer similar services for many open source projects, although they each have a different focus. But both SFLC and Conservancy have strong roots in the free software movement, so they are both interested in helping many of the same free software projects improve their governance.

Why This Is So Surprising

The first step in complaining about misuse of your trademark is never to call the lawyers – it’s ALWAYS to talk privately first. The SFLC’s direct appeal to the TTAB to wholly cancel Conservancy’s registration, without (apparently) talking to them first is unnecessary and not at all expected behavior in the open source world. If you work on a FOSS project, imagine how surprised you’d be if some government office sent you a cancellation notice like that!

What I would have expected is some private discussions about how the two non-profits can peacefully co-exist, as they’ve been doing for years already.  Clearly, something else is going on at the SFLC to cause them to go straight for the legal fight rather than trying to work together. This is also unusual since the FOSS project hosting world already has a number of places for projects to look for governance support.

Trademarks are complicated, and TTAB appeals and legal fights around trademarks are even more complicated than that.  So there’s no telling at this point what will happen.  But I sure hope some of those folks – most of whom I know and like – can get together to talk about this, instead of fighting over both of their SOFTWARE FREEDOM names. Because fighting over the shared portion of their name helps no-one and gives a bad taste to everyone watching the fight.

Stay tuned for updates! It will be interesting to see what other public statements are made – especially if the Free Software Foundation (arguably the birthplace of software freedom!) weighs in at all.

Resources / See Also

SFLC’s blog post announcing services for helping free software projects incorporate.

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Shane

Briefly, Shane is: a father and husband, a friend, a geek, a Member, officer, and director of the ASF, a baker, an ex-Loti, a BMW driver, a punny guy, a gamer, and lifelong resident within the 495 belt. Oh, and we have cats.

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