"Piggybacking" and the open-source trademark issue

Open source has a trademark problem, but one that rarely comes to the surface.

Matt Asay Contributing Writer
Matt Asay is a veteran technology columnist who has written for CNET, ReadWrite, and other tech media. Asay has also held a variety of executive roles with leading mobile and big data software companies.
Matt Asay
2 min read

Rosetta Stone's trademark lawsuit against a competitor brought to mind the simmering issue of trademark violations in open source. One of the opportunities and challenges in open source is that presumably anyone can be an expert in Project X, Y, or Z. Because of this dispersed expertise, the opportunity to run afoul of trademark violations is rife.

JBoss was constantly wading through this issue, so much so that a website was devoted to it. Bill Burke, then JBoss' chief architect, listed trademarks as one of the most important considerations for any open-source business. Why? Because being the source of code arguably matters more than source code in an open-source business.

Trademarks are all about source. Who is the source of a given product or service?

It's therefore not surprising that Bill Dudney got swatted for offering JBoss training and services. Why? Because he was using JBoss' trademarks and goodwill to sell his own product, and his advertising could have been construed to be advertising services offered by JBoss, the company.

Back to Rosetta Stone. It is complaining about "piggybacking" by a rival, Rocket Languages. What is piggybacking, and how does it relate to open source?

...[S]ome of Google's biggest advertisers are growing angry over "piggybacking," a practice in which smaller advertisers use the trademarked words of big brands in the text of search ads to divert traffic from the sites of bigger advertisers to their own sites.

See the problem? For those offering "MySQL training," as an example, unless they're authorized by MySQL to offer the training, they're likely violating MySQL's trademarks. MySQL can choose to turn a blind eye...and risk diluting its trademarks. Trademarks are only useful if enforced.

I'm not talking about rampant violations of copyright and trademarks (like this Russian rip-off of Alfresco's website). No, I'm talking about the allegedly mainstream offering of services for commercial open-source projects under the banner/trademark of the project. It's wrong to use someone's trademarks in this way, but I see it all the time for a wide array of open-source companies, including my own.

I think the primary problem here is ignorance. Most people don't want to disobey the law. They simply don't understand it. The same holds true outside of open source with Google AdWords, which is the subject of Rosetta Stone's lawsuit.

I'm an attorney, but not a practicing one. It would be great to have Mark Radcliffe, Heather Meeker, Jason Haislmaier, or another practicing IP attorney put together a post on rough groundrules for ensuring trademark compliance in open source.