Software Freedom & Trademarks: Examining Rust's New Policy through the Lens of FOSS History
byon July 27, 2023
When it comes to the law, people working on software freedom are often most concerned about copyright and contract law (and the licenses we use under both), since these appear to most directly affect software freedom. How people can use, study, modify, and redistribute the software is naturally of paramount importance and these laws heavily affect those rights. Generally FOSS projects don't consider their brand as much as the software and community being built, and so other fields of law, like trademark, get less consideration.
However, trademark law can have a significant impact on what people can do with a FOSS project, including whether they can enjoy these rights at all.
Practical software freedom (the right to use, study, modify, and redistribute software you've received) requires meeting several conditions. First, that program must be under a Free and Open Source (FOSS) license. Second, the entity(ies) distributing the program must abide by the terms of the license. And third, there must be no additional restrictions that would inhibit your ability to exercise your rights under the license. (Copyleft licenses include extra verbiage to assure the third condition is met.)
For non-copylefted works, which do not have additional terms in the FOSS license to avoid additional restrictions, we have to verify that no external conditions effectively revoke the rights of users surreptitiously. While that situation is rare, the repercussions can be quite severe. Historically, for some famous software, we've faced such significant challenges. This post is advice to avoid repeating these mistakes of the past. Often, these mistakes occur due to aggressive trademark policies.
Trademarks have value for FOSS; they do reduce confusion between similar products, tools, or programs. When used appropriately, they ensure people know what program they're using, who is behind it, and what they can expect from its behavior. When stretched too far, trademark policies create huge problems in software freedom communities. Sometimes, aggressive trademark policies cause programs that would otherwise give users software freedom to no longer provide the rights users rely on to copy, share, and redistribute the software.
We explore below three historical examples — each of which provide different lessons on how appropriate trademark policies can respect software freedom. We end with a recent situation that could still go either way.
Let's start with Java. As early as 1996, Sun Microsystems was aggressively going after anyone who used the 4 letters "Java" in their name, even if there was no likely confusion. Occasionally, Sun had to apologize for this behavior. Contemporaneous commentators noted: "that doesn't mean that Sun intends to rein in its trademark hawks". As a result, software freedom activists wishing to implement a Java compiler were extremely careful to never use "Java" in a way that could cause Sun to object. One example is the first FOSS implementation of the Java standard library, which developers named "Classpath" (at the suggestion of SFC's now Policy Fellow, Bradley Kuhn) to avoid any whiff of "Java". While Sun later became more friendly to software freedom, this software-freedom-hostile trademark policy persisted for over a decade, creating significant extra work for anyone wanting to create or modify Java programs, as they navigated the confusing naming landscape of not-Java names used for Java tooling.
Next, consider PHP. Starting in 2000, the PHP authors decided to remove the option to use PHP under the General Public License, beginning with PHP version 4. This left users with only the PHP License as an option, which is non-copyleft, but includes extra restrictions beyond most non-copyleft FOSS licenses. Those restrictions specifically related to use of the PHP name. This policy led to substantial debate within many communities, including Debian. Debian eventually decided to create a special policy for PHP in order to feel comfortable redistributing and modifying PHP, which is memorialized on the FTP Masters' web site. Imagine the time and effort wasted by redistributors like Debian, who had to consider special cases for a specific software program. Ultimately, such licensing makes extra work for distributions like Debian, and creates uncertainty for people wishing to modify PHP — as they navigate a license used nowhere else that awkwardly pulls in a trademark policy as part of it.
Finally, and perhaps most importantly, consider the historical situation with Mozilla. Unlike the other two examples (with very little communication between trademark holders and distributors of the software), Mozilla did try to coordinate with groups like Debian. However, Mozilla's demands (beginning in 2004) could not be accommodated without major changes to the programs that Debian and other distributions provided to users. Mozilla was unable to successfully address the legitimate concerns the Debian community raised regarding its policies for a long period of time. As a result, Debian and others spent years doing extra work to rename Firefox, Thunderbird, and other Mozilla projects before distributing them to users. This is perhaps the worst outcome of an improperly-applied trademark policy, as it causes both substantial extra work, and also a loss of brand recognition. Users of Debian and other distributions needed to do extra research to find that they were in fact using Mozilla software that is very similar to the Mozilla-branded versions. Mozilla's retrograde policies for years hurt both the Debian and Mozilla communities. Eventually, Mozilla listened to the community, negotiated fairly, and the policy was changed. The result was a clarification on how reasonable changes to Mozilla programs could retain the Mozilla names, as discussed by the Debian Project Leader involved in the discussions and others in the renaming ticket. In line with core principle 8 of the Debian Free Software Guidelines, there was nothing Debian-specific about the clarification, so all distributors of Mozilla programs could benefit.
With all these examples of trademark policies gone wrong in the first couple decades of the software freedom movement, we must create better policies going forward. Open dialog between trademark holders and software distributors can alleviate concerns over trademark policies' reach, or at least allow distributors to quickly arrive at a conclusion on appropriate next steps. So we do encourage groups with trademark policies (especially those likely to change in the near future) to proactively reach out to those affected, and ask for discussion and/or input to ensure the software freedom community remains strong and healthy.
The Rust Foundation's draft trademark policy may require substantial work to avoid the problems of the past. We hope that the Rust Foundation considers the history of trademarks and software freedom that we've discussed above. While the Rust Foundation did briefly open a comment form for public feedback on the above draft, it is unfortunately closed now. We are not aware of any outreach so far by the Rust Foundation to talk with key redistributors, such as Debian, to verify the changes would fit reasonably with long-standing FOSS redistribution policies. Accordingly, we hope the Rust Foundation will open another round of comments in order to solicit further feedback on their draft trademark policy.
After reaching out to someone who is involved with the Rust community and the Foundation, we understand that this policy is still a work in progress and look forward to hearing more about it in the weeks to come. The published policy is not in effect, and we encourage the Rust Foundation, in response to this article, to reach out to relevant parties and ask for assistance and feedback. We're of course happy to help however we can.
To keep our software freedom communities vibrant, communication is key. While we are excited to see the Rust Foundation open to public comment, we hope they will work with the larger FOSS community to find a trademark policy that benefits everyone. With decades of history and experience resolving these issues, the software freedom movement has what it takes to solve these and other pressing issues of today.
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