Thursday, March 13, 2008

Thinking Legal for Open Source Success: Trademarks & Licenses

I have been reading the dueling posts between Matthew Aslett, Tim Bowden and Ian Skerrett about the relative value of licenses and trademarks to the success of an open source company. are particularly interesting to me because I have been putting together my material for my presentation at OSBC: Implementing Your Open Source Business Strategy through Your Legal Strategy.

I think that any such discussion needs to first clarify the business model of the company: a dual licensing model has very different legal strategy from a services based model. You also need to consider the context of the business: the nature of the software (applications v. infrastructure), competitors, ownership of intellectual property rights and channels. For example, Tim discusses the difficulty of Linux distributors who are competing with the same code base. Yet Linux companies have a very significant problem: they do not control the intellectual property rights in the code base. These rights are distributed among the thousands of contributors. This situation is quite different from a company such as MySQL, Zimbra or SugarCRM who own the intellectual property rights in their code base. MySQL, Zimbra and SugarCRM can offer their products under a commercial license as well as the open source license (the "dual license" model) and even change the licenses (SugarCRM shifted from the Sugar Public License to GPLv3). Consequently, some of the discussions are comparing apples to oranges because new companies have much more flexibility in developing a legal strategy than companies working with an existing project.

If you are starting a company and will control the intellectual property rights in the code base, you will be able to use licenses, trade secrets, trademarks and patents as part of your legal strategy. However, if you are using an existing project licensed under the GPL, you will be limited in your license choice and you will not be able to use trade secrets and your patents will be of limited value because they may be licensed under GPLv2 (they are licensed under GPLv3 if you have modified the code).

License choice can be very important: I was speaking with a senior executive of JBoss and he was convinced that the choice of LGPL significantly limited their success because it is such a difficult license to understand (I personally view the LGPL as harder to interpret than the GPL). However, I don't think that the selection of GPL is a silver bullet for a company. Zimbra was using the Zimbra Public License, a version of the Mozilla Public License. Sleepycat was using its own special license (a form of BSD).

If your business model requires that your software integrate with third party software, the GPL is a poor choice. Many third party software vendors will be reluctant to integrate their software with the code if they need to license their software under the GPL. In that case, BSD or the MPL (a weak copyleft license) will be a better choice.

However, trademarks are very important in the open source software industry. In fact, they may be the major asset of a company that is using a common code base such as Linux. Trademarks take on a special importance because open source software is frequently distributed outside of traditional channels.

Unfortunately, the question of the importance of license vs. trademark cannot be answered in general. Like many questions in business (and the law) context is critical. If you are interested in more discussion about this question, join me at OSBC!