Confusion swirls around trademarks and Google’s Open Usage Commons

After a week of debate, discussion and several loopy Twitter threads, the legal, cloud computing and open-source communities still aren't quite sure what to make of Google's Open Usage Commons.

The Open Usage Commons was introduced last week as a third-party organization staffed by Googlers and academics. It will hold trademarks associated with three Google open-source projects and define parameters for their use, and comes after more than a year of debate about who should control Istio, the most prominent of the projects. It's intended to give contributors and users of the project assurances that Google will not attempt to dictate how those trademarks are used.

Trademarks are an important, if often overlooked, lever of control in the open-source world. Here, the license governing the code within a project has been considered more important than the brand, in most cases. But the commercialization of open-source software over the last decade means brands have never been more important in both the marketplace of ideas — as well as the actual marketplace.

Yet trademarks are not applied as universally as licenses, which are widely understood and standardized after years of legal battles. If other companies and groups were to join, the Open Usage Commons could become the vehicle that standardizes guidelines and practices around trademarks.

The problem with that scenario is that nobody has any idea what Google is actually planning to do. Its initial announcement lacked any details: Luis Villa, co-founder of Tidelift, an open-source management company, described it as "vaporware."

Within the open-source community, trust for Google Cloud is in short supply at the moment. The company's priorities appeared to shift following the appointment of ex-Oracle executive Thomas Kurian to lead the business in 2018. IBM, Google's main partner on the development of Istio, a service mesh project that has attracted a lot of attention, didn't even hide its disdain for the OUC with the polite marketing jargon normally found in corporate statements.

"I honestly don't know where Google is coming from on this," said Pamela Chestek, a trademark attorney and former intellectual property attorney at IBM's Red Hat. "I don't understand what hurdles they believe there are that are interfering with the appropriate use of open-source software."

Take your mark

There have been a few high-profile trademark disputes in open-source software over the years. Perhaps the most entertaining was when Mozilla forced Debian to stop using the Firefox name for the near-identical browser code that shipped with its distribution of Linux, leading the organization to rename that browser "Iceweasel."

But compared to disputes over open-source licenses, trademark issues usually get second billing. That's because in many cases over the years, new projects would just copy and paste, with a few modifications, trademark language from older projects.

As Canonical's Ubuntu server operating system (itself based on Debian) started to gain traction as data centers shifted to Linux, others tried to latch on to Ubuntu's popularity with ersatz versions of the operating system labeled "Ubuntu." Those didn't always offer full compatibility or interoperability, and trademark owners are obligated to protect the reputation of their marks. Canonical developed a comprehensive trademark policy that many other organizations used as a template for their own trademark policies, said Tidelift's Villa, a veteran open-source intellectual property attorney who has worked for the Wikimedia Foundation and Mozilla.

However, Canonical would go on to wield that trademark policy in ways that rattled open-source advocates and legal experts, leaving a bad taste. "From Canonical to Mozilla to Red Hat, trademark has been a chronic issue, an issue that would presumably benefit from some explicit clarification whether or not one believes the OUC is the appropriate mechanism to provide it," Stephen O'Grady, an analyst at Redmonk, wrote in a blog post last week.

These issues are especially fraught in open source, because the permissionless sharing of code is at the very heart of what it means to be open-source software. Brands, however, can't be shared across different companies without adhering to certain criteria, and that can be subject to debate.

"Trademarks are very different from copyrights and patents in that they are always associated with a product or a service or a business," Chestek said. Open-source projects are often linked directly to a specific company, such as HashiCorp's suite of projects, or MongoDB's database. But there are lots of projects, like Linux, associated with several commercial entities, or none at all.

Yet U.S. law still requires trademark holders to protect the use of a trademark by defining standards for its use, both to ensure certain quality standards are met and to prevent confusion in the marketplace. That sounds straightforward, but when multiple parties are involved, it can get messy.

How the OUC could work

The best-case scenario for the OUC is that it becomes a neutral organization that oversees and manages ongoing trademark activity for projects involving multiple commercial interests, Villa said.

"To give Google the benefit of the doubt, there's still space for another bite at the apple on standardizing trademarks," he said. That would involve certification trademarks, a "type of trademark that is used to show consumers that particular goods and/or services, or their providers, have met certain standards," according to the U.S. Patent and Trademark Office's website.

Certification marks can't be used by the originator of the work (in this case, Google), but they can be used by third parties. "The use restriction mean[s] that a certification mark cannot be used by a FOSS [free and open source] project as a way to provide assurances that third-party hosts have authentic software," Chestek wrote in a recent paper, "but a certification mark can be useful to an organization like the Open Source Hardware Association, which certifies that goods comply with the Open Hardware Definition."

Assuming the OUC can attract companies across the cloud and open-source worlds, it could be that type of organization. In the paper, Chestek also references UL (formerly the Underwriters Laboratories), which certifies products that meet certain safety and reliability standards with its logo, which could be a model for the OUC to follow.

Right now, trademark guidelines are usually interwoven with the copyright license that governs the project. Chris DiBona, director of open source for Google and chair of the OUC, told Protocol prior to the launch of the OUC that the modern open-source world is too complicated to consider trademarks an afterthought to licensing.

However, the modern open-source world has already come up with a solution for this problem: foundations.

A foundational issue

There are many in the open-source and cloud computing communities who believe Google's creation of the OUC is designed to share the brands of the three projects without sharing control over the direction of the code. That has prompted a lot of skeptical looks from outsiders.

For several years during the development of Istio, Google told its partners, including IBM and Lyft, that it eventually planned to transfer control of Istio to a foundation, much the same way it handled Kubernetes. Some in tech are skeptical of foundations, which wield a fair amount of soft power amid lots of palace intrigue and sponsorship shenanigans, but organizations like the Linux Foundation and the Apache Software Foundation have set guidelines for how technical decisions about open-source projects are made and how trademarks are managed.

However, as Protocol has reported, Google blindsided those partners last year by refusing to commit to placing Istio in a foundation. Google Cloud CEO Thomas Kurian appeared to reverse that position earlier this year in an interview with Protocol when he said Istio was headed to a foundation, but the launch of the OUC suggests this is how Google ultimately decided to answer those asking for it to exert less control over the project.

Trademark discussions can be contentious, if diplomatic, inside foundations, said Priyanka Sharma, general manager of the Cloud Native Computing Foundation, a subsidiary of the Linux Foundation. But there are well-honed processes that help contributors, maintainers and end users decide on the best course of action.

"There can be arguments over what constitutes a trademark, but that's not even close to what a crisis looks like," Sharma said. "A project that cares about end users and contributors will do it in a thoughtful manner that supports those people. A project that's more concerned about a single owner, a single company, a single vendor is going to think a different way."

The OUC allows Google to hand trademark management off to a third party that doesn't require it to change the governance structure of Istio, where it currently controls six seats on a 10-seat steering committee. Google has actually proposed changes to that committee that would prohibit employees of any single company from controlling more than five seats on a 13-seat committee, but it's not clear if or when those changes will go into place.

An unclear path ahead

Until Google releases more details about the Open Usage Commons, confusion will likely continue to swirl around its intent. It has been an unsettling couple of years for the open-source community, as debates about licensing terms and corporate responsibility have grown quite heated at times.

Open-source software overall has been a phenomenal success. Software developed and managed through an open process, rather than behind corporate doors, is the bedrock infrastructure for countless companies doing business on the internet.

But cloud computing changed the equation, given the ease at which a free-to-use codebase can be spruced up and offered for consumption over the internet. There are enormous commercial incentives to shape the direction of an open-source project around corporate business interests, allowing a company to set priorities for the industry while enjoying the benefits of being perceived as a good community citizen.

"I think what's happening is an exploration of governance, and what it really means to be open source," said Josh Simmons, president of the Open Source Initiative, which defines parameters for open-source licenses. "There's a bit of a disconnect between those of us who are working in corporate open source and licensing, and the wider world of open-source contributors and users, for whom open source means a lot more."

Everyone in open source is now waiting to hear more from Google about how this novel approach to modern trademark management will actually work. Without support from a wider group, it's difficult to see what Google will be able to accomplish with this tactical move.