"No good deed goes unpunished" is a quote of debated origin, but I am reminded of it today.

No Good Deed …

I met Linus Torvalds in May of 1994. I saw in the Linux(tm) [1] kernel (and associated layered software) a unique research platform for 64-bit algorithms. I facilitated getting a $20,000 DEC Alpha system to Linus so he could give Linux a 32/64-bit virtual address space and make it more portable to both CISC and RISC systems.

By late 1996, I was associated with a small group of companies that believed Linux had deep commercial capabilities, so we formed Linux International(TM) and, with Torvalds, trademarked "Linux."

In early 1997 the companies (and Linux International) received letters from a William R. Della Croce Jr. of Boston, Massachusetts, who had registered the mark of "Linux" and demanded 25 percent of the revenues of each company that used the mark "Linux" in their name.

Anyone experienced knows that asking for a license fee based on 25 percent of a company's revenues is a losing proposition from the beginning, but the fledgling Linux industry could not take chances, so we hired the prestigious law firm of Davis & Schroeder PC, and one of the principals, Gerry Davis, offered his services pro bono.

For those of you who are not followers of trademark law or theory, a trademark, per the US Patent and Trademark Office, "can be any word, phrase, symbol, design, or a combination of these" applied to an entity's products or services to act as a mark of identity.

Many companies can make running shoes, but only Nike(TM) can brand their shoes with that name, and with the famous Swoosh. Therefore, if you are at a store and you see the name or the Swoosh, you know it was made by Nike and, through brand recognition, you associate a certain quality with that brand. Therefore, if Nike saw a company manufacturing shoes and putting the word "Nike" on them, or the Swoosh, Nike would probably sue that company for damages as well as to stop them from producing that falsely marked shoe. If Nike did not do that, then Nike might lose their trademark. Trademarks have to be protected. Likewise, the trademark has to be used to define a product or service that is currently offered (or will be offered in the near future). Trademarks that have been abandoned may be reused at a later date.

Gerry Davis determined that the "software" that Della Croce Jr. had submitted as proof of his product was a floppy disk with one text file on it that had the file name linux.txt and had the ASCII contents of "This file is Linux." This (of course) was not a solid trademark example, but because Linux was new in 1995 the Trademark Office did not challenge it.

Linux International, with the help of Davis & Schroeder PC, had the trademark "Linux" transferred to Linus Torvalds.

Linus wanted the trademark to go into the public domain, but I convinced him this was a bad idea because the word "Linux" could then be used for bad things and Linus would have no way of stopping it.

So Linux International formed the entity the Linux Mark Institute(TM) (LMI) to sub-license for free the mark "Linux" as long as the sub-licensee used the mark "Linux" in the correct way, giving proper attribution.

By this time many entities were using the term "Linux" in their names, so LMI was busy sub-licensing all these entities, bolstering the protection of the word "Linux."

Eventually LMI was transferred to The Linux Foundation(TM), who performs this registration today (Torvalds still owns the trademark).

…Goes Unpunished

Recently, the Linux Professional Institute(TM) (LPI) lawyers notified the executive director of a trademark application that, in the lawyers' opinion, would "cause confusion" with LPI's trademark.

I am not going to include the specific details of that application because I do not want to cause embarrassment to the person who applied. I believe they made the application in good faith. I will simply tell you that their application was so broad that 90 percent of the people using the phrase "Linux Operating System" for professional services would have to attribute their services to this trademark holder.

And so started a conversation back and forth between a person who does not understand trademark law, and its effects, with a person (IANAL: I am not a lawyer) who understands trademark law and its implications all too well.

While Gerry Davis never charged Linux International a penny, for the clerking, filing, and other services of his office, I eventually paid $30,000 of my own money. I know that this instance will cost LPI legal fees and filings too – hopefully not that much.

Please be careful with branding and trademark applications. Hire a lawyer – they are worth it.