Interview with Daniel Scales, Chief Brand Counsel, Linux Foundation
Jason Perlow | 03 June 2021
Jason Perlow, Director of Project Insights and Editorial Content at the Linux Foundation, spoke with Daniel Scales about the importance of protecting trademarks in open source projects.
JP: It’s great to have you here today, and also, welcome to the Linux Foundation. First, can you tell me a bit about yourself, where you are from, and your interests outside work?
DS: Thanks, Jason! It is great to be here. I grew up in Upstate New York, lived in Washington and London for a few years after college, and have been in Boston for the last 20+ years. Outside of work, I coach my daughter’s soccer team, I like to cook and play my bass guitar, and I am really looking forward to getting back to some live music and sporting events.
JP: And from what organization are you joining us?
DS: I have been with the Boston law firm Choate, Hall & Stewart since 2011. In addition to advising The Linux Foundation and other clients on trademark matters, I helped clients with open source license questions, technology licenses, and IP-focused transactions. Before Choate, I worked as IP Counsel at Avid Technology, where I managed their trademark portfolio through a global rebranding and supported the engineering team on technology licenses.
JP: So, how did you get into Intellectual Property law?
DS: Great question. I studied economics in college and took a fantastic senior seminar on the economics of intellectual property. After graduation, I worked in the economics consulting group at Ernst & Young. A big part of my job there was determining the value of a company’s intangible property, which in many cases were its brands. I went to law school intending to study trademarks and the new field of “internet law” (this term probably dates me) and started my legal career at Testa, Hurwitz & Thibeault, which had a cutting-edge trademark and open source group.
JP: We typically think of IP and Trademark law as it applies to consumer products and commercial entities. What is the difference between those and when open source projects and organizations use brands?
DS: On one level, there really isn’t a difference. A trademark signifies the unique source of a good or service. Trademarks help consumers, developers, and users distinguish various offerings, and they communicate the specific source and quality of those offerings. Software developers and users need to understand what code they have and where it came from. Trademarks help communicate that information. Of course, the specific issues that every brand and brand owner faces and how they address them are different, but many of the core principles are the same.
JP: What are some of the trademark issues you’ve seen come up in open source communities?
DS: While it happens in every industry, I see many “helpful” people apply to register projects’ trademarks when they are not the rightful owner. Sometimes they have good intentions, sometimes not, but it can be a lot of work to sort it out either way. I’ve also had the opportunity to work with many different people and companies on project branding. It is amazing how many different philosophies there are regarding branding, even within the software industry. Much of what we do is to bring these folks together to determine the best approach for the specific project. I also spend a lot of time debating the scope of trademark rights with opposing counsel, but that isn’t really unique to open source: one lawyer tried to convince me that his client had the exclusive right to use a picture of a hop flower on a beer label.
Other common issues are helping companies register a mark for their company or product and then used the same mark for an open source project. The neutrality of those situations is imbalanced, and the Linux Foundation has worked with organizations making this transition. Sometimes it involves rebranding the open source project, and we assist in finding and clearing a new name for the community to use independent of the company that started it.
JP: Why is the Linux Foundation a good place for open source projects to protect their brands?
DS: We have worked with many open source projects on their trademarks, and we learn something with every new experience. We can help them name the project at the beginning, take steps to protect their trademarks across the globe, and show them how trademarks can be a tool to build their communities and increase participation and adoption. We also recognize the importance of our neutral position in the industries we serve and how that is fundamental to open governance.
JP: Trademark conformance can also protect a project from technical drift. How can a trademark conformance program be used to encourage conformance with a project’s code base or interfaces?
DS: Great point. As in most areas of trademarks, clarity and consistency are key. Trademarks used in a conformance program can be a great tool to communicate quickly and accurately to the target community. Projects can develop specific and transparent criteria so that users understand exactly what the conformance trademark symbolizes. This can be much more effective and efficient for projects and users alike than everyone deciding for themselves what a term like “compatible” might mean.
JP: Do projects at the Linux Foundation give up all control of their trademark? How do you decide what enforcement to pursue or not pursue?
DS: On the contrary — we work very closely with project leadership throughout the lifecycle of their trademarks. This includes trademark enforcement. Typically, the first step is to figure out whether the situation requires enforcement (in the traditional legal sense) or if it is simply a matter of educating another party. More often than not, we can reach out to the other party, discuss our project and our trademarks, discuss our concerns, and work out a solution that works for everyone and strengthens our brands. But like any brand owner, we do sometimes have to take other action to protect our projects’ trademarks, and we work closely with our projects in those situations, too.
JP: Thanks, Daniel. It’s been great talking to you today!
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