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Aug
05
2008
Joomla Trademarks Name and Logo
Written by Steve Burge   
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Drupal Wordpress JoomlaThere are some third rails in every community ... things that people are reluctant to discuss. Joomla's move to a GPL license was one of those, and I think we did a reasonable job of openly talking about the issues and implications.


This week, I'm going to attempt to touch another third rail: Joomla's trademark.


Today, Joomla's trademarks for its name and logo were accepted and published. This week, I'll attempt to answer questions about what this means for Joomla and for people running Joomla sites. This first post lays out facts about the trademarks:

What Has Been Trademarked?

  1. The name "Joomla!" as it refers to "Downloadable software for the creation, integration, publication, management, and maintenance of content, namely, text, documents, audio, and video." The name was first used on September 5, 2005.
  2. The Joomla! logo

What Was The Trademark Timeline?

The whole process took over a year:


  • July 12, 2007 - Application submitted
  • April 2, 2008 - Approved for publication 
  • May 20, 2008 - Published for opposition
  • August 5, 2008 - Registered 

How Does Joomla's Trademark Compare to Wordpress and Drupal?

It is normal for Open Source projects to trademark their brand. Judging by the example of other projects such as Wordpress and Drupal, Joomla's trademarks are close to the accepted standard. The one major difference is that in the holders are very different:


  • Wordpress' name and logo trademarks are held by Automattic Inc, a private corporation in California.
  • Joomla's name and logo trademarks are held by Open Source Matters, a non-profit corporation in New York.
  • Drupal's has two trademarks for its name. Both are held solely by Dries Buytaert, Drupal's founder from Belgium. The second, more wide-ranging application is still pending.

Can Drupal and Wordpress' Use of Their TM Help Us Understand How Joomla May Use Theirs?

Drupal doesn't have a formal policy although in November last year, Dries said he was working on one. The Drupal logo is licensed under the GPL.

Wordpress recommends that no-one use "Wordpress" in domain names.They suggest using "WP" instead. Wordpress has sent out some very polite emails asking people to stop using "Wordpress" in their domains which has led to a pretty informative discussion and this comment:

"The biggest problem is that Wordpress for at least the last year have been very slow in providing official information and "terms of service" for their products."

This is similar to Joomla, which is playing catch-up after not restricing the use of its name during its first three years. I couldn't find any guidance regarding use of the Wordpress logo.


Overall, both Drupal and Wordpress are admirably clear in some areas but still lack in policies in others.


Later this week I'll address possible solutions and outcomes. Finally, I hope these posts can lead to constructive discussion, so I'll closely moderate unhelpful comments.

 

Comments  

 
#1 Brian Teeman 2008-08-05 17:09
The problem with trademarks is that if you don't defend them you lose them. Registering a trademark is a very expensive business - is it really worth 5 figure lawyer fees? And that doesnt include the ongoing legal costs of defending those trademarks. Is that really a good use of the limited community donations.

There is also a trademark issue with prior use, the word joomla being actively encouraged and promoted by OSM for including in your domain name.

What is the purpose of a trademark registration? Is it to protect the community from unscrupulous charlatans wishing to exploit the Joomla community and good name? There are many ways to do this without tradmearks that are targetted specificaly against the charlatan and not the enitere joomlaverse.

For the record when I was on the board of OSM I was against registering the trademarks.
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#2 Kyle Ledbetter 2008-08-05 17:13
Ok, so I know this will spawn an entirely different conversion (I hope different that the heated debate on the Joomla forum):
I know you can't use the Joomla logo on apparel like a shirt, but can you:
1. Create a shirt using the Joomla! name since it's trademarked?
2. If not, can you create a shirt using the Joomla name without the "!" since it's part of the trademark?
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#3 Steve Burge 2008-08-05 17:21
Hi Bryan - thanks for the constructive points. I tend to lean in favor of the TM for defensive purposes, but for a very community-spirited use of the TM, without resorting to lawyers. I presume I may be accused of being naive on that point. Prior usage is a tricky issue I'll try to address in an upcoming post.

Hi Kyle - that's part of the reason I wanted to make these posts ... its really not clear to many people. I think the T-Shirt answer would be "Yes, with permission" and that the name without the ! would probably be "no" and classified as "intentionally confusing". Not a lawyer however, so just my interpretation ...
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#4 Brian Teeman 2008-08-05 17:29
My understanding is that by including the "!" in the trademark it automatically means that "joomla" is a tm as well.

The use of the logo is a different issue as it was always protected by copyright law. (And that is far more wide reaching than a USA TM)
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#5 Amy Stephen 2008-08-05 18:21
I am so impressed with the leadership of the Joomla! project and how they work hard to improve Joomla! and preserve it for the future. Nice article, as usual, Steve. Thanks for sharing!
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#6 Barrie North 2008-08-05 19:10
I'd have to agree with Brian 110% here. Legal strong arming doesn't make a warm and fuzzy community, and leads to opaquness regarding OSM budget expenditure. In the case of the Joomla name, this is exacerbated because OSM actually encouraged people to get domains with Joomla in the name in the fall of 2005....

There is also a connection here with the forms at OSM. You recently had to agree that "I understand that the license to use joomla in a website name is revokable without notice by Open Source Matters, Inc"
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#7 Cory Webb 2008-08-05 19:46
I understand the desire to protect the Joomla name and logo (e.g. - to prevent sites like JoomlaPorn.com, JoomlaKKK.com, JoomlaWarez.com, etc.), so registering for a trademark makes sense from that perspective.

However, as has been mentioned, OSM not only encouraged community members to register domain names with the word "Joomla" in them, they pre-released the Joomla name to those folks who could prove they owned a domain name with "Mambo" in it, so they could have first dibs at "Joomla" domain names. With that in mind, I hope OSM shows wisdom in what they choose to do with this trademark. If OSM ever decided to arbitrarily shut down sites with the Joomla name in them, it would be extremely counter productive to building the community.
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#8 aravot aravot 2008-08-05 21:16
I am not a lawyer, following is my opinion. I don't think Joomla name in domain is an issue, there are domain names with sucks and such wording for all major companies like Microsoft, Apple, Paypal and etc, those site do business fine, if big companies can't shut those sites, what can Joomla do.
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#9 Copes Flavio 2008-08-06 01:56
I agree with Aravot, also I think that if anyone has a positive Joomla-related website then it's not a problem to have the word 'joomla' in the domain name.

The only ones that should worry about that are spammers and other people using their websites for bad purposes.

BTW, legal expenses are not a good way to spend money that was donated by people.
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#10 Brian Teeman 2008-08-06 03:08
@cory - yes you are correct OSM did actively encourage the domain registrations, with no restrictions, it was my name on the email.

@aravot I believe the "sucks" domains are allowed under a different law that permits the use in cases of satire, parody and complaint. I'm sure there is a google resource on this.

@flavio - I agree with what you are saying but my understanding of TM law (IANAL) is that you have to enforce your TM 100% and not selectively.

Legal expenses "may" be a legitimate way to spend "donated" money but at a time when joomla! bemoans the lack of donations is it really right to spend 5 figure sums on something with minimum value to the community as a whole.

I've yet to ever see a valid argument of the real, not perceived, benefit of a TM registration to the joomla community
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