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Open-source civil war: Olive branch offered in trademark spat... with live grenade attached

Software Freedom Law Center claims Software Freedom Conservancy committed fraud

A few days before the Christmas holiday, the Software Freedom Law Center (SFLC) made a peace offering of sorts in an ostensible effort to resolve its trademark dispute with the Software Freedom Conservancy (SFC).

In September last year, SFLC sued the SFC claiming that the SFC trademark "Software Freedom Conservancy" is confusingly similar to the SFLC's "Software Freedom Law Center" trademark.

The SFLC was formed in 2005 to provide legal services for open-source projects. And in 2006, it helped set up the SFC, so it could provide infrastructure support – including legal services – for open-source developers.

That shared history and similarity of purpose has made the intellectual property dispute between two organizations rather confusing to folks in the open source community.

SFLC executive director and Columbia Law School professor Eben Moglen previously cast the spat as a consequence of a three-year-long refusal by SFC executive director Karen Sandler and SFC president Bradley Kuhn – who Moglen describes as "my ex-employees" – to meet him.

Sandler has disputed this, and challenged Moglen to present evidence that he tried to raise trademark concerns with the SFC. In a previous blog post, she called the legal action "bizarre."

The most salient difference between the two organizations, beyond the personalities involved, is how they view litigation against those violating GNU General Public Licenses.

Both acknowledge litigation is undesirable, but the SFC is a bit more willing to challenge license infringement in court. In 2015, it backed Linux kernel developer Christoph Hellwig's GPL lawsuit against VMware. The litigation has been unpopular with some prominent members of the open-source community such as Linus Torvalds.

The SFLC, once more willing to sue, has moved toward a less adversarial approach to coaxing license compliance. Its preference for dialogue and persuasion is more amenable to many of the litigation-averse and fund-dispensing corporate patrons of open-source code.

On December 22, Moglen suggested a cease-fire: "We propose a general peace, releasing all claims that the parties have against one another, in return for an iron-clad agreement for mutual non-disparagement, binding all the organizations and individuals involved, with strong safeguards against breach."

But his olive branch came with thorns: Moglen said his SFLC had moved to amend its formal petition to cancel the SFC's trademark with a charge of fraud, based on his contention that SFC counsel Anthony Sebro had omitted the term "legal services" from the organization's trademark application in order to prevent the trademark examiner from catching the overlap in the SFLC and SFC trademarks.

Trademark law allows similar marks like Domino Sugar and Domino's Pizza to coexist if they're in different business sectors and there's no likelihood of confusion. Trademark authorities are unlikely to allow more than one provider of legal services to fly the "software freedom" flag.

Sandler and Kuhn fired back at Moglen in a blog post the same day, characterizing the settlement offer as escalation of the legal conflict. "Instead of deescalating today, SFLC added inflammatory accusations against Conservancy and its employees," they said. "Obviously, we did not commit fraud…"

Over the weekend, Kuhn published an update, noting that the SFLC has sought to amend its petition to cancel the SFC trademark with a claim of fraud. He reiterated that the claim is baseless and said the SFC intends to respond by the Trademark Trial and Appeal Board by January 11.

Because the SFLC has amended its trademark cancellation petition with a fraud claim, the SFC's motion to toss the complaint must be refiled after the fraud issue been considered.

Kuhn said he hopes the SFLC will "do the right thing and withdraw the petition." ®

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