Asterix, the Gall - The Strange History of Linux and Trademarks

Since the earliest days, free software and its representatives on earth have been the subject of attacks that serve to question the originality, authenticity, authorship, identity and parentage of the software - but the loose communities (if such they are) of hackers, users, developers and proponents of GNU, Linux and free software have always been quick to respond, as Stallman observes in his history of the GNU project.

"I have done most of my work while anxious about whether I could do the job, and unsure that it would be enough to achieve the goal if I did. But I tried anyway, because there was no one but me between the enemy and my city. Surprising myself, I have sometimes succeeded."

"Sometimes I failed; some of my cities have fallen. Then I found another threatened city, and got ready for another battle. Over time, I've learned to look for threats and put myself between them and my city, calling on other hackers to come and join me."

"Nowadays, often I'm not the only one. It is a relief and a joy when I see a regiment of hackers digging in to hold the line, and I realize, this city may survive - for now. But the dangers are greater each year."

All your Linuxes are belong to me

As early as 15 August, 1994, William R Della Croce Jr from Boston, Massachusetts, saw a business opportunity in the nascent rise of Linux and the Linux distributions. Red Hat was winning awards and plaudits. SuSE was thriving in Europe. Slackware and Yggdrasil Linux, which was both the first plug and play Linux and the first to come on a CDROM, ruled the roost. Linux Journal was going from success to success. There was obviously a growing market for this stuff, and Della Croce saw an opportunity, and filed for the US rights to the Linux trademark.

The first that Linux users knew about Della Croce and his ownership of the trademark was in March 1995, when Yggdrasil Computing filed for a trademark on The Linux Bible, and had it rejected on the grounds that the Linux trademark was the sole property of William R Della Croce.

During the following year, Yggdrasil, Linux Journal and others received demands from Della Croce for payment of 25 per cent of royalties on products that used the name, Linux, informing them that:

LINUX ® is proprietary. Information about obtaining approval for use and/or making payment for past use may be obtained by writing to the following address...

Della Croce had no known history with Linux, and Yggdrasil was able to show not only that Linux was in common use long before 1994 when Della Croce made his first application for the trademark, but that Yggdrasil Computing had been shipping Linux CDs since December 1992. The legal dispute, led by Linux International under the auspices of Jon 'maddog' Hall, with the assistance of a friendly lawyer, Gerry Davis, and financial help from Red Hat, DEC and others, was finally resolved in August 1997. The Linux trademark was assigned to Linus Torvalds as part of the settlement.

Meanwhile, according to maddog, "all around the world people were getting the same strange idea." Free software advocates and developers "can't afford to go to the 200 countries around the world and buy trademarks, and maintain them, so we have to fight them on a case by case basis."

Each time this has happened maddog has had to contact the patent lawyers in the appropriate country, and "pay another $10,000, just to wrest that trademark back into Linus' hands, so that anyone who wants to can use it. This is just an astronomical waste of time. We live in an electronic age where anybody can have a wonderful idea, trademark it, and hope to make money", whether or not they had any part in the original concept.

Over the years Linux International has spent over $300,000 defending the Linux trademark, $250,000 of which has come from maddog's own pocket. In 2005 maddog founded the Linux Mark Institute, with support from Linus Torvalds, with the objective of protecting the Linux mark for the community and against the prospectors of the future. The Linux Mark Institute is now forced to ask that any company that trades off the name registers with the Institute and makes a small donation towards the defense of the trademark.

Where there's Mc, there's Brass

If a trademarked name is in vernacular or generic use, it is difficult to establish exclusive rights to the name, which is why companies pay ridiculous amounts of money to find and register names that may convey a unique identity to their product. Whether such measures are ever justified is another matter. A year after changing its name to Consignia, the UK Royal Mail consigned its new name to the bin, and became the Royal Mail once again. Nonetheless, it is a first principle of trademark law that a generic term is difficult to defend against copyright infringement, which makes it all the more surprising that Microsoft, for instance, gives generic terms to so many of its products.

There are many cases of famous companies tripping over their own legal footwork when prosecuting cases of trademark infringement. Apple sued Apple for stealing its name, and Apple sued Microsoft for copying its GUI. The trademark battle between US Budweiser and Czech Budweiser has continued from country to country for almost a century, and is still unresolved in many parts of the world.

McDonalds and Harrods have found themselves embroiled in undignified trademark battles that have done nothing to promote the image of the respective companies, and Microsoft sued to prevent a Linux company marketing its product under the name of Lindows, because it claimed Windows as a trademark and contended that the Lindows name infringed the trademark.

Lindows counter-sued to have the Windows trademark revoked since Windows is a generic English word, and generic words cannot be trademarked. Microsoft settled out of court, and gave Lindows, now known as Linspire, $20 million in compensation. In return Lindows surrendered its name, but also gained acres of free publicity at the expense of Microsoft. This is just one of at least twenty cases where projects derived from free software have been the subject of litigation over the inadvertent use of trademarks.

In June 2001, the creator of a KDE graphics package, KIllustrator, received a letter of intent from a law firm claiming to represent Adobe. Dr Kai-Uwe Sattler wrote KIllustrator as part of a project at the University of Magdeburg in Germany. KIllustrator is a drawing program, and as its name suggests, is similar in its functionality to the successful Adobe Illustrator, but was written as part of KOffice, the office suite built for the Kool Desktop Environment (KDE). Adobe Illustrator, like other Adobe products, has not been made available for Linux or any other Unix platform, but the lawyers contended that the KIllustrator name conflicted with Illustrator, and being a similar product, potentially damaged the image of Adobe's software.

Quick on the Draw

Sattler was willing to accede to this point, and offered to change the name of KIllustrator. So far, so good. But the lawyers then demanded that KIllustrator should be withdrawn, that the university should pay around 4000 euros to cover the legal costs, provide a list of everyone who had acquired a copy, (not easily done with freely downloadable, open source software), and produce details of any financial return from the project, of which of course there were none.

Unremarkably, Sattler and the University authorities refused to pay the lawyer's fees, to which the response was the unnecessary threat of a two million euro lawsuit.

An Adobe spokeswoman conceded that "Adobe's primary interest in this issue is to protect its trademark rights and goodwill associated with its Illustrator product. Adobe has no intention of requiring Dr Sattler to cease distribution of his product or pay Adobe any fees, only to change the name of his software. Adobe's change of heart suggested that the lawyers concerned were not working with the full authority of their client, but in any case, KIllustrator was quickly renamed Kontour, and later Karbon14. Karbon14 is still part of the KOffice suite.

A curious characteristic of German trademark law is that "cease and desist" letters can be written by lawyers chasing costs and commissions without the assent of the company that is supposedly being offended against. This may have been the case with the KIllustrator dispute, and was certainly the case when another German lawyer, Gunther Freiherr von Gravenreuth, threatened SuSE Linux with an injunction preventing the company from distributing its version of Linux, because it included a program called Krayon. This was when SuSE was still an independent company, and long before Novell came on the scene.

Krayon (now known as Krita) is another free software graphics program written for KDE. On this occasion SuSE contacted the supposedly offended party, Crayon Vertrebs, which produces graphics CDs for the German market, and has the name Crayon as a registered trademark.

The case was, of course, contentious, and the companies settled out of court. In the words of the SuSE statement, "the plaintiff relinquished their right as formulated in the temporary injunction, and SuSE was not required to submit payment for any license fees." The injunction, which was withdrawn within 24 hours, would have prevented SuSE from shipping new copies of its Linux software, and was thus potentially very damaging to SuSE's business.

Who put the ix in suffix?

In June 2001, MobiliX, a website based in Germany and dedicated to Unix on mobile systems, received a request from a German law firm claiming to represent Les Editions Albert Rene of Paris, demanding that MobiliX unregister its name or risk legal action.

The grounds for this action were that Les Editions Albert Rene is the holder of the trademarks Asterix and Obelix, as associated with the comic book characters of Asterix the Gaul - and that the MobiliX name, in particular the use of the suffix 'ix', infringed these trademarks. One has to assume that to the French ear MobiliX sounds like rhyming slang for Obelix, because MobiliX was not a registered trademark of Les Editions Albert Rene. Nor was MobiliX in competition with Asterix or Obelix, who are comic book characters.

Obelix is the name of an essential character in the Asterix comics, and is the inseparable companion of Asterix in his resistance to the dubious embrace of the Roman Empire. In the Asterix films, Obelix is played by Gerard Depardieu, the actor most famous in the English-speaking world for his starring role in Cyrano de Bergerac. The name of the character is a play on the word obelisk, which is appropriate because Obelix is a "menhir delivery man by trade", but the main objection would appear to have been to the use of the suffix, ix, which is shared by all the Gaulish characters in the Asterix comics.

Boars and trifles

Asterix the Gaul was created by Albert Uderzo, the cartoonist, and Rene Goscinny, the writer. In an interview, Albert Uderzo has told the story of how the characters got their names: "For us, like for most French people, what we know of the Gauls begins with Vercingetorix", a Gallic chieftain who led the great revolt against the Romans in 53-52 BC. "The 'rix' at the end of his name means 'king' and is 'rex' in Latin and 'rix' in Celtic. Not all Gaulish names end with 'ix', but we thought it would be fun to remind people of Vercingetorix. And it was also easier for us to have the Romans with names ending in 'us' and the Gauls with names in 'ix'."

Until approached by lawyers acting for Les Editions Albert Rene, Werner Heuser, who ran the MobiliX website, had only the vaguest notion of the existence of Asterix, and confessed that he wouldn't have confused Gerard Depardieu, or a Roman bashing, wild boar eating, cartoon character called Obelix with a mobile computing device. Indeed, Heuser recounts that when he was a child his parents didn't allow him to read comics, and perhaps because of this, he became interested in Linux instead.

No prior reference was made on the website to Obelix, Asterix, asterisks, obelises, comics, Gauls, Romans or French men of letters. The site imparted information about Linux, BSD Unix and Solaris on mobile computing platforms (laptops, PDAs, cellphones and wearables), and thus bore a name which was the logical concatenation of Mobile and Unix. It is highly unlikely that anyone ever visited the Mobilix website under the misapprehension that Obelix was hiding behind a cellphone on the next page, or that MobiliX was masquerading as a front for under the counter sales of Asterix comics.

Adding the suffix 'ix' is a common practice when naming Linux and Unix related projects. This has nothing to do with Vercingetorix nor the Gauls, but is a convention in the computing industry, and covers hundreds of products, commercial or otherwise, including such high profile Unix systems as IBM's AIX and SGI's IRIX, which nobody has ever confused with Gaulish villagers. Among the thousands of organizations around the world that use the suffix 'ix', are several that carry the name 'Astrix', which may be deemed a closer approximation to Asterix than is the case with MobiliX. Heuser carried a very long, but not exhaustive, list of such names on the MobiliX website. The prototype for this convention is, of course, Unix itself, and its own two letter suffix, which also happens to be 'ix'.

Other mores

Unix was originally registered by Bell Laboratories as a trademark for computer operating systems. The mark is currently owned by the Open Group. One of the primary developers of Unix was Dennis Ritchie. Ritchie's pages on the Bell Laboratories website have long included a humorous page, ironically (in our current context), dedicated in French to recording Autres Unix, autres moeurs - alternative products that use the name Unix.

These include Unix nappies by Pannolini of Mexico, Unix fire extinguishers, roller pens, drying racks, Nitro-based antifog thinners, anti-fungal treatment for wheat and barley, TV antennae, massage chairs, eyeglass frames, "appliances for the body, the kitchen and the home", auto parts, van rentals, hair salons, furniture shops, manufacturers of fabrics, and faucets. Nobody has ever confused any of these products or companies with a computer operating system, a campaign against the Roman Empire, or a comic book character with a trailing ix, and but for a preliminary skirmish between AT&T and the Japanese electronics company, Marantz, when Unix was first introduced to Japan, there have been no law suits between any of these parties. As Ritchie observes:

"Unless you are as powerful as Disney, Coca-Cola, or the Olympic Committee, worldwide and universal trademarks don't exist; the same name can often be used in trade for completely different things. Details depend on the country, the category of goods offered, and of course the tenacity and wealth of the trademark holder."

Even more so, you might think, if the trademark happens to be a name or word in common currency, such as Hoover, Windows or McDonalds. That hoover has become the generic term for a vacuum cleaner is a tribute to the global success of the Hoover Company. Windows was, of course, the generic term for graphical computer systems long before the word was appropriated by Microsoft, and the McDonald clans will retain the right to use their surname as they see fit, despite being sued every time they decide to open a cafe or a fast food outlet in their own name.

Interestingly, MobiliX was not the only company that used this particular combination of letters in its name. There was, for instance, a prominent Danish telecommunications enterprise called Mobilix A/S that happened to be a subsidiary of France Telecom, (like Les Editions Albert Rene, a French company), and claimed to be "Denmark's most dynamic telecom company", with sales in 1999 of 81 million euro. It is unknown whether Mobilix A/S, the telecom company, was ever approached with the same onerous terms as MobiliX, the mobile Unix website, but it seems unlikely. However, in 2002, Mobilix A/S was rebranded as Orange Denmark.

In November 2001, MobiliX, in the person of Werner Heuser, was legally charged to withdraw the trademark, and to pay compensation of up to 250,000 euro or face six months in prison. The initial legal costs of defending the case were approximately 15,000 euro. Heuser sought help from the Free Software Foundation and engaged a law firm, Jaschinski, Biere and Brexl, which specialises in fighting issues that involve free software. When the case became public knowledge through various mailing lists and weblogs, (including Slashdot and LinuxToday), Les Editions Albert Rene received a flood of complaints.

The bizarre legal response to such public criticism was to accuse MobiliX of inventing "a new kind of electronical terror", an interesting turn of phrase in the political climate subsequent to the attacks on the World Trade Centre. Fortunately, MobiliX chose to fight the case, rejected the accusations of "electronical terror" as "untrue and polemical", and opposed the trademark case in every manifestation. On 12 June 2002, the courts rejected the arguments of Les Editions Albert Rene, noting that the words MobiliX and Obelix can hardly be confused with one another, and that the work of MobiliX and Les Editions Albert Rene are aimed at entirely different audiences.

You Say Tomato

The objective of the lawyers of Les Editions Albert Rene was to establish Obelix as a trademark, with the protection thus implied. As such, the prosecution of MobiliX may have been considered as a test case which failed, albeit temporarily, if only because MobiliX had the intellectual and economic courage to repel the charge, and had access to resources that are not always available to free software projects.

However, this was not to be the end of this bizarre and baffling case, because lawyers acting for Les Éditions Albert Rene decided to take the case to appeal, probably on the (correct) assumption that Heuser's financial resources would be stretched.

Contrary to the original decision that Obelix and MobiliX were quite different words, and could not be confused with one another, the appeal court decided in the summer of 2003 that the names were "very similar", and determined that it was irrelevant that the suffix "ix" is often used in the naming of computer related products "because the names Obelix and MobiliX are not sufficiently different." Heuser was ordered to withdraw both the trademark and the domain name of the MobiliX website and, even more remarkably, to pay compensation to Les Editions Albert Rene. MobiliX now trades under the name, TuxMobil.

A rose is a rose by any other name, but a MobiliX is not an Asterix, and a Krayon is not a Crayon. Let's call the whole thing off.


Richard Hillesley



Comments

A similar case with Apple here in upstate NY

The forces of Apple were determined to crush all things Macintosh and descended upon McIntosh Laboratory. (http://www.mcintoshlabs.com/) A case that dragged on for a good number of years but was eventually repelled. McIntosh Laboratory has been in the high end audiophile market for many decades before Apple Computer and even before Jobs and Wozniak were born.

Trademarks & Servicemarks defined and explained

IANAL, but I know one who examines trademarks for the USPTO every day. These comments are regarding US trademarks, not international.

This is an interesting read, but there are a few spots of confusion between terms trademark, servicemark, patent, and copyright. Also I think the WIPO treaty/treaties are making it easier to have a global mark and are homogenizing the regulations between countries.

Registering a mark with the USPTO is cheap and and you can do it yourself with a little research - on the order of roughly $500, which is good because it seems to me that a lot of lawyers don't know their ass from their elbow when it comes to trademarks and ought to be sued for malpractice by their clients.

From: http://www.legalzoom.com/Trademark/TrademarkDefinition.html

What is a trademark?


A trademark is any distinct word, phrase, symbol or picture, or combinations thereof, that identifies and sets apart the goods of a specific business or organization. It is commonly referred to as a mark, and is also used sometimes used to describe a service mark (which covers services instead of goods).

A 'mark' (for the USPTO) is an indicator of the source and quality of a goods or of a service _to the consumer_ or purchaser of said goods or services.

This is important because the same mark can belong to two different companies, if the goods and services don't overlap AND the 'channels of trade' don't overlap. In other words, if the consumer of one company's goods or services is unlikely to be a consumer of the other company's goods and services, then there is no likelyhood of confusion and the two marks can be registered.

Also important is that the mark is the 'indicator of the source and quality' of the goods or services. A mark is not the generic name of the item (preventing competitors from using the term for their product or service), and cannot be 'merely descriptive' of the item (again preventing competitors from using the term for their product or service).

Finally, the concepts of dilution and 'famous marks' are important. Names such as Tiffany's, McDonalds, Goodyear, Coca-cola are all famous marks - no matter what the context, most people connect that name with that particular company. Dilution is when the mark becomes used by consumers as a synonym for the generic name of the goods or services. Escalator used to be a mark. Kleenex and Google are probably both in danger of becoming generic terms too.

re: Trademarks & Servicemarks defined and explained

I think that you do the author a disservice, and are a bit wide of the mark, to excuse a pun.

This article is not as confused as you suggest, and is, anyway, poking fun at the absurdities, not trying to define the law.

The fact is that trademark law is sometimes mis-used, as the whole asterix/mobilix saga well illustrates,
and the kind of obfuscations that you are indulging in, are illustrative of this fact.

Get a life, I say.

Trademarks & Servicemarks defined and explained, Continued...

Continueing the "IANAL, but I know one who examines trademarks for the USPTO every day" commentary (I got interrupted yesterday).

Please note - this is an interesting post and I am very politely pointing out some misconceptions with no intent to complain about the post or troll or start a flame war.

First, at the USPTO, marks to be registered are first published so that there is a period of time for the public to oppose registration before it becomes final. This is the point in the process that the Linux and FOSS community needs to be vigilantly watching the 'trademark Register?', ready to oppose inappropriate marks. Big companies with valuable marks hire specialists to do the watching, but anybody can do it.

This is the USPTO Trademark search page: http://tess2.uspto.gov/bin/gate.exe?f=tess&state=8950e4.1.1

Also note that artwork, symbols and designs can be trademarked and/or found infringing.

Now for some specific things in the original post:


Della Croce saw an opportunity, and filed for the US rights to the Linux trademark.

For the USPTO, an applicant must either be using the proposed mark _in commerce_ (and demonstrate such use), or file an 'Intent to Use' (_in commerce_) statement. I'm pretty sure there's a finite amount of time for the applicant to actually start using the mark in commerce, otherwise the registration is cancelled. It would have been good if someone challenged Della Croce's Intent to Use (assuming that's what he did) or if the community had just waited for the time limit to expire. AFAIK, one can't register a mark and then sit on it, unlike a patent. Marks have to be used in commerce to be enforceable. Old unused marks can be declared abandoned. On the other hand, licensing the mark to others probably counts as commerce so challenging Della Croce might have been really hard.


Each time this has happened maddog has had to contact the patent lawyers in the appropriate country

I suspect this sentence means Trademark lawyers. In retrospect it might have been a lot cheaper to just register the Linux trademark in the 200 countries or so. On the other hand, the USPTO, unlike many other countries, does a lot of work to police and protect existing marks by doing a pretty thorough job of vetting applications. Furthermore I'm pretty sure all trademark disputes go back to the USPTO's judges for rulings first and only then can be appealed to the regular US federal court system. This means disputes are first heard by judges who are very experienced experts in trademarks. I have the impression that many other countries rubber stamp the application and then let the companies do the policing and protection via lawyers and the regular court system.

So in summary, it sounds to me like it would have been better to register the marks in all the countries, and then do the monitoring and enforcement, rather than monitor and then sue after someone else got the mark - 'possesion is 9/10ths of the law' kind of thinking. Monitoring is part of the work and cost no matter what. The Linux Mark Institute is probably doing a LOT of monitoring.


it is a first principle of trademark law that a generic term is difficult to defend against copyright infringement

I think the author means 'trademark infringement'. Generic terms and names (surnames placenames etc.) are not registerable unless they have 'acquired distinction' and are famous marks, like McDonalds and Harrods.


Apple sued Microsoft for copying its GUI

Was this really a trademark issue or a copyright issue??


Lindows counter-sued to have the Windows trademark revoked since Windows is a generic English word, and generic words cannot be trademarked. Microsoft settled out of court, and gave Lindows, now known as Linspire, $20 million in compensation.

It's entirely possible that Lindows could have won, making Windows a generic term.


MobiliX, a website based in Germany and dedicated to Unix on mobile systems, received a request from a German law firm claiming to represent Les Éditions Albert René of Paris, demanding that MobiliX unregister its name or risk legal action.

The grounds for this action were that Les Éditions Albert René is the holder of the trademarks Asterix and Obelix, as associated with the comic book characters of Asterix the Gaul

I'm pretty sure that in the US, the 'channels of trade' issue would have made this a simple case. The end consumer is unlikely to be shopping for comic books at the same time as shopping for 'unix on mobile systems' so is unlikely to be confused.

The bottom line is, choosing a name for use in commerce has a lot of issues to get 'right' and is not as simple as just picking something that sounds good. I'm sure many many companies have been burned - their marketing dept. picked a name without consulting a trademark specialist and spent big dollars on advertising and product launch, only to be told to change the name.

Once a FOSS project becomes popular, the project would do well to at least be prepared to change their name after consulting with a trademark specialist. Even better would be to do some research before picking a name. Like it or not, a lot of project management is risk avoidance and minimization, like legal and financial risk.

PS. IANAL!!! By no means are these statements definitive in any way.

And then there was Mandrake

Mandrake might have been able to defend the use of their name when the owners of the comic book about a magician came around demanding they stop using the name.... except that in a lot of Mandrake marketing there was a cartoon penguin in a magician's hat with a magic wand. D'OH!!

So now we have Mandriva, and somehow it's just never been the same.

Looking for OS/FS trademark articles for an essay, found this.

This entire article is proof that a lot of trademark lawsuits are absolute cobblers, and that lawyers of large companies seem to think it's their God given right to charge people for the use of common linguistic conventions.
I mean how in hell do you trademark a suffix?
What logic is there behind '-ix' being a proprietary linguistic convention?
Honestly, do the people who work in law have to commute from Pluto?

Sorry about the uninformative rant, but things like this really annoy me. God help me if I ever decide to set up a tech company.
-
ExC
(a CS&EE student)

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