In the modern open source world, where licenses and DVCS’ allow instant and infinite forking, the only true control point for a community-based open source project is its name, its logo, and its identity. Your brand is your identity: this is how the rest of the world sees you and your project. Your brand is most of what your users see, and is a key way to attract new contributors. How can a volunteer-led open source project control it’s own identity and brand? How do you manage your project’s brand when most of your volunteers are coders who don’t want to get involved with lawyers or deal with enforcing trademarks? How can the community keep their brand independent and free of commercial influence, so they can ensure the maximum number of people and corporations are interested in participating in their project? Similarly, how can businesses respectfully use open source brands to their own advantage – without being seen as co-opting an independent or open community open source project solely for their own gain? The desire to control the next hot project for your company's profit may quickly turn on you when another company simply forks the code under a better marketed service. Learn the basics of all these topics and more with Shane Curcuru, who volunteers as Vice President, Brand Management for The Apache Software Foundation. Over the past few years Shane has led a group of volunteer ASF Members to define and implement a consistent brand policy for all 100+ Apache projects – spanning from the veritable HTTPD and Tomcat to the newest CouchDB and Hadoop.

1. Managing Apache™
Project Brands
●
Shane Curcuru | @shanecurcuru
●
Vice President, Brand Management
v 2.0

2. Introduction
● Shane Curcuru
– Vice President, Brand Management
● Volunteer position, appointed by the ASF Board of Directors
● Define and implement core branding policy for all 150+ Apache™
projects & Incubator podlings
– http://www.apache.org/foundation/marks/
● Questions? <trademarks@apache.org>
● I am not a lawyer ..
.. but now can play one on the Internet

3. Topics
● Trademark concepts brief overview
– Adjectives, nominative use, consumer confusion, and registration
● How to manage Apache™ project brands
– What PMCs need to do themselves
– What PMCs should do together with trademarks@
– What you must let trademarks@ do for your PMC
● How your $BigCo can collaborate respectfully with PMCs
● Resources

4. Trademark Concepts
In 30 Seconds

5. What are Trademarks?
● A trademark is the legal instantiation of your brand
● Trademarks are about preventing consumer confusion as to the source of
goods
– The specific name and logo an informed consumer (user of your software)
associates with a specific downloadable software program or service
● Trademarks protect consumers by ensuring expectations of quality,
functionality, etc. available from a specific vendor
● A brand includes many elements – names, logos, look and feel – parts of
which are specific trademarks that signify a software product or service
● Your project name is not necessarily a trademark, although it may be a
service mark

6. Trademarks are adjectives
● Trademarks are legally used to describe the actual goods
● I buy Kleenex® brand tissues
● We run Apache Lucene™ software and Apache Hadoop® software
● … but in common usage we just write: we're running Python
● Use as an adjective is important on homepage & download page
● … much less so in other places

7. Nominative use is OK
● Nominative use for trademarks ~= fair use for copyright
● People must be able to use a trademark to describe the goods
● Nominative use even allows people to post bad reviews of your
software product
● Personal blogs, newspaper articles, technical mailing list discussions
are almost always nominative use
● Infringement is when a third party uses your marks in a way that may
mislead consumers as to the true source of goods

8. Registered trademarks
● In most jurisdictions, common law rights accrue from actual use of a
mark to identify goods – without any registration
● Trademarks may also be registered with the USPTO, the EU, and
other individual country governments – this is not required, but
improves your rights
● The additional protections of registration vary by country:
– Typically, easier standard proof of infringement, and higher potential
damages in court
● < $500 to register online with USPTO
● Most Apache product names are not registered

9. But it's open source!
● Go read your open source license again
● Most of them explicitly exclude any rights to trademarks
● Apache License
– 6. Trademarks. This License does not grant permission to use the
trade names, trademarks, service marks, or product names of the
Licensor, except as required for reasonable and customary use in
describing the origin of the Work and reproducing the content of
the NOTICE file.

10. PMC Branding
Responsibilities

11. PMCs: Be responsible
● PMCs are responsible for their own brand
http://www.apache.org/foundation/marks/responsibility
● Have a consistent brand
– Consistent project and product naming
– Consistent primary product logo
– Consistent across websites (JIRA, wiki, homepage, downloads)
● Understand how your brand is used in the marketplace
● Treat the Apache brand and the feather appropriately

12. PMCs: Be consistent
● Your use of your brand is the reference implementation
● Be consistent – especially in first and most prominent uses
● Attribute your own trademarks with ™ or ® to make their status clear
to others – both words and logos
● Ensure consistency in your website
– In your documentation
– On your download page
– In publicly visible parts of your product UI
● Trademark law is not a compiler: the general consumer perception is
what counts

13. PMCs: Be aware
● Be aware of major third party uses of your brand
● Third party uses that may confuse consumers as to the source of
goods are important to review and respond to – in conjunction with
trademarks@
● Other uses probably don't need to be addressed formally
● Personal blogs, press articles, software reviews, benchmark reports,
forum discussions, emails on dev@... are all places that are unlikely
to be infringing uses
● Fairness to all users is critical – both with outsiders and with
companies who are contributing to your project

14. PMCs: Be respectful
● Ensure you treat other organization's trademarks respectfully
● Charitable or community-based projects have no business infringing
on other's trademarks
● Be liberal in attribution and giving credit to other communities or
companies
● Respond calmly and professionally if a third party asks/demands for
changes; always cc: trademarks@

15. PMCs: Be independent
● Apache projects are independent
– http://community.apache.org/projectIndependence
● Present an independent face to the project
– Governance is by your independent PMC
– Software product is branded Apache Foo
– Treat all participants / contributors fairly
● Independence from undue commercial influence is a requirement for
Apache projects
● Independence means Apache Foo performs useful functions, without
additional software

16. PMC & Trademarks@
Responsibilities

17. Police brand use privately
● See the Apache Trademark Reporting Guidelines
– http://www.apache.org/foundation/marks/reporting
● Work with trademarks@ whenever contacting third parties about
potentially infringing uses of Apache brands
● Always contact third parties privately
– Assume ignorance rather than malice
– Private, direct contact allows all parties to save face
– Public confrontations often escalate, potentially damaging everyone's
reputation
– But don't panic if the first email was on dev@

18. Be professional and polite
● Whenever contacting anyone about improper brand use:
– Be professional – make them understand we are serious and understand
the issue
– Be polite – many cases are resolved through simple discussion and
negotiations
– Be firm – state the ASF's clear ownership of the marks
– Be specific – quote specific uses that we request to be changed
● Most potential infringements cases are resolved through discussion
between private@, trademarks@, and the party
● Legal threats are never the first step

19. Coordinate legal advice
● The ASF has pro bono corporate counsel from DLAPiper and SFLC
● Send any legal questions, especially any from outside the ASF, to:
– trademarks@ for anything brand-related (private archive)
– legal-internal@ for any specific legal question the PMC has
on behalf of the project (private archive)
– legal-discuss@ for any general legal questions that can be
discussed publicly (public archive)
● Never grant legal permissions or exceptions to brand policy without
explicit trademarks@ approval
● Never give legal advice (unless you actually are an ASF counsel)

20. Trademarks@
Responsibilities

21. Trademarks@ sets policy
● The ASF owns Apache trademarks on behalf of our projects
● PMCs are required to comply with core use policy
● PMCs otherwise define and promote their own brand
– Project brand design, like technical direction, is completely up to
PMCs to define for themselves
– trademarks@, like press@, infra@, etc. are here to serve the
needs of all Apache projects

22. Deal with difficult users
● Any time a third party responds negatively, or when a lawyer is
involved – ask trademarks@ to craft a reply for the project
● Any difficult negotiations should be done by VP, Brand Management,
with appropriate legal counsel
– Most corporations respond to official titles
● Patience is required: trademark issues are rarely time critical
● Legal threats are never the second step

23. Legal actions
● A Cease & Desist (C&D) is never the right place to start
– Consider the public image of “attacking” a third party
● Trademark litigation is expensive and risky
● Most issues can be resolved with polite, firm, and private discussion
with the right parties
● A very few serious issues end up being resolved with other actions:
making a public case; restricting PMC or commit access; or the board
unilaterally restructuring a project

24. How Companies Can
Respect Brands

25. Respect the community
● It's the community's brand – not yours
● When in doubt, ask first!
– Give plenty of lead time for volunteer or community-governed projects to
respond
– Work with private@project.apache.org and
trademarks@apache.org
● Ensure your marketing department is aware of your strategic goals
– Short-term “wins” of implying ownership in community brands leads to
long-term backlash
– The ASF is here to support all of it's project communities

26. Create your own brand
● It's the community's brand – not yours
● Develop your own, separate brand
– BigCo SuperThing, Powered By Apache Foo is probably OK
– BigCo FooThing is not
– BigCo's Apache Foo is not
– The Best Foo is not
● PMCs may define additional brand use policies that compliment or
extend (but not replace) Apache wide policies

27. Give credit to the community
● Celebrate the project community
● Be liberal with praise and attributions
● Focus on competing higher up the value chain
● The community is not your competitor: those other BigCos are
● The most important asset to any community project are it's individual
contributors

28. Thank You
& Resources

29. Thank You!
● Many thanks to many Apache Members and committers who have
worked on all Apache project brands
● Thanks to the Software Freedom Law Center & DLA Piper, pro bono
counsel for the ASF
● Questions?
– Find Shane anytime here at ApacheCon!
– <trademarks@apache.org>
● These slides:
http://communityovercode.com/2013/02/apachecon-presentation/

30. Resources – Apache policy
● Official Apache Brand Policy (meant for outside parties)
– http://www.apache.org/foundation/marks/
● Apache Project Branding Requirements (meant for PMCs)
– http://www.apache.org/foundation/marks/pmcs
● Apache PMC Branding Responsibilities
– http://www.apache.org/foundation/marks/responsibility
● Apache Trademark Reporting Guidelines
– http://www.apache.org/foundation/marks/reporting
● Apache Project Corporate Recognition Best Practices
– http://www.apache.org/foundation/marks/linking

31. Resources – beyond Apache
● Resources – Trademark Law Basics
– https://www.softwarefreedom.org/resources/2008/foss-
primer.html
– http://www.ifosslr.org/ifosslr/article/view/11/38
● Resources – Pro Bono Counsel
– https://www.softwarefreedom.org/services/
● Resources – Open Source Brand Use Policies
– Mozilla explains the reasons for their policy in very approachble terms:
– http://www.mozilla.org/foundation/trademarks/policy.html
– RedHat / Fedora have a well-organized list of OK / ask first uses:
– http://fedoraproject.org/wiki/Legal/TrademarkGuidelines

32. Thank You!
●
Shane Curcuru | @shanecurcuru
●
Vice President, Brand Management

33. Top 10 Steps for Brand Management
● Establish clear project Governance
BACKUP SLIDE: these are
● Define your brand important concepts for any
● Use your brand consistently open source project; not just
Apache projects
● Publish and enforce a policy
– How do you want others to use your brand? This was a key part of my
presentation at OSCON
● Have a single point of contact
● Be professional, polite, and firm
● Discuss potential infringements privately
● Avoid legal entanglements...
● … But ask a lawyer if you need to
http://communityovercode.com/2012/07/oscon-presentation/