This is a perfect example of what trademarks are, how they are used, how they are diluted, and how they are defended. It should be studied closely by anyone who has ever felt a bit unsure on the reason Apple computers and Apple records can exist in the same universe without mutually annihilating in a burst of legal briefs and boxers.
The facts of the case are as follows: In May 2005, two people (Chris Lydon and Mary McGrath) launched a radio program named “Open Source” and a non-profit independent production company called Open Source Media. They applied for trademarks on those names and have since amassed an audience both on the radio (produced in association with WGBH radio in Boston and distributed via Public Radio International), on XM, and online in blog form. They also registered two domain names in the intervening months, opensourcemedia.net and radioopensource.org. They since stopped using opensourcemedia.net, but according to my own whois lookup they apparently still own it.
In November 2005 a blog and news site opened up under the name Open Source Media and claimed that the other Open Source Media had given them the URL opensourcemedia.net. Which is apparently factually untrue, as I noted above. This caused confusion, the evidence of which is on the linked site and the sites it links to, and the two people from the established Open Source Media sent the new Open Source Media a letter requesting that they find a new name.
(See how damned confusing my post is getting? I rest my case.)
For their part, the people from the new Open Source Media said this:
This is a somewhat interesting point, and something that should be addressed. In the software industry, ‘open source’ means a software package is licensed under specific terms as defined by the Open Source Initiative. In the field of software, therefore, I feel pretty confident in saying that the name ‘open source’ cannot be trademarked: It is a descriptive term with a defined, widespread, and widely understood meaning, and turning it into the distinctive mark of a specific product would be horribly confusing.
However, in the fields of radio and blogs the term ‘open source’ is meaningless. It is therefore fair game for whoever wants to trademark it, use it, and defend it in those fields. Lydon and McGrath have met all those standards, including the first step of defense which usually consists of a formal letter to the person you think is diluting your trademark.
Note that the last standard I mentioned was ‘defense’: If the original Open Source Media had been less vigorous about sending letters and making its case known, it would have a much harder row to hoe once this goes to court (assuming it ever does). A trademark undefended is a trademark lost, and, much like land, if the public manages to squat unchallenged on one long enough, it’s no longer owned by anyone. ‘Aspirin’ and ‘heroin’ are both prime examples of this loss in action, and in the second case the company that registered the trademark (Bayer) still exists.
They also claim this:
However, the standard for trademark dilution is not an exact phrase match. The standard is confusion, which is something the courts really have to decide on a case-by-case basis but, in this case, is fairly obviously taking place. The shortening of Open Source Media to OSM is so automatic as to make confusion inevitable.
The wheels of jurisprudence grind slowly, which is why I’m posting in January about blog posts from November. But this is such a perfect case study of what trademarks are and how they are used, diluted, and defended I couldn’t pass it up.