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When a private corporation decides to publish software under a permissive open source licence (for example, the MIT licence) there might still be a desire for that company's name and logo to be associated with the product.

Obviously company name and logo are both the subject of copyright and trademark and the company has no desire to lose control of those.

Does this mean that all company names and logos must be removed from the whole project, at least its source code (such as removing any copy of the company name or logo in a Git repo)?

In an obvious example, would that mean the copyrighted logo would need to be removed from the software's GUI?

In an extreme example, could putting a phrase like "This software was written by [company]" in the README.md be construed as putting the company name under the same MIT licence?

Is there something that must be done to protect the company's rights here? For example making a clear declaration of what is NOT covered by the MIT licence.

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    From a copyright point of view, the licence on the logo will usually be rather permissive, as you want people to use your logo to refer to your company or product -- this makes your trademark claim stronger. Control over the logo is exerted through the trademark, not copyright. For example, when you sponsor a conference, your logo will turn up on the conference website (i.e. the conference redistributes a file with the logo in it), and be printed in the proceedings (i.e. color space conversion applied, creating a derived work), and you want that to be hassle-free. Jan 12, 2023 at 20:06
  • @SimonRichter That's a very good point! Clarifying my concerns a little, permissive licences such as MIT are often described as giving permission to "do what you like with it". Perhaps that's a misinterpretation, I'm not sure. What's clear is that letting everyone use your logo to refer to you is just fine and even desirable (very good point!). Perhaps my concern is more around giving explicit permission to "do what you like with it". That feels like a scary blank cheque. Jan 12, 2023 at 20:20
  • Putting additional restrictions on how the software should be used, means it is not the MIT license anymore. Jan 13, 2023 at 5:49
  • @ThorbjørnRavnAndersen Not sure I entirely agree. Restricting the definition of "the software" doesn't mean that "the software" isn't given under an MIT licence, just that I'm careful to ensure other things I may own are not. Jan 13, 2023 at 10:42
  • Microsoft has all their branding outside the open sources for visual studio code and then add it when they create the distribution Jan 13, 2023 at 15:39

2 Answers 2

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There are open source licenses, which explicitly deal with trademarks by excluding them from the scope. You can find an overview of the licenses here. The specific wording in the licenses differ, and so do the other obligations imposed by the licenses. But there is a wide range for you to choose from. So you don't need to worry that the company logos and trademarks end up 'in the wild'.

When a company puts its logo into a github repository with software, the company should expect that it is taken and used. The company might exclude the logo from the open source license (or select a software license that does not cover trademarks), but imagine what happens if the logo remains in the software (worst case in the UI) while someone forks it and adds malicious functions to the code? I believe that each and every company that wants to protect its logos and trademarks will try to prevent this situation.

Trademarks and company names also often appear in the names of repositories and libraries and in descriptions of libraries. I randomly picked this example for illustration purposes, and nobody would seriously believe that the mentioned company name or the trademarks are covered by the permissive MIT license.

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    A good example of how this can be done is Microsoft with VS Code. The code is all open source under the MIT license, but it excludes all the Microsoft logos and includes generic replacements. Every fork can then decide how to handle those. The actual Microsoft distribution of VS Code is available under a separate product license.
    – Voo
    Jan 12, 2023 at 10:46
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    Also have a look at Firefox, which was distributed as Icewasel by Debian for a long time, because Debian's requirement (being able to push out security updates without vendor endorsement) didn't meet the requirements to use the trademarked Firefox name and logo. Jan 12, 2023 at 11:33
  • @Voo so you're saying Microsoft went the route of removing their trademark IP from the repos before publishing under MIT? Jan 12, 2023 at 13:32
  • @Philip VS Code was greenfield development based on an existing open source project, so I assume they never had their trademarks in it to begin with, but I might be wrong on the historical details. But yes currently there is the open source VS Code without Microsoft trademarks and then presumably an internal fork that replaces the generic trademark with the Microsoft ones which is used to build the signed distribution. Other open source distributions of VS Code do the same thing to avoid the MS licensing of their distributed VS Code.
    – Voo
    Jan 12, 2023 at 14:20
  • And this would be a perfectly reasonable thing to do in general. You expect different versions of the code and different distributions to have different branding. So it wouldn't make much sense to put one particular flavor's branding in the master release. Jan 13, 2023 at 2:49
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Copyright and trademarks are two different things. A company name might be under trademark protection, even if it is a common noun, like "Oracle". The name "Oracle" is not protected by any copyright license, and thus can not be put "under the MIT license" just by mentioning it in README.md. Nevertheless, mentioning the name in the README file might under certain circumstances violate the acceptable use according to trademark rules. Calling your database server "Free Oracle Database" in README.md is is most likely against trademark rules. On the other hand, mentioning in the same README that your product is "built on Oracle technology, but in no way endorsed by Oracle" is most likely fine, as the trademark "Oracle" is used just to refer to the company and/or product the trademark is meant to represent.

Logos and (possible depending on jurisdiction) artificially invented company names on the other hand are protectable by copyright, so a LICENSE document should make clear that the MIT license does not apply to company_logo.png. In that case, the remaining parts of the source code may still be MIT licensed, but the complete source code repository is not, and furthermore the binary with that logo included is also not subject to the MIT license.

Combining source code you may use under the GPL with a copyrighted company logo (example: YourProprietaryVideoEditor.exe has a splash screen containing that logo, and it links against ffmpeg in a configuration that includes GPL licensed code) will result in a non-distributable binary, unless you license that logo under GPL compatible copyright terms. You still have trademark protection on that logo, though. So I could take your video editing software, fetch the logo from it and start branding fridges with it, as you most likely didn't apply for trademark protection for "household appliances", just for "software", and maybe even for "clothing" to also have merchandise protected. I also can use parts of that logo to create another logo (a work derived from your logo) and use that for my product, if the logos are clearly distinct, for example cropping a film roll from that logo to be used as a part for an entirely new logo.

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  • Would you mind clarifying the reasoning for the last paragraph (re: GPL). I presume you are referring to the "copy-left" feature of GPL meaning that "derived works" must also distributed under the same licence. Therefore a licensee cannot add their logo to your product without licencing their logo GPL too. However I'm less certain on why the same restriction extends to the original copyright holder. Is that because the use of the GPL licence is itself subject to GPL? IE applying the GPL licence to your work makes it a "derivative" of GPL itself. Jan 12, 2023 at 14:21
  • "Claiming that a product is "a perfect step up from the Oracle database system" uses the name Oracle to endorse a different product, and is most likely against trademark rules" Really? That seems very weird. Why shouldn't I be allowed to refer to a product by its name? Actually I've seen quite a lot comparisons between Oracle DB and say MS SQL that used the names.
    – Voo
    Jan 12, 2023 at 14:42
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    GPL allows the exclusion of trademark rights, see Section 7 of GPLv3. B.t.w., we should not start a discussion about trademark law or other legal aspects here, this would be off topic. A better place for that is Law SE. Jan 12, 2023 at 15:32
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    @PhilipCouling If the company logo is linked into a binary file containing 3rd party GPL code, in my oppinion, that logo is part of a derived work of that GPL code. So either that logo needs to be distributed under GPL compatible terms, or that binary is non-distributable, as that would violate the license of the 3rd party. This is distinct from the case where the GPL software is written entirely by the owner of that logo. In that case, the company might give themselves the additional permission to link that code with their logo. Jan 12, 2023 at 20:15
  • @Voo changed my example for a clear trademark violation. Jan 12, 2023 at 20:25

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