On May 21, 2020, the US District Court for the Northern District of California granted a motion for judgement on pleadings by Neo4J, a developer of graph database software, in Neo4J, Inc. v. Purethink LLC, 2020 WL 2614871.
Neo4J had brought a trademark infringement suit against Purethink, LLC, an erstwhile reseller of Neo4J’s enterprise products, and its related entity iGov. After the reseller agreement between the parties terminated, Neo4J sued alleging trademark infringement, and the defendant counterclaimed that the trademark had been abandoned.
Neo4J offers both a community edition under GPL/AGPL, as well as a commercial edition, which had additional features only provided under commercial terms. The defendant argued that Neo4J’s trademark was unenforceable because Neo4J used the mark on its open source software as well as its enterprise product. The defendant characterized licensing under GPL and AGPL as “naked licensing” (i.e. licensing of a trademark without exercise of sufficient quality control), which can lead to a loss of rights in the trademark.
The court rejected the argument, saying,”Defendants do not raise any allegations indicating the Plaintiff has failed to exercise actual control over licensees’ use of the trademark….[T]he fact the Plaintiff distributed Neo4J software on an open source basis pursuant to the GPL and AGPL is not, without more, sufficient to establish a naked license or demonstrate abandonment.”
This result is not unexpected, but it is a useful precedent. Open source licenses like GPL are not trademark licenses, and therefore cannot be “naked” trademark licenses. When it comes to stewarding brands, it is the actual work of maintaining quality control, and not the software copyright license terms, that matters. There are many companies that implement an open core business models with community and enterprise editions. While those companies, like any company, are wise to properly manage their brands, that management is by no means antithetical to an open source licensing model.
