UK Court decides that early-stage open source software projects can generate goodwill sufficient to protect the name of the project

July 09, 2019

A UK court has for the first time considered the English law concept of “goodwill” in relation to open source software projects and contributing developers.

The case is important because it shows that a project leader may be able accrue sufficient goodwill in respect of an open source project, and use it to invalidate a competitor’s later registered trade mark of the same name as the project, even if:

  • a software product has not been issued to end users or to contributing developers; and
  • the project leader has instead only provided co-ordination services in relation to the open source project.

Although the decision is not one made by a superior court (it was an appeal from a decision of the UK Trade Mark Registrar), it is nonetheless of significance to:

  • open source software project leaders, because it suggests that owners of early-stage development projects can quickly accrue rights in their project name and stop others from using such name later on (i.e. before the name is registered as a trade mark and before a new product is released to developers);
  • independent developers contributing to such projects (who typically contribute on an unpaid basis), because the court made some observations about to whom (as between project leader and independent contributing developers) goodwill will accrue; and
  • crowd sourced, crowd funded and other development projects perhaps more generally, as there is nothing in the judgment itself that suggests that its rationale is limited to open source software projects.

Please see a briefing with further detail on the case here.