Researchers dispute Red Hat's Fedora trademark

There may be one hat too many in the open source world. Concerned that they will be forced to drop the name of their five year-old open source project, researchers at Cornell University and the University of Virginia (UVA) are readying a challenge to Red Hat Inc.'s Fedora trademark, currently pending review by the U.S. Patent and Trademark Office.

Fedora is Red Hat's experimental Linux project that was launched as a community-developed alternative to Red Hat Enterprise Linux last September.

Unfortunately, it is also the name of Cornell and UVA's digital management system, which is being developed to manage all of UVA's digital libraries. The software has been downloaded by more than a thousand users since version 1.0 was released in May this year, the university researchers said.

"The problem is that Red Hat's (trademark) guidelines state that if there is confusion, they will exclude you from using the name Fedora," said Carl Lagoze, a senior research associate with Cornell's Information Science department. "It's kind of annoying to see Red Hat suddenly asserting ownership over a name that they knew we had prior use to."

Red Hat was aware of Cornell's project before it filed its trademark application on Sept, 5, 2003, said Mark Webbink, Red Hat's general counsel. But he believes the researchers' fears are unfounded.

"Just because I come along after the fact and file a registration for Fedora does not mean in any way that I can limit what the UVA-Cornell project has," he said.

The researchers have common law rights that protect their use of the Fedora name, according to Webbink. And because Cornell and UVA's project covers two very different types of software, Red Hat would not stop the researchers' Fedora project anyway, he said. "You've got different people using it," Webbink said. "They're not likely to really be confused."

The researchers disagree with Webbink's statement. "If you read the text on their Web site, that's not how they're putting it. That's why we're annoyed," said Thornton Staples, the director of digital library research and development at UVA. "Whatever they say now, they could stop us from using it, and I don't think that would be fair."

Cornell and UVA's lawyers plan to file an objection to Red Hat's Fedora trademark application, as soon as the Patent and Trademark Office will allow. "We definitely want to prevent them from obtaining a registered trademark because it would put our project in jeopardy," said Sandy Payette, a researcher at Cornell.

Red Hat's Webbink hopes the two sides can negotiate a settlement. "I'm always happy to have a discussion about it, but what I'm not willing to do is simply walk away from the mark."

The Cornell/UVA project was not the only Fedora project in the open source community. University of Hawaii student Warren Togami launched a Linux project called Fedora Linux last year. However, Togami's project was recently merged with Red Hat's without acrimony.

Ironically, the origins of the term Red Hat can be traced back to Cornell itself. The company took its name from a red Cornell lacrosse team hat that was owned by founder Mark Ewing's grandfather, Webbink said.