The dispute over the trademark and marketing of the widely used NATS server software is entering the next round. After Synadia, the former owner of NATS, reclaimed the software from the Cloud Native Computing Foundation (CNCF), the organization is now trying to have the US Patent Office delete the NATS trademark and logo. The organization, which is part of the Linux Foundation, argues in the dispute that Synadia relinquished all rights to NATS when it handed it over to the CNCF in 2018 and must now comply with the agreements.
There is much to suggest that Derek Collison, the main maintainer, CEO and founder of NATS and Synadia, made a mistake with the donation to the CNCF and wants to limit the damage. He is now seeking a confrontation, but risks causing even more damage to his company.
The dispute began with a lawyer's letter dated 27 March on behalf of Synadia to CNCF, demanding that the open source organization return the NATS repository and the nats.io domain to Synadia. The letter also provides information about Synadia's intention to hand over NATS to CNCF in August 2018, namely the hope for "growth in contributors and community". However: "It is clear that the NATS.io project has failed as a thriving CNCF project, as virtually all growth to date has come from Synadia's efforts and expenditures." The lawyer sets a deadline of April 10.
Open source or not?
In a non-legally formulated proposal submitted by CEO Collison on April 9, he goes into a little more detail: 97 percent of the contributions come from Synadia employees and the company has invested 30 million dollars. Synadia now wants to transfer the NATS server to the Business Source License (BSL or BUSL), which HashiCorp, among others, already uses for Terraform. This means that NATS remains open at its core, but certain use cases are commercial. The proposal to offer NATS as a managed service – is a typical business model in the open source sector. However, the BSL is highly controversial in the open source community, and protest against it led to the spin-off of OpenTofu from Terraform.
In contrast to the lawyer's letter, Collison avoids accusations against the CNCF and offers compensation for the costs of the changeover.
On 24 April, with an update on 28 April, the CNCF responds in the blog, insisting on its rights and complaining about Synadia's non-transparent approach, as the organization and community were not made aware of the plans at an early stage. The CNCF emphasizes its position as a protective force for the values of the open source community in order to "ensure that no legal entity can control, relicense or reclaim anything that has been given to the community." The blog entry rejects the BSL as a non-open source license. It also points out that Synadia could fork NATS in order to market the fork under a new name, as was the case with Grafana Cortex and Mimir.
The CNCF also disagrees with the lack of commitment, mentioning 90,000 US dollars it paid for security audits and 10,000 US dollars in a trademark dispute. To improve the one-sided situation in community support, it offers to recruit new maintainers and contributors. However, in the seven years since NATS was handed over to the CNCF, the organization has not succeeded in getting the community to become more involved in the project – NATS is still languishing in "Incubating" status.
The unresolved trademark dispute
The dispute is complicated by a further dimension: while Synadia is demanding the release of the repository and domain, the CNCF conversely wants Synadia's brand and trademark, as these have remained with the company. The CNCF's statutes clearly state that handing over projects to the organization also includes the brand.
Synadia has also signed this – according to the blog entry – and the organization is insisting on compliance with this agreement. However, the lawyer's letter had already rejected this demand in advance: "too vague to be legally enforceable."
The fact that the trademark was not immediately transferred in 2018 was due to the aforementioned trademark dispute for which the CNCF paid the 10,000 dollars. So the Linux Foundation now –, as the parent company of CNCF –, decided on April 23 to apply to the US Patent and Trademark Office to cancel NATS as a trademark and logo.
On April 25, Collison made his first public statement on the matter in a blog and emphasized his commitment to open source. The clients and a server version will continue to be available under the Apache 2 license and the BSL license will also expire after two to four years. He also contradicts the CNCF's claim that the withdrawal was not transparent: "Synadia has actively initiated internal discussions with the CNCF about a joint announcement of the withdrawal."
Is the fork coming like Open Tofu?
It is difficult to predict which party will win this legal dispute on several levels and to what extent. Despite all understanding for a CEO's desire to ensure the health and growth of his company, he must abide by the contracts and agreements. Collison has obviously made a mistake with the gift to the open source community and has not achieved the hoped-for result in terms of contributions from the community. To reclaim the gift now, despite all the disappointment about the lack of performance of the CNCF, is a unique step that will not make Synadia any friends in the long run.
Ultimately, Collison is risking a fork à la OpenTofu, which will later become his competitor – a fork that he could have carried out himself with little loss. Because if he had pulled his 97 percent NATS developers and put them into a new project forked away by the CNCF, there probably wouldn't have been much left of the original in the long run.
(who)