The decision in the case brought by fellow blockchain software developer Tari Labs raises questions about trademark enforcement in the open source community.
Blockchain software development firm Tari Labs sued Bitcoin infrastructure firm Lightning Labs in December for trademark infringement over the use of the name “Taro” – Lightning’s protocol that allows users to issue assets such as stablecoins on the Bitcoin blockchain.
On Wednesday, Judge William H. Orrick issued a temporary injunction forcing Lightning Labs to halt further development of Taro until the project has been sufficiently rebranded. In its complaint, Tari argued that it and Lightning “compete in the same digital blockchain ecosystem, provide similar, and in some instances identical, goods and services, market to similar developers and users, and appear on the same blockchain platforms.”
The lawsuit has drawn criticism from several members of the open source community who insist that trademark enforcement has no place in free and open source software (FOSS).
We wish we could have avoided litigation. We tried very hard,” Naveen Jain, co-founder of Tari Labs, told Cryptopurity. “We are huge fans of Lightning Labs. Instead of simply changing the name, they chose to fight us tooth and nail. We are never happy or proud when things result in litigation.”
Tari Labs launched Tari – a blockchain protocol that focuses on digital assets – in April 2020 and subsequently registered the name as a company trademark. Tari has “an Arabic or Italian etymology relating to a Mediterranean gold coin used in the Middle Ages,” according to court documents.
Two years after Tari’s debut, Lightning Labs announced Taro after raising $70 million in a Series B funding round.
“I was having dinner with a developer friend and he mentioned ‘taro,’” said Lightning Labs CEO and co-founder Elizabeth Stark in a declaration in the case. “I knew that taro is a common ingredient used in Latin American, Southeast Asian,and African cuisines, which were three key regions for the growth of this technology – so, I responded, ‘Wait, that’s a really cool name!’”
A test version of the Taro software was released last September and a subsequent iteration was on the verge of being announced. The injunction, however, means Lightning’s development of Taro has been halted and Lightning Labs will have to rebrand or appeal the decision before moving forward.
“This whole thing could’ve been avoided if they changed the name,” Jain said. “I met with Elizabeth personally, we sent multiple messages and we offered to help brainstorm new names. Now with the temporary restraining order, they must change [their] name to continue shipping near term.”