Elasticsearch, Inc. v. Amazon.com, Inc. was a trademark and false advertising case brought by Elastic, the developer of Elasticsearch, against Amazon and Amazon Web Services (AWS) in the United States District Court for the Northern District of California. Elastic alleged that Amazon’s names for its managed Amazon Elasticsearch Service and its Open Distro for Elasticsearch distribution infringed the ELASTICSEARCH trademark.[1] The parties settled in November 2021 and the case was dismissed without prejudice in February 2022.[2][3] The case ran in parallel with Elastic’s move of Elasticsearch and Kibana away from the Apache 2.0 licence, and is part of the background to source-available licensing.
Background
Elasticsearch was first released in 2010, and ELASTICSEARCH was registered as a US trademark in 2012. Elastic offered its own software-as-a-service product that, according to the complaint, competed with the Amazon Elasticsearch Service, which Amazon described as “a fully managed service that makes it easy for you to deploy, secure, and operate Elasticsearch at scale”. In March 2019 Amazon also began marketing Open Distro for Elasticsearch, which it described as an Apache 2.0-licensed distribution of Elasticsearch “enhanced with enterprise security, alerting, SQL, and more”.[1]
The dispute
The complaint, filed on 2019-09-27, made two claims under the Lanham Act. First, trademark infringement: Amazon’s use of ELASTICSEARCH in the names of both offerings was likely to make customers believe that Elastic sponsored or approved them, and Amazon’s landing pages did not say that Elastic owned the mark. Elastic relied on its trademark guidelines, which forbid using the mark as part of a product name or in a way that suggests affiliation, and it pointed out that Amazon’s own trademark guidelines imposed similar restrictions. Second, false advertising: Elastic alleged that the managed service disabled some functionality and application programming interfaces of Elastic’s product and included code that Elastic did not ship, so that it was not a genuine ELASTICSEARCH product. Elastic sought an injunction, Amazon’s profits and up to treble damages.[1]
The complaint was about the name, not the licence: Elasticsearch’s source code was then Apache 2.0-licensed, which allowed others to copy and offer it as a service. On 2021-01-14, while the case was pending, Elastic announced that it would move the Apache 2.0 source code of Elasticsearch and Kibana to a dual licence under the Server Side Public License (SSPL) and the Elastic License, to restrict “cloud service providers from offering Elasticsearch and Kibana as a service without contributing back”. In that announcement Elastic named Amazon Elasticsearch Service as an example of a company that provided its products as a service without contributing back.[4]
Decision or outcome
There was no ruling on the merits. On 2021-11-30 the parties told the court that counsel had signed a term sheet “reflecting all material terms for settlement”.[2] On 2022-02-09 they stipulated to dismiss all claims and defences without prejudice, each side bearing its own fees and costs.[3] The settlement terms were not filed. In a statement on 2022-02-16 Elastic said the resolution followed the 2021 licence change and “Amazon’s subsequent actions, including renaming their service”, and that “the only Elasticsearch service on AWS and the AWS Marketplace is Elastic Cloud”.[5]
Significance for software licensing and SAM practice
The case shows the two separate tools a vendor has when others commercialise its open source code. The copyright licence controls who may copy and offer the code, and Elastic changed it for its maintained branches; the trademark controls who may use the product name, and Elastic enforced that in court.[1][4] For customers, the practical effect was that a product sold under one name split into a vendor-licensed product and a differently named service, with different licence terms. The current licences for Elasticsearch are covered in Elastic licensing, and Elastic’s separate copyright case against a third-party security plugin in Elastic v. floragunn.
Lessons learned
- An open source licence covers the code, not the product name; trademark rules decide what a fork or managed service may be called. Elastic’s claims rested on its registered mark and trademark guidelines, not on the Apache 2.0 licence.[1]
- A vendor can change the licence of maintained branches between releases, so record the licence of each version you deploy, not just the product name. Elastic’s 2021 change moved the source code of all maintained branches of Elasticsearch and Kibana from Apache 2.0 to SSPL and the Elastic License before the 7.11 release.[4]
- Check whether a managed service is the vendor’s own offering or a third party’s, because features, support and licence terms can differ. The complaint alleged that the third-party service disabled some functionality and added code the vendor did not ship.[1]