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WP Engine sent “cease and desist” letter to Automattic

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Re: WP Engine sent “cease and desist” letter to Automattic

#271

Post by keane »

jaredthirsk wrote: post #263
keane wrote: post #217

Earlier quoted context omitted.

That is what they did, their actual current advertising includes: "The most trusted WordPress platform", "The Most Trusted WordPress Tech Company", "[WordPress's] #1 managed provider", "WP Engine is the #1 platform for WordPress". They also have service plans on offer explicitly branded by them Core WordPress, Essential WordPress and Enterprise WordPress.

If they are "The most trusted WordPress platform", that implies there is more than one platform. That implies that none of them are first party WordPress. So I don't buy that. (Regarding their plans, I think they would be safer to put the word 'Plan' at the end of their plan names.)

I know what you mean but if CNET Downloads advertised themselves as “The Most Trusted Source for Firefox” The Mozilla Foundation/Corporation would not allow this. A consumer new to the term WordPress might be given the impression that wpengine.com is a more trusted platform/source for the software than wordpress.org itself.

Re: WP Engine sent “cease and desist” letter to Automattic

#272

Post by keane »

mthoms wrote: post #258
keane wrote: post #224

Earlier quoted context omitted.

Attempt to sell a product titled “Essential Disney®” or a service titled “Enterprise Outlook®” and it’s not going to go well for you.

Non sequitur. I have no legal rights to sell those products to begin with. I do have a right to sell WordPress hosting.

You absolutely do have a right to use and sell GPL software. But you might be conflating your rights to the software with your rights to specific trademarked terms.

Consider the wording that Red Hat includes in their trademark policy: “Nothing in these Guidelines is meant to limit your rights under the terms of a free and open source software license. Trademarks and copyright are different rights, so regardless of what rights or permissions you may or may not have to use the Red Hat Marks, you always have all your rights under any applicable free and open source software licenses.”

To my point, you also have nominative use to Disney and Microsoft marks. You could have a “Disney VHS repair shop” or a “Microsoft products technical support shop”.

Re: WP Engine sent “cease and desist” letter to Automattic

#273

Post by mthoms »

keane wrote: post #270
mthoms wrote: post #259

Earlier quoted context omitted.

Some important nuance is lost here. Matt Mullenweg transferred the trademark to the WordPress Foundation (which he is head of) and the foundation (again... Matt himself) in turn granted Automattic the exclusive ability to sub-license the name commercially . This is the important bit. What this means is that any "licensing fee" would be paid to Matt's private, for-profit, VC-backed company (and direct competitor to WP…

The trademark policy sounds like it falls somewhere between the Mozilla Foundation/Corporation model and the Red Hat/Fedora Project model. This is how open source in practice works.

Not really. The Mozilla Corporation and Red Hat aren't direct 1:1 commercial competitors to the people they also license the trademarks to (as is the case with Automattic and WPEngine). It's an obvious conflict of interest and inherently problematic on so many levels.

If there is a real-world open-source analogue to that situation, I'd be genuinely interested in hearing about it.

To me the solution seems simple; The WP Foundation should own and license the trademark. Then use the proceeds for its mission in a way that is accountable to the community (Automattic should not have to pay of course).

Re: WP Engine sent “cease and desist” letter to Automattic

#274

Post by mthoms »

Matticus_Rex wrote: post #265
mthoms wrote: post #208

Earlier quoted context omitted.

Here's the thing. Guess who is the head of the WordPress Foundation? Matt Mullenweg. CEO of Automattic. Now guess who The WordPress Foundation granted sole rights to sub-license their trademarks? You guessed it. Automattic. Yeah, it gets worse the more you look at it.

How does that look worse?

Do I need to spell it out? The foundation is headed by the same person who they granted an exclusive license to. Not just a commercial license to use the trademarks. It's permission to sub-license the trademarks for profit without restriction. It's blatant self-dealing.

It's an obvious conflict of interest for a foundation that is supposed to be serving the community.

Re: WP Engine sent “cease and desist” letter to Automattic

#275

Post by mthoms »

arp242 wrote: post #262
mthoms wrote: post #260

Earlier quoted context omitted.

Right. But who gatekeeps the project focus, direction and spending? Automattic does. This would be a different conversation if there was an independent and accountable foundation driving things.

They do the majority of the work, so they get to decide. That's how it works everywhere. If WP Engine wants to decide they should invest the same 4,000 hours/week.

That's the problem though. It's a chicken and egg issue. Those donated hours could be directed towards things that aren't in WPEngines interest. To use an analogy: it's taxation without representation. That seems counter to the open source ethos.

If everything was handled by an independent, transparent and accountable foundation then this would be a different conversation. It isn't. It's handled by a private, for profit, vc-backed company with a leader known for personal vendettas and holding grudges.

I want to be clear: I have no love for WPE and agree they should be doing way more. I'm just pointing out that the current arrangement is not exactly conducive to facilitating that.

Re: WP Engine sent “cease and desist” letter to Automattic

#276

Post by mthoms »

keane wrote: post #272
mthoms wrote: post #258

Earlier quoted context omitted.

Non sequitur. I have no legal rights to sell those products to begin with. I do have a right to sell WordPress hosting.

You absolutely do have a right to use and sell GPL software. But you might be conflating your rights to the software with your rights to specific trademarked terms. Consider the wording that Red Hat includes in their trademark policy: “Nothing in these Guidelines is meant to limit your rights under the terms of a free and open source software license. Trademarks and copyright are different rights, so regardless of wh…

I think we agree on this. I'm just trying to understand why you threw out the bizarre Disney/Outlook analogy. Neither of those are open source: I don't have a right to sell those for many, many legal reasons so your analogy is... weird.

Yet you used those analogies as some kind of clever "gotcha" against my legal argument of nominative fair use.

Do you want to try again? Why do you believe this trademark case is, or isn't, covered by nominative fair use? That's the core of the issue and is WPEngine's stated defence. It certainly seems like WPEngine have a strong argument.

Re: WP Engine sent “cease and desist” letter to Automattic

#277

Post by keane »

mthoms wrote: post #276
keane wrote: post #272

Earlier quoted context omitted.

You absolutely do have a right to use and sell GPL software. But you might be conflating your rights to the software with your rights to specific trademarked terms. Consider the wording that Red Hat includes in their trademark policy: “Nothing in these Guidelines is meant to limit your rights under the terms of a free and open source software license. Trademarks and copyright are different rights, so regardless of wh…

I think we agree on this. I'm just trying to understand why you threw out the bizarre Disney/Outlook analogy. Neither of those are open source: I don't have a right to sell those for many, many legal reasons so your analogy is... weird. Yet you used those analogies as some kind of clever "gotcha" against my legal argument of nominative fair use. Do you want to try again? Why do you believe this trademark case is, or…

Sure, you can use Disney, Microsoft, Volkswagen, and WordPress marks referentially.

You cannot name products or services “Essential Disney”, “Enterprise Outlook”, “The Volkswagen Experiance”, or “Enterprise WordPress”.

Your allowed nominative use and/or a software license does not give you a license to title your own services with their trademarks. My suggestion would be to read through the Red Hat, Fedora Project, or Mozilla trademark guidelines and/or the Debian-Mozilla dispute article.

https://en.wikipedia.org/wiki/Debian–Mozilla_trademark_dispu...

Re: WP Engine sent “cease and desist” letter to Automattic

#278

Post by mthoms »

keane wrote: post #277
mthoms wrote: post #276

Earlier quoted context omitted.

I think we agree on this. I'm just trying to understand why you threw out the bizarre Disney/Outlook analogy. Neither of those are open source: I don't have a right to sell those for many, many legal reasons so your analogy is... weird. Yet you used those analogies as some kind of clever "gotcha" against my legal argument of nominative fair use. Do you want to try again? Why do you believe this trademark case is, or…

Sure, you can use Disney, Microsoft, Volkswagen, and WordPress marks referentially. You cannot name products or services “Essential Disney”, “Enterprise Outlook”, “The Volkswagen Experiance”, or “Enterprise WordPress”. Your allowed nominative use and/or a software license does not give you a license to title your own services with their trademarks. My suggestion would be to read through the Red Hat, Fedora Project, o…

Disagree. One of the criteria seems to be whether there is a reasonable substitute phrase or word to describe the product. I think we agree that there is no other word to describe the open-source package known as WordPress without using "WordPress".

What would you call your Wordpress hosting service if not "WordPress Hosting"? What would you call your Linux Hosting?

>Your allowed nominative use and/or a software license does not give you a license to title your own services with their trademarks.

Citation?

My understanding is that litmus test is whether the naming implies endorsement or "official-ness" of the offering. There is no hard and fast rule like you're claiming. It's all context dependent. So while a court may find that this causes confusion I don't see it as obvious like you seem to.

Your link, while interesting (thanks!) doesn't appear to be a good analogue. Based on my reading of that page:

Debian decided it couldn't use the Firefox logo because it didn't meet their standards for openness (as it was protected by copyright). So they included "Firefox" without the logo. Subsequently, Mozilla complained that they couldn't use the Firefox name without using all the branding in its entirety. And so... Debian rebranded Firefox (and other Mozilla software) to something else.

In other words, it was Debians policy that prevented them from using the logo, not Mozillas. That's not at all the same. And anyways, none of this was tried in court (thankfully) so it wouldn't be a precedent anyways.

Re: WP Engine sent “cease and desist” letter to Automattic

#279

Post by FireBeyond »

Matticus_Rex wrote: post #266
FireBeyond wrote: post #182

Earlier quoted context omitted.

> and they're the party who can claim to be aggrieved, if it violates some duty Automattic has to WPF Tortious interference - where one party (Automattic) interferes with a contractual relationship between two parties (WPengine, their customers), in this case by means of disparagement pushed to the dashboard of WPengine instances.

Tortious interference requires that the interfering party induce the party to the contract to a breach of the contract. Where's that element?

Inducement? Like "We have blocked the ability to access plugin and other repositories for customers of WPEngine. We have not done so for this other, "independent", for-profit entity (that just so happens to be owned by the same person)"?

Re: WP Engine sent “cease and desist” letter to Automattic

#280

Post by keane »

mthoms wrote: post #278
keane wrote: post #277

Earlier quoted context omitted.

Sure, you can use Disney, Microsoft, Volkswagen, and WordPress marks referentially. You cannot name products or services “Essential Disney”, “Enterprise Outlook”, “The Volkswagen Experiance”, or “Enterprise WordPress”. Your allowed nominative use and/or a software license does not give you a license to title your own services with their trademarks. My suggestion would be to read through the Red Hat, Fedora Project, o…

Disagree. One of the criteria seems to be whether there is a reasonable substitute phrase or word to describe the product. I think we agree that there is no other word to describe the open-source package known as WordPress without using "WordPress". What would you call your Wordpress hosting service if not "WordPress Hosting"? What would you call your Linux Hosting? >Your allowed nominative use and/or a software lice…

Again, take a look at the wording from Red Hat for comparison:

https://www.redhat.com/en/about/trademark-guidelines-and-pol...

https://fedoraproject.org/wiki/Legal:Trademark_guidelines#Tr...

The examples Red Hat gives as acceptable are likely similar wording to how you would offer WordPress hosting without titling your service merely “Enterprise WordPress”.

As for why you don’t receive trademark rights when you are granted a license to code:

“In addition to the license text, open source publishers commonly include statements separate from the license indicating that trademark rights are not provided.”

“One of the primal questions about trademarks in F/OSS projects is, absent a clause excluding a trademark grant, 'Do the open source software licenses imply a trademark license?' […] Given the large proportion of OSI-approved licenses that are either silent on trademarks, or prohibit only endorsement, advertising or other specific behaviors, and the number of software offerings that may be distributed under these licenses, the impact of an implied license would be far-reaching. With the caution that this has not been tested by the courts, the answer should be a clear 'no'. […] Although rights to the use, modification and redistribution of the code are granted under the F/OSS licenses, trademark rights are not provided inherently and often are expressly excluded as a point of clarification. […] The US courts have generally resisted opportunities to imply a trademark license.”

—Tiki Dare (Director of Trademarks and Marketing at Sun Microsystems, Inc.) and Harvey Anderson (General Counsel of the Mozilla Corporation), International Free and Open Source Software Law Review, doi:10.5033/ifosslr.v1i2.11 https://www.jolts.world/index.php/jolts/article/view/11/37

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