"Provide an accounting of all profits from the service offerings that have made unauthorized use of our Client’s intellectual property;" How is this determined?
I think it's a verbose way of saying $0.
Open Source, Trademarks, and WP Engine
31–40 of 53 posts
Re: Open Source, Trademarks, and WP Engine
#32This whole incident (with the information from texts and posts shared in the “Cease and Desist” letter by WP Engine) makes Matt seem like a disgruntled person who’s after another company because his ego is hurt when his efforts to extort money from it failed. This doesn’t do any good to the reputation of Automattic or WordPress. If this goes to court, I hope WP Engine wins, not because it’s a good open source partici…
Correct me if I have the timeline wrong but is my assessment correct that this played out roughly:
1) Matt creates WordPress under GPL, his friend coins the software’s name, Matt creates a company to offer commercial services of it, and registers the trademark. (2003—2006)
2) Automattic donates the trademark to a Foundation while retaining an unlimited license to the marks for commercial use and is designated to enforce and sublicense the marks. (2010)
3) The Foundation makes the trademark widely available for noncommercial uses and available for limited commercial uses, within guidelines. (2010)
4) WP Engine uses the Foundation’s marks for commercial purposes. (2010—2024)
5) WP Engine is informed that their current use exceeds the parameters of the limited policy and that they need to come into compliance with the policy, commit to specific contributions to the noncommercial project, or acquire a sub-license from the exclusive unlimited use licensee. (2024)
6) WP Engine refuses all three options.
7) Matt issues an ultimatum that he will clown on WP Engine at a conference for the noncommercial project by announcing that WP Engine won’t commit to any of the three options (unless they can commit to one of them before he is slated to give his remarks).
8) Without a change, Matt makes this announcement.
9) WP Engine threatens legal action against the commercial licensee? And issues a legal hold on the trademark owner for potential discovery? So that they can continue using the trademark owner’s marks?
Comments like yours that malign Matt for “extortion” (a criminal offense) seem reckless to me.
Re: Open Source, Trademarks, and WP Engine
#33Your honor, I'd like to enter in Exhibit 0 into the records: https://pbs.twimg.com/media/GYPsyoSbwAACO7X?format=jpg&name=... Furthermore, apparently Automattic invested money into WP Engine in 2011? Since the principals of Automattic and the Wordpress Foundation are the same, why did they not call trademark violations then (or negotiate a royalty deal for the use of the marks)? https://techcrunch.com/2011/11/15/silve…
The part that is so weird to me is that Automattic (Matt is the CEO) owns WordPress.com which is a WP Engine competitor. So many people are confused about WordPress.com vs WordPress.org (The WordPress subreddit even has a sticky about it, since so many newbies are unaware that free self hosted WP exists). Matt is saying that the WordPress Foundation (non profit) gives Automattic an exclusive commercial license to use…
>Matt is saying that the WordPress Foundation (non profit) gives Automattic an exclusive commercial license to use the trademark.
Automattic originally registered the trademark. They donated it to the Foundation and retained the exclusive unlimited license for commercial purposes.
Re: Open Source, Trademarks, and WP Engine
#34Earlier quoted context omitted.
For comparison, the text of the screenshotted web page ( https://wordpressfoundation.org/trademark-policy/ ) now reads: > The abbreviation “WP” is not covered by the WordPress trademarks, but please don’t use it in a way that confuses people. For example, many people think WP Engine is “WordPress Engine” and officially associated with WordPress, which it’s not. They have never once even donated to the WordPress Found…
Wow that reads incredibly petty, almost childish. And "billions of revenue"?
Likely they could buy Automattic if that were true.
Re: Open Source, Trademarks, and WP Engine
#35Your honor, I'd like to enter in Exhibit 0 into the records: https://pbs.twimg.com/media/GYPsyoSbwAACO7X?format=jpg&name=... Furthermore, apparently Automattic invested money into WP Engine in 2011? Since the principals of Automattic and the Wordpress Foundation are the same, why did they not call trademark violations then (or negotiate a royalty deal for the use of the marks)? https://techcrunch.com/2011/11/15/silve…
For comparison, the text of the screenshotted web page ( https://wordpressfoundation.org/trademark-policy/ ) now reads: > The abbreviation “WP” is not covered by the WordPress trademarks, but please don’t use it in a way that confuses people. For example, many people think WP Engine is “WordPress Engine” and officially associated with WordPress, which it’s not. They have never once even donated to the WordPress Found…
I don’t think it’s a wild change. Explicitly enumerated or not, one might assume that any open-source trademark owner does not allow use of their trademark that implies connection to, or authority over, the root project or that “creates confusion”.
Take a look at the Red Hat Trademark guidelines page, which is based on the Model Trademark Guidelines (CC-BY-4.0) designed for the open-source community. They explicitly mention that you cannot “Use the Red Hat Marks in a way that expresses or implies sponsorship or endorsement by, or affiliation or a relationship with Red Hat when one does not exist.” They also remind you that “Red Hat, at its sole discretion, may terminate or modify your permission at any time. Red Hat retains and reserves all rights to the Red Hat Marks and their use, including the sole right to modify these Guidelines, with immediate or later effect.”
If the WordPress Foundation had explicitly included a similar reminder would you still find the change “wild”?
https://www.redhat.com/en/about/trademark-guidelines-and-pol...
Re: Open Source, Trademarks, and WP Engine
#36Earlier quoted context omitted.
The part that is so weird to me is that Automattic (Matt is the CEO) owns WordPress.com which is a WP Engine competitor. So many people are confused about WordPress.com vs WordPress.org (The WordPress subreddit even has a sticky about it, since so many newbies are unaware that free self hosted WP exists). Matt is saying that the WordPress Foundation (non profit) gives Automattic an exclusive commercial license to use…
>Matt is saying that the WordPress Foundation (non profit) gives Automattic an exclusive commercial license to use the trademark. Automattic originally registered the trademark. They donated it to the Foundation and retained the exclusive unlimited license for commercial purposes.
Thank you for the clarification, that was not clear from what I had read about this
Re: Open Source, Trademarks, and WP Engine
#37Earlier quoted context omitted.
Where did you read about EFF involvement?
They haven't yet, but given the situation, if other open-source foundations, controlled by corporations like Automattic, start acting this way, it sets a dangerous precedent. Open source is like free speech—you can't support free speech and then suddenly claim it's only for you, not for others. Automattic's main argument seems to be, "But they're private equity baddies."
Are you unfamiliar with other open-source project’s trademark protections?
From Red Hat’s: “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.”
The Mozilla Foundation is not going to let you call your Softonic/CNET/SourceForge download site "The Most Trusted Firefox Tech Company" or your distribution "The most trusted Firefox download" and if you do (as WP Engine did in their marketing) the EFF is not going to work for free to defend you.
Re: Open Source, Trademarks, and WP Engine
#38Your honor, I'd like to enter in Exhibit 0 into the records: https://pbs.twimg.com/media/GYPsyoSbwAACO7X?format=jpg&name=... Furthermore, apparently Automattic invested money into WP Engine in 2011? Since the principals of Automattic and the Wordpress Foundation are the same, why did they not call trademark violations then (or negotiate a royalty deal for the use of the marks)? https://techcrunch.com/2011/11/15/silve…
Out of curiosity, I looked at WP Engine's website, and counted thirty uses of "WordPress" (before I stopped counting), as well as at least a few uses of "WooCommerce". I am only casually following this dispute, but WP Engine does seem to be using the branding. That said, "WordPress" may be descriptive (I'm not sure whether it is). edit: I did not address the investment component of the parent comment, as that was add…
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Re: Open Source, Trademarks, and WP Engine
#39Earlier quoted context omitted.
They haven't yet, but given the situation, if other open-source foundations, controlled by corporations like Automattic, start acting this way, it sets a dangerous precedent. Open source is like free speech—you can't support free speech and then suddenly claim it's only for you, not for others. Automattic's main argument seems to be, "But they're private equity baddies."
Are you unfamiliar with other open-source project’s trademark protections? From Red Hat’s: “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 so…
The trademark argument is a smokescreen. Just watch Matt’s video—he clearly uses the word “contribute” in the context of source code.
Additionally, you’re required to defend your trademark to maintain your rights. So why is this issue surfacing now, after 14 years of inaction?
Re: Open Source, Trademarks, and WP Engine
#40Earlier quoted context omitted.
Are you unfamiliar with other open-source project’s trademark protections? From Red Hat’s: “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 so…
The trademark argument is a smokescreen. Just watch Matt’s video—he clearly uses the word “contribute” in the context of source code. Additionally, you’re required to defend your trademark to maintain your rights. So why is this issue surfacing now, after 14 years of inaction?
I think you may be mistaken. My understanding is that while courts encourage trademark owners to pursue timely enforcement, the Lanham Act does not mention a time limit. Maybe their use of the marks has changed over the years? A court will decide.