3 ms·

The paragraph prior: >All other WordPress-related businesses or projects can use the WordPress name and logo to refer to and explain their services, but they c

by keane 2y ago

The paragraph prior: >All other WordPress-related businesses or projects can use the WordPress name and logo to refer to and explain their services, but they cannot use them as part of a product, project, service, domain name, or company name and they cannot use them in any way that suggests an affiliation with or endorsement by the WordPress Foundation or the WordPress open source project. At https://wpengine.com/plans/ https://wpengine.com/plans/ they appear to offer a product/service titled/branded "Essential WordPress" with others to choose from being "Core WordPress" or "Enterprise WordPress". (mirror: https://web.archive.org/web/20240921160743/https://wpengine.com/plans/ https://web.archive.org/web/20240921160743/https://wpengine....)

mthoms 2y ago
Thats covered by Nominative Fair Use. It's the same body of law that allows a repair shop to advertise that they are a "Volkswagen Repair Shop" (as long as there is no implication that they are officially endorsed by the car company).
- keane 2y ago
  Attempt to sell a product titled “Essential Disney®” or a service titled “Enterprise Outlook®” and it’s not going to go well for you.
  - mthoms 2y ago
    Non sequitur. I have no legal rights to sell those products to begin with. I do have a right to sell WordPress hosting.
    - keane 2y ago
      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”.
      - mthoms 2y ago
        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.
        keane 2y ago
        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_dispute https://en.wikipedia.org/wiki/Debian–Mozilla_trademark_dispu...
        mthoms 2y ago
        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.

by keane 2y ago

mthoms 2y ago

Thats covered by Nominative Fair Use. It's the same body of law that allows a repair shop to advertise that they are a "Volkswagen Repair Shop" (as long as there is no implication that they are officially endorsed by the car company).

keane 2y ago
Attempt to sell a product titled “Essential Disney®” or a service titled “Enterprise Outlook®” and it’s not going to go well for you.
- mthoms 2y ago
  Non sequitur. I have no legal rights to sell those products to begin with. I do have a right to sell WordPress hosting.
  - keane 2y ago
    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”.
    - mthoms 2y ago
      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.
      - keane 2y ago
        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_dispute https://en.wikipedia.org/wiki/Debian–Mozilla_trademark_dispu...
        mthoms 2y ago
        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.