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On this issue, there's been a lot of discussion along the lines of "the trademark for an open-source project should work the way I prefer which is…" or "if I wa

by keane 2y ago

On this issue, there's been a lot of discussion along the lines of "the trademark for an open-source project should work the way I prefer which is…" or "if I was in a decision making position I would simply…" or "in a perfect world…". Others, like this post, unwisely include appeal to motive. It would be better for us to stick to discussion that is able to limit itself to the substance of both parties' claims. The first thing I think cannot be neglected to be mentioned in posts about the dispute is that (1) Matt created the project (yes, a fork counts), (2) his friend coined the name, (3) Matt's company originally registered the trademark. Then (4) Matt's company donated the mark to a foundation to make it widely available for noncommercial use while they retained the exclusive commercial license to the mark. No mention of this in this presentation. To be fair to commentators, part of the trickiness surrounding this dispute is an old issue regarding open source projects: do the open source software licenses imply a trademark license? The answer is generally understood to be: no. Having a license to software does not grant you a license to a trademark. For more on this I found illuminating the 2009 article in the International Free and Open Source Software Law Review by Tiki Dare JD (Director of Trademarks at Sun Microsystems, Inc.) and Harvey Anderson JD (General Counsel of the Mozilla Corporation) titled "Passport Without A Visa: Open Source Software Licensing and Trademarks": https://www.jolts.world/index.php/jolts/article/view/11/37 https://www.jolts.world/index.php/jolts/article/view/11/37 As one is not given a license to the trademark, a common understanding is that one can: – limit one's use of the trademark to nominative or descriptive fair use (A) – use the mark under supplemental guidelines from the trademark owner (B) – acquire a dedicated license to the trademark (C) At https://wpengine.com/plans https://wpengine.com/plans (take your screenshots now) they have titled services they offer simply "Core WordPress", "Essential WordPress", and "Enterprise WordPress". It could be claimed this branding exceeds nominative use. It is far beyond the mentioned descriptive use of a "managed WordPress hosting company". If this branding exceeds fair use, it needs to comply with justifications (B) or (C). It very clearly does not comply with the published guidelines, both before and after recent modifications, that read "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…". You can also see examples of use (current/cached and perhaps somewhat inadvertent) of "WordPress Engine" itself at https://www.google.com/search?q=site%3Awpengine.com+%22wordpress+engine%22 https://www.google.com/search?q=site%3Awpengine.com+%22wordp... Many commentators seem hung up on the fact that using the letters 'WP' was and remains an allowed practice according to (B). However, with regard to any trademark guidelines it could safely be assumed that a mark owner is not suggesting that one may use protected marks in ways that cause confusion as this is counter to the purpose of trademarks. Commentators are likewise hung up on the idea that the guidelines were subject to change or are despairing about the recent edits that clarified that the use of 'WP' under (B) must avoid uses that could imply the product or service were synonymous with WordPress itself. For similar open source software trademark guidelines and as a useful point of comparison, I think commentators should take a look at Red Hat's public guidelines, which explicitly remind users that guidelines like these can be changed: https://www.redhat.com/en/about/trademark-guidelines-and-policies https://www.redhat.com/en/about/trademark-guidelines-and-pol... Other commentators are focusing on the length WP Engine had 'WP' in their name. With use since 2010, some have implied that a statute of limitations has passed but the Lanham Act has no such time limit. These commentators don't seem to be considering Automattic's confusion claim. WP Engine has claimed in their materials that they are "The most trusted WordPress platform" and "The Most Trusted WordPress Tech Company". 'Trusted' can be read with the meaning 'seen as trustworthy' rather than the meaning 'utilized' which could be found to be creating confusion. The most [seen as trustworthy] platform would presumably be the project itself (in an expansive understanding of 'platform' that a non-technical user might perceive). If CNET started calling itself "The Most Trusted Firefox Source" I would expect The Mozilla Foundation to ask them to stop. Many commentators appear to be suggesting there should be no enforcement of the WordPress mark, which seems an unusual position, or otherwise seem to take issue with Automattic's original trademark registration in the first place. Regardless, if WP Engine's uses of the marks exceeded rationales (A) and (B), they needed a license. This is what Matt was seeking, even allowing such a license to be paid in kind. At this point, a court will likely decide if their use exceeded (A) and (B). Calling for Matt to have a role change is one thing but to likely libel Matt with the term extortion, a criminal offense, especially after only moments before admitting "maybe there's validity there" (regarding infringement of Automattic's WooCommerce mark) is absolutely reckless and it's disappointing to see this unserious blog post promoted here. To see uncareful defamation coming from someone who made their living for many years off the software their target of ire created is especially bleak.

jaredthirsk 2y ago
We seem to live in an age of narrative over strict substance, unfortunately, and I think the author captured the narrative quite well, with a weakness or two on detail that you pointed out, so I appreciate your attempt to elevate the precision of the discussion. I don't think people using the word extortion understand how it is defined in a legal sense and the gravity of the criminality. The word extortion as people use it could be replaced with 'threat' or 'ultimatum', with some sentiment of unethicality or unfairness added back in. Legally, it may be fine for Matt to make ultimatums: "contribute in one of the ways I demand, or my free WordPress.org API that I provide is no longer accesible to you", but as a community steward, it seems unfair to the many users of WPE who were not given that ultimatum with any notice (initially), or enough notice after the "reprieve" (Oct 1 still isn't enough notice.) The only argument of Matt's I find compelling is that WPE's plan names look like a potential misuse of the WordPress mark. If I was WPE, that would be the only thing I would be worried about, and consider changing (though to do it right now might look like an admission of guilt.) If I was a judge, I would consider slapping WPE's wrist on that point, and considering WPE at most 1% at fault in this entire debacle based on facts available. I don't find the overall trademark confusion argument compelling (especially in light of WordPress.org vs WordPress.com confusion, and WordPress.org as Foundation vs WordPress.org as Matt the CEO of a competitor to WPE confusion), though if Matt wants me to believe his own mom is clueless, I will let him have that point. After fault finding regarding acts of harm is done, then I'd be willing to consider which companies, including WPE, are leeching in a way that makes them not healthy members of the community, but only after all this is sorted out. Putting aside all legal arguments, I agree with the directionality of Josh Collinsworth's main point regarding the health of the ecosystem. To put in my own words: Matt's behavior with banning a host's customers from security and feature plugin updates from WordPress.org without sufficient warning (or clear enough reason) has damaged trust in a core single point of failure in the WordPress ecosystem -- I see no excuse for this -- and it is important for the ecosystem to restore this trust as soon as possible. It's an unacceptable situation to begin with, that something that powers 43% of all sites on the Internet can have security updates degraded on the whim of one individual, no matter how much he contributed to the software in the past. The most direct way to repair trust would seem to be at the very least to put WordPress.org's update server in the ownership and operation of someone else, preferably a functioning board who was bound to serve the community/ecosystem in a way that included minimizing ecosystem disrupting events like this one, and who established transparent guidelines on what sort of behavior can get a company banned from using these servers (and few mention they are also banned from future conferences). That this event came without warning to many users seems outrageous. Another thing Josh has right: I and virtually all people hate, to a high degree, greedy ownership of corporations that intentionally lets quality rot as pricing is jacked up and money is squeezed out, so it is very remarkable that so many people think the more critical infraction to the community here is what Matt has done. This isn't about the greedy private equity firm or trademarks right now. It's about a bigger and more urgent problem. We have plenty of time to get back to corporate greed after the current emergency is resolved.

by keane 2y ago

jaredthirsk 2y ago

We seem to live in an age of narrative over strict substance, unfortunately, and I think the author captured the narrative quite well, with a weakness or two on detail that you pointed out, so I appreciate your attempt to elevate the precision of the discussion. I don't think people using the word extortion understand how it is defined in a legal sense and the gravity of the criminality. The word extortion as people use it could be replaced with 'threat' or 'ultimatum', with some sentiment of unethicality or unfairness added back in. Legally, it may be fine for Matt to make ultimatums: "contribute in one of the ways I demand, or my free WordPress.org API that I provide is no longer accesible to you", but as a community steward, it seems unfair to the many users of WPE who were not given that ultimatum with any notice (initially), or enough notice after the "reprieve" (Oct 1 still isn't enough notice.) The only argument of Matt's I find compelling is that WPE's plan names look like a potential misuse of the WordPress mark. If I was WPE, that would be the only thing I would be worried about, and consider changing (though to do it right now might look like an admission of guilt.) If I was a judge, I would consider slapping WPE's wrist on that point, and considering WPE at most 1% at fault in this entire debacle based on facts available. I don't find the overall trademark confusion argument compelling (especially in light of WordPress.org vs WordPress.com confusion, and WordPress.org as Foundation vs WordPress.org as Matt the CEO of a competitor to WPE confusion), though if Matt wants me to believe his own mom is clueless, I will let him have that point. After fault finding regarding acts of harm is done, then I'd be willing to consider which companies, including WPE, are leeching in a way that makes them not healthy members of the community, but only after all this is sorted out. Putting aside all legal arguments, I agree with the directionality of Josh Collinsworth's main point regarding the health of the ecosystem. To put in my own words: Matt's behavior with banning a host's customers from security and feature plugin updates from WordPress.org without sufficient warning (or clear enough reason) has damaged trust in a core single point of failure in the WordPress ecosystem -- I see no excuse for this -- and it is important for the ecosystem to restore this trust as soon as possible. It's an unacceptable situation to begin with, that something that powers 43% of all sites on the Internet can have security updates degraded on the whim of one individual, no matter how much he contributed to the software in the past. The most direct way to repair trust would seem to be at the very least to put WordPress.org's update server in the ownership and operation of someone else, preferably a functioning board who was bound to serve the community/ecosystem in a way that included minimizing ecosystem disrupting events like this one, and who established transparent guidelines on what sort of behavior can get a company banned from using these servers (and few mention they are also banned from future conferences). That this event came without warning to many users seems outrageous. Another thing Josh has right: I and virtually all people hate, to a high degree, greedy ownership of corporations that intentionally lets quality rot as pricing is jacked up and money is squeezed out, so it is very remarkable that so many people think the more critical infraction to the community here is what Matt has done. This isn't about the greedy private equity firm or trademarks right now. It's about a bigger and more urgent problem. We have plenty of time to get back to corporate greed after the current emergency is resolved.