Hacker News Reader

Comment by Atotalnoob | Hacker News Reader

Actually no, trademark is a “use it or lose it” state, waiting so long will not be in their favor

IANAL, but If they are making trademark licensing deals with other companies, and periodically pestering the infringer without taking it fully legal I think that counts as "using it". A judge is likely to be lenient since legal costs are pretty bad and a PITA

But who owns the trademark? The for-profit company, or the nonprofit foundation?

The foundation owns it - https://tsdr.uspto.gov/#caseNumber=78826734&caseSearchType=U...

A claim I've heard is that the for-profit company has the exclusive commercial license (along with the right to grant sub-licenses).

> A claim I've heard is that the for-profit company has the exclusive commercial license (along with the right to grant sub-licenses).

That sounds about right, and is what's written on the WordPress Foundation's trademark page [1]:

> If you would like to use the WordPress trademark commercially, please contact Automattic, they have the exclusive license. Their only sub-licensee is Newfold.

I read something different [2] while reading up on this whole debacle:

> The WordPress Foundation was launched in January 2010. Automattic transferred the trademarks later that year in September. As part of the transfer, Automattic was granted use of WordPress for WordPress.com, but not for any future domains. Matt was granted a license for WordPress.org and WordPress.net.

I wonder if something changed along the way.

[1] https://wordpressfoundation.org/trademark-policy/

[2] https://wordpress.org/book/2015/11/the-wordpress-foundation/

Part of the clusterfuck going on here is...

a) the nonprofit owns a trademark

b) gave an exclusive license with right to sublicense to a for-profit

c) which appears to be run by the same person

d) who is demanding of a competitor to sublicense the trademark

e) paying the money to the for-profit, not the nonprofit

f) when it's not clear that the competitor is infringing on the trademark in the first place.

The litigation here is not likely to go Wordpress or Automattic's way, I think.

According to elsewhere the for profit had the trademark first, and then handed it over to the nonprofit while remaining a licensee. (Automattic founded 2005, WordPress foundation founded 2010) That's a very above board move. And it makes sense for the for profit to take on the legal aspects, because the extraordinary spend won't ruffle donors feathers.

I'm not sure I understand the reasoning here. Either they are licensee or they're not. The history leading up to that doesn't convey any special rights or exceptions.

And referring to that transfer as "very above board" makes it sound like you're talking about the same thing as the commenter above when in fact you're talking about different things. Because however gracious you find that decision to be, that's a different subject than whether it's above board to, subsequently commingle those responsibilities. And whether or not you feel it's practical, in some sense, it doesn't seem to have anything to do with anything. Either Automatic has The authority to collect licensing payments on behalf of WordPress or they don't and that should be reflected in a charter or something, somewhere.

I don't think referencing the history of Automatic previously owning the trademark has anything to do with anything in this context.

There's pretty broad license for for-profits to share IP with non-profits, e.g. Novartis + GNF, or generally speaking, any university and any spinoff (I refuse to call them startups) created by professors thereof. If you think what automattic is doing seems legally sketchy, you may want to recalibrate your expectation of what sketchy is and just how much the industrial complex of the US would simply not work (for better or worse -- i for one think it would be better, fwiw) if it adhered to your standards.

The issue here is that Mullenweg is on record everywhere (including on HN) saying that the "WP" is not the trademark problem; it's "Wordpress" and "WooCommerce".

But a cursory glance at Google results for "Wordpress hosting", "woocommerce hosting", or "managed wordpress hosting" will lead you to hundreds of results from a plethora of web hosting companies that have been doing this, many for more than a decade.

The Wordpress Foundation (that owns the "Wordpress" trademark) has not taken any legal action against any of these companies for precisely the same use it's accusing WPEngine of. A judge could well rule that they have not defended their trademark and this claim holds no water.

Again, IANAL, but it's generally not the case that you are required to go after all infringers of your trademark (I imagine because that would be overly burdensome requirement, as someone nefarious could spin up even a blatantly offensive use in some remote town in Alaska for example and go "ha-haw you failed to defend"). You just have to not never defend it.

it is absolutely the case that you are required to go after infringers if you want to be able to enforce your trademark. A trademark isn't just another word for copyright. It's a signifier of a brand with consistent quality. If you let thousands of sites slide for a decade+, then it no longer conveys a consistent level of quality and when you try to enforce it the judge is likely to shut you down.

Wordpress is using their trademark though… do you mean to say that you must enforce a trademark to keep it? That’s different, and a subject of some controversy; I’m not sure that it’s been decided conclusively.

Please correct me if I’m wrong here (in any way).

It's been decided conclusively, but it is also relatively rare in a practical sense. Trademark law requires the owner to protect their trademark to avoid dilution or genericide, which occurs when a trademark becomes so common it loses its distinctiveness (like what happened with "Aspirin" or "Escalator").

Not a lawyer, but talked about it at length with a trademark attorney when having to defend over the years. It was conveyed that if we aren't willing to legally defend a mark, we could potentially lose it.

Do you think WordPress is diluted? It definitely doesn’t seem to generically refer to blogging or website building software. It seems to me that even WP Engine isn’t diluting it, they’re hijacking it.

Agreed, but that goes back to defensibility. WP Engine has been doing their thing since 2011 without a peep from Matt. He should have been issuing cease and desists, etc. back then.

Maybe it’s that WP Engine operates differently now. They got a massive investment from Silver Lake, a terrible private equity firm with a track record of doing evil things. They probably have changed how they support Wordpress (the open source project), how they pollute the ecosystem, how they make it harder to leave, etc. In other words, they’re free riding on Matt’s creation and extracting all they can from it.

Oh yes, Matt's all about how evil Private Equity is and how they leech from communities and add zero value...

It's an interesting take, given that the three board members of the WordPress Foundation are Matt and a ... managing partner of a PE firm (the third is a retired coder, I believe).

As is their right, given the terms.

You need to look up nominative usage.

"We offer WordPress hosting" is a perfectly legal thing for people to say if they actually offer WordPress hosting, and no amount of trademarks can prevent that. This is specifically called out to try to avoid trademark fuckery.

Sure, everyone refers to the "Big Game" versus the "Super Bowl", but that's largely because the NFL can afford more lawyers than they can, and it's not worth the fight.

Exactly. Statute of limitations is a factor here

Reply on news.ycombinator.com