Author: Richard Best

The GPL and nulled plugins

Published by Richard Best

When a leading proponent of open source says something about the GPL, people notice When one of the world’s leading proponents of open source software and the GPL makes pronouncements of what the GPL does and does not allow, many people will have a look and some may take it on blind faith to be correct. It’s pretty important, therefore, that what such proponents say about the GPL is in fact correct. On 1 November, one of the world’s leading proponents of open source software and the GPL said this (the second paragraph is referring to litigation in the Netherlands by, it seems, Automattic and WooCommerce, against Festinger Vault): “A quick followup on my prior conversation with Theo. During that chat, I talked briefly about a trademark infringer that was also distributing nulled plugins. I said “Not illegal. Legal under the GPL. But they weren’t changing the names. They were selling their customers Pro Plugins with the licensing stuff nulled out.” I want to be clear that my reference to legality and GPL was solely …

The “not affiliated” checkbox and the GDPR

Published by Richard Best

TL;DR The punchline of this post is that the operator(s) of WordPress.org may, through the “I am not affiliated…” checkbox, be breaching Europe’s General Data Protection Regulation (GDPR), and that is something of which the board of Automattic ought to be aware. Let me explain. The “not affiliated” checkbox As is well known across the community, on or around 8 October, the login screen on WordPress.org was amended to look like this (originally it linked to the WP Engine lawsuit, but that was subsequently removed): Application of the GDPR First of all, there is a strong argument that the operator(s) of WordPress.org are subject to the GDPR in relation to their processing of EU residents’ personal data through WordPress.org. For example, there are localised versions of WordPress.org translated into the languages of some EU member states (e.g., de.wordpress.org/) and so services are being actively offered to EU residents, and the WordPress.org privacy statement appears to have been written on the assumption the GDPR applies. Personal data processing through the checkbox Under the GDPR, “personal data” …

The ACF>SCF ‘fork’ and legal risk

Published by Richard Best

What the… Just when the community thought things couldn’t get more disruptive – because they’re already mighty disruptive – they have. Automattic’s CEO has forked (or purported to fork) the incredibly popular Advanced Custom Fields plugin on the WordPress.org plugins repository, calling the new version ‘Secure Custom Fields’. Advanced Custom Fields is a WP Engine plugin (WP Engine acquired it from Delicious Brains in 2022), so no surprises as to why he has done this. Freedom of speech Before I proceed, let me say something of freedom of speech. I anticipate (rightly or wrongly) that MM/Automattic’s defence to some of the allegations against it in WP Engine’s court filing will be premised on first amendment / freedom of speech grounds. Fair enough. By contrast, we are seeing people in the WordPress community, who are exercising their right to freedom of speech to comment on what they’re seeing unfold, being shut out of WordPress.org communities, Slack groups, and Twitter/X feeds, or otherwise being spoken to with hostility, even when they are trying to help. That doesn’t …

Looking at the WordPress ecosystem as feudal in nature

Published by Richard Best

We have no entitlement to WordPress The first thing to get out of the way, before descending into feudalism, is that we have no entitlement to WordPress. Three forces may combine to give people a sense of entitlement, but the truth is something different. The three forces The three forces are the GPL, longevity, and community: Force 1 – the GPL: Anyone who gets their hands on a copy of WordPress can do whatever they want with it as long as they comply with the terms of the GPL (and don’t do anything that, properly construed, infringes the WordPress trademarks). They can turn features off and on, host it as a SaaS offering, fork it, etc. That’s the beauty of the GPL. Force 2 – longevity: When people have been using WordPress for so long, and with so many free benefits, it’s natural perhaps to develop a feeling of ‘WordPress will always be there when I want it’. For theme and plugin developers and WordPress hosts, that includes access to WordPress.org, despite the fact that …

Automattic’s trademarks post vs other ‘WordPress hosting’ providers

Published by Richard Best

Introduction On 3 October 2024, an Associate General Counsel at Automattic published a useful post on “WordPress Trademarks: A Legal Perspective”. The post is useful for a few reasons, including because it acknowledges, I believe for the first time during the current controversy, the role of nominative fair use. And so, in that sense, it contributes to the community’s understanding of Automattic’s take on the trademark issues. I have been saying for a while now that nominative fair use would likely be a central issue in any trademark litigation between Automattic and WP Engine. WP Engine’s court filing confirms that. Why I have written this post I have written this post because Automattic’s positions on: trademark infringement in its cease and desist letter to WP Engine; and nominative fair use in the post referred to above, are potentially significant for large numbers of other WordPress hosting providers (excluding WordPress.com). As a long-time user of WordPress, it concerns me that such an important topic is not being more openly discussed by other lawyers, particularly US trademark …

WP Engine changes use of trademarks on its website

Published by Richard Best

Question from a reader I had decided to end my posts on the Automattic-WP Engine saga but, following changes by WP Engine to its website in response to the trademark infringement allegations against them, a reader has asked for my views on why it has done this. First things first The first thing to note is that I have no contact with WP Engine on this and so my thoughts are opinion only. I could be wrong. The changes The changes WP Engine has made include: changing the hero text from “We power the freedom to create on WordPress” to “We power the freedom to create” changing the text underneath the hero text from “Build, power, manage and optimize extraordinary WordPress, WooCommerce and headless sites with the world’s #1 platform” to “Build, power, manage, and optimize your WordPress¹, Headless and WooCommerce¹ sites with the #1 hosting platform” (with the footnote ¹ linking to the disclaimer set out below) changing the text “The most trusted WordPress platform” to “The most trusted platform for WordPress” removing phrases …

I am not a US trademark lawyer, but…

Published by Richard Best

I can read I am not a US trademark lawyer. I am, however, a lawyer who has practised in three jurisdictions, and I know how to read. I remain of the view that, if Automattic’s infringement claims were to go to court, nominative fair use would be one of the central issues, coupled with issues relating to confusion and alleged attempts to suggest a relationship with Automattic/WordPress.com, as well as other potential defences (on which I express no firm view). Novel issues may arise as well. In an earlier post, I proffered my preliminary view that much of the asserted trademark infringement might be categorised as nominative fair use. I should, perhaps, have said more, including that whether that defence is available would depend on a number of factors, including what each party is able to establish to the required standard (Automattic in relation to the elements it needs to establish for its claim, and WP Engine in relation to defence elements it needs to establish). Some points I do feel reasonably confident in making …

Dear WP Engine…

Published by Richard Best

A letter, of sorts Dear WP Engine I am a long-time customer. I moved my sites to WP Engine a long time ago, and have built many sites since, due to (among other things) the security you offer (and after a site that was up-to-date was hacked on another company’s inferior hosting due to a server issue). For a range of reasons, I liked the service you provide, and I still do. Having used WP Engine for so long, I don’t want to shift off it and, unless the current problems get worse and impact site availability or performance, I have no plans to do so. Many of your customers will be aware of your cease-and-desist response to the attack on WP Engine at WCUS (personally I think it’s fair to characterise it as an ‘attack’), of Automattic’s response asserting trademark infringement, of the block on WP Engine having server-to-server access to WordPress.org, and of today’s temporary lifting of that block. I’m mindful, though, that the lifting of the block is only until “October 1, …

The ‘WordPress’ trademarks and the classes of activity they cover

Published by Richard Best

The WordPress trademarks With all this talk of Automattic, WP Engine, and trademarks, I thought it might help to share a table I’ve created that lists the WordPress trademarks, when they were registered, the goods and services or classes of activity they cover, the original owner, the current owner, and whether there have been any ‘assignments’ (transfers and the like). All information comes from the United States Patent and Trademark Office. Here it is (the text of the exclusive licence to Automattic is set out after the table): * The licence was (get ready for some legal verbiage): “an exclusive, fully-paid, royalty-free, perpetual, irrevocable, worldwide, sublicensable right and licence to use and otherwise exploit the trademarks identified in Exhibit A [attached to the transfer], and any and all related or similar names, marks, designs, domain names, and other rights (excluding www.wordpress.org, www.wordcamp.org and www.wordpressfoundation.org), along with all associated applications, registration and goodwill (the “Trademarks”), in connection with the hosting of blogs and websites that utilise any version or component of the WordPress open source publishing …

From cracks in the attack on WP Engine to a roundtable

Published by Richard Best

Hats off Hats off to Matt. Despite all the heat in the community at the moment, yesterday he turned up on ThePrimeTime for an interview with ThePrimeagen to talk about the controversy. What’s more, he did that when – clearly – he was pretty exhausted. Seven things To my mind, some of the things he said are quite telling or otherwise warrant comment. I want to focus on seven of them. 1. Confusion over ‘WP’ When asked about the recent change in the WordPress Trademark Policy (see WordPress Foundation changes Trademark Policy to criticise WP Engine) and why there had been a change to the previous statement about ‘WP’ not being protected by the trademarks and people being able to use ‘WP’ however they want, he said: “It still says that. So you can still use WP. You can, like I said, WP beginner, there’s lots of WP plugins. There’s lots of WP things. Just how they [WP Engine] were doing it is an egregious violation of trademarks. And as a trademark holder, you know, …