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Pearson v Automattic: Did Automattic succeed by the skin of its teeth?

Published by Richard Best

Focus of this post

As many in the WordPress community will know by now thanks to Jeff Chandler’s helpful post on the case, recently Chris Pearson was unsuccessful in his complaint against Automattic regarding its purchase of the thesis.com domain name. Pearson had sought to have the domain transferred to him. I want to say a few things about this case but I’m not going to get emotional about it nor will I publish any comments that come across as hostile, abusive or potentially defamatory. My interest is to point out a few things that do not seem prominent in the discussions I’ve seen to date and to do so from a hopefully dispassionate legal perspective.

Facts

The key facts seem to be these:

  • Many years ago, Chris Pearson developed a theme for WordPress called Thesis. When released, Pearson did not license Thesis under the GPL.
  • In due course, there was heated if not acrimonious debate between Matt Mullenweg and Pearson as to the licensing of Thesis. Mullenweg argued that Thesis should be licensed under the GPL; Pearson argued he was not required to do so. (I’ve said a bit more about this in WordPress themes, the GPL and the conundrum of derivative works).
  • At one point, it looked as though Pearson would be sued, but it didn’t come to that. Nevertheless, it seems clear that deep battle scars remained on both sides. At one point Mullenweg even appears to have offered to give Thesis purchasers a GPL premium theme of their choice at no cost. (To really understand what many believe to be the true context for this case, you need to listen to the debate between Pearson and Mullenweg on Mixergy back in 2010.)
  • Eventually, in July 2010, Pearson changed the licensing for Thesis, announcing this on Twitter: “Friends and lovers: Thesis now sports a split GPL license. Huzzah for harmony! #thesiswp”
  • Pearson owns registered trademarks for both “Thesis” and “Thesis Theme”, in each case for “web site development software”. These trademarks were registered in October and November 2011 and it appears that Pearson has been using the names since 2008.
  • In more recent times, Automattic and Pearson were both approached by a third-party for the possible purchase of the thesis.com domain name. Automattic was the higher bidder, paying $100,000 for the domain name.
  • Pearson instituted proceedings in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). Pearson argued that he had registered trademark rights in the THESIS mark; that Automattic’s domain name thesis.com was identical to that mark (except for the top level domain name “.com” which was not relevant); that Automattic does not have any products named ‘thesis’ or offer services using the ‘thesis’ name; that Automattic’s registration of the disputed domain name, to sell competing products, likely violates Pearson’s trademark rights; and that Automattic purchased the disputed domain name to confuse and redirect customers and potential customers to Automattic’s competing webpage.
  • Automattic argued, among other things, that “thesis” is a generic term; that it was using the disputed domain name in connection with a blogging site, such use serving as an invitation to Internet users to discuss, object, and debate certain topical issues and, therefore, falling within the definition of the term “thesis”; that Automattic purchased the domain name pursuant to a bona fide offering of goods under the UDRP; and that Pearson had not proven bad faith with supporting evidence (this argument was made because one of the three things a complainant must establish is that the ‘domain name has been registered and is being used in bad faith’).

Decision

The Panel made these key findings:

  • Pearson established legal rights and legitimate interests in the mark contained in its entirety within the disputed domain name;
  • Automattic failed to submit extrinsic proof to support the claim of rights or interests in the disputed domain name;
  • the disputed domain name is identical to Pearson’s legal and protected mark; and
  • Pearson failed to bring sufficient proof to show that Automattic registered and used the disputed domain name in bad faith.

Now, as Jeff noted in his post, paragraph 4(a) of the UDRP requires a complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

  1. the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  2. the respondent has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.

The first two elements were satisfied. Only the third was not but that is because Pearson failed to bring sufficient proof to show that Automattic registered and used the disputed domain name in bad faith.

It’s important, in my view, to look at what the Panel actually said. In relation to the second element, the Panel said this (I’ve replaced references to Complainant and Respondent with Pearson and Automattic):

“Rights to or Legitimate Interests:

…

… In the instant case the Panel finds that [Automattic] is not commonly known by the disputed domain name.

… The Panel finds that [Automattic] is using the disputed domain name to redirect internet users to [Automattic’s] competing webpage, which is not a bona fide offering of goods or service or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). …

…

The Panel finds that [Pearson] established a prima facie case in support of its arguments that [Automattic] lacks rights and legitimate interests under Policy ¶ 4(a)(ii), which showing is light. … However, [Automattic’s] offer draws the Panel’s attention to a troublesome area.  Allegedly, [Automattic] and [Pearson] were both approached by a third-party for the possible purchase of the <thesis.com> domain name, and [Automattic] was the higher bidder, paying $100,000.00 for the domain name. Such a purchase has been considered a bona fide offering of goods under Policy ¶ 4(c)(i) by past panels. … Therefore, this Panel considers that [Automattic’s] purchase of the <thesis.com> domain name for $100,000.00 could confer rights sufficient for Policy ¶ 4(c)(i) rights and legitimate interests, had adequate evidence to that effect been adduced. The Panel notes, however, that [Automattic] did not provide documentary evidence establishing this purchase of the disputed domain name for $100,000.00 and therefore the Panel declines to give that claim full credibility without such proof, which would have been easy for [Automattic] to provide and which should be [Automattic’s] burden to provide if the Panel were to rely on that claim as proof of rights.

Further, [Automattic] is purportedly using the disputed domain name in connection with a blogging site as per its Attached Exhibit (<themeshaper.com> home page). [Automattic] argues that such use serves as an invitation to Internet users to discuss, object, and debate certain topical issues. Panels have found rights and legitimate interests where a respondent was hosting a noncommercial website. … Yet, here as well, [Automattic] provides nothing more than the invitation to engage in such activities. Therefore, the Panel declines to find that [Automattic] actually operates the <thesis.com> domain name in connection with a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

[Automattic] also argues that the term of the <thesis.com> domain name is common and generic/descriptive, and therefore, [Pearson] does not have an exclusive monopoly on the term on the Internet.  Contrary to [Automattic’s] position, the appropriate authority registered THESIS as a mark and [Pearson] established those legal rights to that mark. [Automattic’s] premise is contradicted by this governmental proof of legal rights.

The Panel finds that [Pearson] has made out a prima facie case that [Automattic] lacks rights or legitimate interests in the disputed domain name and that [Automattic] has not rebutted that prima facie case. [Pearson] has therefore satisfied the elements of ICANN Policy ¶ 4(a)(ii).”

In relation to the third element, the Panel said (among other things) this:

[Pearson] claims that [Automattic’s] use of the disputed <thesis.com> domain name is to divert and confuse customers and potential customers. The Panel notes that [Pearson] did not include an exhibit showing that <thesis.com> redirects to a webpage owned by [Automattic]. The Panel suggests that the submissions might point toward use by [Automattic] that would support findings of bad faith, pursuant to Policy ¶ 4(b)(iv) if evidence had been adduced to that effect.  However, [Pearson] failed to bring that proof to the Panel. …

The Panel therefore finds that [Pearson] failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  …

… Therefore, the Panel finds that [Pearson] failed to support its allegations under Policy ¶ 4(a)(iii) and finds for [Automattic].

The Panel does not adopt [Automattic’s] contention that the <thesis.com> domain name is comprised entirely of a common term that has many meanings apart from use in [Pearson’s] THESIS mark. …”

So, in essence, the first of the three required elements was clearly satisfied given Pearson’s trademark rights and the second element was satisfied because Automattic had not rebutted Pearson’s case that Automattic has no rights or legitimate interests in the domain name thesis.com. It appears that Pearson hadn’t, however, adduced sufficient evidence to establish the bad faith element.

Comment on panel’s reasoning

I’d like to zoom in on two aspects of the Panel’s reasoning. The first is the Panel’s suggestion that “[Automattic’s] purchase of the <thesis.com> domain name for $100,000.00 could confer rights sufficient for Policy ¶ 4(c)(i) rights and legitimate interests, had adequate evidence to that effect been adduced”. To understand this comment, you need to know what ¶ 4(c)(i) of the UDRP says. It says this:

“… Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”

With respect, in my view the suggestion that paragraph 4(c)(i) might have been found to apply here is tenuous, given the historic conflict between Pearson and Automattic’s head regarding the Thesis theme. That historic conflict must, in my view, colour the analysis of whether the name was being used in connection with a bona fide offering of goods or services. Cross-examination on this point in court proceedings could be fertile ground for a litigator. Note also that $100,000 is a lot of money to pay for an allegedly generic domain name that has no obvious connection with Automattic’s business. It would be interesting to see Automattic’s domain name inventory.

The second element of the Panel’s reasoning that I want to zoom in on is this:

“[Pearson] claims that [Automattic’s] use of the disputed <thesis.com> domain name is to divert and confuse customers and potential customers. The Panel notes that [Pearson] did not include an exhibit showing that <thesis.com> redirects to a webpage owned by Respondent. The Panel suggests that the submissions might point toward use by [Automattic] that would support findings of bad faith, pursuant to Policy ¶ 4(b)(iv) if evidence had been adduced to that effect. However, Complainant failed to bring that proof to the Panel.”

Paragraph 4(b)(iv) of the UDRP says this:

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

According to the Panel, Pearson hadn’t adduced evidence to this effect. Had he done so, he may have succeeded. At the date of writing this post, thesis.com still redirects to themeshaper.com and let’s not forget that themeshaper.com is now an Automattic property. The left sidebar states expressly that it’s the “home to the Automattic Theme Division”.

The other point to note is that the four circumstances in paragraph 4(b) of the UDRP are not an exhaustive list of the scenarios in which bad faith might be found. If you look at the opening wording above, it says “the following circumstances, in particular but without limitation“. The listed scenarios are scenarios which will, if proved, indicate bad faith but they do not (in my view) preclude a panel from finding bad faith in other scenarios. That is the effect of the words “but without limitation”.

Other legal remedies

I noted at the outset that the UDRP dispute resolution process has it roots in contract. The registrant of a domain name agrees to submit to the dispute resolution process in its contract with the registrant.

The UDRP process is not, however, the only means by which a person can seek a remedy when feeling aggrieved by another person’s registration of a domain name that conflicts with existing trademark rights. And the fact that a complainant is unsuccessful before a UDRP panel doesn’t necessarily mean the outcome would be the same in court proceedings. Depending on the facts of a given case and the country in which a claim is brought, other remedies may lie in trademark law (for trademark infringement), tort law (for something called passing off) or fair trading or cybersquatting legislation (which exists in some countries but not others).

I make no comment on how the pursuit of such other remedies might pan out in this particular situation. For one thing there’s the fact that themeshaper.com itself isn’t overtly selling anything. At the same time, it is promoting themes on WordPress.org and, more significantly, it does link to Automattic’s commercial ventures, through the “Blog at WordPress.com” link and the Automattic image link in the footer.

Let’s wrap it up

I think I’ve said about all I want to say. As a long-time WordPress user and community observer, it has been tempting to express my own non-legal views on what’s happened here but, because I said this would be a legally oriented post, I haven’t. The only thing I’ll say is that I hope fallout management is in place because this episode seems to have reopened a rift in the WordPress community that many thought was long closed.

How not to source images for your client’s websites

Published by Richard Best

If you’re a designer who source images for a client’s website, do you ensure you and your client have the right to use them?

An interesting wee tale

A UK case from 2012 provides a number of important reminders for those who design and own websites, including public sector agencies (Hoffman v Drug Abuse Resistance Education (UK) Ltd [2012] EWPCC 2 (19 January 2012)). It’s an interesting tale about a website owner who copied photos from another website in the mistaken belief that they were Crown copyright photos that could be re-used without permission when, in fact, they could not. There’s a photographer, a charity, a web developer, a government-sponsored website, the photos and … a copyright infringement claim. This isn’t a WordPress-specific story, but one that may be of interest to some WordPress users.

Briefly, the main facts appearing from the judgment are these:

  • Mr Hoffman was the copyright owner of a range of photos of drugs;
  • the defendant charity published copies of those photos on its website;
  • the defendant had used a web design firm to produce its website;
  • that firm had found a Government sponsored website called “Talk to FRANK” on which the photographs appeared;
  • the defendant understood that the site was covered by Crown copyright and that the images could be re-used when, in fact, they could not; the photos were not Crown copyright;
  • the Department of Health acknowledged the site was not clear and tried to pursue the matter on behalf of the defendant (and others) but without success;
  • Mr Hoffman brought proceedings against the defendant for copyright infringement.

The defendant’s position was that it “had not intentionally or knowingly infringed [Mr Hoffman’s] copyright” and “the Department of Health and their misleading web site were the cause of any infringement”.

The Court decided that the defendant was in fact liable. The fact that the defendant may have thought that it had permission to use the images was not a defence to infringement under the relevant provision of England’s Copyright Designs and Patents Act 1988. Similarly, the fact it had employed a firm to produce the website did not enable the defendant to avoid liability.

The defendant could also not rely on section 97(1) of the Act which states that “[w]here in an action for infringement of copyright it is shown that at the time of the infringement the defendant did not know, and had no reason to believe, that copyright subsisted in the work to which the action relates, the plaintiff is not entitled to damages against him, but without prejudice to any other remedy.” The court sympathised with the defendant but held that the facts did not support reliance on this defence:

“The defendant understood it had permission under what it understood to be the relevant copyright. That is a very different thing from an argument that the defendant had no reason to believe copyright subsisted at all … . To believe that one had permission under (in this case) Crown copyright is the opposite of a belief or reason to believe that there is no copyright in existence.”

The court awarded damages, interest and costs in favour of Mr Hoffman.

Reminders

The case serves as a reminder for a number of players in the web industry, including (on the facts of this case) public sector agencies:

  • web designers need to be careful when suggesting to clients that they can reuse copyright images or other copyright content from other websites; without permission from the true copyright owner, such content should not be re-used;
  • if in doubt as to whether third party web content can be re-used, the safest course is to get in touch with the site owner (or, if it’s clear that the content comes from another source, that source);
  • public sector agencies need to be careful when describing the copyright status and re-use permissions of copyright content on their websites because, if they get it wrong, they can expose members of the public to risk at the hands of the true copyright owners (and could themselves be the subject of challenge or feel at least ethically obliged to assist those who have unwittingly upset the true copyright owners); and
  • website owners need to be careful to ensure, when using third party copyright content on their websites, that sufficient rights clearance processes have been followed (unless they are happy to run the risk of a claim of infringement).

What about you?

Have you ever found yourself in a similar position? If so, feel free to chime in with a comment below.

WordPress Foundation v Yablon and PC-VIP, Inc

Published by Richard Best

Introduction

As many will know, the WordPress Foundation has commenced court proceedings against Mr Yablon and PC-VIP, Inc in relation to the use of “WordPress” in “The WordPress Helpers” website and multiple domain names: thewordpresshelpers.com, thewordpresshelpdesk.com, thewordpresstrainers.com, thewordpressteachers.com, thewordpressdoctors.com, wordpresstraffic.com and thewordpresstutors.com. Attempts to resolve the matter without resorting to court proceedings have, it seems, been unsuccessful.

The WordPress Foundation’s complaint against Mr Yablon and PC-VIP, Inc, filed with the United States District Court for the Northern District of California, contains five claims for relief. It also seeks a jury trial. The complaint is available online if you’d like to read it.

Fools rush in where angels fear to tread

I don’t propose to express an opinion on whether and if so how many of the claims may succeed. Not only is it more appropriate to leave that to US trademark and cybersquatting attorneys but we are yet to see a statement of defence from the defendants and we are probably not fully aware of the full range of facts (other than the obvious ones) that underpin the WordPress Foundation’s complaint and that will need to be established for at least some of the claims.

Instead, I propose to summarise the claims and then provide, for each, the main U.S. statutory provisions that underpin the claims (hopefully I’ve found the latest versions). My goal here is simply to provide those interested in this dispute with more information as to the bases for the claims. Note that in some cases I’ve only included the main ’cause of action’ provisions and not all the provisions setting out the remedies that may be available where a cause of action (or claim) is established. There’s only so much of this stuff you’ll want to read… . After that, I’ll make a few comments on the nature of these proceedings and close this post by summarising an interesting US trademark  / domain name case from 2003.

1. Infringement of federally registered trademarks, in violation of the Lanham Act, including but not limited to 15 USC § 1114, for which it seeks injunctive relief and damages

5 U.S. Code § 1114 – Remedies; infringement; innocent infringement by printers and publishers

(1) Any person who shall, without the consent of the registrant—

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

2. False designation of origin and unfair competition, in violation of 15 USC § 1125(a), for which the WordPress Foundation seeks injunctive relief and damages

15 U.S. Code § 1125 – False designations of origin, false descriptions, and dilution forbidden

(a) Civil action

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

3. Violation of the Anticybersquatting Consumer Protection Act under section 43(d) of the Lanham Act, 15 USC § 1125(d), for which the WordPress Foundation seeks immediate transfer of any names incorporating the WordPress trademarks and statutory damages

(d) Cyberpiracy prevention

(1)

(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii) registers, traffics in, or uses a domain name that—

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.

(B)

(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—

(I) the trademark or other intellectual property rights of the person, if any, in the domain name;

(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;

(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;

(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and

(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).
(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.

4. Unauthorized use of the WordPress trademarks contrary to the California Business and Professions Code § 14245, for which the WordPress Foundation seeks injunctive relief, recovery of profits and damages

California Business and Professions Code Section 14245

14245.

(a) A person who does any of the following shall be subject to a civil action by the owner of the registered mark, and the remedies provided in Section 14250:

(1) Uses, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter in connection with the sale, distribution, offering for sale, or advertising of goods or services on or in connection with which the use is likely to cause confusion or mistake, or to deceive as to the source of origin of the goods or services.

(2) Reproduces, counterfeits, copies, or colorably imitates the mark and applies the reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale or other distribution in this state of goods or services. The registrant shall not be entitled under this paragraph to recover profits or damages unless the acts have been committed with knowledge that the mark is intended to be used to cause confusion or mistake, or to deceive.

…

5. Unfair competition contrary to the California Business and Professions Code § 17200 et seq, for which the WordPress Foundation seeks injunctive relief and an order that the defendants disgorge all profits on the use, display or sale of the infringing services

California Business and Professions Code Sections 17200 et seq

17200.  As used in this chapter, unfair competition shall mean and include any unlawful, unfair or fraudulent business act or practice and unfair, deceptive, untrue or misleading advertising and any act prohibited by Chapter 1 (commencing with Section 17500) of Part 3 of Division 7 of the Business and Professions Code.

17201.  As used in this chapter, the term person shall mean and include natural persons, corporations, firms, partnerships, joint stock companies, associations and other organizations of persons.

…

17202.  Notwithstanding Section 3369 of the Civil Code, specific or preventive relief may be granted to enforce a penalty, forfeiture, or penal law in a case of unfair competition.

17203.  Injunctive Relief–Court Orders
Any person who engages, has engaged, or proposes to engage in unfair competition may be enjoined in any court of competent jurisdiction. The court may make such orders or judgments, including the appointment of a receiver, as may be necessary to prevent the use or employment by any person of any practice which constitutes unfair competition, as defined in this chapter, or as may be necessary to restore to any person in interest any money or property, real or personal, which may have been acquired by means of such unfair competition. Any person may pursue representative claims or relief on behalf of others only if the claimant meets the standing requirements of Section 17204 and complies with Section 382 of the Code of Civil Procedure, but these limitations do not apply to claims brought under this chapter by the Attorney General, or any district attorney, county counsel, city attorney, or city prosecutor in this state.

…

17205.  Unless otherwise expressly provided, the remedies or penalties provided by this chapter are cumulative to each other and to the remedies or penalties available under all other laws of this state.

…

A couple of comments

Whilst I won’t express an opinion on these claims, it is clear that the Court will need to consider a range of issues, both factual and legal. One of those issues is whether use of the WordPress trademark in the domain names is likely to cause confusion. Note that this issue is judged from an ordinary consumer’s point of view. Tech-savvy WordPress users with a solid understanding of the WordPress community (e.g., the Chandlers and the Lemas of this world) are highly unlikely to represent the ordinary consumer’s point of view. Think, instead, of someone who is relatively new to WordPress, who is having trouble with something, and who comes across the likes of thewordpresshelpers.com or thewordpresshelpdesk.com. Would there be a likelihood of confusion?

One other point I’d make is that it is likely to be particularly time-consuming and expensive (perhaps very expensive) to see this matter through to trial. And if all the remedies sought against the defendants were to be granted, the consequences might be severe. For these reasons, and in drawing on my 10 years’ experience (in an earlier life) as a litigation lawyer, we may well see this case settle before a jury gets its hands on it. Only time will tell. For now, though, the parties seem entrenched and ready for battle.

A case study

I thought I’d end this post by noting the case of PACCAR Inc v TeleScan Technologies LLC, 115 F. Supp. 2d 772 (E.D. Mich 2000), aff’d in part, 319 F.3d 243 (6th Cir. 2003) which is usefully summarised in J D Hart’s excellent Internet Law: A Field Guide (6 ed, BNA Books, 2008), as follows:

“PACCAR, a manufacturer of heavy trucks and truck parts under the “Peterbilt” and “Kenworth” trademarks, filed suit against TeleScan Technologies, the operator of several websites that allow consumers to locate new and used heavy truck dealers. TeleScan had registered domain names that incorporated PACCAR’s trademarks (peterbilttrucks.com, kenworthtrucks.com, peterbiltnewtrucks.com, kenworthdealers.com and others).

The trial court issued a preliminary injunction, ordered TeleScan to transfer registration of the challenged domain names to PACCAR, and enjoined [i.e., prohibited] TeleScan from using any PACCAR mark or colorable imitation of any such mark in any domain name, metatag, or portion of a web page (such as “wallpaper”) if such use would cause consumers to associate the Peterbilt or Kenworth marks with TeleScan. The court also ordered TeleScan to post the order on its website.

The trial court applied traditional analysis to PACCAR’s claims of trademark infringement and dilution under the Lanham Act. The trial court rejected TeleScan’s argument that its use of the PACCAR marks in its domain names was akin to the user of a manufacturer’s marks to identify a vehicle in a classified ad or to identify merchandise for the purpose of stocking, displaying, or reselling. The trial court stated, “[A] classified advertisement communicates information as to the source of the truck, not information as to the seller of the truck. Words in domain names, however, do communicate information as to the nature of the entity sponsoring the website.” 115 F. Supp. 2d at 779. Because the domain names identified the websites, not the trucks that TeleScan advertised via those websites, the court found trademark infringement and dilution.

The U.S. Court of Appeals for the Sixth Circuit affirmed the trial court’s injunction, except to the extent it had enjoined TeleScan from using PACCAR marks in its metatags. The appellate court rejected TeleScan’s argument that its disclaimer disavowing affiliation with the trademark owner corrected any initial interest confusion caused by TeleScan’s use of PACCAR’s marks in its domain names.”

For now, over and out.

Update after initial post published

Jeff Chandler has drawn my attention to Aaron Hall’s article “‘Nominative Fair Use’ Allows Trademark Used on Website & Domain Name'”. The article and the Toyota / Lexus case to which it refers are certainly interesting.

The case involved (among other things) the defendants’ use of the trademark “Lexus” in some domain names (buy-a-lexus.com and buyorleaselexus.com). The District Court found trademark infringement but the United States Court of Appeals for the Ninth Circuit disagreed and held it was a situation of nominative fair use. The case is, I suggest, essential reading. It’s available online. I suspect the defendants may seek to rely on it. In that event, I would expect the WordPress Foundation’s lawyers to try to distinguish it on the facts; that is, they would say the facts are quite different here. They might say, for example, that it’s not like you can describe a Lexus car with LX or LS or the like. Compare WP that is commonly used to refer to the WordPress software; a practice that has become something of a community norm. WordPress is subject to trademark protection. WP is not. WordPress Foundation lawyers are also likely to refer to potentially useful passages in the judgement but bear in mind that so too are the defendants.

A part of me would not want to see this case go to trial because it is so easy for the defendants to make it go away and the risks they face are high. They don’t have to do that though (meaning they’re entitled to contest this in court of they wish) and there’s another part of me that would like it to go trial as the ultimate judgment (I say ultimate because a first instance decision might be appealed) could be expected to provide useful guidance. If this case does make its way to trial, the judgment will be a fascinating read!

(Thanks to Ken Lund for the photo of the United States District Court for the Northern District of California, San Francisco, California, licensed under a Creative Commons Attribution-ShareAlike 2.0 Generic license.)

Using stock imagery in your or a client’s WordPress site – beware of the terms of use

Published by Richard Best

Introduction

A designer friend once let me in on a secret, a secret she described as “the designer’s little secret”. She was referring to istockphoto.com as a preferred source of reasonably priced images for commercial and other use. That was many years ago now. Since that time istockphoto has become a part of Getty Images (and is now known as iStock) and we’ve seen a proliferation of competing stock imagery sites such as shutterstock.com, graphicriver.net, mychillybin.co.nz, dollarphotoclub.com, dreamstime.com, bigstockphoto.com and fotolia.com among many others.

Stock images are everywhere these days, including on the pages of WordPress-driven websites the world over. I’ve used them, for both myself and clients, and I’ve reviewed the terms of use of multiple stock imagery sites that clients have been thinking of using, with a view to alerting them to risks of which they may need to be aware.

Now here’s the thing: not all stock imagery websites are made equal. I’m not talking about the range, quality or cost of their images, but of the terms of use that govern them. Many WordPress designers and site owners probably don’t read the terms of use in much detail and, to be fair, in some cases that’s hardly surprising as the terms of use can be turgid to say the least. But I suggest it can be important, particularly if you’re acting for commercial clients, to be mindful of a range of issues that can lurk within the terms of use of stock imagery sites.

So what are these issues? I set out below a broad range of them, by reference to the terms of use of a handful of the stock imagery sites mentioned above. Now, I’ve just referred to the “terms of use” of stock imagery sites, as if there were one set of terms for each. Note that that’s often not the case. Stock imagery sites often require your agreement to more than one set of terms. You may need to be careful that you’ve read all of them that apply to you.

When I refer to the “licensor”, I’m usually talking about the stock imagery service. When I refer to the “licensee”, I’m talking about the person or organisation that is purchasing a license from the stock imagery service to use the selected images in his, her, its or a client’s end site, product or service. IP is a common acronym for intellectual property (such as copyright) and IPR is a common acronym for intellectual property rights.

Images used at licensee’s risk

I have seen some stock imagery terms of use that provide little if any protection to licensees’ use of images in circumstances where, for whatever reason, the stock imagery service or its providers don’t have the right to make the images available for re-use. For example, the Membership Agreement of one service makes it clear that the service “does not warrant that the photographs available from the Site do not infringe the copyright or any rights of a third party”. This, in conjunction with the absence of an intellectual property rights indemnity in favour of the licensee and the exclusions of liability, means that a licensee would, essentially, be using the images from this service at its own risk. This may not prevent the use of images from the service, particularly when the Photographers’ Supply Agreement (for that particular service) that is binding on image providers requires them to warrant that they own all proprietary rights, including copyright, in and to the content they submit. In most instances, the magnitude of the risk is probably low. However, the absence of protection is a risk some users may wish to bear in mind.

In contrast to the position in these particular terms, in other terms of use the stock imagery service goes the extra mile of providing an intellectual property rights  (IPR) warranty to its users and some cases even provides a limited indemnity to cover at least some of the loss those users may suffer if they face a breach of copyright claim in relation to their use of the images. For example, iStock provides an IP and privacy warranty in favour of licensees (except in relation to “Editorial Use Only” content). The warranty states, among other things, that a licensee’s use of the licensed content will not infringe third party intellectual property or privacy rights and that all necessary model and/or property releases for use of the content have been obtained. There is also an indemnity in favour of licensees for loss arising from lawsuits, claims or proceedings alleging that a licensee’s use of content is in breach, in essence, of third party intellectual property or privacy rights, subject to an exclusion of liability for indirect loss and a maximum iStockphoto liability of US$10,000 per piece of content.

If the quality and pricing of the images across these two services (for example) were the same, I know which one I’d prefer.

Single user restrictions

Some stock imagery services’ terms of use limit usage of licensed content to “one user in the member’s organisation” (the member in this context being the licensee / user) or state that the user can only “install and use the licensed images on one computer or other electronic device at a time”. These sorts of terms may state that if a member requires content to be used by more than one person, “the Member must download the Content from the Site for each such use or obtain an Enhanced Licence for a multi-seat licence for the Content”. In some corporate contexts, users may wish to consider whether they can get by with this kind of restriction of whether an enhanced licence is required.

“Editorial Use Only” content

I have seen a number of stock imagery provider terms which state that content that is marked “Editorial Use Only” cannot be used in certain ways. Sometimes “Editorial Use” may restrict use in certain types of websites. This may make it important to consider whether, if you’re using an “Editorial Use Only” image, you’re permitted to use it in the way you wish.

Web use limited to 72dpi

I have seen at least one set of terms of use which state that, when used on web pages, licensed images cannot be used at a resolution that is greater than 72dpi. Historically this is unlikely to have posed a problem, given that until fairly recently 72dpi has been a standard web image resolution. These days, however, 72dpi may be insufficient if you or your client need(s) to cater for the “high DPI” and retina devices now on the market (such as Apple’s retina devices). Some stock imagery services’ terms of use may be behind the times on this issue.

Care in use of images featuring models or other persons

Sometimes you’ll find terms of service which state that images that feature a model or person cannot be used “in a manner that would lead a reasonable person to think that such person uses or personally endorses any business, product, service, cause, association or other endeavour; or that depicts such person in a potentially sensitive subject matter, including, but not limited to mental and physical health issues, social issues, sexual or implied sexual activity or preferences, substance abuse, crime, physical or mental abuse or ailments, or any other subject matter that would be reasonably likely to be offensive or unflattering to any person reflected in the Content”. If you’re using these sorts of images from a stock imagery provider whose terms of use contain such provisions, you may need to pause to reflect on whether your use of the images is okay.

Sometimes terms may state, for example, that if any content featuring a model or property is used in connection with a subject that would be unflattering or unduly controversial to a reasonable person, one “must accompany each such use with a statement adjacent to the Content that indicates that: (i) the Content is being used for illustrative purposes only; and (ii) any person depicted in the Content, if any, is a model, unless the Content itself clearly and undisputedly reflects the model or person in such potentially sensitive subject matter in which case the Content may be used or displayed in a manner that portrays the model or person in the same context and to the same degree depicted in the Content itself”. If this were relevant to your use of a given stock image, compliance may have design or presentation implications. Where that’s the case, you may wish to look elsewhere for your image.

Guarantees and indemnities in favour of the stock imagery provider

It’s fairly common for stock imagery terms of use to contain guarantees and/or indemnities from the licensees/user in favour of the stock imagery services. Under some such provisions the licensee/user agrees to indemnify, defend and hold the service provider and its directors, officers etc harmless from and against claims and losses incurred by the service provider and others in connection with any breach by the licensee of the Membership Agreement.

In commercial terms these sorts of provisions seem fair enough. In essence they are saying that if you do something in breach of the terms to which you agree that causes the stock imagery provider loss, you have to cover that loss. You’re accepting the risk of not complying with the terms. However, in some countries certain clients – most notably governments – may not be permitted to grant guarantees or indemnities, either in certain circumstances or at least not before following a certain process. These sorts of clients, and those working for them, may need to be mindful of guarantees and indemnities in the stock imagery providers’ terms of use.

Conclusion

Stock imagery sites can be mighty useful but, if you use them, you might want to check that your intended use complies with their terms of use. Are the stock imagery sites going to go after you if you breach their terms? Can they effectively police the use of their images? Whilst the answers to these questions might be ‘unlikely’ and ‘possibly not’, some people might like to be safer than sorry.

(Featured image: ra2studio / Bigstock.com)

Using Creative Commons licensed images on your site with confidence

Published by Richard Best
Hi everyone. This is a slightly edited re-posting of a guest post I wrote for BobWP. I’m re-posting it here, with Bob’s blessing, simply because I like to keep all my content in one place.

Introduction

As many readers will know, when sourcing images for your blog or website, you can’t just do a Google images search, find an image you like, copy it and insert it in your post editor. Well, you can, physically, but legally this is a recipe for copyright infringement.

If you don’t have your own images, two common alternatives are to:

  • purchase a licence to images from the likes of iStock, Shutterstock and Bigstock; or
  • find and use images that have been either licensed under a Creative Commons licence or released into the public domain under CC0 (pronounced CC zero).

In this post, I’m going to focus on the latter: Creative Commons. Whilst some people are familiar with Creative Commons licensing, many people are not, particularly if they’ve had no need to use Creative Commons-licensed material in the past or to release material under a Creative Commons licence. For this reason, I’m going to:

  • introduce Creative Commons and its licences; and
  • explain how to comply with the attribution requirements that are common to all of the Creative Commons licences (but not CC0).

I’ll also explain what CC0 is all about and how it differs from the Creative Commons licences.

Creative Commons and its licences

For those not familiar with Creative Commons, here’s a short intro: Creative Commons is a non-profit organisation founded in the United States in 2001 by proponents of reduced legal restrictions on the sharing and use of copyright works. Headquartered in California, it also has affiliate organisations around the world. It aims to establish a middle way between full copyright control and the uncontrolled uses of intellectual property. To do so, it provides a range of copyright licences, freely available to the public, which allow those creating intellectual property to mark their work with the freedoms they want it to carry. As Creative Commons puts it on its website:

“Our tools give everyone … a simple, standardized way to keep their copyright while allowing certain uses of their work — a “some rights reserved” approach to copyright — which makes their creative, educational, and scientific content instantly more compatible with the full potential of the internet. The combination of our tools and our users is a vast and growing digital commons, a pool of content that can be copied, distributed, edited, remixed, and built upon, all within the boundaries of copyright law.”

There are six Creative Commons licences. The licences all confer a set of baseline rights on licensees (e.g., as to copying, use and distribution) and a set of baseline obligations and restrictions (e.g., licensees cannot sublicense the licensed work and they must not falsely attribute the work to someone else). All of the licences also contain one or more “licence elements”. There are four Creative Commons licence elements: Attribution, NonCommercial, NoDerivatives and ShareAlike. The Attribution element is common to all of the licences. The other three elements are used in different combinations across five out of the six licences. Here’s a handy video produced by the New Zealand Creative Commons affiliate (Creative Commons Aotearoa New Zealand) that explains the licences in more detail:

Complying with attribution requirements

As noted above, and as you’ll have heard in the video, the Attribution element (or requirement) is common to all of the licences.

Each of the Creative Commons licences comes in the form of both a “human readable summary” and the full legal terms. It is the full legal terms that are binding. The human readable summary for the Creative Commons Attribution 4.0 International licence describes the attribution requirement as follows:

“Attribution — You must give appropriate credit, provide a link to the license, and indicate if changes were made. You may do so in any reasonable manner, but not in any way that suggests the licensor endorses you or your use.”

The legal text that the human summary is summarising, in the Creative Commons Attribution 4.0 International licence, is as follows:

“Section 3 – License Conditions.

Your exercise of the Licensed Rights is expressly made subject to the following conditions.

a. Attribution.

1. If You Share the Licensed Material (including in modified form), You must:

A. retain the following if it is supplied by the Licensor with the Licensed Material:

i. identification of the creator(s) of the Licensed Material and any others designated to receive attribution, in any reasonable manner requested by the Licensor (including by pseudonym if designated);
ii. a copyright notice;
iii. a notice that refers to this Public License;
iv. a notice that refers to the disclaimer of warranties;
v. a URI or hyperlink to the Licensed Material to the extent reasonably practicable;

B. indicate if You modified the Licensed Material and retain an indication of any previous modifications; and

C. indicate the Licensed Material is licensed under this Public License, and include the text of, or the URI or hyperlink to, this Public License.

2. You may satisfy the conditions in Section 3(a)(1) in any reasonable manner based on the medium, means, and context in which You Share the Licensed Material. For example, it may be reasonable to satisfy the conditions by providing a URI or hyperlink to a resource that includes the required information.

3. If requested by the Licensor, You must remove any of the information required by Section 3(a)(1)(A) to the extent reasonably practicable.”

This might make you think attribution is complicated but, in reality, it’s really quite simple because most people who license photos under Creative Commons licences do not specify any particular form of attribution or any particular notices. Where that is the case, and where you’re simply copying and not adapting the photo, this kind of attribution will suffice (this one is an example of the statements I’ve used on WP and Legal Stuff for Creative Commons licensed images):

Thanks to Tom Marcello for his image of Dexter Gordon and Benny Bailey from 1977, licensed under a Creative Commons Attribution-ShareAlike 2.0 Generic licence.

Note that I’ve provided links to both the source of the image on Flickr and to the URL for the Creative Commons licence. You don’t have to say “Thanks to [name of author/photographer]”. I just do that sometimes because I want to express my gratitude. You can drop the gratitude if you like and say something like this:

Image of Dexter Gordon and Benny Bailey from 1977, by Tom Marcello, licensed under a Creative Commons Attribution-ShareAlike 2.0 Generic licence.

You might be wondering why the attribution statement above refers to what is now an old version of a Creative Commons licence (the Creative Commons Attribution-ShareAlike 2.0 Generic licence). The reason for this is that this is the licence version that Flickr has used and made available to its users (that is, users who want to apply a Creative Commons licence to their photos) for many years.

If an image were licensed under the newer Creative Commons 4.0 International licences, the attribution statement would be along these lines (in this example I’m using the Creative Commons Attribution 4.0 International license):

Image of Tom and Jerry, by Fred Flinstone, licensed under a Creative Commons Attribution 4.0 International license.

Sticking with the 4.0 International licences for now, you’ll have seen above that the Creative Commons Attribution 4.0 International licence states that you must “indicate if You modified the Licensed Material and retain an indication of any previous modifications”. A similar requirement (albeit not identical) exists in earlier versions of the licences. This means that if you do modify a photo that is licensed under a Creative Commons licence that allows modification (i.e., all variants of the licences except the NoDerivative forms), you need to indicate that you modified it. I’ve modified a Creative Commons licensed image for the featured image in this post (this particular image was licensed under a Japanese Creative Commons Attribution licence). At the bottom of this post, I’ve attributed the image as follows:

Featured image: PAOF by shichigoro, licensed under a Creative Commons Attribution 2.1 Japan licence. I have adapted the image by removing “global summit 2011” from beneath the “creative commons” header.

Does using a Creative Commons licensed image mean I’m bullet-proof from a copyright infringement claim?

The answer to this question is no because usually you’ll have no way of knowing whether the person who applied the licence to the image was the owner of the copyright in the image or was authorised by the true owner to release it under the selected Creative Commons licence. That said, in all the time I’ve been using Creative Commons licensed images, I’ve not had a single problem. This, I suspect, is also likely to be the case for the vast majority of people across the planet who use Creative Commons licensed images.

If someone were to complain that his or her image had been taken by another person and Creative Commons licensed without permission, the simplest solution would be to take the image off your site and replace it with a different image. Theoretically the true owner could pursue you for copyright infringement but, in the vast, vast majority of cases, that is highly unlikely.

Personally, I have no qualms at all about using Creative Commons licensed images, despite the theoretical risk I’ve just discussed. The only reservation I have relates to using Creative Commons licensed images of identifiable people. I’ll discuss that point below.

CC0

CC0

CC0 is not primarily a licence. It’s a tool that seeks to enable an owner of copyright in a work to waive the copyright in that work, thereby freeing it of copyright-related restrictions on re-use and releasing it into the public domain (at least from a copyright perspective). It also states that, if or to the extent that the waiver is legally ineffective in a given country, an extremely broad and obligation-free licence is granted instead; this is generally known as the ‘licence-fallback’. So the tool, in essence, is a waiver + licence fallback.

There is no attribution requirement for an image that is released under CC0, even if the waiver is ineffective and the licence fallback kicks in. You can, therefore, use a CC0’d image without having to make any attribution back to the owner/author/photographer.

The best source of high quality CC0’d images on the web (in my view anway) is Unsplash. Here’s an example:

Typewriter-taken-apart

Model releases

A potentially broad range of rights

You might think that a photographer who owns the copyright in an image (which they often will do under their contracts with customers) could do whatever he or she likes with it, that he or she could (for example) license it under any Creative Commons licence or release it under CC0. In many cases that will be true but the position needs to be qualified where an identifiable person appears in the photo, particularly if that person commissioned the photo or the photo is somehow private in nature. This is because, in such circumstances, the totality of rights involved may be greater than just copyright.

Depending on the circumstances and the country’s laws that apply, the person in the photo may have privacy rights, the right to be shown in the photo in a particular manner, contractual rights in his or contract with the photographer (if there is one), character merchandising rights, publicity rights and/or other rights to control one’s own image or personality (this last one being more common in civil law jurisdictions).

For example, photos taken in a person’s home or on some other private property may be private in nature and, in some countries, even photos taken of a person in a public place have the potential to be private in nature if, for example, the photos were obviously private or their publication could be offensive in some other way. And particular care needs to be taken with photographs of children (on this point see the United Kingdom Court of Appeal’s decision in a case involving the taking of JK Rowling’s child when the family was out for a walk in the street: Murray v Big Pictures (UK) Ltd [2008] EWCA Civ 446). It is important to emphasise too that the relevant rights and the circumstances in which consent is required differ from jurisdiction to jurisdiction.

The kinds of rights referred to above will, when they exist, often limit the circumstances in which a photo of a person can be used, even where in a given country the photographer is the copyright owner.

Model releases

This is the main reason for so-called “model releases”, or “image releases” as they are also known. They serve two main purposes: obtaining the relevant permissions from the subject of the photo and protecting the photographer (and potentially other users depending on the breadth of the release) from liability in relation to any use that falls within the scope of the release. In essence, a model release allows certain specified uses and releases the authorised person(s) from liability in relation to those uses. You can find some examples of model releases here and here.

If you’re not sure whether a Creative Commons licensed or CC0’d photo of an identifiable person has been the subject of an appropriately wide model/image release, you may want to be careful about using the image on your site. Either that or, if the person in the photo were to complain, take the photo down immediately.

Questions

If you have any questions on this post, please feel free to ask them in the comments below. I’ll do my best to answer. Have a great day!

(Featured image: PAOF by shichigoro, licensed under a Creative Commons Attribution 2.1 Japan licence. I have adapted the image by removing “global summit 2011” from beneath the “creative commons” header.)

When changing your terms of use, do you respect your customers?

Published by Richard Best

Recently I received an email from a WordPress-related business telling me its terms of use had been updated. The email didn’t specify what had changed so, for some strange reason (a lawyer’s idle curiosity perhaps), I clicked through to see the latest terms, half hoping to see a change log or a blog post summarising what had changed. Did I find any such thing? No. The terms themselves only had a “Last modified on X date” entry. No change log. No explanatory blog post. And the site contained no archive of previous versions that would enable me to do an automated comparison, assuming I’d be motivated enough to do that. (I suppose one could try the Wayback Machine but a paying customer shouldn’t need to resort to that.)

These terms were over 4,500 words long. I’m not sure how any user is supposed to understand what has changed in these circumstances. In many if not most countries, users will bound by the changes, thanks to what’s called a unilateral variation clause (a clause that allows one contracting party to amend a contract’s terms without the consent of the other party) together with a fairly standard “you’re responsible for reviewing the terms on a regular basis” statement, but the point I’m driving at here is not a legal one. It’s a ‘respect your customers’ one.

Imagine a commercial plugin developer who releases an update to a commercial plugin and says, simply, “we’ve updated the plugin folks”, without any reference to the reason for the update or to what has changed. Just as that’d be poor form, so too is it poor form (in my view anyway) to change your terms of use without any summary of the changes in a notifying email, a change log underneath or linked to from the bottom of the terms, or a blog post.

A statement in any of these places doesn’t need to specify the changes word by word with military precision, but it is helpful to summarise the changes for the (perhaps small) subset of customers who might actually care about what could be a change to their contractual rights or obligations.

I mention this not because I was particularly irked by not being able to identify the changes on this particular occasion (the business in question is superb and I trust it) but because usability / customer experience considerations shouldn’t stop at the point at which a lawyer cobbles together some terms of use for your business or makes some changes to the terms when requested. To the contrary, if I’m a paying customer and my rights or obligations are being changed unilaterally, it is entirely reasonable to expect to be told – even if only in summary form – what is changing.

Now, I know that many sites don’t do this and that many customers wouldn’t care but, in a competitive market, why risk losing those customers who might care about such things to a competitor?

(Featured image: Sergey Nivens / Bigstock.com)

Click to accept processes: a closer look at Gravity Perks

Published by Richard Best
If you’re wondering about the “special offer”, scream down to the bottom of the post.

Context

As you might have gathered from some of my earlier posts, I’m a big fan of Gravity Forms, a fantastic plugin that just gets better and better with the passage of time.

I’ve used Gravity Forms in the past to create ‘click to accept’ mechanisms but, at least as I’ve deployed them, they required inclusion of a link to terms of use which would then open up in a new window or tab (for anyone who bothered to read them). With this approach the terms themselves weren’t visible on the same page as the click to accept box. Legally this wasn’t a problem but perhaps it wasn’t the most user-friendly approach.

In Legal checks when building a content-driven WordPress website I mentioned that you could go one step further by purchasing and installing the Gravity Perks plugin which includes a GP Terms of Service Perk. I noticed that this add-on for Gravity Forms helpfully adds a Terms of Service field to the available Advanced Fields and can produce something like this:

GP Terms of Service Perk
At that point I hadn’t played around with Gravity Perks myself. Now that I have, I thought it might be useful to focus a bit more on this GP Terms of Service Perk as I think it’s the easiest and best plugin-based WordPress solution for displaying terms to users prior to their acceptance. Not only that, but its developer David Smith has just bundled up some additional features to extend its usefulness.

In this post I’m going to explain how the Terms of Service field works and what you can do with the additional features.

How it works

Ember 17

The new terms of service field

As noted above, when you upload and activate Gravity Perks and the Terms of Service Perk, a new “Terms of Service” field appears in the Advanced Fields options.

Adding a Terms of Service field to a form is simple. As you can see from the images below, for most use cases you simply:

  • give the field a label (like “You need to agree to my terms of use to proceed” or something like that);
  • give the field a description if you want one (often this won’t be necessary);
  • paste your terms in “The Terms” box;
  • add your terms in the box called “The Terms” (you can add HTML styling here too if you wish; this is one of the features David bundled into the add-on recently);
  • decide whether you want users to have to scroll to the bottom of the terms before being to able proceed;
  • label your ‘click to accept’ box;
  • click the “Required” rule to make acceptance a condition of proceeding; and
  • decide, within in the ‘Appearance’ tab, how large you’d like the terms field to be (I suggest ‘large’ will usually be preferable).
Terms of Service field - General tab

Terms of Service field – General tab

Terms of Service field - Appearance tab

Terms of Service field – Appearance tab

Terms of Service field - Advanced tab

Terms of Service field – Advanced tab

Then you simply add the form to the page or post in which you’d like it to appear (in the usual way through the page/post editor). And this is what you get:

[I’ve disabled the form due to some bots pounding it]

Additional features

The developer has recently added two additional features to extend the power of the Terms of Service field.

Include terms in notification emails

It is now possible to include the terms of use (to which a person agrees) in a merge tag that you specify to be included in an email notification to the user. This is done by using an “include_terms” merge tag option within either the {all_fields} merge tag or your terms of service merge tag.

To include the terms within the {all_fields} merge tag, you enter this in your notification message area:

{all_fields:include_terms}

To include the terms within the merge tag for your terms of service field, you enter this kind of text in your notification message area:

{Terms of Service:6:include_terms}

Note that the wording of the “Terms of Service:6” part in the example above depends on the label you’ve given to your field and its field ID. You can select and add your field’s merge tag in the notification message area by clicking the small drop down menu button to the right of the message area. You then add the “:include_terms” text within the parentheses. This is how my notification is set up for the live example below:

TOS-Perk-Notification-Set-Up

This new feature is super helpful. Now you can include your terms of use in a notification email that is sent to a user once they submit the form (if you’ve set up the form to collect the user’s email address and to send a notification to the user after submission of the form). To see what I mean, fill out and submit the form below:

[I’ve disabled the form due to some bots pounding it]

This feature should be particularly helpful for WordPress users/developers in European member states who are building online solutions for the sale of goods or services to consumers, given the requirements of the Consumer Rights Directive (which member states needed to implement in their local laws by mid 2014). If we look, for example, at the United Kingdom’s implementation of the Directive, regulation 16(1) and (2) of its Consumer Contracts (Information, Cancellation and Additional Charges) Regulations 2013 state:

“16.—(1) In the case of a distance contract the trader must give the consumer confirmation of the contract on a durable medium.

(2) The confirmation must include all the information referred to in Schedule 2 unless the trader has already provided that information to the consumer on a durable medium prior to the conclusion of the distance contract.”

Schedule 2 includes a range of information, a good deal of which would be included in one’s terms of use. Significantly, the statutory definition of “durable medium” includes email, meaning you can use this Gravity Perk and its notification feature for this purpose. Awesome.

Enable shortcodes in terms content

It is also now possible to include shortcodes in the terms content that you add to the Terms of Service field. The advantage of this is that you can use a shortcodes plugin to create a single set of terms stored in a central location and then use the shortcode for the terms content within the Terms of Service field for every different form across your site for which you need a user to agree to your terms.

Recommended

I would recommend Gravity Perks and the GP Terms of Service Perk for any WordPress user that needs a ‘click to accept’ process for terms of use (or similar terms) and wants to present them in a user friendly way. The ability to have the terms sent to the customer upon submission of the form is an excellent value add.

WP and Legal Stuff readers can get a discount on the price of Gravity Perks

SpecialofferBut wait, there’s more! David Smith, the developer of Gravity Perks, has agreed to give readers of WP and Legal Stuff a 20% discount on the standard price of Gravity Perks. To take advantage of this offer (which is valid until 11 July 2015), enter WPANDLEGALSTUFF20 at checkout (in the optional discount field). You can buy Gravity Perks right here.

(There’s no affiliate linking or anything like that here. David is just being a decent guy. Thanks David.)

(Featured image: Rastan/Bigstock.com)

 

Quarterly round-up: Legal info, tips and templates for WordPressers

Published by Richard Best

WP and Legal Stuff has been live for three months. For this reason I thought I’d have a crack at writing a “quarterly round-up”, for people new to the blog, that provides an overview of all posts to date. I pondered whether to post the round-up here or somewhere else. I’ve never posted to Medium before so I thought I’d post it there. (Having done so, I have to say (dare I say?), that Medium has a pretty gorgeous posting interface. Anyway, I digress… .) Here’s a link to the post:

WP and Legal Stuff: Legal info, tips, tricks and templates for WordPressers

(Featured image courtesy of William Iven who released it on Unsplash.com under CC0. Thanks William!)

Template terms and policies for WordPress multisite businesses

Published by Richard Best

Introduction

As many if not most readers will know, with WordPress’ multisite feature, you can set up your own network of sites, whether for yourself, friends, clients or customers. The WordPress Codex puts it in these terms:

“As of WordPress 3.0, you have the ability to create a network of sites by using the multisite feature. …

A multisite network can be very similar to your own personal version of WordPress.com. End users of your network can create their own sites on demand, just like end users of WordPress.com can create blogs on demand. If you do not have any need to allow end users to create their own sites on demand, you can create a multisite network in which only you, the administrator, can add new sites.

A multisite network is a collection of sites that all share the same WordPress installation. They can also share plugins and themes. The individual sites in the network are virtual sites in the sense that they do not have their own directories on your server, although they do have separate directories for media uploads within the shared installation, and they do have separate tables in the database.”

There are many articles that provide more detailed descriptions of what multisite offers, how to set it up and that sort of thing. I’m not going to cover that detail here but, if you’d like to know more, take a look at:

The purpose of this post is to reflect on the various contractual terms and policies you may require if you’re setting up your own network of sites and to provide access to starter templates and policies that people can use when setting up their own networks.

Laying things out

Thanks to Jeff Sheldon for the image, released under CC0 on Unsplash.com

Thanks to Jeff Sheldon for the image, released under CC0 on Unsplash.com

The kind of situation I’m looking at here is where you wish to:

  • set up a network of sites (it doesn’t have to be with multisite but that’s what I had mind);
  • sell site creation and hosting services on your platform;
  • have the flexibility of different pricing plans / subscriptions; and
  • obtain consent from your customers in relation to promotional activity and the use of affiliate links.

In this kind of situation there is a need for a range of legal terms and policy documents. Proceeding with a business like this without them would likely expose you or your business to unnecessary risk and, depending on the country from which you run your business, could result in your breaching a number of laws.

Issues to consider

Image by Sergey Nivens / Bigstock.com

Image by Sergey Nivens / Bigstock.com

These are the kinds of issues you’ll probably want to consider when setting up a business like this:

  • Business information: what legal obligations are there to specify the legal name, address and other particulars of your business and/or to specify that your business is in trade? Laws to this general effect (in whole or part) exist in many countries, including – for example – the United Kingdom, Germany and New Zealand. It is, in any event, good practice to include such information. I find it incredible to find so many online businesses that don’t identify what entity or people are behind them. To me this erodes the trust and confidence I might otherwise have in the site or service.
  • Registration: what obligations do you wish to cast on people who wish to become registered users? Examples include obligations in relation to the selection and safeguarding of their logon details and their provision to you of true and accurate information.
  • Consumer rights: are there specific rights that consumers enjoy under the laws in your country that you’ll need to reflect in your terms of use? In some countries this is particularly important as standard terms that apply to commercial enterprises may not be appropriate for everyday, non-commercial consumers. For example, in European member states, a Consumer Rights Directive (which member states needed to implement in their local laws by mid 2014) created significant rights that need to be reflected in the terms of online businesses operating from these countries. In the United Kingdom, for instance, these particular rights and the obligations on service providers are set out in the Consumer Contracts (Information, Cancellation and Additional Charges) Regulations 2013. They require consumers of online purchases to be given a 14 day cancellation period (during which they can cancel their agreement for any reason) and a right, in certain situations, to be given a refund when they cancel within that period. For UK operators these Regulations (among other things) are essential reading. There will (or should be) similar laws in other European member states. They are relevant to both the content of online terms and certain design decisions you make when building your platform.
  • Customer content: you will need to be careful about what kinds of content your customers may add to their sites, the content-related obligations they owe to you as the service provider (e.g., as to not breaching third party rights or breaching any laws), the rights you have to take content down and the licensing rights you’ll receive in relation to that content.
  • Your intellectual property: you’ll want to protect the intellectual property rights you have in the platform, e.g., in trademarks, design elements, copyright textual content and so forth.
  • Fees and account upgrades and downgrades: you’ll want to be clear about how you charge fees, the ability for customers to change plans (if you have different plans), the existence or non-existence of refunds when they downgrade their plan or cancel their accounts before the end of a paid up period, and your rights if a customer doesn’t pay.
  • Indemnity protection: you’ll probably want to ensure that you have a strong remedy against customers who cause you loss as a result of their breaching your terms or allowing third parties to post content on their sites.
  • Termination: you’ll want to deal with the rights that both parties have to terminate accounts.
  • Privacy: in all likelihood you’ll be collecting and using customers’ personal information. If so, it is desirable to include a clause stating that customers agree to the terms of your privacy policy. You’ll also need to draft a separate privacy policy that explains, among other things, what personal information you collect, how you’ll handle it, the purposes for which you’ll use it and to whom you may disclose it.
  • Disclaimer and exclusion of warranties: I suggest you’ll want to exclude your liability to the maximum extent permitted by law and to include a disclaimer of warranties where it’s possible to do so.
  • Promotion and affiliate links: if you want to be able include a footer link in your customers’ sites back to your main site, display advertisements on your clients’ sites unless they purchase a paid plan, or include affiliate links in their sites, these matters should be covered off in your terms.
  • Enquiries or complaints: it may also be desirable to include a term telling customers who they can contact if they have enquiries or complaints.
  • Miscellaneous clauses: in your terms of use you’ll also probably want to address some other miscellaneous topics, commonly found in general contractual terms, to further protect your position and to prescribe the law that governs the terms and the place in which disputes will be heard.
  • Cookies policy: if you’re operating from a country, such as a European member state, that requires website owners to provide clear and comprehensive information about any cookies they are using and obtain consent to store a cookie on a user or subscriber’s device, you’ll probably want / need a separate cookies policy.
  • Affiliate linking policy: if you’re using affiliate links, either in your own main site or within your customers’ sites, I suggest it would be desirable to have a separate affiliate linking policy so as to be transparent with your customers and users about your affiliate linking and to avoid any allegation that you’re misleading people by not being upfront about such linking.

Sample templates

Multisite640

I mentioned above that this post provides access to starter templates and policies that people can use when setting up their own multisite (or similar) networks. There are four starter templates and policies:

  • Multisite Terms of Use;
  • Multisite Privacy Policy;
  • Multisite Affiliate Linking Policy; and
  • Cookies Policy.

Readers of this blog wishing to launch a WordPress multisite (or similar) network should feel free to use them as starting points for their WordPress multisite networks if they wish. (I’m not licensing anyone to use them for other purposes so please don’t republish the templates, try to sell them or anything like that.)

Note that all the documents have been drafted for the owner/operator of a multisite (or multisite-like) platform. They are intended for inclusion on the primary site through which the owner/operator sells website creation and hosting. An obvious analogy is Automattic’s starter pages on WordPress.com. They are not intended for the separate sites of customers who build their sites on the multisite platform. The extent to which those customers may need terms and policies on their own sites will depend on what they do with their sites. (That’s a separate question which I don’t address here.)

I should emphasise that these templates should only be taken as a starting point. You may wish to consult a lawyer qualified in your jurisdiction on the possible application of specific laws and in the light of your own circumstances. My usual disclaimer applies.

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(Featured image: Bloomua / Bigstock.com)

Protecting WordPress consultancies with terms of business

Published by Richard Best

Let’s take a look at WordPress consultancies

As readers will know, the WordPress marketplace comprises a wide range of business types, including:

  • development and design agencies;
  • theme and plugin shops;
  • website generation platforms;
  • app platforms; and
  • consultancy businesses.

For this post I want to focus on the last of these: WordPress consultancy businesses. These are the sorts of businesses that provide the likes of:

  • commercial advice and coaching in relation to WordPress-related businesses (think Chris Lema);
  • advice and training materials on how to “become an exceptional WordPress consultant” (WP Elevation) or on how to “kickstart your WordPress business” (Matt Report Pro); and
  • WordPress workshop and on-site training services (like BobWP).

These kinds of businesses do not necessarily provide any development or design services (they may do as separate services but that’s not my focus here). Rather, their services are more commercial, strategic or educational in nature.

If you own or work for such a WordPress consultancy, you may have asked yourself about the kind of contractual terms you should be putting in place with your clients to both set expectations and protect your interests. If you haven’t asked this question and are providing consultancy services without any written contract or terms of business, you may be creating undue risk for your business.

This post explains the kinds of issues that WordPress consultancies may wish to consider and provides access to a template letter of engagement and template terms of business for WordPress consultants who either don’t have any or don’t like the ones they’re currently using. The templates are designed for consultancies as I’ve described them above. They are not intended to be used for development and design jobs. I would suggest an alternative contractual form for those sorts of jobs as they involve additional issues.

(I should note, like I often do, that I’m not providing legal or commercial advice to any particular person here. My usual disclaimer applies, to both the content of this post and the templates to which it provides access.)

Issues to bear in mind

Method of contracting

You may wish to consider how you’d like to put a contract in place with your clients. There are various ways of doing so. For example:

  • you could endeavour to have both yourself and your client sign a standard contract (online or offline), with the description of in-scope services, fees etc being set out in a schedule to the contract; or
  • you could create an engagement letter that sets out the in-scope services, fees etc which, together with a set standard terms which are either attached or which can be found at a designated URL on your site, will form the agreement between you and your client.

These are simply different structural means of achieving the same result.

Scope

When agreeing to provide services to a client, it may be important to ensure there isn’t unanticipated scope creep, particularly where the work is being done for a fixed fee (as that would likely reduce your profitability). For this reason it can be important to clearly specify what is in scope and what is out of scope for a particular piece of work. In some cases this will be obvious but in other cases it might not be. Hence the need for care in the documentation you put in place at the outset.

Reliance on and use of deliverables

Depending on the nature of the services you’re providing, it may be important to state that your advice is being given to your client alone and that it cannot be given to or be relied upon by others or published without your prior consent. This wouldn’t be much of an issue when taking a workshop that explains how WordPress works but it could be if you’re providing strategic, commercial advice on, say, a WordPress app development idea or a novel WordPress-related business. In those sorts of cases you may want to ensure that the only liability you have is towards your client and that your advice, if commercially sensitive, doesn’t end up on the Internet.

Your responsibilities to your client

I wouldn’t advocate an agreement or terms of business that are so one-sided that they might turn potential clients away. Except in rare cases (e.g., where there’s only one ‘go to’ person), that may be counter-productive. At the same time, responsibilities and obligations can be drafted in a way that makes them less than absolute. A common example concerns delivery by reference to project time frames. You may wish to say you’ll use your reasonable efforts to meet project time frames as opposed to being obliged – no matter what – to deliver on or before a certain date. The former kinds of clauses are fairly common in web development agreements that favour the developer and they can likewise be included in contracts or terms of business for WordPress consultancy services. Some clients may not accept them, but many will, particularly if you’re one of a handful of ‘go to’ people and, therefore, have negotiating leverage.

Client responsibilities

It can be important to make sure your clients provide you with the information or other resources you need to provide the services they require. It is common to make this a contractual requirement and to add that you won’t be responsible for delays caused by delays on their part.

Confidentiality

If you’re sharing any confidential information with your clients or they’re sharing confidential information with you, it can be important to include provisions that seek to protect that information and regulate its use.

Intellectual property

For many knowledge-based businesses, their intellectual capital is a key resource or asset. Given that a good deal of that intellectual capital is generated ‘on the job’, it can be important to determine who will own new intellectual property (you or the client) and what kind of licence will be granted to the party that doesn’t own it. Usually the key if not only form of new intellectual property will be copyright.

For many services provided by WordPress consultancy businesses, there is unlikely to be a need for the client to own new intellectual property in the deliverables. At the same time, some clients may insist that they own it or, depending on the country in which they live, they may seek to rely on statutory default positions as to copyright ownership. (By ‘statutory default positions’, I mean a position that the law prescribes where the parties have not made an agreement to the contrary.)

It is important to appreciate, however, that the statutory default positions on copyright ownership can differ across countries. They can also differ, under a single country’s laws, depending on the type of copyright work in question and whether a work has been commissioned or is a ‘work made for hire’.

The safest course is to ensure that questions of copyright ownership and licensing are clearly addressed in your governing contract or terms of business.

The linkage between the grant of a copyright licence or (when required) a transfer of copyright, and a client’s payment obligations, can also be important. You may want to ensure that a client won’t obtain ownership or irrevocable licence rights until such time as you’re paid in full for your work. This can be dealt with fairly easily in your contract or terms of business.

Attribution and promotion

If you allow your clients to publish deliverables under your contracts with them, you might want to make sure that you’re attributed as the author. Similarly, you may wish to ensure you’re able to publish the names and logos of your clients on your website as evidence of your clientele or social capital. Both of these things may be valuable to you. If they are, you’ll want to include relevant rights and obligations in your contract or terms of business.

Payment

Getting your payment terms right can be critical to your revenue. You’ll want to make sure that the basis on which you’ll paid, and the timing of payment, are clearly spelled out. If you want to be able to charge for expenses, that should be covered too.

Before I leave the topic of payment, I thought it might help to include a video of a presentation by Mike Monteiro from a San Francisco Creative Mornings session back in 2011, aptly titled “F*ck You. Pay Me.” I remember listening to a 5by5 podcast about it at the time and, perhaps because of its key message (aptly described in the title), it struck a healthy chord and has always stayed with me. Mike and his lawyer make some great points.


Disputes

Thinking about how to handle disputes at the beginning of a job is never particularly palatable but dealing with it in your contract or terms of business may be desirable, bearing in mind that disputes can and do arise. You may, for example, wish to require you and your client to meet in an attempt to resolve the dispute informally and/or to require an attempt at mediation before a party can rush off to court. You may also wish to ensure that disputes are kept confidential (and not aired for the world to see on Twitter or Facebook).

Liability

Limiting your liability for the likes of breach of contract or negligence is an important means of risk mitigation. I suggest you’ll want to cap the level of your financial liability and to exclude liability for certain types of loss. You’ll also probably want to disclaim certain kinds of warranties where it’s possible to do so.

Depending on the law that applies to your contract, it may also be important to remember that, in some countries or states, disclaimers of warranties or exclusions of liability need to be “conspicuous”. For example, in the United States, section 2-316(2) of the Uniform Commercial Code states that a disclaimer of the implied warranty of merchantability must be “conspicuous”. Some lawyers seek to comply with such requirements by putting certain clauses in ALL CAPS. To my eye, whilst that might make a clause look different, it makes it less readable. In this modern day and age, there are better ways of making a clause conspicuous. I like the way Kenneth Adams puts it (Adams is a leading US authority on contract drafting):

“Most drafters use all capitals to emphasize an entire provision, but that guarantees that it will be a chore to read… . And text in all capitals might not even be conspicuous — as the court in American General Finance, Inc., 285 F.3d at 886, noted, ‘Lawyers who think their caps lock keys are instant ‘make conspicuous’ buttons are deluded.’ So unless a statute requires it…, don’t use all capitals to emphasize a provision” (K A Adams A Manual of Style for Contract Drafting, 2nd ed, 2008, para 15.37).

(Adams goes on to discuss preferable means of making a clause conspicuous, such as the use of bold italics or placing a border around a provision.)

Termination

If a contract with your client is going pear-shaped (for example, your client might be making extreme and unreasonable demands of you or it might not be giving you the information you need or it may not be paying you on time), you might want to make sure you can exit. At the same time, you’ll also want to be sure you’re entitled to payment for the work you’ve done up to the time of termination.

Governing law and jurisdiction

If you’re contracting with a client who lives in a different state or country, you may wish to make sure that the contract is governed by the law of your state or country (rather than the client’s) and that your client submits to the jurisdiction of the courts in your state or country.

Template letter of engagement and terms of business

I mentioned above that this post provides access to a template letter of engagement and template terms of business for WordPress consultancies. If you would like a copy of these templates, please enter your name and email address below. The doors to the templates will then open.

To get the template letter of engagement and terms of business, enter your name and email address. You'll be signed up to my mailing list but you can unsubscribe at any time. I hope you find the templates useful.

Voila! You now have access to the templates.

I have tried to design the templates to be user-friendly and succinct. In essence, you:

  • complete the matters that need to be completed in the template letter of engagement;
  • remove all square brackets and drafting instructions from the template letter of engagement;
  • fill in the two highlighted matters in the template Terms of business that are specific to you (the full legal name of your business and the currency of your fees); and
  • replace the illustrative “ConsultPress” logos in both documents with your own logo or branding.

That’s it. You will, of course, want to check that you’re comfortable with all the suggested terms (and if you want to be 100% certain they’re right for you and your circumstances, you may want to have a lawyer in your country review them).

I hope the templates are helpful to those who’d like to use them. If anyone has feedback they’d like to share (perhaps you’d like to see some additional clauses or options added to the templates), please let me know (in either the comments or through my contact form). Happy contracting.

(Featured image: Bloomua / Bigstock.com)