All posts filed under: Trademarks

The ACF>SCF ‘fork’ and legal risk

Published by Richard Best

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

“I’d rather see [an] attorney’s attention spent … on clarity and brevity”

Published by Richard Best

WordPress, Wix and the GPL The Wix controversy, if I can call it that, has stirred up quite a bit of emotion in the WordPress and wider tech and open source communities. I’ve given my thoughts on what I see as the main issues in my previous post “Some thoughts on the Wix mobile app story (updated)”. In reading a wide range of comments on the various news and blog articles on this story, it strikes me that many people don’t understand the GPL, either due to its complexity at the margins (and I assure you that, at the margins, it can bamboozle lawyers too) or, in some cases, because they haven’t read it. Then, in reading further through various comments, one comment on the WP Tavern story stood out to me. Lisa League wrote: “Spending time, money, and attention on court diverts it to attorneys instead of that valuable time money, and attention spent on software. … … this is where I’d rather see attorney’s attention spent – on clarity and brevity where possible in …

A Practical Guide to WordPress and the GPL – now available – 30% introductory discount

Published by Richard Best

Finally… I’m pleased to be able to say that A Practical Guide to WordPress and the GPL is now out in the wild. You can find it right here. Outline Here’s a quick outline of the chapters: 1. Introduction: conception, birth and forking 2. Understanding the GPL licensing of WordPress 3. Common GPL-related questions 4. WordPress themes, the GPL and the conundrum of derivative works 5. The GPL and assumptions of automatic inheritance 6. Theme reviews, CC0, model releases and GPL-compatibility 7. Selling ThemeForest themes outside of ThemeForest 8. Reselling commercial plugins 9. The GPL and trademarks 10. Theme and plugin shop terms of use versus GPL freedoms Packages Three different packages, or editions, are on offer: 1. The business package If you’re into the business of developing WordPress themes or plugins (or both), you might want this package. You’ll get: the ebook (PDF) of A Practical Guide to WordPress and the GPL; a professionally narrated audio book, enabling you to listen to the book when you’re on the go (narrated by Steve Chase); and …

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 …

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) …

WordPress-related business brands: protect and do no harm

Published by Richard Best

The significance of WordPress-related brands As I’ve noted in an earlier post, as WordPress has evolved and become more popular, more and more businesses have sprung up in what someone referred to the other day as “the WordPress marketplace”. In addition to Automattic, there are: theme shops: think Array, Elegant Themes, StudioPress, WooThemes, ThemeForest, Themezilla and (one of my minimalist favourites) Elmastudio, among countless others; plugin and app shops: think Rocketgenius’ Gravity Forms, Yoast’s WordPress SEO Premium, the impressive array of WPMU DEV plugins, iThemes’ BackupBuddy, Gravity Wiz, CodeCanyon, Conductor, Reactor by AppPresser, VelocityPage and Pippins Plugins (whose site, I’ve just noticed, has had a super redesign), again among many others; WordPress designers (too many to even start naming); WordPress coding shops: think WerkPress and Envato Studio; WordPress news sites: think WPTavern, again among others; WordPress business consultancy, support services and fora: think Chris Lema, Matt Report Pro, WP Elevation, Post Status Membership Club, WP Site Care and WP Curve; and WordPress security services (like Sucuri). All of these businesses have distinctive brands, the importance …

Trademark image

Using the WordPress trademarks for your business, product or service

Published by Richard Best

Introduction If you’re a budding WordPress developer, designer or entrepreneur, you may be whipping up a creative storm and readying it for release. It might be a theme shop, a Gravity Forms-quality plugin, a WordPress-tailored hosting environment, a WordPress support agency or an app-making platform. The product or service is nearing release and you’re amping to “get it out there”. You love WordPress and you want to sing its praises from the rooftops, including in some way in the naming, description or marketing of your product or service. What better way to access your target audience than by using “WordPress” and its associated marks left, right and centre. Right? Well, before you go using the WordPress name and logo in your naming and marketing, you might want to note that Automattic Inc and (more significantly now) the WordPress Foundation have a bunch of trademarks. Make sure you stay on the right side of the line of what’s permitted and what’s not. To help you understand all this, I’ll explain what a trademark is, Automattic’s and …