In the latest post from MM/Automattic, WPE & Trademarks, Matt says this:

“I’ve been writing and talking about WP Engine a lot in the last week, but I want to be crystal clear about the core issue at play.

In short, WP Engine is violating WordPress’ trademarks. Moreover, they have been doing so for years. We at Automattic have been attempting to make a licensing deal with them for a very long time, and all they have done has string us along. Finally, I drew a line in the sand, which they have now leapt over.

We offered WP Engine the option of how to pay their fair share: either pay a direct licensing fee, or make in-kind contributions to the open source project. This isn’t a money grab: it’s an expectations that any business making hundreds of millions of dollars off of an open source project ought to give back, and if they don’t, then they can’t use its trademarks. WP Engine has refused to do either, and has instead taken to casting aspersions on my attempt to make a fair deal with them.

WordPress is licensed under the GPL; respect for copyright and IP like trademarks is core to the GPL and our conception of what open source means. If WP Engine wants to find another open source project with a more permissive license and no trademarks, they are free to do so; if they want to benefit from the WordPress community, then they need to respect WordPress trademark and IP.”

There are some things here that the WordPress community needs to understand:

1. The statement that WP Engine is ‘violating WordPress’ trademarks’ is, strictly speaking, incorrect, because ‘WordPress’ is the trademark and it is held by the WordPress Foundation which has granted an exclusive licence for commercial use (with the right to sublicense) to Automattic. ‘WordPress’, in isolation, is not a legal entity. So, the sentence should be something like ‘WP Engine is violating the WordPress Foundation’s trademarks’, or, ‘WP Engine is violating Automattic’s exclusive rights to use the WordPress trademarks for commercial purposes’.

2. An assertion that WP Engine is ‘violating [the] trademarks’ does not necessarily mean WP Engine is in fact violating the trademarks. Whether it is depends on the circumstances in which they are being used. WP Engine’s position, evident from its own cease and desist letter, is that “WP Engine’s uses of those marks to describe its services – as all companies in this space do – are fair uses under settled trademark law and consistent with WordPress’ own guidelines”, and that the assertion of trademark infringement “reflects a profound misunderstanding of both trademark law and WordPress Foundation’s trademark policy”. In a previous post (Automattic and WooCommerce’s cease and desist letter to WP Engine and others) I referred to the ‘descriptive fair use’ defence and explained, briefly, how it applies, and I said that much of this ‘case’ falls to be considered by reference to that defence.

3. Trying to get a licensing deal based on asserted trademark infringement, not getting one, and then going nuclear as a result, does not necessarily mean you’re in the right. Again, everything boils down to whether the trademark is being used in a way that is non-infringing (and even if you are right, going nuclear is not necessarily the best approach).

4. The stated expectation “that any business making hundreds of millions of dollars off of an open source project ought to give back, and if they don’t, then they can’t use its trademarks” rests on the fundamental premise that the trademarks are being used in an infringing way (which, it also follows, has been tolerated for lengthy periods in the past). It is vitally important to assess and be confident that the trademarks are in fact being used in an infringing way and that no defence can be relied on. If a defence can be relied on, which is WP Engine’s position, then the ‘going nuclear’ approach begins to look oppressive, even if there is merit in the argument that the target could do more for the community.

5. The WordPress trademarks, which relate to the core software to which a large group of developers have contributed over a lengthy period, are being used to attempt to control the behaviour of a large member of the WordPress hosting community, without any consultation with those core developers. Whilst, legally, Automattic as exclusive commercial licensee does not need to do that, failing to do so is clearly not going down well.

6. In my view, the reference to ‘respect for copyright’ (in the context of the GPL) muddies the waters. There is no suggestion that WP Engine has done anything to violate the GPL (which for present purposes relates to copyright), and the trademark issues fall outside of legal issues under the GPL.