Brands, Consumer protection, Copyright, GPL, Licensing, Tort, Trademarks
Published on February 13, 2015
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WordPress-related business brands: protect and do no harm

written 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:

All of these businesses have distinctive brands, the importance of which will increase as the WordPress marketplace becomes more crowded. They all evoke particular feelings for me, and no doubt countless others, at sight or sound of their names or brands, with significant amounts of goodwill attaching to them.

I’ve spoken before about the WordPress and related trademarks, but I’ve not yet discussed the importance to WordPress-related businesses of the brands they fashion for their businesses, products and services. Given the importance of these brands to their owners, it may help to know what other people can and cannot do with the names that represent those brands and what remedies the brand owners have when someone misuses their names, logos or other marks. And there’s an added twist because most of the plugin and theme shops I’ve mentioned above license their products under the GPL.

(I’ve referred above to “the names that represent those brands” because, as you’ll know, a brand is much more than some words or a logo. As one author has put it, “[t]he power of the brand is not in the name but what has been invested in that name over the years” (Bernard Kelvin Clive, REBRAND: The Ultimate Guide to Personal Branding). From now on, though, I’ll use the word “brand” to refer primarily to the business name or its graphical depiction.)

A quick aside on trademark protection

In this post I don’t go into the merits of applying for a trademark for your brands but I’d note, quickly, that there can be distinct advantages in having a trademark. A trademark can be a valuable asset and, in many countries, it’s easier to enforce your trademark rights than it is to rely on other causes of action.

As another quick aside, if you’re interested in WordPress businesses that have applied for and been granted trademarks, you can explore various countries’ online trademark registers (trademark protection is territorial in nature). For example, I did a quick search on the United States Patent and Trademark Office’s Trademark Electronic Search System (TESS) and saw that US trademarks exist for Gravity Forms, StudioPress, WooThemes, Envato, Envato Studio, WP Ninjas, WP Engine, WP Migrate DB, WPExplorer, Elegant Themes, Sucuri, Yoast and VaultPress (and no doubt there are others).

Now, on with the show.

Can do this, can’t do that and remedies

So what can other people do – and not do – with these WordPress-related business brands and what remedies do their owners have when they think someone has gone off the rails? I’ll discuss a few points relating to:

  • trademarks and domain names;
  • the tort of passing off (a civil remedy in common law countries, meaning you can sue for it, with statutory or like equivalents in many civil law countries);
  • fair trading laws; and
  • copyright.

I’ll also explore some issues around GPL freedoms versus trademark restrictions.

I jump around from country to country a bit and you’ll appreciate that different countries will have different laws, but I suspect that what I say below will hold true or largely true in many countries. My usual Disclaimer applies.

Domain names

Trademark in a domain name

Using another company’s registered trademark or a name that is confusingly similar to it in your domain name for a site that offers the same or similar goods or services as those of the trademark owner may amount to trademark infringement (for US-related discussion, see M Mannapperuma and L Greenwald-Swire The difference a slash can make – using a trademark within a URL (18 November 2014) and for an Australian-related discussion, see D Phair Federal Court finds that “realestate1.com.au” URL infringes realestate.com.au composite trade mark (3 July 2013)).

Trademark in a domain name that redirects

Similarly, using another company’s registered trade mark in a domain name that redirects to the different URL of your website, which deals with the same or similar kind of goods or services in relation to which the trade mark is registered, can amount to trade mark infringement (see, for example, M Wolnizer and E Godfrey’s Australian-related Lessons learned on website redirection and trade mark infringement (11 February 2013).

In the kinds of situations above, the person infringing the trademark (let’s call him Bob) could receive a cease and desist letter (i.e., “take it down or I’ll sue your ***) and, if that doesn’t make Bob budge or the brand owner wants a financial remedy, Bob could be sued for injunctive relief and damages.

Domain dispute resolution procedures

In such circumstances, the registrant of the infringing domain could also find itself subject to the administrative dispute resolution procedures of either ICANN’s Uniform Domain Name Dispute Resolution Policy (e.g., for disputes relating to the .com, .net, .org, .info and .name domains, among others) or similar dispute resolution procedures of a country’s regulatory authority that manages the relevant country code top level domain. The contracts between a domain name registrant and the relevant domain name registrar typically require the registrant to submit to the administrative dispute resolution procedures upon a complaint being filed against the registrant under those procedures.

Trademark in a post-domain path

By contrast, using a trademark in a URL’s post-domain path might not amount to trade mark infringement. For example, in “Patmont Motor Werks Inc v Gateway Marine Inc, 1997 WL 811770 (ND Cal 1997), the Northern District [Court] of California found that the URL <www.idiosync.com/goped> did not suggest that Idiosync (the domain owner) had endorsement or sponsorship from Go-Ped, a company that sold small, motorized scooters, which it sold under the trademark ‘Go-ped'” (see the Mannapperuma and Greenwald-Swire article above).

Passing off

Using another company’s trade name or mark (registered or unregistered) in a domain name for a site that offers the same or similar goods or services as the person with good will in the original name or mark may, depending on the circumstances, also amount (in a range of common law countries) to the tort of passing off. Again, the owner of the name or mark could ask you to cease or desist and, if necessary, take you to court.

Fair trading laws

In some countries (e.g., Australia and New Zealand), this kind of thing may also breach trade practices/fair trading legislation that prohibits misleading and deceptive conduct in trade (in Australia the Act is the Trade Practices Act 1974; in New Zealand it is the Fair Trading Act 1986). Among other remedies, the courts can grant injunctions and damages.

Copyright

Copying and publishing another company’s logo (whether of the company itself or a particular product) on your own website, without permission, is likely to amount to copyright infringement (in many countries logos fall into the category of artistic copyright works). This is the case regardless of whether you’re in trade. (There might be fair use defences in some instances but I don’t need to explore that here.)

What about the GPL? Doesn’t that grant me wide freedoms?

The other day, I think in a comment on an earlier post, I was encouraged to say something about the distinction between the copyright permissions granted under the GPL and the rights that a trademark owner may have in the name or brand by which the GPL’d software is known. I suspect this is an important topic for some commercial plugin owners, and possibly the owners of commercial theme shops, so here we go.

GPL is designed to cover code

The freedoms granted under the GPL over the “Program” – usually the code – do not apply to any trademark that the owner has in relation to the Program. To put it another way, the use of a trademark in connection with GPL’d software, without more, does not mean the trademark owner has lost its trademark-related rights. To the contrary, in certain circumstances, another person’s use of the trademark without permission may amount to trademark infringement.

Higher Regional Court of Düsseldorf

For example, in a German case (that has been helpfully summarised in English by Anthonia Zimmermann and in an open source text by Noam Shemtov), a company released ecommerce software under the GPL with a brand for which it owned a trademark. Another developer came along and developed (among other things) a module for the software, as it was entitled to do from a copyright perspective under the terms of the GPL. However, this developer used the distinctive element of the company’s trademark as part of the name for its module. The company argued that this amounted to trademark infringement and sought an injunction to prevent the developer from using the trademark as part of the name for its module. After an unsuccessful effort in the first instance court, on appeal the Higher Regional Court of Düsseldorf granted injunctive relief for infringement of the company’s trademark rights. As Zimmermann describes it:

“The court pointed out that under article 12 CTMR [Community Trademark Regulation], a distributor of services, accessories and spare parts is not permitted to create the misleading impression of a commercial relation between himself and the trademark owner. The defendant therefore should have emphasized that “xt:Commerce” [the company’s brand for the software] is a third party trademark used by him merely for describing the intended purpose of his own offer.”

Shemtov explains how the company argued that “a permission to market software updates under the trade marked original name could not be derived from the GPL” and how the appellate court agreed with this assessment. Shemtov provides a translation of a key part of the court’s judgment:

“The GPL governs only the copyright aspects of the use of a computer program, provisions regarding the use of trade marks are not contained within this set of rules. An (implied) right to use the trade mark does not arise … . The permission to use the copyright does not run empty [or, I’d say, ‘is not negated’] without permitting the use of the trade mark: the beneficiary is able to market the legally produced program under a different (own) name.”

Takeaway

The moral of this particular story, then, is be careful how you describe:

  • your extension of, plugin for, or fork of GPL’d software whose name is a trademark in your jurisdiction; or
  • the services you may provide in relation to such software.

For example, if you were to get your hands on Gravity Forms (Rocketgenius Inc has a trademark in the name) and adapt it to support front-end custom post type submission out of the box (sorry, couldn’t resist), you shouldn’t really go and release and sell it as either “Gravity Forms” or “Gravity Forms +” (unless of course Carl and the crew were happy with that; I suspect you’d find out fairly promptly – and directly – that happiness is not the emotion they’d be feeling).

Selling others’ commercial plugins

There is another broad scenario that a reader has asked about. The scenario – which I’ve adapted slightly – is this:

  • a WordPress shop, SuperDuperWP, develops a commercial plugin, let’s call it SuperDuperPlugin;
  • SuperDuperWP applies for and is granted a trademark in the name “SuperDuperPlugin”;
  • an enterprising young chap comes along and either makes SuperDuperPlugin available on his site for free with the provision of free support, or sells it on his site (full stop and without suggesting he’s the plugin author) or makes it available for free but provides paid support for it with a suggestion he’s affiliated to SuperDuperWP; and
  • let’s also assume that, to get updates and support for the plugin from the genuine owner, you need a product registration number, Gravity Forms-style.

Now, I don’t profess to be a multi-jurisdictional trademark expert but, from all the reading I’ve done, I feel fairly comfortable in saying the following:

  • Free download and free support: Making the 100% GPL’d plugin available for free on a site with free support, where there is no element of trade and no confusion as to any association with the genuine owner, may not amount to trademark infringement, the main reason being that the person doing this is not in trade or commerce. Why the enterprising young chap would do this, though, is beyond me (doesn’t seem very enterprising). Users might not be able get updates and the said young chap would have to both learn the codebase and be pretty altruistic. Probably unlikely in practice. Personally I like to buy plugins and themes from outfits I trust.

(There’s a potential twist to this scenario. Let’s say the plugin zip file that is uploaded to the ‘free’ site contains detailed help documentation crafted by the plugin author, as many themes and some plugins do these days. The GPL relates pimarily to code, not documentation or other forms of works, and so the freedoms it gives people may not extend to the documentation. Copying that documentation without consent could amount to copyright infringement. So even if there’s no trademark infringement, copyright infringement might have occurred. I’ve not overlooked the fact that the GPL can be made to apply to documentation (among other things) but the real question is whether, in a given case, that has been done, either at all or effectively.)

  • Sale with no support etc: Where the enterprising young chap merely sells SuperDuperPlugin on his site, with no product registration number, no support and no access to updates, people wouldn’t be getting what they’d get if they were to purchase the plugin from SuperDuperWP. In other words, arguably what they’d get is materially different from what they’d get from SuperDuperWP. In these circumstances the trademark owner may be able to argue that this results in confusion to consumers and dilution of its trademark. If the version of SuperDuperPlugin released for sale were an old version (perhaps with bugs or security holes), that might strengthen the argument.

(Depending on his country, the enterprising young chap might argue that SuperDuperPlugin had already been ‘sold’ such that the first sale doctrine or exhaustion of rights defence applies. In a nutshell, this defence says that if you’ve sold a copy of a good whose name is a trademark, the purchaser may onsell the genuine article without infringing the trademark.  The potential problem with this argument, though, is that the young chap might not in fact, for legal purposes, be selling the ‘same genuine article’. Even if no change was made to the codebase, material differences might be found to exist in the differences relating to product registration, product support and access to updates. There are US cases that would appear to support this line of argument (see, for example,  R Payne Dealing with Unautorized Online Dealers: Sales of “Genuine” Products (2014); A Pai IP Exhaustion: The Increasingly Important First Sale Doctrine (2014); N Kilaru and M Sommers Removal of UPC Labels Subverts Trademark Owner Quality Controls and Constitutes Material Difference (2010); L D Prutzman and E Stenshoel The Exhaustion Doctrine in the United States (2013) and Softman Products Go v Adobe Systems Inc., 00- 04161, C.D. Cal. act. 22, 2001).)

  • Free download, paid support, suggested affiliation: In the third scenario, our enterprising young chap makes the SuperDuperPlugin available for free but provides paid support for it with a suggestion he’s affiliated to SuperDuperWP. In this scenario, the young chap will have gone too far. Trademark infringement is highly likely, he’ll be committing the tort of passing off (in countries where that tort exists) and he could be breaching fair trading laws.

Let’s close

Crikey, that took a bit more discussion than I’d contemplated. Congratulations if you’ve made it this far.

I hope this post has illustrated the importance to WordPress-related business owners of their brands (something they’ll already know of course), what others can and cannot do with them and some of the remedies potentially available to owners when others do things that tarnish them. Over and out.

(Registered trademark image: mkabakov/Bigstock.com)

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