[gjsman-1000]

WordPress’s own trademark policy states:

> For example, a consulting company can describe its business as “123 Web Services, offering WordPress consulting for small businesses,” but cannot call its business “The WordPress Consulting Company.” Similarly, a business related to WordPress themes can describe itself as “XYZ Themes, the world’s best WordPress themes,” but cannot call itself “The WordPress Theme Portal.”

If WordPress specifically says that using the tagline “the world’s best WordPress themes” is okay, it’s hard to show anything WP Engine has done as being unacceptable.

https://wordpressfoundation.org/trademark-policy/

Edit, because I’m responding too fast or some nonsense: That’s an interesting point; but if that were true, Matt should have used that as his argument, after sending a polite letter first explaining that was going too far. This did not happen; and considering Matt was on their podcast and didn’t give a darn until lately, it appears to not be a real problem.

[keane]

The paragraph prior:

>All other WordPress-related businesses or projects can use the WordPress name and logo to refer to and explain their services, but they cannot use them as part of a product, project, service, domain name, or company name and they cannot use them in any way that suggests an affiliation with or endorsement by the WordPress Foundation or the WordPress open source project.

At https://wpengine.com/plans/ they appear to offer a product/service titled/branded "Essential WordPress" with others to choose from being "Core WordPress" or "Enterprise WordPress". (mirror: https://web.archive.org/web/20240921160743/https://wpengine....)

[mthoms]

Thats covered by Nominative Fair Use. It's the same body of law that allows a repair shop to advertise that they are a "Volkswagen Repair Shop" (as long as there is no implication that they are officially endorsed by the car company).

[keane]

Attempt to sell a product titled “Essential Disney®” or a service titled “Enterprise Outlook®” and it’s not going to go well for you.

[mthoms]

Non sequitur. I have no legal rights to sell those products to begin with.

I do have a right to sell WordPress hosting.

[keane]

You absolutely do have a right to use and sell GPL software. But you might be conflating your rights to the software with your rights to specific trademarked terms.

Consider the wording that Red Hat includes in their trademark policy: “Nothing in these Guidelines is meant to limit your rights under the terms of a free and open source software license. Trademarks and copyright are different rights, so regardless of what rights or permissions you may or may not have to use the Red Hat Marks, you always have all your rights under any applicable free and open source software licenses.”

To my point, you also have nominative use to Disney and Microsoft marks. You could have a “Disney VHS repair shop” or a “Microsoft products technical support shop”.

[mthoms]

I think we agree on this. I'm just trying to understand why you threw out the bizarre Disney/Outlook analogy. Neither of those are open source: I don't have a right to sell those for many, many legal reasons so your analogy is... weird.

Yet you used those analogies as some kind of clever "gotcha" against my legal argument of nominative fair use.

Do you want to try again? Why do you believe this trademark case is, or isn't, covered by nominative fair use? That's the core of the issue and is WPEngine's stated defence. It certainly seems like WPEngine have a strong argument.

[Stratoscope]

> Edit, because I’m responding too fast or some nonsense

It probably isn't you.

There is a short timeout of a few minutes on the Reply link in a thread. I think this to discourage hasty and unthoughtful arguments.

But if you click the timestamp on the comment, it takes you a page where you can reply immediately.