[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.

[keane]

Sure, you can use Disney, Microsoft, Volkswagen, and WordPress marks referentially.

You cannot name products or services “Essential Disney”, “Enterprise Outlook”, “The Volkswagen Experiance”, or “Enterprise WordPress”.

Your allowed nominative use and/or a software license does not give you a license to title your own services with their trademarks. My suggestion would be to read through the Red Hat, Fedora Project, or Mozilla trademark guidelines and/or the Debian-Mozilla dispute article.

https://en.wikipedia.org/wiki/Debian–Mozilla_trademark_dispu...

[mthoms]

Disagree. One of the criteria seems to be whether there is a reasonable substitute phrase or word to describe the product. I think we agree that there is no other word to describe the open-source package known as WordPress without using "WordPress".

What would you call your Wordpress hosting service if not "WordPress Hosting"? What would you call your Linux Hosting?

>Your allowed nominative use and/or a software license does not give you a license to title your own services with their trademarks.

Citation?

My understanding is that litmus test is whether the naming implies endorsement or "official-ness" of the offering. There is no hard and fast rule like you're claiming. It's all context dependent. So while a court may find that this causes confusion I don't see it as obvious like you seem to.

Your link, while interesting (thanks!) doesn't appear to be a good analogue. Based on my reading of that page:

Debian decided it couldn't use the Firefox logo because it didn't meet their standards for openness (as it was protected by copyright). So they included "Firefox" without the logo. Subsequently, Mozilla complained that they couldn't use the Firefox name without using all the branding in its entirety. And so... Debian rebranded Firefox (and other Mozilla software) to something else.

In other words, it was Debians policy that prevented them from using the logo, not Mozillas. That's not at all the same. And anyways, none of this was tried in court (thankfully) so it wouldn't be a precedent anyways.

[keane]

Again, take a look at the wording from Red Hat for comparison:

https://www.redhat.com/en/about/trademark-guidelines-and-pol...

https://fedoraproject.org/wiki/Legal:Trademark_guidelines#Tr...

The examples Red Hat gives as acceptable are likely similar wording to how you would offer WordPress hosting without titling your service merely “Enterprise WordPress”.

As for why you don’t receive trademark rights when you are granted a license to code:

“In addition to the license text, open source publishers commonly include statements separate from the license indicating that trademark rights are not provided.”

“One of the primal questions about trademarks in F/OSS projects is, absent a clause excluding a trademark grant, 'Do the open source software licenses imply a trademark license?' […] Given the large proportion of OSI-approved licenses that are either silent on trademarks, or prohibit only endorsement, advertising or other specific behaviors, and the number of software offerings that may be distributed under these licenses, the impact of an implied license would be far-reaching. With the caution that this has not been tested by the courts, the answer should be a clear 'no'. […] Although rights to the use, modification and redistribution of the code are granted under the F/OSS licenses, trademark rights are not provided inherently and often are expressly excluded as a point of clarification. […] The US courts have generally resisted opportunities to imply a trademark license.”

—Tiki Dare (Director of Trademarks and Marketing at Sun Microsystems, Inc.) and Harvey Anderson (General Counsel of the Mozilla Corporation), International Free and Open Source Software Law Review, doi:10.5033/ifosslr.v1i2.11 https://www.jolts.world/index.php/jolts/article/view/11/37

[mthoms]

I'm not sure what specific point you're making here. The question at hand is how you *know* that the WPEngine usage is trademark infringement under the law. Nothing you've provided anywhere, at any time, supports that claim.

What you've linked here are the trademark owners wishes about how their marks be used. They are perfectly reasonable, sure. But they don't supersede the doctrine of fair use. That's the important bit. Do you understand that guidelines, requests or even contracts do not superceed the law?

Both your links are titled as "guidelines". Because that's all they are. They are guidelines as how the trademark owner wishes their marks to be used. If you violate the guidelines, you may or may not be in legal trouble but that's up to a court. Not Redhat.

From your Redhat link:

>In these Guidelines, we are not trying to limit the lawful use of our trademarks, including their “fair use,” but rather describe for you what we consider the parameters of lawful use to be. Trademark law can be ambiguous, so these Guidelines are meant to inform you about what we believe are acceptable uses.

And this:

>As for why you don’t receive trademark rights when you are granted a license to code:

This is wayy out of left field. Where did I suggest such a thing? I have no confusion whatsoever about the distinction between copyright and trademark. I'm not sure why you're bringing it up.

Listen, since I claimed the use is likely covered by Nominative Fair Use you've replied four different times and not once come close to properly articulating a legal argument as why you disagree. For that reason, I'm going to bow out of this conversation now. Cheers.

[keane]

>>>Your allowed nominative use and/or a software license does not give you *a license* to title your own services with their trademarks.

>>Citation?

>[academic paper by two lawyers in this space warning exactly that]

Farewell friend!