[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!

[mthoms]

For the last time. The defence argued by WPE's lawyers in one of Nominative. Fair. Use. If your source doesn't address Nominative. Fair. Use. then it isn't a relevant counterpoint. Jesus, it's not complicated.

Only one of the three links you provided as a source even mentions it. And that mention is in the context of (paraphrase) "nothing here is intended to take away your fair use rights".

When you have anything that addresses the issue we've been discussing, I'll be happy to read it. Let me be clear. This isn't an open call to fire any and all articles about trademark in FOSS at me. If they don't address NFE. They aren't relevant. Period.

Please, please do a search and replace for "fair use" before responding with yet another link.

Now that that's out of the way. Here's an actual lawyer with commentary that is *directly on topic*:

    Descriptive and nominative fair use
    I am not a US trademark lawyer, but to my mind much of this ‘case’ falls to be considered by reference to the defences to infringement known as ‘descriptive fair use’ and ‘nominative fair use’ (nominative fair use being the more likely defence).

    The International Trademark Association describes ‘descriptive fair use’ and ‘nominative fair use’ as follows:

    “Descriptive fair use permits use of another’s trademark to describe the user’s products or services, rather than as a trademark to indicate the source of the goods or services. This usually is appropriate where the trademark concerned has a descriptive meaning in addition to its secondary meaning as a trademark. For example, WD-40 Company’s use of the term “inhibitor” was found to be descriptive fair use of the registered mark THE INHIBITOR when used to describe a long-term corrosion inhibitor (WD-40) product.

    Nominative fair use permits use of another’s trademark to refer to the trademark owner’s goods and services associated with the mark. Nominative fair use generally is permissible as long as: (1) the product or service in question is not readily identifiable without use of the trademark; (2) only so much of the mark as is reasonably necessary to identify the product or service is used; and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. For example, one could refer to “the professional basketball team from Chicago,” but it is simpler and more understandable to say the Chicago Bulls. Here, the trademark is used only to describe the thing rather than to identify its source, and does not imply sponsorship or endorsement. … .”

   I have not seen the exhibits to Automattic/WooCommerce’s cease and desist letter and so cannot comment on all the circumstances in which the companies are asserting that WP Engine has infringed their trademarks or rights as exclusive licensee. However, as a long-time WP Engine customer who is therefore pretty familiar with WP Engine’s website and marketing, it strikes me that at least a good deal of WP Engine’s uses of the words ‘WordPress’, ‘WooCommerce’ and ‘Woo’ are descriptive/nominative in nature and therefore non-infringing. It is certainly not within Automattic/WooCommerce’s power to prevent all descriptive/nominative uses of those words by WP Engine. Context is key. And I do note that WPEngine says things like this on its website:

   Who created WooCommerce?

   WooCommerce is developed and supported by Automattic, the creators of WordPress.co and Jetpack. The plugin’s development teams also work with hundreds of independent contributors to provide regular updates, new features, and improved security measures that keep your store up-to-date and protected.

    And when WP Engine talks about the likes of ‘WooCommerce hosting’ and that the ‘path to WooCommerce® success starts here’, the webpage states expressly in the footer that WooCommerce is a registered trademark of Automattic Inc.

Link: https://wpandlegalstuff.com/automattic-and-woocommerces-ceas...

Bonus link (it's more off the cuff and much less serious - but it will give you a feel for how a legal professional might see this case): https://www.twitch.tv/videos/2261286307