[pluginvulns]

Here is the original source for the claim, which is on Automattic's website: https://automattic.com/2024/10/02/wordpress-trademarks-a-leg...

The author is identified as Neil Peretz, who it says is an associate general counsel at Automattic. He says:

"The Foundation also licensed the name WordPress to the non-profit WordPress.org, which runs a website that facilitates access to WordPress-related software."

A graphic included in the post similarly claims that "Right to use name as part of non-profit activities" went to WordPress. With the arrow coming from the WordPress Foundation.

We contacted Automattic's press email for clarification on that claim on Thursday. We have yet to hear back and the post hasn't been updated.

[neilperetz]

Hi, it's Neil Peretz. I was just alerted to your post. I understand there's a question you have. How can I help you?

[legitster]

I will ask on behalf of the entire Wordpress community - is there any part of the Wordpress cluster of organizations that do not ultimately answer to Matt?

[neilperetz]

Hi Legitster. I will work with colleagues on a response to your question. It's a broad topic given how many facets there are to the WordPress community.

[DonnieBurger]

I'll take that as a "no." unless proven otherwise.

[neilperetz]

While I love pronouns, they can lead to misunderstandings if not carefully defined. Above it was written "I'll take that as a 'no'".

Could you explain what "that" refers to in your statement. I am asking because, lacking a clear definition of the question, I cannot say whether the answer is Yes, No, or something else.

[ThePowerOfFuet]

"that" was referring to your reply to their straightforward yes/no question being anything but.

[pwillia7]

Ironic, this is the same confusion WP users are having over a word that is not a pronoun -- WordPress

[jonnypants83]

come on, Neil... you just published 700 words on the topic. You even made flow charts! Are you now saying you don't actually have a solid understanding of the situation?

[nchmy]

Given how poorly written that article is (and how he has no control of his client), its not clear that Neil is actually a real lawyer

[neilperetz]

Despite our sometimes fervent wishes, lawyers don't control clients. We are not puppeteers.

[neilperetz]

Clearly your question is beyond the scope of the article -which means you want more than 700 words. Otherwise you could just read the article.

[mthoms]

Neil,

Thanks for participating. I have an honest question:

How do you reconcile your post [0] claiming that Automattic controls all commercial aspects of the trademark with Matt's previous claim that "the most central piece of WordPress’s identity, its name, is now fully independent from any company" and that Automattic had "give[n] up control" of the marks? [1]

[0] https://automattic.com/2024/10/02/wordpress-trademarks-a-leg... [1] https://ma.tt/2010/09/wordpress-trademark/

[NeonNautilus]

Did Matt really send you here without even explaining what the conversation was about? And then you didn't even bother to read it for yourself?

The article you wrote claims "The Foundation also licensed the name WordPress to the non-profit WordPress.org, which runs a website that facilitates access to WordPress-related software."

Matt in his comment claims "All the information in the links you shared is totally wrong. Our lawyers have never said that WordPress.org is a non-profit or owned by the Foundation."

So which of you have it wrong?

[pluginvulns]

We don't have any questions, but there are possibly several inaccuracies in the post you wrote. At least the information appears to contradict other information provided on your side.

The post has been updated to say that "The Foundation also licensed the name to the website WordPress.org, which facilitates widespread access to WordPress-related software at no charge." Websites presumably can't have trademark licenses. There must be a legal entity. Matt Mullenweg is claiming that he personally has the second license for the trademark [1], so not a website. A graphic included in the post similarly still claims that "Right to use name as part of non-profit activities" went to WordPress. With the arrow coming from the WordPress Foundation. There doesn't appear to be a non-profit.

The post states that "The right to use the WordPress marks for commercial purposes (e.g., selling software, hosting, and agency services) is owned by Automattic." The publicly available license states that Automattic has the right to use the trademark "in connection with the hosting of blogs and web sites [2]." So it looks like Automattic's rights are more limited. Maybe the license has been amended or there is an unstated belief that the license has a wider scope than the plain language of the license suggests. Having the foundation release all licenses agreements it has would help to clear things up, possibility for you, but definitely for everyone else.

In explaining how the license agreement between the foundation and Automattic happened, the post says that 'In order to effect a valid license agreement, there needs to be an actual exchange of value from both sides, which lawyers call "consideration."' But Matt Mullenweg [3] and what appears to be an Automattic employee writing for the WordPress Foundation [4] both stated at the time that Auomattic donated the trademark. Legally, a donation can't involve a consideration [5]. That would suggest there isn't a valid license agreement or there wasn't actually a donation.

We would suggest you consult with a lawyer about all that, but you are a lawyer.

[1] https://youtu.be/OUJgahHjAKU?t=442 [2] https://assignments.uspto.gov/assignments/assignment-tm-4233... [3] https://ma.tt/2010/09/wordpress-trademark/ [4] https://wordpressfoundation.org/news/2010/trademark/ [5] https://www.law.cornell.edu/wex/donation

[neilperetz]

You wrote: "In explaining how the license agreement between the foundation and Automattic happened, the post says that 'In order to effect a valid license agreement, there needs to be an actual exchange of value from both sides, which lawyers call "consideration."

Indeed. And there was a lot of Consideration given in this exchange. Automattic owned 100% of the WordPress trademarks. Automattic's "Consideration" was to give all the non-commercial use of those trademarks to the WordPress Foundation.

Consider a simple, but apt analogy. You own a car. You decide to give someone else the right to drive your car on the weekends, however you retain the right to drive it during the week. Did you provide Consideration for the right to drive the car during the week? Of course - the recipient previously had nothing and you gave them the right to drive your car on the weekend. The only lack of Consideration here was that the person getting the weekend driving rights gave you nothing in exchange for those.

[ValentineC]

> Indeed. And there was a lot of Consideration given in this exchange. Automattic owned 100% of the WordPress trademarks. Automattic's "Consideration" was to give all the non-commercial use of those trademarks to the WordPress Foundation.

If I understand your comment correctly, you are saying that Automattic is still the owner of the WordPress trademarks, and granted licenses for non-commercial use to the WordPress Foundation?

[metamichael]

It's clear from what he's saying that Automattic once OWNED the trademarks, but transferred those trademarks to the WordPress Foundation, and thus Automattic is NO LONGER THE OWNER of said trademarks.

What Automattic has is an exclusive license to use and sell the commercial licenses of the trademark.

[jonnypants83]

I don't think that's clear.

>Automattic owned 100% of the WordPress trademarks. Automattic's "Consideration" was to give all the non-commercial use of those trademarks to the WordPress Foundation.

[pluginvulns]

You need to keep reading the rest of what we wrote there. We were not disputing that explanation of a consideration. We are saying there can’t be a consideration in a donation and two employees of Automattic contemporaneously claimed it was donation. Either there wasn’t a donation or there isn’t a valid license agreement.

You also didn't address the other issues at all.

[FateOfNations]

It seems like they used "non-profit" in that sentence to mean:

"an undertaking being conducted for a purpose other than making a profit"

…rather than…

"an organization that has been recognized by the Internal Revenue Service as being organized and operated exclusively for exempt purposes as set forth in section 501(c)(3) of the Internal Revenue Code."

[LordAtlas]

You would think an attorney of all people would be more careful with their words, especially with terms like "non-profit".

[neilperetz]

Sorry that even attorneys can have typos.

[meltdownMatt]

That’s a pretty meaningful mistake, given that the nature of the non-profit entanglement is fundamental to several claims. It seems like you were as confused as the community was, which sure doesn’t help any of Matt’s claims about everything being “open” and “transparent” all along.

Well, I guess this thread answers the question of “how can Matt’s lawyer possibly be encouraging this?”

Penny-wise and pound foolish.

[mldevv]

Its been almost a week, what correction would you like to make to this? You've been dodging and the community deserves honest answers.

[pwillia7]

Which word was meant to be used instead of non-profit here?

[photomatt]

Sorry for that error, the post has been updated now.

[kinkora]

Thanks for clarifying on that error.

I am not involved in the wordpress community in any shape or form but am fairly privy to what it is along with the open source world yet.. even I am finding it hard with confusing and/or conflating statements on what falls under the non-profit, foundation, commercial entity, etc.

But even if you ignore random stranger me from the internet, wouldn't it flag something in you that your own legal representative got it wrong on an official company post clarifying the structure? Even if I apply the most charitable interpretation, it seems Neil is also equally confused or at least not on the same page as you since he is unable to respond consistently in the other threads?

I am sure you will at least see why that everyone is just perplexed by how obtused the whole structure between the WordPress.org, WordPress The Foundation and Automattic.

[neilperetz]

As I noted above, we are preparing a blog post with further detail about Matt's role in the community. Of course, if that doesn't provide sufficient clarity, let us know.

[meltdownMatt]

How about how the non-profit Wordpress Foundation lists the Wordpress Plugins and Themes indexes as Foundation projects, while you maintain that they’re something you personally own, and are openly controlling for the sake of your profit-seeking conflict with WPE?

https://wordpressfoundation.org/projects/

It’s ironic that you make analogies to “getting Al Capone” while you yourself appear to be engaged in a decade-long tax fraud. But like your constant allegations of “astroturfing by WPE” to explain why everybody holds you in contempt, I guess it’s easily explained as narcissistic projection.

It’s not astroturfing. Everybody can read you, Matt. And they don’t like what they see.