Are WordPress Legal Battles Bad for WordPress Users?

This post was originally published on the WordImpress blog (later migrated to the Impress.org blog for legal reasons, unironically). I’m back-dating it here for posterity only. This post took a lot of hours and time and consideration. I was supremely proud of it when posted and today it feels both nostalgic and a little too on-the-nose at the same time.

If you make a living using WordPress in any way you most likely have noticed WordPress in the news in ways that might make you a little uncomfortable lately.

Anyone who builds a site with WordPress or builds their profession from WordPress learns that often, they have to be all things to all people. You end up learning all kinds of things about SEO, Advertising, or Accounting that you certainly never willingly signed-up for when you started on this Open Source endeavor.

With the weight of all that pressure, why should WordPress users also have legal expertise? In some ways, it’s part and parcel to running a business, even for a sole proprietorship. But lately, with news of a domain name challenge against Automattic, and a suit against The WordPress Helpers, anyone paying attention to WordPress news suddenly feels responsible to wade through legalese and jargon. I can tell you that I personally felt like a fish out of water, but was also desperate to understand not just the legal implications but also the potential consequences of these suits. Specifically how these kinds of “ugly cases” might affect the broader WordPress community — a community I personally adore.

That’s why I reached out to my friend, fellow WordPress Enthusiast, and attorney, William (Bill) Adams. Bill is a partner at Norton Moore & Adams here in San Diego. He has experience with trademark and copyright law as well. He also created, manages and writes regularly at his very popular multisite, multi-city WordPress blog called UrbDeZine which focuses on land use issues in metropolitan areas.

The only way to really know how these recent legal battles impact WordPress users is to better understand WHY these cases happened at all. With that in mind, I specifically wanted Bill to help sort the chaff from the wheat in the two big cases involving WordPress.

So let’s start with dispelling some of the myths and misnomers around these cases.

Dispelling the Myths of the WordPress Legal Battles

Because we’re all developer/designers by trade, the legalese doesn’t come naturally. Sometimes, that leads to talking about things that in the end we really don’t fully understand. At least, that’s how I felt when first discussing these matters. But here are a few things that Mr. Adams helped me clear up.

No one has broken the law

Anytime these things come up, the language around them tends to lean towards law breaking. That’s not the case here at all. Both the Automattic and Yablon cases are civil matters, basically a disagreement between two parties. When someone breaks the law they are tried in criminal court and can face prison. Charges against them often come from the State or Federal government. These cases don’t involve prison or “crimes”. These are civil cases which may or may not be punishable with damages, like fees or losing ownership. They also differ from criminal cases in how they are being heard and what the potential damages are.

These cases are more dissimilar than similar

Just because they both involve trademarks, domains, and WordPress doesn’t mean they are really over the same issues. Here’s a few of the most important differences:

• The WordPress Foundation (a non-profit organization created by Automattic to benefit the WordPress community and promote Open Source software) owns the Trademark to the WordPress character mark. They initiated the suit against Jeff Yablon (The WordPress Helpers), while Chris Pearson initiated the claim against Automattic (the company Matt Mullenweg owns and is Founder and CEO of).
• The Jeff Yablon case will be heard in federal claims court; whereas the Pearson case went to a Uniform Domain-name Dispute-Resolution Policy (UDRP) arbitration panel. This is the lowest cost way of filing a complaint regarding the ownership of a domain.
• The Yablon case involves the WordPress Foundation defending its Trademark, while the Pearson case is Thesis defending its Trademark by filing for ownership of a domain that Pearson believed was owned in bad-faith by Automattic.
• The WordPress Foundation is filing against Yablon in a way that most likely will lead to paying damages (if Yablon loses), while Automatic would not have paid any damages to Pearson if he had won. They simply would have lost the ownership of the domain (which would have meant losing that $100k they spent, but no monies would have went to Pearson regardless).
• The Yablon case is fairly cut and dry. But the Pearson case and the history of it and potential future actions resulting from it do have dramatic implications for WordPress and the WordPress ecosystem and community.

Merits don’t win legal cases

This might be obvious in the wake of the Pearson case already, but even when things make perfect sense, that doesn’t mean the law will find in your favor. Merits are valuable, but in Bill’s experience “Merits don’t win cases. They’re just the icing on the cake of strong evidence of your argument.” This is particularly relevant for Yablon as his case seems to hinge on his intentions being “meritorious”.

So let’s dig into some of the relevant details of these cases. They have been covered thoroughly in many popular WordPress news sources, so there’s no need to go into depth here. But what I want to pull out is some of the misnomers based on public records that Bill researched, and particularly aspects of these cases as they relate to WordPress professionals like WordImpress, or StudioPress, or Rocket Genius, or Joe Freelancer.

The Foundation Defends its Trademark Against “The WordPress Helpers”

The simple overview of this case is that Jeff Yablon created a business which includes a trademarked word: “WordPress”. By calling his business “The WordPress Helpers,” the Foundation (who owns the Trademark) claims that he is causing confusion among consumers regarding the nature of his relationship with the Trademark. So, if you are a freelancer, you might be interested in marketing yourself as a “WordPress Expert,” or solicit that you provide “Premium WordPress Solutions”. According to Bill, that’s all well and good. That is within fair use of the name and product and what the WordPress trademark policy was made for. But, if instead, you called yourself “The WordPress Freelance Service,” or “WordPress Websites ‘R Us” then you’ve over-stepped.

Here’s a few caveats that have been going around about this case that Bill helped clear up for me:

MYTH: The “9 letters were only recently trademarked”. This is something that Yablon himself argued in our Advanced WordPress Facebook group. According to Bill, this is false. First, the “9 letters” refers to the actual word “WordPress”. That is called a “Character Mark”. There are different kinds of Trademarks. A Character mark is trademarking a word or phrase. Yablon claims that the Foundation only recently attempted to Trademark those 9 letters. This is not accurate and a bit misleading.

The Character mark was registered with Automattic back in 2007. It was then transferred to the Foundation in 2014. Here is the publicly available record of that character mark that you can obtain from the USPTO website (US Patent and Trademark Office). There are further Trademark registrations regarding WordPress in 2014 that mostly relates to clothing with the WordPress brand and character mark — none of which are relevant to the case. If Yablon is hoping to claim that the Character mark itself is weak or easily contested, he’s fighting a losing battle.

Incontestability is a Thing: More relevant than the fact that the Character mark is actually registered, is how long ago it was registered. Within copyright and trademark law, there is a status called “incontestability”. The idea is that after a trademark has been in effect and is not contested for over 5 years, the Trademark owner can apply for “incontestability”. When they are given that status, it effectively makes the trademark virtually impervious to cancellation.  You can see the public record on the WordPress Trademarks incontestability status here (scroll down to the “Declaration” section at the very bottom for that language). This doesn’t necessarily mean they can force Yablon to do anything, but it certainly gives them the stability of their brand to lean on in cases like this.

So what’s the take-away here? I asked Bill, what can the WordPress community learn from this case specifically?

Because the WordPress Trademark (both the character-mark and the logo) are now past the 5 year mark and considered “incontestable” businesses should not look at the Foundation’s past leniency as a predictor of future behavior. Now that they have “incontestability” it’s likely that this kind of action will continue. So, if you are a small business playing with the idea of leveraging the WordPress name to your gain — think again. Litigation is just not a game small businesses should get into. Stop now, re-think, re-form a strategy that does not include direct trademark infringement.

The WordPress community at large has been really good at self-policing this kind of behavior since the beginning. Most WordPress professionals know that best practice with the GPL is to be transparent, give proper attribution, and respect the WordPress trademark policies. WordPress has had great success because of the support the community has contributed in it’s support of the GPL and of the WordPress brand. That widespread public support is now also going to be backed by a multi-million dollar company (Automattic), and a large and opinionated non-profit organization (The WordPress Foundation) and all of their assets and lawyers. Self-policing within the WordPress community is still great, but there are real legal actions and monies at stake now as well.

Chris Pearson Defends his Trademark by Filing a Claim against the Ownership of Thesis.com by Automattic

I already stated that these cases are more dissimilar than similar, but the issue of defending a Trademark is very similar. But the way they are defended and the nature of the Trademarks themselves is very different. In this case, Chris Pearson filed through the UDRP for Automattic’s ownership of the domain Thesis.com to be found null and void. The findings of this case are publicly available here. The crux of the dispute is over how Chris Pearson has a Trademark for the name “Thesis” (found at diythemes.com) as pertains to his product which is a WordPress theme framework. Automattic (via founder Matt Mullenweg) discovered that the domain thesis.com was for sale and paid $100,000 for it and then had it auto-forwarded to their own WordPress theme blog: themeshaper.com. Themeshaper is not a theme marketplace as it doesn’t sell anything. It’s a tutorial type site that links to WordPress.com

The UDRP is not a court. It is an arbitration panel. This is the path of least resistance in Pearson’s case. It cost him the least to go this route and potentially the consequences would have been minor for Automattic if they had lost. At most, they would have lost the ownership of the domain and Pearson had the potential to own it, but he did not file for any kind of damages against Automattic.

This is interesting because the UDRP was created specifically to handle cases exactly like this. In contrast to the Yablon case, this is not happening in a court of law and it does not threaten the actual trademark of either party. It is simply a civil dispute between two parties over a specific domain name.

Bill actually reached out to Pearson’s lawyer to get clarification on some of the finer points of this case. Much of what they discussed was off the record, but here is what could be said publicly.

Interestingly, the panel decided to do nothing at all and their decision seems to have hinged on a technicality. They claimed that “[Pearson] failed to bring sufficient proof to show that [Automattic] registered and used the disputed domain name in bad faith.” What is interesting about that statement, is that that was never in dispute. Automattic didn’t deny that they bought the domain, nor that it was redirected to their own theme-related website.

The panel stated clearly in their findings that

1. “[Pearson] established legal rights and legitimate interests in the mark contained in its entirety within [Thesis.com].” and…
2. “[Thesis.com] is identical to [Pearson’s] legal and protected mark.”

Given those two undisputed claims, the final finding is really surprising. It seems to hang on the idea that Pearson didn’t show that Automattic intended harm to the Thesis trademark in purchasing that domain. Here’s several things that show that Automattic did indeed purchase the domain “in bad faith”

1. Mullenweg and Pearson have a long and terrible history. No one has covered this topic better than Brian Krogsgard at Post Status. If you wonder whether there is “bad blood” between these two players, Krogsgard puts the question to rest definitively.
2. Mullenweg actually made a bit of a snarky comment about the domain shortly after purchasing it in light of a question about bad practice from premium WordPress theme producers. At a WordCamp Q&A session, he specifically mentions thesis.com as an example of a problem they’ve had with themes which don’t follow GPL (see here at 4:38).
3. Another caveat to the case is the way in which Automattic responded to this litigation against them. During the UDRP proceedings, Automattic filed a “Petition for Cancellation” of the Thesis Trademark itself. Their claim is that the Trademark was filed by Pearson himself but used for the purpose of the corporation. They claim that “The [Thesis Trademark] was issued to [Chris Pearson] rather than the corporation, notwithstanding that the corporation was established prior to the application being filed and the corporation is the party using the mark.” Here is the petition itself. This was an attempt to weaken Pearson’s ability to defend his Trademark by questioning whether the Trademark itself was valid. Remember again the point above about “incontestability”. In litigating against Automattic, Pearson most likely did not anticipate that his Trademark itself would be contested. According to Bill, there is a clause in Trademark law that says that a Trademark is void if applied to the wrong “entity”. Here’s that clause. Whether the person of Chris Pearson is himself a separate “entity” from the Thesis corporation is what the USPTO will have to decide. So the consequences of the UDRP’s finding was that Automattic maintained a trademarked domain, and Pearson’s Trademark is now contested, which makes it much harder to apply eventually for incontestability.

The question everyone asks about this case is this:

Why did Automattic purchase thesis.com in the first place?

This is a question that might not ever be answered outside the walls of Automattic headquarters. But, again, Krogsgard summarizes this with references to Mullenweg really well. When asked point blank why Automattic purchased the domain in the first place, Mullenweg stated:

“We’re happy the panel ruled in our favor. We think Thesis.com is a cool, generic .com that could be used for a variety of things. Just because you have a small WordPress theme doesn’t mean you have a right to seize generic English word .com domains.”

To which Krogsgard replies:

We can accept Automattic’s case that they had a general interest in a generic .com domain, but in reality we know better. Mullenweg was clearly presented with an opportunity by this Larry character that checked all of the right boxes for him.

He could get a domain he obviously knew Pearson would want, and deny him.

All of this simply points to Automattic seeing Chris Pearson and his Thesis trademark and company as a threat to Automattic. Krogsgard explains that this offensive positioning by Automattic is predicated on the patent that Thesis filed (and has never yet been finalized) that would have given Pearson a patent on how WordPress themes themselves are generated. If that is really the case, then Automattic would be defending a lot more than simply their brand, but all WordPress users everywhere that use a theme for their website.

What does this case mean for the WordPress community, though? Here’s Bill’s take-away here:

Automattic went on the offensive in this case, and most likely there is a lot more to this picture than anyone outside of Automattic knows. This is a heated series of litigations and it is not pretty. Automattic is using its wealth and influence to attack a business directly. Whether that is warranted or not is not totally clear, but the fact that they are acting punitively seems fairly transparent.

Automattic as Benevolent Parent, or Vindictive Ruler?

All of this leaves us — the WordPress community — with a lot of uncertainty. What does all of this signify for small plugin and theme shops? Are WordPress service agencies immune from this type of litigation? Is this just the beginning or just flashes in the pan that flare hot but dissipate even quicker? I can’t answer these questions, but I do think that over the next few years we will start to see the long-term impact of these cases. One thing is clear though: Automattic is at a fork in the road right now to shape the future of how the WordPress community supports or flees its beloved platform.

Since its birth, WordPress as a platform has been riding a wave of enthusiasm and growth, propelled by the spirit of Open Source. The WordPress community loves WordPress because of its generosity, collaboration, and freedoms. The WordPress community — not Automattic alone — has caused the growth of the platform because of the self-policing we’ve done. We want to educate all developers on the benefits (and pitfalls) of GPL licensing. We want to educate users on how to interact with Trac tickets and the Support forums. We do presentations on how to contribute to Core and participate in Slack. The people of the WordPress community have done this for a long time and have seen Automattic presiding over this enthusiasm as a Benevolent Parent figure.

I can say, from my own experiences within the Advanced WordPress Facebook group and Slack channel, from my experiences working with fellow developers, from the WordPress Core Slack channel, from “Hallways tracks” at WordCamps, and many other public venues that many people subtly (and sometimes overtly) condemn the false idol of “Automattic as Benevolent Parent”. Instead, they believe that Automattic has evolved into a Vindictive Ruler, forcing its views of Open Source and the GPL upon anything smaller than itself.

The rumbling and backdoor grumbling of the community in light of these proceedings is obvious. Several prominent developers have commented that WordPress users and developers are getting aggravated publicly and need to tone it down. Well… there’s discontent. There’s the shadow of uncertainty looming over their products and services. Grumbling and public snarkiness is to be expected.

But there’s also the continued and endless generosity of the WordPress Community. Siobhan McKeown wrote a beautiful “Honest Post about the WordPress Community“. This is the WP community that I recognize. It’s the community that keeps me coding and loving to answer support tickets. The WordPress community that gives, and encourages, and sharpens iron is the one I believe in.

I can’t tell you whether the fallout of these legal cases will help or hurt Automattic. But I can say this: When Automattic chooses to love the community as a Benevolent Parent, it will love them back. When Automattic choose to defend its users, the users themselves — not the venture capitalists — will help the WordPress platform grow to 51% of the internet.

A Cause Worth Fighting For

I’m not interested in raising FUD (fear, uncertainty, and doubt). Instead, I believe that it’s possible for Automattic to return to its roots as a Benevolent Parent and it’s in all our best interests that it does so. What would it look like if Automattic did actually embrace its role as Benevolent Parent again? Here’s a few ideas.

Let’s assume the best for just a second. Let’s assume that Automattic really is taking down Thesis because its very existence is somehow a threat to all WordPress users everywhere.

If that’s the case, then there are other valiant battles to be fought that affect the WordPress community as a whole just as significantly. There are plenty of GPL violators out there that undercut honest developers and plugin shops’ ability to be sustainable. Automattic, as Benevolent Parent, might not directly enter into legal battles against such violators like the WooGang, or out WPPluginsCheap.com. Automattic has many resources that could be put to use to help combat these types of sites that weaken the value of WordPress developers.

Why would they though? Honestly, because the WordPress community defines WordPress more than Automattic does. It is the freelancers and agencies and plugin and theme shops that evangelize the platform, that encourage the growth of WordPress. By putting their efforts behind the community, Automattic increases the goodwill and elevates the success of every shop and business.

Every WordPress freelancer makes their living on the fact that clients want their sites built with WordPress. What starts to happen to all agencies and freelancers if the trend starts to shift toward Wix, or Squarespace, or Grid.io? These companies are not Open Source, have proprietary systems that are hard to get off of, and not GPL in any way. Every advertising dollar they spend (and they are each spending a lot!) is a potential client lost to a WordPress developer or agency. Would Automattic see its role as a Benevolent Parent to fight for national advertising space against the likes of Squarespace on behalf of all WordPress freelancers, agencies, and plugin and theme shops? I would like to think that that’s a cause worth fighting for. I’d like to think that all the time and energy spent fighting the WordPress Helpers and Thesis could actually be spent far more effectively in advocacy of the actual WordPress community, rather than litigation.

I’m a very proud WordPress developer, WordPress website administrator, WordPress Support Guru, WordCamp speaker and volunteer and attendee, and I think I’m worth fighting for. So are you and all the WordPress users and developers and administrators that I’ve met. We don’t necessarily “need” a Benevolent Parent, but it sure would change the nature of our enthusiasm if we had one.

Special thanks to William Adam, Jeff Chandler (of WPTavern), and the whole WordImpress team for edits, comments, push back, criticism, encouragement and more that went into this post.