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Comment by dangrossman | Hacker News Reader

There's a "no forking" clause in the term sheet Automattic sent to WP Engine:

https://automattic.com/wp-content/uploads/2024/09/term-sheet...

IANAL, but the WordPress license (GPLv2) says that if you attempt to sublicense the software or otherwise distribute it under different terms, you forfeit your own license to it:

    "4. You may not copy, modify, sublicense, or distribute the Program except as expressly provided under this License. Any attempt otherwise to copy, modify, sublicense or distribute the Program is void, and will automatically terminate your rights under this License. However, parties who have received copies, or rights, from you under this License will not have their licenses terminated so long as such parties remain in full compliance."

WordPress is itself a fork, with no copyright assignments, so Matt has no ability to change the license.

Given this, is it legal for WordPress.com to continue using and distributing the WordPress software as we speak?

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This was a separate agreement from their GPL license, which of course allows them to fork. Sorry it's not clear from the term sheet, but this was about them forking our Stripe extension to replace the attribution from us to them for WooCommerce sites hosted on WP Engine. Stripe is also looking into this, as it's spammy.

> Stripe is also looking into this, as it's spammy.

Stripe thinks that an affiliate using their affiliate link is spammy, but that you, another affiliate, publishing yours with WordPress is not?

Also, I'm sure you think they entirely agree with you, but maybe consider they may not (don't) want you to speak for them while you're being sued...

I think you missed the point.

They (i know it's you but easier to not personalize it here) do not own all the rights to the software themselves. For the parts they do not own, they have no rights other than what they got through GPLv2.

Those rights are conditioned upon them not trying to sublicense/etc the software in a way that conflicts with GPLv2.

Which this term sheet purports to do.

The agreement wasn't about their license to the code, it was about their license to the WordPress and WooCommerce trademarks. They could agree to not do things allowed under the GPL, like replacing our Stripe attribution, it's their right to. Or not.

"The agreement wasn't about their license to the code,"

Maybe you misread it (or miswrote it i guess)?

it says:

"WP Engine will cease and desist from forking or modifying any of Automattic’s, WooCommerce’s, or its affiliates' software (including, but not limited to plugins and extensions) ..."

It could not more plainly say that they cannot fork or modify software.

"The agreement wasn't about their license to the [GPL] code,"

And

"WP Engine will cease and desist from forking or modifying [non GPL code]"

You are misreading it.

1. Matt just claimed it wasn't about software at all. So we've now moved on to saying "well it's about code, but not GPL code".

Progress, i guess?

2. The agreement does not limit it to non-GPL code in any way, so i'm really not sure where you are getting that from. The plain terms cover all of automattic (et al) software, which includes the stuff that has GPL code in it.

The normal way such an agreement would be written to cover only non-GPL pieces would be to say it does not attempt to modify or change rights you get elsewhere, blah blah blah. It includes no such clause.

If you've got meaningful parol evidence that it was meant to cover only non-GPL code, great, let's see it. (since the agreement is both badly written and not fully integrated, it would be valid to do so).

> License: GPLv3

https://plugins.trac.wordpress.org/browser/woocommerce-gatew...

How can a plugin be GPLv3 when the core is GPLv2?

//edit: apparently the core is v2 or later.

Correct, it's gplv2 or later. v2/v3 GPL compatibility is also sort of an abstract thing - it gets talked about a lot (IE do the terms have to actually conflict as applied to a given situation or only conflict in theory) , but you also can't file a lawsuit with a claim of "GPL incompatibility". You'd have to file a claim for breach of contract or infringement (or both).

This matters because if, for example, your main incompatibility is around the patent pieces (that's one of them), and there are no patents anywhere involved, you may have a hard time convincing a judge that there is really a breach of contract.

I do not believe it is legally "GPL v2 or later" at all. The original b2 license was GPL v2. There was no or later version option in the original b2 license. Given that WordPress is a derivative work, it has to keep the same or compatible license. Which "GPL v2 or later" is not.

Note how the original license is GPL v2 at [0], then the "or later" header is added much later at [1] seemingly out of nowhere.

[0] - https://github.com/WordPress/WordPress/blame/04c9051a7d765cb...

[1] - https://github.com/WordPress/WordPress/commit/8cbd92f9f8269a...

I think what Matt's saying is that they absolutely had the GPL rights to fork and modify the code... but those rights don't include the right to use the trademark. So if they wanted to be able to market themselves as offering WooCommerce(TM), they had to agree to the license, in which they'd have to promise not to use the aforementioned GPL rights.

I am nowhere near knowing enough about trademark law to say whether this is anything even approaching a reasonable use of trademarks.

But that's not what the legal document says? "Cease and desist from using the trademark" is a different sentence from "cease and decist from forking and modifying code"

I'm not defending his position, or talking about whatever's in the legal documents, I'm just trying to explain the distinction Matt seems to be drawing between the trademark license (and attached terms) and the software license in this thread.

(Personally, I think it's a fairly bullshit distinction that's completely against the spirit of the GPL. It's probably legally allowed, though.)

I don't understand how that's supposed to work. You can't use a trademark to prevent anyone from forking a piece of software whose license allows forking. You can say that other people can't use your trademark in forks, but that doesn't seem to be what's going on here? "Cease and decist from forking or modifying the software" is, again, a different sentence from "cease and decist from using our trademark in your modified versions of the software"

My understanding of Matt's position, and what that term sheet he posted is talking about, is that he feels that WP Engine needs a trademark license to cover what it's currently doing. He feels that their usage of the marks exceeds what's generally allowed under the "everyone can use it this way" terms that WordPress.org offers. His position isn't just that they can't use the trademark to apply to their forked version, it's that they can't use it as they currently are even if it wasn't forked.

So Matt's now offering these terms: a license to use the trademarks as they currently are, in exchange for concessions. The concessions include that they'd agree to not use their GPL-granted right to fork the code. This sounds like an agreement that would hold up, assuming he's right about the trademark policy.

Again, I have no idea about the actual legalities of trademark usage. It's entirely possible that Matt is wrong about them not being allowed to do what they're currently doing with the trademarks, but it sounds like lawyers will be arguing about that.

> The concessions include that they'd agree to not use their GPL-granted right to fork the code.

The point is that including this stipulation (attempting to limit the GPL-granted right-to-fork) appears to be itself against the GPL, and voids Automattic's previously-granted GPL rights.

In other words, if you even attempt to get someone to sign away their GPL granted rights, you lose your own GPL granted rights.

WordPress is GPLv2-or-later.

GPLv2 is silent on the subject of trademarks, and is a bit vague about additional restrictions -- section 4 would apply to trying to restrict usage of the code, but trademarks are a separate thing. GPLv3 explicitly allows you to decline to license your trademarks (see section 7, the paragraph starting "Notwithstanding any other provision of this License", clause e). This isn't generally called out as one of the big differences between v2 and v3, so I think it's intended more as a legally-spelled-out clarification than a change.

I'm not a lawyer, but the GPLv3 in particular seems compatible with the idea that you can tell someone that they can only use your trademarks so long as they behave in a certain way... so long as you're still allowed to fork the code, strip out those trademarks, and continue using it. Which does seem to be Matt's position. (I mean, he also wants to restrict access to Wordpress.org services, but that's even less in the GPL's area.)

Trademarks are a red herring here. What the GPL says is that if Automattic attempts to get someone to give up their GPL rights (e.g. the right to fork), then Automattic automatically loses their own GPL rights as punishment for the attempt. This is the section 4 you speak of. Specifically, Automattic cannot offer terms that say "in exchange for trademark stuff (or anything else), you agree to give up your GPL rights to forking".

The term sheet seems to show Automattic did precisely that (violated section 4 of the GPL license by trying to get someone to give up their GPL right to fork), ergo Automattic should lose their own GPL rights, including to parts of Wordpress. Trademarks don't factor in here.

I really don't think that's the way to interpret it. Automattic is saying "you have the right to fork, but you can't use the trademarks if you do". The GPL says that's allowed -- you're not required to grant a trademark license.

> Automattic is saying "you have the right to fork, but you can't use the trademarks if you do".

The contract says the opposite – it states "you can use the trademark, but you have to forfeit your right to fork if you do"

Such an attempt to get someone to forfeit their GPL right-to-fork (even for consideration) is forbidden by the GPL license granted to Automattic, and the punishment for violating that GPL license in such a way, is that Automattic forfeits their own license.

Automattic is not allowed to propose a contract which limits someone's GPL right-to-fork. They did so anyways, and thus should lose their own license.

> The contract says the opposite – it states "you can use the trademark, but you have to forfeit your right to fork if you do"

Those mean the same thing. It's implicit in the offer existing that you can choose not take the offer, and so don't get the stuff in it.

If it is the same thing, then the phrasing you responded to is correct, which explains why the offer is not allowed under the GPL.

If any offer is made by 1 party which includes the other party giving up their GPL right to fork, that offer constitutes an attempt under the GPL to redistribute GPL code under reduced rights, which is a violation of the GPL, with the punishment being a revocation of the offerer's rights.

Yes, the offeree could choose not to accept the offer, but that does not matter: the mere offering of the offer constitutes an attempt, and thus a violation of section 4.

I don't think we're going to agree on this one.

It sounded like we agreed when you said that your phrasing meant the same thing as my phrasing.

We agreed that a contract was offered which, if accepted, would revoke the GPL right to fork.

We agreed that the GPL doesn't allow such a revocation of the GPL right to fork (even if it is part of a contract).

We agreed that even attempting such a violation (e.g. by offering such a violating contract) is itself a violation of the GPL.

Honestly, it sounds like we're in violent agreement. The only specific disagreement you've expressed is in the best way to word something among several options which you say are equivalent.

I was referring to the fundamental question of whether conditioning a trademark license on behavior is allowed. I don't think it counts as restricting GPL rights in a way that'd trigger the clause, and you do.

Are you saying you don't think the GPL forbids attempting to redistribute with reduced rights, or you don't think offering a contract which does precisely that (in exchange for trademark consideration) constitutes an attempt?

Mostly, I don't think this contract qualifies as an attempt to restrict your rights for that clause. It's an offer to give WP Engine something that they're not required to be given, in exchange for WP Engine not doing something while that contract is in effect. Crucially, they're not giving up their right to fork, they're just agreeing not to use it so long as the trademark license contract is active. And the term sheet says either party can terminate it for a material breach without any mention of penalties, so I don't think you can argue that they're being locked in to not using their GPL rights for any unreasonable time period -- they can fork whenever they feel like it, they just have to give up the not-GPL-required trademark license when they do.

Separately, the GPL calls out that you're allowed to place a restriction on your distributed code when it comes to trademarks, in that you're not required to license your trademark. I.e. you're allowed to distribute code that's GPL-licensed but that it's impossible for people to legally use as-provided without either forking it or obtaining an extra license from you. v3 is a lot more explicit about this, but it seems implicit in v2 as well.

You could certainly take the position that any sort of trademark license containing usage restrictions at all qualifies as a restriction under the GPL, so your only choices are to completely allow or forbid usage of your trademarks without any conditions. I disagree with that view.

> It's an offer to give WP Engine something that they're not required to be given, in exchange for WP Engine not doing something while that contract is in effect

You've interchangeably described WPEngine's consideration under the contract to be "something", "stuff", and "behavior" – this vagueness seems to be dodging the issue: what specifically, as you understand it, would WPEngine have to give up under the terms of the contract Matt presented, in exchange for usage of the trademarks?

> Crucially, they're not giving up their right to fork, they're just agreeing not to use it so long as the trademark license contract is active.

That's just a different way of saying they give up their right to fork (temporarily, for the duration of the contract).

> I don't think we're going to agree on this one.

> fork or modify software

He mentioned "trademarks".

This phrase is messy: "forking WooCommerce".

There's a likely fracture between the two words.

One might have a right to fork source, while one might not have a right to mark and trade what was changed under the same trademark.

Similarly, a source license might require prominently disclosing changes made to source, such as redirecting an affiliate support stream from a trademark owner's account to one's own account, while it might be trademarks that decide whether one can still call this permissibly edited thing the same name or let users think it's the same thing.

To be clear, I have no idea what rights or agreements are at play in this particular situation, just noting these are not the same rights.

Let's be clear about who did what here. WP Engine didn't agree to anything. You demanded that they not do these things.

A few things:

First, something general - one thing to keep in mind is that open source folks think of these things as license violations/etc, but that's not actually a thing, legally. Breach of contract and copyright infringement are. That is how a claim would be analyzed. Not as a "GPL violation".

Why is this relevant? Well, you really have to think of this stuff as contracts to use a given copy of software, and not as some abstract thing licensed or not.

This is fairly relevant because:

1. The general view on GPLv2 is that you gain a shiny new license every time you receive a new copy from someone else. In other words, you have signed a new contract. So while your rights may have been terminated the existing contracted copy (and you would be liable for distributing or ... that one), if you just get a new copy from someone else, congrats, new contract.

This is supported by the license: "6. Each time you redistribute the Program (or any work based on the Program), the recipient automatically receives a license from the original licensor to copy, distribute or modify the Program subject to these terms and conditions."

Let's assume this was not true

2. Wordpress is actually GPLv2 or later. GPLv3 has a notice and cure period. Under GPLv3, they would still be within the cure period (unless i screwed up the timeframe :P), and would have not lost a license yet.

3. GPLV3 has a more complex termination mechanism to try to deal with notice, cure, and the issue in #1.

In short, worst case, if they are claiming to use it as licensed by GPLv2, it would be fairly easy to cure the ability to distribute new copies. They could do nothing about violations that exist in existing copies (and would not be allowed to continue distributing those). I realize how insane this sounds, since it's basically saying "These bits over here are red but these same exact bits over here are green", but that's life in the legal realm sometimes.

For sure, if they do nothing, explicitly, they would be in bad shape, legally, in the worst case.

GPLv3 is a more complex question.

Also: there are those that strongly disagree with the view in #1 and believe you lose all rights forever unless they are reinstated. Rather than try to say who is right or wrong, i tried to give you where general consensus seems to lie. That is not something you should take to court, it's closer to "if you surveyed 100 open source lawyers what would most think"

Would it be a valid for someone to take "GPL v2" (with no or later version) clause, and re-license a derivative work as "GPL v2 or later", and then another entity takes that derivative work and re-licenses it as the "GPL v3"?

That seems to be what's happened here. The b2 software is a strict "GPL v2". There is no later clause. Then WordPress has re-licensed their derivative work as "GPL v2 or later". Now we are talking about a GPL v3 derivative work.

> Why is this relevant? Well, you really have to think of this stuff as contracts to use a given copy of software, and not as some abstract thing licensed or not.

If you think about it in that way, copyright infringement is out of the picture completely because of the statutory exception.

17 U.S.C § 117 - Limitations on exclusive rights: Computer programs (a)Making of Additional Copy or Adaptation by Owner of Copy.—

Notwithstanding the provisions of section 106, it is not an infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided:

(1)that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner, or

(2)that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful.

Err, no.

That statutory exemption was created to resolve one court case and one worry:

1. A holding that you can commit infringement simply by loading a program into memory even for maintenance purposes. This was MAI v. Peak, one of the earliest real court cases on software copyright infringement. It was unfortunately followed by lots of courts.

2. A worry that creating tape backups/etc of computers, and copies of software cd's (since they don't last forever) was copyright infringement independent of anything else.

See the report for more details: https://www.copyright.gov/reports/studies/dmca/sec-104-repor...

Neither would eliminate infringement in this case.

WRT #2, note that the relevant section of 17 USC §117 was written in 1980 - at the time, most software was distributed on media like floppy discs or tape which could easily be accidentally overwritten or damaged by faulty equipment. Creating personal backups of purchased software was already standard practice for many users; I think it's this sort of usage that the law was primarily meant to protect. Later applications like allowing users to backup computer hard drives with copyrighted software installed on them were a happy accident.

Oh, yes, you are right. I misread the dates. I knew it was not because of a case, that the worry was around archival copies of software, and that (to this day) nobody had actually ever been sued over making a backup (as far as anyone knows). I should have dug a little deeper back into the history.

It would in the sense that mere use wouldn't count as infringement. Distribution is a different thing here and I agree there are more complex shenanigans there.

Obviously not. Everyone who contributed to WordPress now has the right to sue Automattic for 100% of its profits.

This is an excellent question! From my armchair, it would appear a valid reading, but IANAL and all.

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