Comment by kemayo | Hacker News Reader

Comment by kemayo | Hacker News Reader

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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.

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