Comment by zugi | Hacker News Reader

Comment by zugi | Hacker News Reader

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> However, they copied it to their commercial Wordpress site and offered it as part of their "business plan" and also their paid premium plan.

That part is absolutely fine and is covered in the original article under "Wait, aren’t WordPress plugins open source and free to modify": ( https://wpfusion.com/business/regarding-our-cease-and-desist... ) You can copy, fork, and even "sell" free software if you like, as long as you comply with its license terms.

This is a trademark dispute, not a copyright dispute.

The trademark dispute here is the use of the phrase "Advanced Custom Fields" in Automatic's marketing and on their website, as illustrated in the picture just above that section of the article. Automatic's core response is probably correct in a technical detail: e.g. in marketing for "Open Office Sheets", you are allowed to say "Open Office Sheets is better than Microsoft Office Excel because..." Even though "Microsoft Office Excel" is trademarked by Microsoft, you're using the name to draw clear distinctions, not to imply endorsement, nor to confuse people into thinking you're selling their product.

It would be an interesting legal case because even though Automatic may have been using the phrase in an allowable way, the result did create confusion in customers. Customers aren't reading the full sentences of the article, they're using Google to find something, clicking "buy", and then later contacting WP Engine for support for something they bought from Automatic. That's proof of the confusion that Automatic created.

>The trademark dispute here is the use of the phrase "Advanced Custom Fields" in Automatic's marketing and on their website, as illustrated in the picture just above that section of the article.

Yes, I read that section. But two things. I feel like that's restating the same point I was already making as though it were an elaboration, which is frustrating. Yes, they are using the disputed terms, not just "Advanced Custom Fields" but also "WP Engine".

And secondly, it may be true in some notional sense that doing such a thing as using the term just in a comparative reference to something else (e.g. OpenOffice vs Microsoft Office) is fair use. But that's not what Automattic is doing, which is precisely why it's puzzling that invoking that sense of "fair use" is their response to a charge that is about their use in a much more specifically commercial context.

> The trademark dispute ...

Is something Matt started, when he suddenly went after WPEngine for trademark use after decades of their use - during which time Matt praised and even invested in their business.

And he has publicly admitted trademark use not the real issue he has, but that he's using it as leverage in his attempt to extort WPEngine out of a huge amount of money that he's not legally entitled to - telling The Verge what he's doing is like Al Capone getting arrested/charged for taxes.

The last sentence in the OP is 100% true: "But as long as Matt’s motivations with WordPress are tied to his profits at Automattic, he can’t be trusted." (I'd go further and say there's pretty much nothing Matt can do now to regain the trust in him that's been lost.)

“In my role as owning WordPress.org, I don’t want to promote a company, which is A: legally threatening me and B: using the WordPress trademark. That’s part of why we cut off access from the servers.”

From: https://www.theverge.com/2024/10/4/24262232/matt-mullenweg-w...

“The analogy I made is they got Al Capone for taxes,” Mullenweg says. “So, if a company was making half a billion dollars from WordPress and contributing back about $100,000 a year, yes, I would be trying to get them to contribute more.”

> Automatic's core response is probably correct in a technical detail...

The legal term for this is nominative use [1] - sometimes "nominative fair use", although it's unrelated to the doctrine of fair use in copyright law.

[1]: https://en.wikipedia.org/wiki/Nominative_use

> The trademark dispute here is the use of the phrase "Advanced Custom Fields" in Automatic's marketing and on their website, as illustrated in the picture just above that section of the article.

No, it's not about ACF and has nothing to do with the company WP Engine. This is a trademark dispute about WP Fusion Lite from the company named Very Good Plugins.

"Advanced Custom Fields" is a trademarkable term?

Beyond the point that custom fields are pretty much always advanced, there has to be a point at which a term is so fundamentally non-specific that it cannot be subject to trademark.

I just think it's bloody madness sometimes.

Single English words cannot be trademarked. However, if you string two of them together, and demonstrate that you are actively using the phrase in commerce, you can get the phrase trademarked for use in a particular domain, e.g. computer software.

Three words is even better.

Note that a tractor manufacturer could still trademark "Active Custom Fields" for agricultural equipment, because it would not be confusingly similar to the "Active Custom Fields" software.

Also trademarks have to be renewed every 5-10 years and you must show that you are actively using it.

> Single English words cannot be trademarked.

Um... Apple? Shell? Alphabet? Chevron? Target? Caterpillar? Oracle? Orange?

I think the key is that these are trademarked for a particular domain. If I tried to sell software as Alphabet I'd be shut down, but my kid's teacher doesn't need a license to teach the alphabet.

In the last discussions about that it was stated the trademark wasn't granted. Exactly, too generic. ACF is the active trademark.

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