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Jeff Chandler

The GPL License Doesn’t Provide The Freedom To Infringe Registered Trademarks

While the GPLv2 is an open source license that offers many freedoms to do with the code as you please, those freedoms are not carried over to trademarks. Take WordPress for example. WordPress is a registered trademark overseen by the WordPress Foundation. If someone wants to redistribute WordPress as is, they can under the terms of the GPLv2 license but would likely be stopped for trademark infringement as it would cause confusion with the official project.

WordPress Trademark Filing On USPTO
WordPress Trademark Filing On USPTO

According to USPTO.gov, a trademark is defined as:  a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.

The GPL is a license that defines the terms of use for the code. A license does not serve the same function as a copyright or trademark and the GPL itself is designed for software not for logos or names.

Trademark registrants are obligated to enforce their trademark or risk losing it. Copyright and trademark laws are different and eloquently explained by Sara F. Hawkins. She explains the similarities and differences along with the things you need to know about both. The Software Pluralism site also has explanations with examples of how trademarks intersect with open source software.

Other WordPress companies that strictly enforce their trademarks are RocketGenius Inc. with GravityForms and Joost De Valk with the character mark of Yoast registered in both the US and the Netherlands. In a conversation on Twitter with Carl Hancock and Joost De Valk, I discovered that enforcing trademarks is a full-time job for both.

Trademarks Give Business Owners Leverage Where The GPL Does Not

Of all the effort that was put into educating users and developers of the GPL in the past several years, what to do with trademarked material must have fallen through the cracks. It must be stressed that the GPL is a software license. Trademark and copyright laws are different and should be treated as such.

The responsibility is on the person forking and redistributing a plugin or theme to ensure no copyrights or trademarks are being infringed. Sean Lang learned this lesson the hard way when he tried to redistribute a version of WP Migrate DB Pro but mistakenly used copyrighted content within the Readme.MD.

The following are general rules of thumb that should help avoid trouble when forking or redistributing a theme or plugin. These steps are especially important if you decide to fork and redistribute a commercial theme or plugin.

  • Rename it. Keeping the same product name confuses users and possibly violates a trademark
  • Maintain the copyright of the original author
  • Do not use trademarked images, logos, etc.
  • Search for registered trademarks of the product and company name
  • Look for trademark information on the company’s website, usually found within the terms of service or in the footer.

Registering a trademark for a WordPress product or company seems to be the way to go to ensure your brand and reputation is not being used maliciously or in a confusing manner. If WordPress companies had a secret weapon, it would be trademarks.

If you have registered a trademark for your WordPress product or company, please share your experience in the comments. Also feel free to share your process for dealing with infringements.

I am not a lawyer and this post should not be taken as legal advice. Please do your own research and contact the appropriate people to receive legal advice as copyright and trademark laws can be complex and hard to decipher.

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9 responses to “The GPL License Doesn’t Provide The Freedom To Infringe Registered Trademarks”

  1. There is latitude to make references to upstream products. You can say that a product uses an upstream source code, for example, “Foo, the app is powered by the Linux® kernel.”

    You just have to give clarity when referencing the upstream product/project is not an endorsement or direct affiliation.

    So, someone could announce “ForkedWord is a fork of the WordPress CMS.” for example…

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  2. two questions…

    1) Joost’s marks are registerd in #NED & #USA . I am in #CAN where nothing is registered (I am assuming so far since it isn’t mentioned in the article). What if someone in Canada uses his trademarked items? Replace Canada with any other country outside #NED / #USA.

    2) Can’t I download WordPress, replace every place WordPress to let’s say JeffTowel and then the wp- folders (wp-admin) to jt- and the standard prefix to be jt_ instead of wp_

    TECHNICALLY SPEAKING, not that I would do it.

    Disclosure: I use Yoast SEO plugin and I think it is awesome.

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  3. It would be strange that not removing trademarked phrases in function and class names would be a trademark violation when forking a project. Which I assume are covered by the GPL as well. Same goes for comments etc. I would guess most trademark registrations doesn’t cover usage in code.

    Also I know WP developers issues DMCA notices to web hosts that host some site that distribute their stuff even if its was perfectly fine for the site to do so. Since most web hosts dont know much about DMCA and WordPress anyway (explanation given in the WordPress presentation). So essentially the practice that people condemn game, music and movie for practicing seems to be perfectly acceptable within the WP community.

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    • I think trademarked phrases in function and class names would be covered. WordPress itself doesn’t include it’s trademark in many (any?) function or class names though, just “wp” which I don’t think would be covered by trademark laws. I could be wrong though; that’s somewhat of a guess on my part.

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      • Perhaps but I can’t find any discussion concerning it. All I find concerns naming products and services and promoting using trademarked name. Wouldn’t the usage of for example a function of wordpress_connect(), function name in a WP plugin be a trademark violation then? It seems weird.

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      • @Miroslav/Ryan/Andreas,

        IANAL, but I would think that copyright would apply to function names, and trademark would apply to the name of the final product/service, as well as to the entity placing that product/service on the market.

        In other words: the Genesis Theme name would be covered by Trademark, but the name of function genesis_some_function_name() { // functional code } would be covered by trademark, as a creative expression of naming convention.

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        • “Genesis” is perhaps not the best example, since it is an existing word and therefore hard to claim trademark on, but I understand what you meant.

          Perhaps function names and whatnot would be treated like text in a document? But by using the trademark within the function name, it could be deemed that you are representing that code as being an official product of that organisation even thought it may not be, but then you have the right to copy it according to the GPL, so …. arghh, blargghhh. I give up. This is too complex :P

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