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Jeff Chandler

Jeff Yablon and the WordPress Foundation Settle Out of Court

Earlier this year, the WordPress Foundation sued Jeff Yablon for trademark infringement. The Foundation wanted Yablon to stop using its trademarks, dismiss the opposition proceeding, pay the foundation for any profits related to use of the WordPress trademarks, pay up to $100,000 per infringing domain name, transfer the domains and pay other fees and damages.

Timeline of Events

On June 22nd, Yablon filed a request for default judgement. On June 29th, the Foundation responded to Yablon by asking the Trademark Trial and Appeal Board to deny Yablon’s request for default judgement.

On September 9th, David Mermelstein, Administrative Trademark Judge, filed a response that not only denied Yablon’s motion for default judgment, but also suspended proceedings until the civil case was complete.

With proceedings suspended, Yablon could no longer file motions or requests with the TTAB. The only option left was to proceed through court.

The Settlement Between Yablon and The Foundation

On September 21st, Yablon and the WordPress Foundation settled out of court (PDF).

Sample of Settlement
Sample of Settlement

Yablon’s Obligations

According to the settlement, by no later than October 15th, Yablon agrees to cease any and all use of the WordPress name, logos, trademarks, and any other name or mark confusingly similar to the term WordPress or its logo.

He also has to cease any and all use of the WordPress Marks, standing alone or in combination with other words or designs, including but not limited to:

  • Use in any company name
  • Meta-tags
  • Domain names
  • Personalized URLs
  • Keyword Advertising on Yablon’s websites
  • Social media handles or account names
  • Indoor outdoor store signage
  • Letterhead
  • Stationary
  • Business cards

Yablon must also comply with the terms of the WordPress trademark and domain name policies.

No later than five days after the effective date (Oct 15th), Yablon has to transfer all of the domains he owns that incorporate the WordPress Mark to the Foundation.

Last but not least, Yablon acknowledges that the Foundation owns and has the exclusive rights in and to the WordPress marks in connection with the goods and services identified in each of WordPress’ registrations.

Yablon can no longer do anything inconsistent with the Foundation’s ownership of its WordPress Marks and registrations thereof, including but not limited to, contesting the Foundation’s title to or the validity of the WordPress marks or the trademark registrations thereof.

WordPress Foundation’s Obligations

Once Yablon transfers the domains to the Foundation and does not breach the terms of the agreement, the Foundation will redirect the domains to a domain of Yablon’s choosing for 6 months from the effective date or April 1, 2016, whichever comes later.

Within 10 days of the domains being transferred, the Foundation will file a stipulated request to withdrawal its U.S. Opposition Proceeding No. 91221895 without prejudice and Case 3:15-cv02745 in the United States District Court for the Northern District of California, without prejudice.

As long as Yablon does not breach the agreement, the Foundation agrees not to sue for violating its trademarks prior to the effective date.

The Foundation will not object to Yablon’s use of the WordPress Marks as part of any subdomains or subdirectories associated with any second level domain name registered to and controlled exclusively by Yablon.

Examples include but are not limited to, wordpress.answerguy.com or answerguy.com/wordpress in connection with services that involve use of the WordPress platform, support the WordPress brand services, and that do not otherwise violate the rights of the Foundation.

In Summary

Both parties agree to bear their own attorney’s fees and costs, if any were incurred through the effective date.

When I spoke to Yablon on the phone in June shortly after the lawsuit was filed, he sounded like he knew what he was getting into and the complexities involved with U.S. Trademarks. Yablon strongly believed he had enough evidence to pursue the matter and to see it through the court system.

Instead of seeing the court case all the way through, he chose to give up which in the court system, is not the same thing as losing, as losing or winning sets a precedent.

While Yablon didn’t lose the case, the WordPress Foundation didn’t win either. It’s a reminder that the Foundation will aggressively defend its trademarks in the court system if other means prove unsuccessful.

Do you think Yablon’s mission to defend his use of WordPress in a top-level domain name and potentially open the door for others to do the same, was in the best interest of the WordPress community as a whole?

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93 responses to “Jeff Yablon and the WordPress Foundation Settle Out of Court”

  2. Well that was pretty anticlimactic. He sold it like he was gonna take this thing to court. For him to settle out of court sure does make it all seem like a big waste of time!
    He presented like he understood this trademark stuff better than anyone else, only to settle out of court. What was the point then? Hopefully he’ll be the “answer guy” and let us know why he went through this, just to give up in the end. ¯\_(ツ)_/¯

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  4. Ok, but now report this news in a way that is NOT just recapping lawyer speak please. I mean…

    “On June 22nd, Yablon filed a request for default judgement”

    What does this even mean? How many people actually know what “default judgement” means? Or, worse:

    “Within 10 days of the domains being transferred, the Foundation will file a stipulated request to withdrawal its U.S. Opposition Proceeding No. 91221895 without prejudice and Case 3:15-cv02745 in the United States District Court for the Northern District of California, without prejudice.”

    This sort of stuff doesn’t mean crap to anyone.

    If you do post something about this, at least come up with something that’s a bit more understandable, instead of this ” “Uh, WordPress won, yeah OK, here’s some details no one will really get, but it’s OK because again, WordPress won and that’s really all that matters.”

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  5. Jeff, I have to say I’m a bit surprised, as well as disappointed, in this article.

    I’m surprised, first of all, that you have a copy of the executed agreement, because … I don’t. Seriously. I sent a copy to WP’s legal counsel at 6:38 PM EDT, and have not received a cross-executed version in return. In fact, I have never spoken with or about, nor had I ever even heard of Rose Goldman. I’ll assume she is in fact WPF’s CFO.

    So WPF leaked a copy of a not-yet-legal legal document to you. This very much makes you appear the mouthpiece for WP that I expressed concern you might be to you prior to the long interview you conducted with me several months ago and that you assured me you are not.

    That covers the disappointment part, but my disappointment runs deeper than that, for the reason that a couple of the commentors preceding this pointed out. Mouth organ or not, your rush to get a scoop caused you to release a story missing its guts. And your analysis (“Yablon lost the case. It’s another example as to why people should respect and follow a company’s trademark policies. It’s cheaper and prevents a lot of unnecessary headaches.”) is both short-sighted and full of factual inaccuracy. It would have been cheaper and prevented headaches? No, and no. And I “lost”? No sir, I did not. WPF and I have come to a meeting of the minds, I’ve gotten plenty, even if you can’t see it, and you’ve entirely missed the subtext.

    Jeff, I had specific goals for The WordPress Helpers, and had things worked out differently I might have made WordPress a media powerhouse. Had that happened, your job would have become a lot more meaningful.

    As I said, I’m disappointed. But not in the agreement that I now have (or at least will one day have—thanks for the heads up!) in hand. I’m disappointed in … you.

    And in MaTT, who would have done a lot better for the WordPress community and his investors by working with me rather than, it seems, allowing the CFO of the so-called charitable foundation he’s set up to pretend to “protect his trademarks” to leak documents.

    C’est la vie.

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    • I don’t understand why you don’t have a copy of the document. Rose Goldman is indeed the CFO of the WordPress Foundation. I am not the mouthpiece of WordPress that you think I am. I gained access to the document from a credible anonymous source and like anyone else would do in the WordPress news space, wrote an article based on the information contained within the document. I’m doing my job, nothing more.

      I admit that my rush to get the story out caused me to write an inaccurate summary which says you lost the case. I’ve completely rewritten the summary to be more accurate. You didn’t lose but rather gave up as losing would set a precedent. While you didn’t lose the case, you lost those domains and whatever money you’ll need to pay in attorney fees or court costs.

      I don’t understand what you’ve gained from this ordeal or from the settlement outside of not having to go through any more of the legal process. Settling out of court is an admission that you wouldn’t have won the court case. Based on the rhetoric and your position on things a few months ago, you seemed prime to ratchet this case up and see it all the way to the end, even if you have to go through the lawsuit process.

      With that said, please tell me all that you’ve gained, all the positive things that are a result of this case.

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      • Jeff, I don’t have the document yet because the anonymous source sent you the document before anyone sent it to me. As I said, I executed the document yesterday and sent it to Mr. Wong, the WPF attorney named in the document. I can only assume that he sent it to Ms. Goldman, who immediately executed on WPF’s behalf. But nobody has sent it to me (I presume it will be mailed to my PO Box, again, as named in the document).

        NOW: let me be clear that settling is not an admission that I believe I would have lost. In fact, I believe I would have succeeded in the trademark objection, and also would have won the court case WPF filed against me when I objected to the trademark.

        I settled because once their lawsuit was filed, there was no longer a viable reason to pursue the business plans I always had for TWPH, which involved building a media property targeted at the gazillion WP users.

        What you saw in the five months or so we operated TWPH actively was just the tip of the iceberg, and it was an expensive iceberg to keep afloat. We needed investors, and we couldn’t attract them while the threat of a protracted legal fight hung over our heads.

        I always knew that and always discussed it openly with potential investors, including the venture capitalists who have invested in Automattic. And I contacted every one of them.

        As the document you were leaked states (and it was authored jointly by Mr. Wong and myself, so WordPress acknowledges this), I tried to make nice with WP from day one, and made clear that I was concerned for them and that it was one of the reasons I was approaching this from the angle I did. They didn’t want to play in my sandbox, nor invite me to theirs. That’s their right.

        I’ve outlined this much more deeply in my comment at http://domainnamewire.com/2015/06/19/wordpress-foundation-sues-owner-of-wordpress-domain-names/comment-page-1/#comment-2234955 , and assuming it gets published you’ll be able to read it there. Of course, I’ll also be publishing it at http://wordpress.answerguy.com , which I now have a license from WordPress to use, even after they stop allowing the use of w-o-r-d-p-r-e-s-s in subdomains .

        I had good intentions, Jeff. The entire WordPress Community would have benefited. YOU would have benefited; as I said, this was to be a serious media endeavor and I actually discussed the role you could have played in it with a few of my confidants.

        But life doesn’t always turn out the way you expect.

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    • We don’t care if you’re disappointed, Yablon. You got smacked like we all said you would. We all warned you but you were out to make a point because you had some edge that no one thought of or cared to challenge. You charged ahead anyway and got what was due you. You reaped what you sowed.

      We don’t challenge because the terms are agreeable to the community, which you refuse to be a part of.

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    • If this was leaked publicly before you received a copy and it was executed by the courts that does indeed suck and I see how you would be annoyed. But life can be annoying.

      Given the situation, you would be better served to not complain publicly but instead sulk privately because you are just going to prolong the agony. Move on.

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      • Carl, I appreciate that; it’s great advice.

        I’m speaking here only in the interest of being respectful enough to clear up the questions that have been asked of me in the almost-a-year this went on.

        So thank you. I HAVE moved on. http://wordpress.answerguy.com is now a licensed name. We’ve also registered http://thecmshelpers.com and one other name, all of which will serve modified purposes as we roll them out in the next few weeks.

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        • Just out of curiosity, why do you say you have a license to do something that was never an issue?

          Using WordPress in your sub-domain was never in dispute. That’s like saying you have a license to post comments here or use the Internet.

          I mean, you could continue to say that but it’s not at all correct and may give the less inform reader some bizarre and wrong impression.

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          • Jan, I now have written permission to use the nine letters in subdomains, and that’s the license I refer to. Assuming the trademark that WP applied for last November gets issued once I withdraw my objection, they will be in a position to change the rulez to rules. 

            And my prediction is that they will; in order to defend the trademark once it is issued they will almost have to change their policy so that using the letters in a subdomain is no longer allowable.

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            • Written permission? I’m not being facetious, if there’s no confidentiality or litigation issues baring you from doing so, can you share that complete agreement?

              Getting an affirmation that you can do something that’s already publically accepted isn’t the same thing as obtaining a license.

              It’s not word play, a license is an actual document granting a party permission from an authority to do something they otherwise would be barred from doing.

              Yes, IANAL but I’d be surprised that you were actually granted a “license” to do something that has been permitted for years.

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              • Jan, you’re splitting hairs. I have an agreement (Jeff C. published it above) that specifically says I can use the nine letters in a subdomain and that said allowance will never expire.

                When WP obtains their trademark on the nine letters, assuming that happens, they will be in a position to change the allowability of that for anyone who doesn’t have such an agreement. My license prevents any such change in position from impacting me.

                And please remember that my entire position always took that into account; I asked them for a license to use the nine letters in TLDs, before (and they still don’t have it) they had the ability to prohibit it.

                The splitting hairs should stop. WP and I have now sung Kumbaya, albeit on different terms than I believe were in everyone’s interest.

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    • i am just hearing of this case today.

      upon a cursory reading of the info in this article, my main thought is “what on earth is WordPress doing?”

      does this make it possible that i would be sued, if i claim to be able to help people with WordPress — on my resume?

      what about learning & education websites, live classes, etc.? can a university offer a class on WordPress and use the name?

      how is it that you cannot use the word “WordPress,” if you are offering help to people who use: WordPress?

      how am i supposed to find help with WordPress, if the people who are able to help me with it, cannot use the name of the software?

      did we all just move from HTML sites, to cold-fusion and other dynamic sites — to WordPress — only to watch WordPress crumble as a useful media platform due to legal idiocy?

      was this whole case idiotic?
      what makes sense about this case?
      what impact does it have on people who use WordPress in their daily work (as i do)?

      did the WPF “do wrong” here?
      if so — will people be moving to another platform based on ethics?

      also, this website is called “wptavern.com” ok, well wp stands for wordpress — is this website now “gone?”

      will the WP foundation now search for — and sue — anyone who is using “wp” to stand for “wordpress?”

      who sued whom?

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        • Jesse, i understand where you are coming from, though sharing my “sticker shock moment” may yield some valuable insights regarding the long-term impact of these kinds of “battles.”

          people don’t really invest a lot of time into making sure their beliefs & opinions have solid foundations.

          as i’m getting up to speed, i’m at: wordpress published guidelines saying not to use “wordpress” in domain names (other than sub-domains), and Jeff Yablon went ahead and did it.

          is that what happened?

          yeah, another “newcomer to the discussion” question :-(

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  6. I never did get this whole thing from the beginning. I mean, do people want to use Coca Cola in their domain name? Are they suing Coca-Cola but we just do not hear about it?

    A company has a legal trademark. Has worked hard to brand that trademark. Sure would be nice if we could all use it for free. Think I’ll open up a hamburger place and call it McDonald’s :)

    In the case where there is an infringement like similar name already trademarked, or an existing company with the same name. That I get. Let the cards fall where they may.

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      • Just out of curiosity, if the site was by a health organization, and it was called “AnswersAbout McDonaldsandHealth.com”, would the thinking be that McDonalds would close them down, or request they cease under that domain?

        That’s where I’m seeing similarities here. It’s a resource (unofficial) to help the community (and could help remove fears around the product).

        So someone starts a site called “AnswersAboutWordPressandWhyYouShouldUseIt.com”. It’s an unofficial look by a fan (and/or respected developer) at how WordPress compares to other CMS platforms, and why you should use it over Drupal, Joomla, etc.

        Does Matt request this closed down too? At what stage does merely having an educational, non-partisan FAQ and tips site move from okay to legal action? This is a generic question, and not just based on the Jeff-Matt fallout.

        It all reminds me of how Twitter happily used third-party developers and enthusiasts to build their platform and its use, and then pulled the rug from under their feet when they’d grown to an acceptable size. Hey ho…

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    • The difference, Dave, is that there is some very sticky politics involved here. The WP Foundation owns the trademark, yet allows the founder, Matt M., to use it on a corporate enterprise, WordPress.com. I actually don’t yet fall on a “side of the fence” on this topic as I see both sides, but it isn’t the same as a corporate identities brand being invoked as there are much more complicated things going on behind the scenes. Good on the foundation for protecting the brand and trademark.

      Jeff Y, If you truly do have an idea/service/product that can revolutionize the WP space and more, then it shouldn’t rest on a word. If it does, which is what you seem to stipulate above and previously, it wasn’t going to change anything.

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  7. Do you think Yablon’s mission to defend his use of WordPress in a top-level domain name and potentially open the door for others to do the same, was in the best interest of the WordPress community as a whole?

    Yes. And, although I do not understand Yablon’s reasons for giving up an obviously winnable case, thsi case will be fought again, and it will be decided in favor of the doctrine of nominal fair use as is has before.

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    • Jim, as I said above in one of my responses to Jeff Chandler, I believe we would have won both lawsuits. But once WPF’s suit against me … which would have taken years to litigate … short-circuited the trademark opposition, the business case for pursuing the matter went out the window.

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          • Michael, I would agree that if a business’ success hinged on using a particular name/word/whatever, there would be a problem. EXCEPT in the case of that word being descriptive of what the business does. WE HELP WITH WORDPRESS, and so it seems obvious that when expressing that we’d want need to use the word. (And don’t make the ridiculous “WP” argument; only WordPress people get that and they aren’t the target).

            As I’ve said before, it is our position that there is no valid trademark on “the string” , at least not yet, so that covers things on that front, but now I’ll cover them further: The US 9th Circuit Court of Appeals (that’s the step right before the Supreme Court) has already ruled that even when there is a trademark in place, the idea of “nominative use” allows what I described above.

            But none of this matters any more unless someone else wishes to pick up the torch and run with it. WordPress and I have made peace.

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    • It’s not so much that they want to defend it, but that they HAVE to. This is where Copyright law and Trademark law differ; active defense. If a copyright holder does not defend the copyright, they still retain the copyright until the prescribed term of it expires. If a trademark holder does not actively defend it, they lose it.

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      • Actually, Jon, this was one of the reasons we went about registering the domain name we did and pursuing this case until it no longer made sense to do so.

        Despite what quite a few WordPress Lovers believe, I too love WordPress. I’m concerned, though, that they have not done a good enough job of defending their marks to date, and I saw an opportunity to both use the legal loophole (they had no mark and in fact do not yet have one that is applicable to dictating use of the nine letters, AND would lose anyway under the tenets of nominative use as already decided legally by the Ninth Circuit Court of Appeals), and to compel them, moving forward to do a better job.

        I know, that sounds like an opportunistic statement, and in part the first half certainly is. But it’s also true, and while I never discussed any of that publicly until we made our agreement, I DID discuss it both with my inner circle and with WordPress’ legal team.

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          • Lucas, to be fair to Matt, he may well not have had enough knowledge of the things that WPF’s legal representation was undertaking to have a comment.

            I swear that’s not a snarky statement, in any way. It’s fact that WPF applied for the trademark that I objected to in November of last year. It’s fact that I owned the domains in question before that, and it’s pretty obvious that WP should have applied for the trademark in question long ago.

            It’s also fact that I tried to work this out with Matt directly a while back (i.e., I emailed him and received no response), and while I think he should have responded I’ll sure give him a break on the simple idea that CEOs often let things like this get resolved by the high-priced attorneys they hire to resolve things like this.

            I’d love if Matt took a more active part in this conversation, too, but … well, we’ll see.

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  10. ok, so sites like this one: http://screencast.com/t/0SeDGmMy

    are now “not allowed?”

    goofy friendly geeky guy (in shape too), here to help you with your tech stuff, is “not allowed?” that “image” is practically a cliche…

    what is “samantha” who has little tech skills, who manages her church’s website supposed to do?

    how about “tom” who runs a community center and would rather spend time teaching his kids math than worrying about php coding?

    does this mean that “WordPress” is “open source,” except for the name?

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    • does this mean that “WordPress” is “open source,” except for the name?

      I can’t view the screencast (technical problem for me) but the short version is this:

      1. The WordPress Foundation has requested that no one use the word “wordpress” in their top level domain. So wordpressvendor.com isn’t good but wordpress.vendor.com (see the dot before the vendor?) is fine. This isn’t new and has been out there for years. When it pops up in the forums a boilerplate reply is usually posted when found.

      2. There’s also questions about using the word “WordPress” in your product name, company name, domain name, etc. That too is discussed at this link. That link also touches about domains too.

      Open source software doesn’t mean anyone can represent themselves as a trademark owner or as a representative of that trademark holder. You can use the WordPress software all you like for whatever you like. You just need to adhere to the GPL terms.

      When you do use it and the trademark holder asks you to stop, it’s usually best to comply whether or not you agree . That’s just good being a good part of the community and to Mr. Yablon’s point, makes good business sense.

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      • thank you very much for clarifying and for providing links.

        a bit of a correction/typo: you do mean “in their domain name” and not “in their top level domain,” because we are not talking about

        domainnames.wordpress

        with wordpress being a tld like .com and .net

        Jeff, if wordpress asked people not to register domain names using the text string “wordpress,” why did you do it?

        there may be linguistic reasons like: you can’t restrict my use of the terms “riverboat,” or “windshield,” just because you make riverboats or windshields. but that doesn’t quite fit in this case.

        “wordpress” as a term may not be the most accurate description for what the software does, because it’s a media publishing platform, not merely a “word-publishing” platform…

        anyway, that list of “Yablon’s Obligations” is really intimidating…

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        • a bit of a correction/typo: you do mean “in their domain name” and not “in their top level domain,” because we are not talking about

          domainnames.wordpress

          Good catch. ;)

          Yes, I meant after the TLD such as but not limited to, .com, .net, .me, etc.

          The text that the WordPress Foundation uses is very clear that using wordpress in wordpress.yourdomain.here and yourdomain.here/wordpress is acceptable.

          In fact when in the agreement that’s been posted here that section starts with the following.

          c. Consistent with the WPF policy regarding domain names…

          The WordPress Foundation policy has been saying that for years. It’s nice to see that that policy is re-affirmed to remind litigants of what’s been there for everyone all this time.

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            • restriction is a particular flavor of behavior.

              what would it look like, if the WPF actively promoted as many domain names with “wordpress” in them as possible, creating, for example, a kind of certification process for more skilled service providers?

              is the underlying assumption of the restrictive behavior, the absolute stupidity of the “masses?”

              how naive do you need to be, online, to be unable to distinguish between domains like w-o-r-dpress.com and w-o-r-dpress.org — and domains like “thew-o-r-dpresshelpers.com” and “fansofw-o-r-dpress.com?”

              (dashes added because the comments weren’t accepted without them)

              my domain, purchased for comedic and contemplative purposes, w0rd.press, is open for discussion.

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  11. So, I could be misreading here, but when it says Jeff can’t use “WordPress” in meta tags, does that really mean he can’t say in an SEO description “check out these tips on best WordPress plugins for X”?

    Or am I missing something? Because that would be pretty overreaching.

    On a separate point, is there anything stopping Jeff from buying something like MattCuttsIsAnOverbearingPetulantChild.com, as well as various other similar domains, and the “organization” (sounds very much like the Mafia) would have to redirect the domains they got from Jeff, regardless of topic?

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    • Ahhhh, Danny, you’re always fun.

      To your latter point, yeah, actually they would have to do that. Fear not; I have no such axe to grind with Matt Cutts.

      As for the details in the first part of your question: we’ll see how that plays out. As SEO is a significant part of my company’s expertise, the possibilities are limitless.

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        • Ha. Very funny idea.

          Aside from my belief that at least peripherally I’ve helped the WordPress Community at large (despite much of that community’s pitchfork stance against me), the Chris Pearson story was interesting, indeed.

          But more so horrifying. It’s obviously both different and the same as the fight WP and I are putting behind us, with the sameness being “pay the attorneys to be attorneys” being more important to them than actually doing something useful.

          And in my case the something useful was never more complicated that agree to let me use their name in a domain and a media product representing their best interests. And was discussed with them starting on January 15, and went nowhere.

          I think I’m gonna stick with http://wordpress.answerguy.com .

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          • You can’t be a champion and martyr at the same time, sorry.

            I think the play’s been unmasked and you really just wanted:

            1. A lifetime license for a top-level ‘WordPress’ domain so you consistently come up at the top of Google for all things WordPress.

            2. Leverage item #1 for venture capital monies.

            It was always about SEO and the money.

            So I’m going to keep thinking you’re a WP villain.

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            • Ansel, I like your champion/martyr line. And I agree with it.

              I have not, however,cast myself as a martyr. Not at any point during this, nor now.

              I know that very few people will buy the idea that I’m a champion, and in saying I was trying to help the community at large that isn’t my point; I’m really just explaining my position because during the time we were trying to create something I couldn’t really talk out loud about much of the detail without compromising my business plans, and people have asked repeatedly.

              As to your specific points: yessir, we had plans to raise VC (which of course could not be effected while the legal stuff was pending), and yessir, SEO is part of any media business—and we’re pretty good at it (http://seo.answerguy.com). So good analysis, but … so what? That’s called doing business.

              Finally: you may believe I was a villain, but the project was conceived and always intended to be beneficial to the WordPress Community and to WordPress itself. I know that to be true, because I conceived it.

              Now, http://thecmshelpers.com and another domain we own but are not yet discussing, as well as http://wordpress.answerguy.com will step in, with different plans, far less useful to WordPress.

              My conscience is clear.

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            • Danny, I felt as though Drew got kind of prickly, too, but the whole thing smelled bad, from both sides.
              For me, the entire issue of the correct application of GPL is so complicated I don’t even want to discuss it (nor, you may have noticed, have I). I have no idea who’s right, because at the end of the day and in a much more complicated manner than applies to MY mess with WP, it seems no-ones does.

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  12. Hi Jeff Yablon,

    Comment nesting is fun, right? ;)

    I’m honestly and truly not splitting hairs. I’m just interested in people representing the situation accurately. I don’t doubt for one minute that you fully understand where I am coming from.

    When you are making claims such as this

    Jan, I now have written permission to use the nine letters in subdomains, and that’s the license I refer to.

    Then that’s hyperbole, meaning your words here should not be taken literally.

    If you want to engage in hyperbole then that’s your prerogative. Call it part of your style, pizzazz, affectations. Flourish is cool. ;)

    But please do not represent that you’ve gotten a “license”. There’s already enough people who will read this and take you literally. I think you will agree that there’s enough FUD in the community already. No need to add more.

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    • Jan, hyperbole or not, it is literally accurate to represent the following: 

      I have explicit permission to use the nine letters that spell “wordpress” in subdomains, and by contract (which can’t be changed), not policy (which can).

      Functionally, that’s a license.

      And we should probably stop right here.

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    • Actually, Jan, Jeff Yablon has got a license. That’s exactly what he’s got. No hyperbole.

      So you’re in no position to accuse others of FUD.

      You might not like it; you might even think it was a crazy way to obtain a license. But he has actually got a license.

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      • That’s a nice sentiment, but their’s nothing presented that shows that to be the case.

        Saying there’s a license is like my saying “You have permission to use the user name KTS915.”

        1. I don’t have any authority to say that one way or the other.
        2. My saying that isn’t a license.

        Moving on now. ;)

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        • Actually, Jan, if contained in an appropriate document, “You have permission to use the user name KTS915.” would indeed be a license. It’s a license from you. And that would be legally enforceable against you.

          I think you are treating the word “license” as meaning only some sort of permission granted by a licensing authority. That sort of license would be enforceable against others, and not just the licensing authority.

          The law recognizes both such licenses and, indeed, calls them both licenses. They aren’t the same and, as I’ve indicated, the law doesn’t treat them the same. But it does call them both licenses.

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  14. I don’t really want to wade in on either side here, but I do feel the need to point out something a number of commenters seem to have failed to pick up on.

    I’m talking about reactionary comments like this:

    You got smacked like we all said you would.

    The argument seems to be that because Jeff settled, he therefore “lost”.

    Umm… hang on… the WPF settled too!

    Yes, Jeff was denied the use of the word WordPress in his TLDs (which I certainly don’t have a problem with) and overall the settlement feels weighted in favour of the WPF, but they certainly didn’t achieve all they set out to as stated in the leaked document. Yes, yes seeking financial recompense was no doubt just a big stick to frighten Jeff off going to court but still, the situation and the result is not as black and white as some commenters would like to think it is.

    If, as people are claiming here, Jeff settled because he didn’t think he would win the court case then by the same argument the WPF must have thought they couldn’t win the court case too, because they agreed to settle as well!

    Come on people, use your noggins instead of automatically taking a side based on your pre-conceived biases.

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    • Well measured, response, Dave.

      MOST legal posturing is just that … posturing. As I stated in an earlier comment, I believe I would have won both the trademark objection and the lawsuit WP filed against me as a result. I discussed this in detail with their counsel, and his response, whether he actually believed it or not, was to posture at me privately. And that’s his job, and it’s fine. Truth is, I found working with him on this agreement for the last several months to be … almost pleasant.

      Who got the better of this? If you must have one answer, I agree that it was WP. OTOH, the only thing I EVER wanted was to have an official acknowledgement from them that I had the right to use “the nine letters”, and I got that, if in a way that for the moment is no different than everyone has. But as I explained, I believe that the rest of the world is about to lose that right, so maybe I gained something real, here. We’ll see.

      What makes me sad is that I tried from Day One to play nice with WP, and everyone there including MaTT knew it. And yes, I tried to reach him directly a few times, which he ignored. But even if he somehow missed that,Mullenweg has his ears open as evidenced by his smarky response to me above (https://wptavern.com/jeff-yablon-and-the-wordpress-foundation-settle-out-of-court#comment-82888).

      I believe working with The WordPress Helpers instead of playing the lawyer game would have been a good thing for WordPress. And I always will.

      Stay tuned at http://wordpress.answerguy.com and http://thecmshelpers.com .

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    • Thanks, Chris. Dunno about the first half, but the second half, sadly, seems true.

      And while I’m painfully aware that spending the time I have here likely won’t mean anything toward “part 2”, I felt as though the people who were on my side in this debate and disappointed that I made the business decision to settle deserved some explanation.

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    • Rick, that’s the funnest question yet. And the answer IN MY CASE is that no, I cannot, because included in my license to use the letters in a subdomain is the stipulation that I not use them otherwise (technically that isn’t even accurate, but I’m adhering to the spirit of the contract).

      However, as it sits right now, others can do so. WP’s “policy”, the one that this entire mess is about, reads (I’m paraphrasing, but you get the idea) that if you happen to have such a domain, you can do exactly that. The policy says something like “we hope you’ll consider transferring such domains to us but as long as the final resolution is to a domain that does not include the letters, it’s all good”.

      Of course, that’s policy, not law/contract/trademark rights, and so if WP is granted the trademark to which I objected they may well (and honestly would HAVE TO in order to keep the trademark) make that not OK.

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  18. A couple belated points buried in a wall of blah…

    (1) Ownership of a trademark does not, under US law or via the Madrid protocols, absolutely preclude the use of said mark in commerce by a third party.

    (2) Ownership of a trademark does not, under US law, via the Madrid protocols or the according to rules of the ICANN, impart any de jure or de facto ability on the part of the trademark holder to confiscate, or otherwise obtain by force of law or administrative action, any and all domain names containing said mark, in whole or in part.

    Those two facts notwithstanding, there is NOTHING in US law that precludes or substantially discourages the owner of a mark from seeking to preclude the use of their mark in commerce by a third party and/or to seek the confiscation of any direct or tangentially relevant domains in a court of law.

    The outcome of that legal action, as any person of sufficient age and experience with the US courts can attest, is dependent in largest part on one factor alone – the financial resources of the party defending the mark.

    In other words, he who has the gold, makes the rules.

    If you want to register wordpressfanclub.com (I haven’t checked its status) and run a fan club for WordPress, feel free. The WPF has little to no chance to stop you from doing so either via US courts or via ICANN – so long as you can afford to answer them in court and at the administrative hearings should they choose bring the weight of their legal budget to bear against you.

    Conversely, if you want to register wordpressiscontrolledbyanevilcabal.com (I haven’t checked its status) and run a satirical website slamming the WPF, you are likely within your legal rights to do so. But again, your legal rights end about 30 seconds after your legal budget is exhausted.

    A trademark of “WORDPRESS” has both incredibly good and horribly bad potential ramifications. Which come to pass remains to be seen.

    The situation referenced in this article should, if nothing else, make it clear that the WPF has the ability to have substantial influence on who are winners and losers in the WP environment.

    WordPress SEO by Yoast….winner. The WPF allows his use of “WordPress” in his Meta tags. Jeff Yablon….not a winner. The WPF opposed his use “WordPress” in his Meta tags. And so on and so forth.

    This isn’t about a domain name. This is about the selective defense of a trademark relating to some GPL code.

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  19. Jimmy … GREAT commentary. A few things:

    First, “WordPress SEO by Yoast” is no longer that software’s title. Joost changed it a few weeks ago, and my guess is that he did so because of this action and the fact that he has a relationship with WordPress that neither he nor they can afford to mess with.

    Second, you are certainly correct that vis a vis winning versus losing in this context, Joost was winning before this action forced both his hand and that of WordPress, and in the same context one would have to view me as having “lost”.

    Third (most important, and HIGHLY significant in EVERY context) is the wording you used: “…This is about the selective defense of a trademark…”. That’s the real issue and was both the largest impetus for us using the nine letters as we did and my belief that WordPress is going to have to change the policy they have in place re subdomains, etc.: you CAN’T selective defend a trademark; doing so is primary cause for losing it.

    I really wish this could have worked out differently, not only because I wanted to do things … the way I wanted to do them, but because I believe that because of the importance of a healthy community WordPress will be worse off with a registered mark on the nine letters than they would have been without it.

    And so it goes …

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