On Domain Trademarks in the Open Source Community

After reading an article on Weblog Tools Collection in regards to the WordPress trademark, and reviewing the information on WordPress.org, I got to thinking about how this affects the open source community.

In the commercial realm, it is very important for a company to protect their trademark. If they fail to do so, somebody might sell a similar product using the same name which could confuse consumers. In the open source realm, the software and code base is community based. Because of the community involvement, other related websites crop up to extend the original software.

In the case of WordPress, the code is maintained by a commercial entity, Automattic. As a commercial company, Automattic has an interest in protecting the name “WordPress,” especially since they run a hosted service at WordPress.com. At the same time, there are also plugins and themes developed for the software, as well as meetups and “WordCamps” which are a WordPress un-conference.

Naturally, people extending WordPress, would use “WordPress” in the name of their project or website, but unfortunately, this is a no-no based on the information on WordPress.org. Because of their legal advice, they recommend that you use “wp” instead of “WordPress” in the domain name of any related project– unless, of course, you want to be sued for trademark infringement. On the flip side of this, the WordPress logo, which has also been trademarked, is allowed to be used, as long as you use the “official” logo. They’re granting full use to the logo trademark, but not the name trademark.

The problem arises with making money off WordPress in a way that Automattic and/or WordPress already gains income from. In essence, you would be taking from profits not rightfully yours since you’re not the trademark owner. But what if you are just contributing to the community? Giving back, as in charity to the community with nothing to gain? Shouldn’t you be allowed to use “WordPress” in the clear? Common sense would agree.

This puts everybody– Automattic and the WordPress community in a catch-22. How can you effectively use WordPress in a domain name without degrading to “wp” or facing legal action. Is it just an issue with US Trademark law, or is there a better way to handle the issue and allow the use of “WordPress” in a domain name while keeping the trademark protected?

There may be a fix. Mozilla has allowed the use of their trademarked names in domains, as long as you have permission. They have a fairly straightforward application that you can fill out and send along to the Mozilla Foundation. Pending approval, you can use the trademark as long as you don’t do anything to confuse your website and the trademarked product. Something similar out of the Automattic/WordPress camp would allow common sense, non infringing uses of “WordPress” without worrying somebody might steal their business. And since it’s permission based, it can be denied if things start to go awry.

Since I’m not a lawyer, this is just my opinion. What are your thoughts on the whole situation?

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