The trademark for WordPress plays an important role in Matt Mullenweg’s extortion campaign against WP Engine, and all the security implications that come out of it. What is clear is how unclear things have been with that. Matt Mullenweg has said things that are misleading and in other cases appear to be outright false. One of his own lawyers is disagreeing with him over fundamental issue (it isn’t the only issue they disagree with him). Was the trademark donated to the WordPress Foundation or not?

Matt Mullenweg’s announcement in 2010 said the trademark was donated (emphasis ours):

The WordPress brand has grown immeasurably in the past 5 years and it’s not often you see a for-profit company donate one of their most valuable core assets and give up control.

On the WordPress Foundation’s blog, a post, written by someone only identified as jane (who appears to be Jane Wells aka Jen Mylo), at the same time mentioned it was donation multiple times (emphasis ours):

We are pleased to announce that Automattic has made a remarkable and generous donation by transferring ownership of the WordPress trademark to the WordPress Foundation. We’re honored to accept this donation, and to preserve and protect the trademark in the years ahead as a keystone part of the Foundation’s mission to ensure that WordPress is around and thrives for generations to come.

Matt has posted about the decision to donate the trademark on his blog, and our official trademark policy is posted here on this site.

The post is also in the Donations category.

In a post on Automattic’s blog released last week, an associate general counsel at Automattic explained makes no mention of a donation, and specifically referred to there being a “consideration” involved with the transfer:

In olden times (i.e., before 2010), there was only one owner of the WordPress trademarks: Automattic Inc. In 2010 the WordPress Foundation was created and Automattic essentially signed over all non-commercial rights to the WordPress marks to the Foundation. This was accomplished by having Automattic turn over all rights to the WordPress marks to the WordPress Foundation and then simultaneously having the WordPress Foundation license the commercial rights to the marks back to Automattic.

If that sounds confusing, here’s another analogy: this is like telling your friends that they can drive your car on the weekend, and then accomplishing that by giving them your entire car outright and simultaneously having them sign an agreement allowing you to use the car (which is now theirs) on weekdays.

In order to effect a valid license agreement, there needs to be an actual exchange of value from both sides, which lawyers call “consideration.” For the licensing of the commercial use of the WordPress marks to Automattic, the consideration was Automattic turning over the entire trademarks to the WordPress Foundation.

According to the Cornell Law School Legal Information Institute, a donation can’t involve a consideration:

A donation is a gift – usually one of a charitable nature. A donation is a voluntary transfer of property (often money) from the transferor (donor) to the transferee (donee) with no exchange of value (consideration) on the part of the recipient (donee). (The recipient gives nothing in exchange for the donated property.)

So either the claims that it was donated are not true or it would suggest there isn’t a valid license agreement between the WordPress Foundation and Automattic.

If you want to get in to more of the legal minutia of the situation check out two streams done by lawyer Mike Dunford. One after the crease and desist letters were sent and the other after WP Engine’s lawsuit was filed.

There is apparently another license agreement that exists. There doesn’t appear to be a public copy of it. And isn’t even clear who it would be with. The same lawyer claims that the WordPress “Foundation also licensed the name WordPress to the non-profit WordPress.org, which runs a website that facilitates access to WordPress-related software.” Matt Mullenweg claims that he personally owns WordPress.org, and the license is with him.

That could be cleared up if the license were made public, which if you were to believe Matt Mullenweg, already is public.