DEVELOPERS BEWARE! I just got served a cease and desist from Automattic... You could be next!


#1

This was the email I just received from Automattic. I would like to contest it. Any advice. I am based in the UK and they are in the US. Does this make any difference. Woo is a common English word - used for decades. .

Hello,

We’re writing to you regarding your use of the Woo trademarks at:

https://woorefugee.com/

As you may know, Automattic owns the Woo, WooCommerce, and WooThemes brands, as well as the associated trademarks. We recently learned of your company, which actively makes use of our registered trademarks in its name and/or promotion. We are very concerned that the use of our marks will create confusion by communicating that your business and/or service is endorsed by or associated with Automattic, when in fact it is not.

While Automattic appreciates that you are providing products that build on the WooCommerce open-source software, that fact does not authorize you to use the Woo, WooCommerce, or WooThemes trademarks. To minimize user confusion and to protect our own intellectual property, we unfortunately must insist that you take prompt steps to address the issue. Specifically, we ask you to please:

  • Change the name of your company and/or domain name.

  • Remove any Woo logos you may have used.

  • Change the name of all extensions and/or themes that use our trademarks inappropriately as part of their name or are named in an identical or confusingly similar manner to extensions and/or themes that we offer for sale in our catalog of WooCommerce Extensions and Themes.

  • Include a statement that your marketplace is not affiliated with WordPress or Automattic, and direct users to the proper channel for updates and support (if you provide updates and support for the extensions and themes you sell). Alternatively, you should make clear that if your users would like to have updates or support for the extensions and/or themes that they’re purchasing, they should purchase their extensions and themes from our site.

For more information, please see our Trademark Guidelines:

https://www.woothemes.com/style-

Please let us know once the changes have been made, or if you have any questions. If we don’t hear back from you within 5 business days, we may contact your host or domain registrar to attempt to address these issues.

Kind regards,
Automattic Inc.


(Leland Fiegel) #3

I would start by looking for a lawyer very familiar with trademark law, especially in regards to the web. I don’t think you’re going to get much credible legal advice on this forum, but I can offer this:

While Automattic’s headquarters is in San Fransisco, they also have a subsidiary called Aut O’Mattic in Ireland, which gives them a presence in the EU.

Also, they could probably take any US-based judgment to your domain registrar and/or web host and have them shut you down. Bluehost, which appears to be your web host, is also US-based.

So is “apple” but you would’ve probably gotten a similar email from Apple if you started selling unauthorized MacBook parts on applerefugee.com. It’s not just about the mark, but also the trade in which the mark is used in. Hence, “trademark.”


This goes without saying, but the path of least resistance would be to comply with their demands. They’re not telling you you can’t do what you’re doing (give away GPL-licensed extensions). Plenty of sites, like GPL Kit, already do this in some form. They’re just asking you to not use “woo” in such a way.

If you contest it, you might win, but you’d still probably be in the hole for any legal fees. You have to ask yourself if that would be worth it to you.


(Leland Fiegel) #4

Not 100% sure on the “woo” trademark status, but not having a registered trademark doesn’t stop companies from asserting they “own” it.

For example, Facebook has asserted that they own the word “book” in the context of social networks. Even though they hadn’t registered that trademark, they successfully forced a social networking site called Teachbook to change their name.


(Gary Bairead) #5

Yup, my bad.

The trademarks are actually owned by “Bubblestorm Management (Proprietary) Limited trading as WooCommerce”

https://trademarks.justia.com/owners/bubblestorm-management-pty-limited-3182390/


(Leland Fiegel) #6

Ah, yeah you’re right. I forgot about Bubblestorm.


(Michael Tieso) #7

Thanks for making us aware of your site by joining our WooCommerce Slack and asking for developers to help you in your scam :slight_smile:

This is key here.


#8

Michael - When I went into that chat room, it was to specifically enquire if anyone needed any extra work and that I was willing to pay them DOUBLE what they get at Woo for support. Whatever your opinion on me - It’s wrong. I am not trying to ‘scam’ anyone.

In fact - I was banned when I asked this question. I then posted a message on the WooCommerce reddit group, and it was deleted. And now I am getting lots of emails from WooCommerce developers giving me grief… WTF GUYS? No wonder your support takes nearly a week to get resolved… Too busy with silly disputes.

Secondly, I am not using the trademark incorrectly. It’s nominate fair use and I have made the changes required. I would remortgage my house and fight this in court if I needed to. Everything I am doing is completely legitimate.

I download the OFFICIAL WooCommerce extensions and give them away for free. If you don’t like it, don’t use the site. But I am not doing anything illegal.

Get a grip.


(Michael Tieso) #9

:thumbsup: good luck with that


(David Skarjune) #10

Best to do some research before launching a business, especially when the business idea is based upon another business already in the same marketplace. Yes, words can be trademarked to protect their use in a market. Sure, it’s a GPL product, which means “Free as in Speech, Not as in Beer,” but doesn’t mean that related business services can be taken and used as one likes.

Domain Name: WOOREFUGEE.COM
Registry Domain ID: 2136325527_DOMAIN_COM-VRSN
Registrar WHOIS Server: whois.bluehost.com
Registrar URL: http://www.bluehost.com/
Updated Date: 2017-06-22T19:58:25Z
Creation Date: 2017-06-22T19:58:25Z


#11

I have done enough research to know that what I am doing is nominate fair use. I have even sought legal advice on the matter.

Officially - it’s completely OK to redistribute their extensions for FREE (that isn’t up for discussion). And LEGALLY; I am allowed to call them what they are officially named, as long as I mention that I am not affiliated or endorsed by the company.

When you go to WooRefugee.com - there is no confusion as to whether or not it is an official site. – It doesn’t look like an official site and every page is plastered with disclaimers. Not only that, but I have actually complied with all of their written requests.

Please tell me what I am doing wrong…

Also; your analogy between free speech and beer is completely mistaken. Neither of those come with a redistribution license… We just take it for granted.


(Peter) #12

@WooRefugee Why to spend your time and energy with something like trademark of “Woo”? That word does not give any value to your service.
I think it would be much effective just to focus on your service/business instead. As you do it “open source way”, do it that way and try to avoid fighting with companies, trademarks and all that bullshit existing in corporate business world.
It would be different if you have already known brand/domain, but you just started.

Btw. your site gives me an error regarding certificate in Firefox/Linux. OK in Chromium. Check it.


(Jason) #13

I’ve got to say, this may be legal, but it’s not ethical. And being willing to “remortgage [your] house” over this is too bad. You sound like you’ve got a lot of passion and conviction. If you put that towards something awesome, I bet you’d do great. This is just not a battle worth fighting, in my opinion.

I hope all the best to you. :slight_smile:


(Jesper Søholm) #14

Maybe the case is closed, but here’s my experience - FWIW.
Almost 15 years ago I was in a similar situation. My partner and I had launched our web business under the name of KODEKS.
Apparently, this was enough to get KODAK’s lawyers up in arms. We thought it was quite ridiculous, since nobody would confuse KODAK with us. But here’s what we learned from the brand specialist law firm that we consulted on the matter and other sources.
There seems to be a quite extended protection of brands that are considered well known within a trade. (Ironically for us, some has actually named it something like the “Kodak clause”!)
This means that big company lawyers are quite aggressive protecting everything that comes near their brands. And they usually have a good case. The big brands are protected beyond their trade.
We were doing web solutions specifically designed for photographers, which was why we were targeted.
I would say that WooCommerce has a quite distinct position within their field, so they will probably have a better case than you.
Furthermore, they have - as you no doubt are aware of - an existing practice of using the Woo as a prefix in a lot of words and products: WooMembers, WooExperts, WooThemes etc. (of which they have even formally registered a few.)
In short, if I were you, I would save my energy - and be happy that this didn’t happen after 5-10 years of building up a brand or business.
And how did my story end? Having spent too much money and time on legal advice, we were finally able to negotiate a deal with the legal agent that allowed us to use the name KODEX instead. Which was possibly a better solution anyway. :wink:

(Whether WooCommerce can be trusted after their latest change in pricing policy is another discussion, I guess.)