Trademark Usage in the WordPress Plugin Repository

The use of registered trademarks in plugin names and slugs in the WordPress plugin repository is not allowed, but is the rule being enforced? This is a short opinion piece on my personal experience.
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I’ve been mulling over what to do about this for a while so I’ve decided to write about it and see whether anyone has any thoughts to share.

Trademark Usage in the WordPress Plugin Repository

Back in June of 2020 we launched a new WordPress plugin called Spotlight Instagram Feeds. It’s a simple and intuitive way of embedding Instagram feeds on any WordPress site in a couple of minutes.

When we were deciding on the plugin’s name, slug, and so on, I did some research into how the “Instagram” trademark could be used. Apart from finding Instagram’s official brand guidelines, I found this post about trademark enforcement by the WordPress Plugin Review Team from August 2019.

After contacting the Plugin Review team by email to get some clarification on the matter, I heard back almost instantly.

The Plugin Review Team’s Perspective

This was the first reply I received when asking about the use of the “Instagram” trademark in our slug, name, or readme content.

We would recommend not using the word “Instagram” in your plugin name, the plugin slug, or in any way imply that Instagram has anything to do with your plugin.

Obviously, you can say the word “Instagram” in the readme when describing what the plugin does, but calling the plugin “XYZ for Instagram” would, and has in the past, get their lawyers to complain to us.

WordPress Plugin Review Team – May 2020

Even though this went beyond what is mentioned in the Instagram Brand Guidelines, namely “If you offer an app, website or a product or service that uses the Instagram APIs or is otherwise compatible with or related to Instagram, you may only use Instagram to say that your app is “for Instagram” or that the name of your campaign is “on Instagram” in a descriptive manner.“, it was clear that a name such as “Spotlight for Instagram” would not be acceptable and we followed those guidelines from day one.

My understanding was that anyone infringing on these guidelines would be asked to make the necessary changes and comply with all the rules, just as pre-existing plugins were asked to do. At the time, everyone obliged and those who did not were removed from the repo – at least that’s what I understood to have happened.

Trademark Usage In Plugin Display Names

The below quote from the “Trademark Enforcement” post is clear as day.

All plugins, no matter when they were approved, must comply with trademark usage in display names and images.

Trademark Enforcement – August 2019

Further down, in the FAQs section of that same post, you’ll find this:

Can I use ‘for BRAND’ in my plugin display name?
Sometimes. It depends on the brand. We don’t have a complete list, which makes this very complex. It’s important to pay attention to the rules for brand usage and application uses. Some brands have separate rules. In general, if they’ve trademarked their wordmark then no, you cannot use it for an application. And yes, a plugin is an application.

Trademark Enforcement – August 2019

As you can see here, even though Instagram’s brand guidelines allow the use of “for Instagram” in a name and WordPress’ guidelines allow it in that case, it can’t be done in reality.

From what I’ve heard, Facebook was the one who cracked down on this, despite their guidelines saying otherwise, so there really is nothing that can be done about it from our end.

Trademark Usage In Plugin Slugs

I may not have all the facts on this point, so this is purely my perspective. If I am wrong, please correct me.

According to the “Trademark Enforcement” post,

Plugins approved pre 2015 with trademarks in the URL are ‘grandfathered’ in and permitted to remain. All plugins approved after 2015 are required to meet this restriction.

Trademark Enforcement – August 2019

This one, from what I understand, is a bit more complicated.

Changing old plugin slugs may not be easy from a technical perspective and Facebook themselves may have even allowed plugins submitted pre-2015 to keep their original slugs. If that’s the case – I’m personally not sure – so be it.

With that being said, in order to create a level playing field for all new and existing plugins, why are exceptions not included in the plugin repo’s search algorithm to exclude the slug from consideration in certain cases?

This is just one example involving Facebook and Instagram, but I mention it specifically because it’s the one I know about personally. What is and isn’t allowed or recommended is very clear. Any plugin released pre-2015 can keep their old slug that contains the term “Instagram” but new plugins can’t do that.

Now I might be told to optimise other areas and we’d still rank well, and that may be true, but that doesn’t mean it’s a fair playing field out there.

What We Are Doing for Spotlight

As I continued my work to grow Spotlight Instagram Feeds, improving our ranking in the WordPress plugin repository was a major factor. As a freemium plugin, exposure in the repo is very important for growth.

We’ve done a lot of work in many other areas to get to where we are at today – 9,000+ active installations since launching 8 months ago. I’m proud of what we’re achieving with Spotlight and this is some of the work we’ve done to get there:

  • Spotlight has been optimised to ensure it’s as user-friendly as possible, reducing the number of new users who abandon the plugin.
  • Our on-boarding is constantly being improved and simplified.
  • 58 people posted 5-star reviews for a full 5-star average rating.
  • We resolve all support requests within hours, whenever possible.
  • Spotlight is always compatible with the latest version of WordPress.

All this and more has helped us to improve our ranking on the repo and get more eyes on what we believe to be a fantastic plugin for anyone wanting to embed Instagram feeds on their WordPress site.

One morning though, I noticed that one of our smaller competitors was ranking higher than Spotlight for a few search keywords, but they were doing one of the things I was told to avoid completely.

An Infringement

I won’t be mentioning the plugin by name, you can look it up for yourself if you wish to do so. In January 2021 I was doing some research and came across a plugin with the term “Instagram Feed” in its name.

This plugin is ranking above Spotlight for most keywords, even though it has:

  • Less active installations than Spotlight.
  • Fewer reviews than Spotlight
  • Less 5-star reviews than Spotlight.
  • A lower average rating than Spotlight.
  • Its latest update older than that of Spotlight.
  • Unanswered support while Spotlight’s is all resolved.

All of the above are ranking factors in the WordPress plugin repo’s search algorithm, so how can this be happening?

Does a plugin’s name have that much pull in the search algorithm?

Do the other factors that are so important to ensure it’s a quality plugin backed by a dedicated team not matter enough?

If so, will people or companies like this continue reaping the benefits of the ambiguity of a guideline while everyone else sits by and follows the rules?

I contacted the Plugin Review Team to get their thoughts on the matter.

The Plugin Review Team’s Response

This is what bothered me the most and still does till today. The Plugin Review Team’s reply was as follows, excluding the part where they linked to the plugin in question’s development log:

They changed that 8 weeks ago. […] And as soon as FB’s lawyers email us, then they’ll get their plugin taken down because of it. Just a matter of time.

WordPress Plugin Review Team – January 2021

I didn’t ask any more questions after that, but I started thinking…

  1. If it’s infringing on Facebook’s trademark of “Instagram” in the plugin name, why not ask or require the developers to remove it?
  2. Why choose to wait and take a plugin down rather than be helpful and inform its developers of the infringement to help them out and make sure they can continue providing updates and support for their plugin (if it’s a mistake and not intentional)?
  3. Why is the plugin name not part of “WordPress Plugin Guideline #17: Plugins must respect trademarks, copyrights, and project names.“?

For point number 3, the guideline says this: “The use of trademarks or other projects as the sole or initial term of a plugin slug is prohibited unless proof of legal ownership/representation can be confirmed“.

In the case of Facebook and Instagram, in reality, it goes beyond just the slug and should also consider the plugin name. However, technically, no plugin would be breaking the rules if they put “Instagram” in their name as per the current guidelines.

It would simply be a risk that they take, hoping that either Facebook doesn’t see it or that when they do, the Plugin Review Team would be lenient and ask them to change it rather than taking the plugin down completely.

My Thoughts

Even though this is just one example that impacted us personally, which is what got me to write this post in the first place, any improvements that may come from this would be beneficial for the entire WordPress community.

My goal is for fairness to be applied across the board for all plugin developers while making sure the Plugin Review Team volunteers have the tools at hand to act swiftly and consistently on any potential infringements with as few grey areas and conflicts as possible.

  • I believe the guidelines on trademark infringement should be clearer and include specific guidelines for particular trademarks as deemed necessary. If not mentioned on the guidelines page itself, they could be documented for the Plugin Review Team to refer to.
  • Guideline number 17 should cover plugin names in addition to slugs in order to ensure fairness for all new and existing plugins.
  • The Plugin Review Team should be pro-active on matters like these, rather than waiting on someone else to take action and then taking down a plugin, possibly putting thousands of WordPress sites at risk.
  • The search algorithm should, in some way, account for edge-cases in order to ensure a level playing field for all developers and giving everyone an equal and fair chance of growing the plugin and potentially make a living off it.

I understand that time may be an issue when considering implementing these ideas, but that doesn’t mean that they shouldn’t be discussed.

Important!

This is solely my personal point of view, not that of anyone else, based on the information I’ve obtained on the matter. If I am mistaken on any of the points mentioned above or there is any additional information that I may not have seen or heard about, please let me know in the comments below and I’ll be happy to make any necessary corrections to the post.

This is in no way whatsoever an attack on the Plugin Review Team. In my experience, I have always been treated well when contacting the Plugin Review Team or any one person in particular. I have not included the names of the people who replied to my emails to the Plugin Review Team in the past, though in recent cases the replies were anonymous.

As I sit here writing this, I came across this post about the abuse that some Plugin Review Team members receive. I cannot begin to imagine what that is like.

I want to take a moment before closing off to thank everyone on the Plugin Review Team and everyone who donates their time and energy to the betterment of the WordPress community as a whole. Without you, what we do would not be possible.

My sole intention here is to bring this particular point to light and hopefully ignite a conversation that helps to improve the WordPress ecosystem, even if it’s just in a small way. If I can help do that in another way or through another medium, I’m all ears.

Your Thoughts?

Do you know something that I don’t or may have missed? If so, please share it in the comments below and I’ll be happy to update the post accordingly.

Have you experienced something similar in the past or have your own recommendations to make? Share your thoughts in the comments below.

Mark Zahra
Mark Zahra
CEO at RebelCode, the team behind WP Mayor, Spotlight, WP RSS Aggregator, and the Mastermind.fm podcast. Follow me on Twitter @markzahra.

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