WP AND LEGAL STUFF

Hats off

Hats off to Matt. Despite all the heat in the community at the moment, yesterday he turned up on ThePrimeTime for an interview with ThePrimeagen to talk about the controversy. What’s more, he did that when – clearly – he was pretty exhausted.

Seven things

To my mind, some of the things he said are quite telling or otherwise warrant comment. I want to focus on seven of them.

1. Confusion over ‘WP’

When asked about the recent change in the WordPress Trademark Policy (see WordPress Foundation changes Trademark Policy to criticise WP Engine) and why there had been a change to the previous statement about ‘WP’ not being protected by the trademarks and people being able to use ‘WP’ however they want, he said:

“It still says that. So you can still use WP. You can, like I said, WP beginner, there’s lots of WP plugins. There’s lots of WP things. Just how they [WP Engine] were doing it is an egregious violation of trademarks. And as a trademark holder, you know, Automattic … owns a commercial trademark, they can choose who to go after.”

Let’s be clear. There is no trademark over ‘WP’. Owning (or, actually, having exclusive licensed rights) to ‘WordPress’ trademarks does not legally entitle Automattic to have a crack at anyone it likes who happens to be using ‘WP’. This assertion really muddies the waters.

2. Infringement okay if you’re giving back

Matt said:

“So if someone was using WP in a way that wasn’t, you know, causing harm, or maybe they’re using ‘WP’ or ‘WordPress’, but they’re also giving back to the community. Awesome. By the way WP Engine had the option in the deal I offered them. They could pay a trademark fee or they could pay that in salaries and hourly and hours of contributions or any combination.”

To me this betrays a haphazard approach to trademark enforcement. In substance, on Automattic’s view of what the trademarks enable them to do, it suggests trademark infringement is okay as long as the infringer is giving back to the community.

3. Inconsistency with cease and desist letter

Referring again to WP Engine, Matt said:

“They’ve done so little and been so successful. They built a half a billion a year business. And if you have to ask yourself, how did they build it? It’s partially on the backs of confusion with the WordPress trademark, which is what we’re trying to ask them to stop and why they’re fighting so hard to not do it.”

One can contrast this with the hyperbole in the cease and desist letter from Automattic’s lawyers to WP Engine and Silver Lake:

“WP Engine’s entire business model is predicated on using our Client’s trademarks.”

4. Trademark leveraging

When asked whether there’s a requirement for WP Engine to give back, Matt said:

“What’s a requirement? You know, is there a law that says you have to give back? No. There is a law that says you can’t violate the trademark. So that’s, that’s the law that we’re using to try to encourage them to give back.”

Is this a telling statement? Is this fight truly about trademark infringement, or is trademark law simply be used as a lever or threat to encourage (it might be more accurate to say ‘require’) WP Engine to give back to the community at a level that is acceptable to Automattic?

5. Uncharitable stab at Local

Referring to WP Engine’s provision of Local (which it purchased some time back at part of the Flywheel acquisition), Matt said:

“You know, they have this, they actually have a cool thing called Local, but if you look at Local, it just sells WP Engine hosting. Like, it’s not like … something they do as a charity for the community.”

I used Local before WP Engine bought Flywheel (which developed Local). Local Pro used to be priced at $20 per month. Following the acquisition, WP Engine made Local Pro available to everyone for free. And yes, Local does promote hosting with WP Engine, but its use is not dependent on that and it’s still a really helpful tool.

What has been said of Local could equally be said of Jetpack. They both promote paid offerings.

6. WordPress from WP Engine ‘the same thing you get from all the other hosts’

When talking about being able to get WordPress from other hosts, Matt said:

“What you get from them [WP Engine] is WordPress. It’s, by the way, it’s the same thing you get from all the other hosts. So you can get this from Bluehost or other places. So, um, and I encourage people to explore some of these other hosts because again, WordPress will work better and they all give back to the community.”

This, to me at least, is telling. The statement that ‘what you get from [WP Engine] is WordPress’, and that it’s the same thing you get from the other hosts, is starkly at odds with the post on WordPress.org and repeated assertions on X that ‘WPEngine is not WordPress’ and that what WP Engine provides is a bastardisation of WordPress. Those latter statements seem crafted with trademark infringement arguments in mind. The statements in the interview are, to my mind, more accurate.

As an aside, it also seems unlikely that all other WordPress webhosts in the world give back to the community.

7. Only one trademark licensing deal with other hosts

Matt was asked repeatedly as to whether other WordPress hosts are pursued for, or have, trademark licensing deals. To my eyes and ears, there was no clear answer to that question, other than this:

“So there’s a number of hosts that we recommend on WordPress.org. So there’s, you can assume all of those are very good relations. And I think I’ve said publicly before that Newfold Digital, which owns a bunch of hosts like HostGator, Bluehost, and other things, … they actually have a commercial license to the WordPress trademark, so they’re allowed, just like Automattic is, to use WordPress in a more commercial way. They can call things WordPress plans. They can use WordPress in their advertising, stuff like that.”

According to the updated WordPress Trademark Policy, Newfold is the only sublicensee. Newfold owns Bluehost and Hostgator, but it doesn’t own the other hosts recommended on WordPress.org, namely, Hostinger and DreamHost. According to the WordPress Trademark Policy, these companies are not sublicensees. However, let’s look at how their websites use ‘WordPress’:

• Dreamhost uses terms like ‘Unbeatable WordPress Hosting’, ‘WordPress Plans’, ‘WordPress Basic’, ‘Managed WordPress Experience’, VPS WordPress’, ‘WordPress Hosting Plans’, ‘WordPress Business’, ‘WordPress Specialized’ (support), ‘WooCommerce Hosting’, ‘Make Selling Easier with WooCommerce + DreamPress’. They also use the Woo logo and the WordPress logo, both of which – I understand – are difficult to justify under the descriptive or normative use defence.
• Hostinger uses terms like ‘Managed WordPress Hosting’, ‘Hosting built for WordPress’, ‘Standard WordPress acceleration’, ‘Advanced WordPress acceleration’, and ‘WooCommerce hosting’. They too use the Woo logo and the WordPress logo. And unlike WP Engine, their WooCommerce hosting page does not mention that WooCommerce is an Automattic product, nor that Automattic holds the WooCommerce trademarks.

I make these comments not to point any finger at these hosts, because their language is fairly standard across the WordPress hosting industry, and arguably a good deal of their use falls within descriptive or nominative fair use or could be defended under the laches doctrine. I make them because, in relation to the assertions of trademark infringement, it shows just how inconsistent Automattic is being in singling out WP Engine. Matt has even said this:

“I would say that every other web host in the world we have no beef with, by the way, and that none of them, all of them can, their servers can access WordPress.org servers. WordPress works just fine on every other web host in the world. This is very singular to WP Engine…. I’m fine with all of those. Those things are, they’re all… fine with all of them.”

In addition to Dreamhost and Hostinger, this must include the likes of hosts called ‘WPX’, ‘EasyWP’, ‘WPWebHost’, ‘WPMUDev’, ‘WPHost’, ‘WPCharged Managed WordPress Hosting’, ‘WP Bolt’ (which is using the WordPress logo on its homepage), among many others, and regardless of how they are using ‘WORDPRESS’ or other trademarks owned by or exclusively licensed to Automattic.

The inconsistency here is so stark it’s jawdropping.

Closing comments

As Brian Coords has explained so well, Matt had every right to block WP Engine’s access to WordPress.org. WP Engine has no enforceable right to server-to-server access to WordPress.org and no GPL-related issues arise. And from moral, emotional, and commercial perspectives, Matt may have very good grounds for feeling brassed off. He may also be right to have other concerns. But at the end of the day, and whatever the motive, these facts are also true: Automattic’s largest competitor in the WordPress hosting space is being targetted with assertions of trademark infringement when others using the trademarks in the same or similar ways are not, and is being shut out of WordPress.org, because WP Engine is not – it is said – giving enough back. This is occurring when the GPL does not require that, there are no membership rules that require that, there are no relevant terms of use governing access to WordPress.org (although, Matt, there could be…), and when WP Engine’s cease and desist letter (which is wrongly characterised as an attack on WordPress.org), was in response to a very public attack on it.

Again, I’m not writing all this to support WP Engine, and I remain steadfastly grateful for what Matt and Automattic (along with all contributors) have built. I’m writing it because we need open and considered discussion of what’s going on here. As a WP Engine customer, I am personally affected by what is happening, but my amygdala would be cranking out an anxiety response even if that weren’t the case. Why, because – in my own small way – I too have invested thousands of hours into WordPress. WordPress is responsible for livelihoods, careers, entire industries, and all manner of other things. It has been a technological saviour of sorts since the mid-2000s and it has enabled so many people to do so many things. The world is much better with WordPress in it than without. But for the ecosystem to thrive, we need stability, not division.

Whether what I’m saying is of any assistance, I don’t know. I hope it is, and that the time spent on these posts is not a complete waste of time. But I also hope that the good governance-related suggestions from Joost de Valk are taken seriously, and that Automattic and WP Engine can once again come to co-exist in peace. To my mind, this will not come from insisting on ‘pay up or else’, nor will it come from complete entrenchment on the other side, regardless of the strength or weakness of the trademark infringement assertions. And regardless of what we may think of Matt’s approach, it is clear that it is forcing an evolution of the WordPress ecosystem. It’s naive to think the fallout is only affecting Automattic, WP Engine and its customers. Nuclear fallout is wider than that, and Matt’s sweeping trademark-related statements (which in some cases far exceed the bounds of what trademarks control) will be concerning other commercial players. If the evolution is to have a positive rather than negative outcome, I suggest community members of influence should be allowed to help chart a way forward, or an expert commercial mediator should be brought in to help. That’s my 5 cents’ worth anyway.

Over and out.

The three concepts

A member of the WordPress community made a comment to me which, to my mind, is completely apt: “Sadly, so much is mixing/equating the moral and legal arguments”. I agree. There has been repeated blurring of three main conceptual areas:

• moral arguments related to giving back to the community (non-legal);
• GPL (legal > freedoms); and
• trademark infringement (legal).

Perhaps it would help to address key points relating to each.

Morality

1. Matt’s argument at WCUS was essentially a moral argument, i.e., ‘WP Engine is not contributing back to the community nearly as much as we are; that’s unfair and doesn’t support the open source ethos; so they are *!$@!; don’t support them anymore”.

GPL

2. That moral argument has nothing to do with the actual terms of the GPL. It might be consistent with the spirit of open source projects, but it’s important to be clear that the GPL does not require any contributions back to the project by anyone using the GPL-licensed software. The GPL has never worked that way and it doesn’t now. From a strict legal perspective, the GPL provides no support for Matt’s approach.

3. The GPL does require that distributed derivative works are licensed under the GPL, but that’s a completely separate point.

4. There is no suggestion that WP Engine has done anything to violate the GPL’s requirements.

Trademarks

5. Contrary to the moral basis for the argument at WCUS, Automattic’s complaint is now premised on asserted infringement of WordPress and WooCommerce trademarks.

6. Whether that assertion has any legs at all will likely fall to be determined, for the most part, by reference to the defences of descriptive or nominative fair use, and potentially the doctrine of laches (a defence that can apply when there’s been a significant period of delay by the trademark owner in enforcing its rights once it knows of the use in question). In my view, most references to WordPress and WooCommerce are in the context of WP Engine fairly describing the services it provides in relation to WordPress and WooCommerce, rather than in a manner that is designed or likely to confuse people as to the provenance of those things or to imply a relationship with Automattic that doesn’t exist.

7. WP Engine has used the “R” symbol (meaning registered trademark) beside WooCommerce on at least one occasion, and this clearly angers Automattic. Matt has ‘tweeted’:

“The commercial trademark has always belonged to Automattic, since the trademark started. You can look that up publicly. Only Automattic can sub-license it. Also they violate the WooCommerce trademark, look at how they started adding (r) everywhere and didn’t have it before.”

However, on the very same webpage I’m referring to, there’s a section on ‘What makes WooCommerce so enticing?’ Six reasons are given, including this:

“WooCommerce is developed and supported by Automattic, the creators of WordPress.com and Jetpack. The plugin’s development teams also work with hundreds of independent contributors to provide regular updates, new features, and improved security measures that keep your store up-to-date and protected.”

In addition, there’s a footer on that page which says:

“WooCommerce is a registered trademark of Automattic Inc.”

So WP Engine has been careful to note that ‘WooCommerce’ is an Automattic product, and that the trademark is owned by Automattic. It’s a bit difficult in those circumstances to argue that WP Engine has been deliberately trying to confuse or deceive people.

8. From the Exhibits to Automattic’s cease and desist letter, it appears that Automattic is unhappy about, among other things, WP Engine’s use of terms like ‘WordPress hosting’, ‘managed WordPress hosting’, ‘managed WordPress host’, and ‘WordPress support’ (used in the context of pages describing the services WP Engine provides). However (and this is where the doctrine of laches might come in), these kinds of terms are commonly used by WordPress hosting providers, and have been used by WP Engine itself (surely to the Foundation’s and Automattic’s knowledge) for more than a decade. Here’s an example from 2014:

9. Matt and some other people are saying on X that WP Engine can solve this mess by negotiating a trademark licence and giving back to WordPress. Putting to one side for the moment that WP Engine does contribute in various ways to the community (albeit probably nowhere near to the extent Automattic does), this approach assumes the trademark infringement assertions are correct and that WP Engine has no defence. Bear in mind also that Automattic’s cease and desist letter refers to a figure of $32 million per year. If there are genuine grounds for disagreeing with the trademark infringement assertions, why on earth would any company that is answerable to its shareholders and investors roll over and hand out such a large sum of money? The short answer is, ‘it would not’.

10. One final point to note on the trademark front is that, at least in the United States (I’ve not looked at the trademark registers in other countries), the WordPress Foundation has two pending trademark applications, for ‘Hosted WordPress’ and ‘Managed WordPress’. The application for ‘Hosted WordPress’ is for these classes of activity:

• servers for web hosting; downloadable computer software platforms for web hosting; website development software; downloadable website development software and plug-in software; downloadable software program for use in design and managing content on a website
• hosting computer websites; computer services, namely, cloud hosting provider services; software as a service (SAAS) services, namely, hosting software for use by others for use with design and managing content on a website and for use in internet publishing; design of computer software and websites; software solutions, namely providing use of on-line non-downloadable software for use in enabling internet publishing

The application for ‘Managed WordPress’ is for these classes of activity:

• servers for web hosting; downloadable computer software platforms for web hosting; website development software; downloadable website development software and plug-in software; downloadable software program for use in design and managing content on a website
• hosting computer websites; computer services, namely, cloud hosting provider services; software as a service (SAAS) services, namely, hosting software for use by others for use with design and managing content on a website and for use in internet publishing; design of computer software and websites; software solutions, namely providing use of on-line non-downloadable software for use in enabling internet publishing

It is useful to pause here to note that Matt is the principal officer of the WordPress Foundation and the CEO of Automattic. He also appears to have direct technical control of WordPress.org, and is able to and has taken technical steps to block WP Engine’s server to server access to WordPress.org without approval from WordPress core developers. This is a very significant concentration of power (there are two other directors of the WordPress Foundation, Mark Ghosh and Chele Chiavacci Farley, but it is unclear what if any day-to-day role they play in the Foundation, whose website does not even mention them). I am not casting any aspersions here but, just as the WordPress Foundation has granted an exclusive licence to Automattic in relation to certain existing WordPress trademarks, so too could the Foundation grant exclusive licences to Automattic in relation to the pending trademarks (and based on what we’re currently seeing, that seems likely). That could be highly significant for all existing WordPress hosts who currently use the terms ‘Hosted WordPress’ and ‘Managed WordPress’. They may wish to consult US trademark lawyers.

It is all well and good for WordPress-related trademarks to be owned by the WordPress Foundation, but if the Foundation grants exclusive and irrevocable commercial use licences to Automattic with a right for Automattic to sublicence as it sees fit, that effectively transfers substantial control of the trademarks back to Automattic, regardless of any role Matt occupies.

Final remarks

The final point I want to make, again, is that Matt and Automattic’s contributions to the creation and development of WordPress, and his own charitable contributions, are not in question. With WordPress, they have changed the world for the better, and millions of people are grateful to them for that, myself included. I am not questioning any of that (and it’s disheartening to see people unleashing vitreole, as opposed to considered comment, on X).

I am suggesting, though, that we need to be clear on the three different concepts or dimensions that have been invoked during the current situation and understand that sometimes they’ve been blurred and that this is probably confusing people and resulting in people taking sides without fully understanding what’s legally relevant and what’s not. We also need to appreciate that, quite clearly, we are seeing the exercise of an enormous concentration of power that is affecting not only WP Engine, but the hundreds of thousands of people who host their sites with WP Engine, and the WordPress community more generally.

I understand Matt’s concerns and I appreciate that sometimes it takes dissonance to effect positive change. But it is not clear to me that this exercise of power rests on strong legal grounds or is in the best interests of the WordPress community, even if WP Engine does not contribute enough (I’m not sure about that), even if WP Engine disables certain features (that doesn’t worry me), and even if its investors have a strategy premised on maximising value and exit.

In the latest post from MM/Automattic, WPE & Trademarks, Matt says this:

“I’ve been writing and talking about WP Engine a lot in the last week, but I want to be crystal clear about the core issue at play.

In short, WP Engine is violating WordPress’ trademarks. Moreover, they have been doing so for years. We at Automattic have been attempting to make a licensing deal with them for a very long time, and all they have done has string us along. Finally, I drew a line in the sand, which they have now leapt over.

We offered WP Engine the option of how to pay their fair share: either pay a direct licensing fee, or make in-kind contributions to the open source project. This isn’t a money grab: it’s an expectations that any business making hundreds of millions of dollars off of an open source project ought to give back, and if they don’t, then they can’t use its trademarks. WP Engine has refused to do either, and has instead taken to casting aspersions on my attempt to make a fair deal with them.

WordPress is licensed under the GPL; respect for copyright and IP like trademarks is core to the GPL and our conception of what open source means. If WP Engine wants to find another open source project with a more permissive license and no trademarks, they are free to do so; if they want to benefit from the WordPress community, then they need to respect WordPress trademark and IP.”

There are some things here that the WordPress community needs to understand:

1. The statement that WP Engine is ‘violating WordPress’ trademarks’ is, strictly speaking, incorrect, because ‘WordPress’ is the trademark and it is held by the WordPress Foundation which has granted an exclusive licence for commercial use (with the right to sublicense) to Automattic. ‘WordPress’, in isolation, is not a legal entity. So, the sentence should be something like ‘WP Engine is violating the WordPress Foundation’s trademarks’, or, ‘WP Engine is violating Automattic’s exclusive rights to use the WordPress trademarks for commercial purposes’.

2. An assertion that WP Engine is ‘violating [the] trademarks’ does not necessarily mean WP Engine is in fact violating the trademarks. Whether it is depends on the circumstances in which they are being used. WP Engine’s position, evident from its own cease and desist letter, is that “WP Engine’s uses of those marks to describe its services – as all companies in this space do – are fair uses under settled trademark law and consistent with WordPress’ own guidelines”, and that the assertion of trademark infringement “reflects a profound misunderstanding of both trademark law and WordPress Foundation’s trademark policy”. In a previous post (Automattic and WooCommerce’s cease and desist letter to WP Engine and others) I referred to the ‘descriptive fair use’ defence and explained, briefly, how it applies, and I said that much of this ‘case’ falls to be considered by reference to that defence.

3. Trying to get a licensing deal based on asserted trademark infringement, not getting one, and then going nuclear as a result, does not necessarily mean you’re in the right. Again, everything boils down to whether the trademark is being used in a way that is non-infringing (and even if you are right, going nuclear is not necessarily the best approach).

4. The stated expectation “that any business making hundreds of millions of dollars off of an open source project ought to give back, and if they don’t, then they can’t use its trademarks” rests on the fundamental premise that the trademarks are being used in an infringing way (which, it also follows, has been tolerated for lengthy periods in the past). It is vitally important to assess and be confident that the trademarks are in fact being used in an infringing way and that no defence can be relied on. If a defence can be relied on, which is WP Engine’s position, then the ‘going nuclear’ approach begins to look oppressive, even if there is merit in the argument that the target could do more for the community.

5. The WordPress trademarks, which relate to the core software to which a large group of developers have contributed over a lengthy period, are being used to attempt to control the behaviour of a large member of the WordPress hosting community, without any consultation with those core developers. Whilst, legally, Automattic as exclusive commercial licensee does not need to do that, failing to do so is clearly not going down well.

6. In my view, the reference to ‘respect for copyright’ (in the context of the GPL) muddies the waters. There is no suggestion that WP Engine has done anything to violate the GPL (which for present purposes relates to copyright), and the trademark issues fall outside of legal issues under the GPL.

The increasingly sad saga continues

The latest and in my view completely inappropriate step that has been taken against WP Engine is to block it from being able to access WordPress.org for automatic updates. This is what WP Engine posted earlier today:

Blocking confirmed

MM, it seems, has confirmed this in a post on WordPress.org titled ‘WP Engine is banned from WordPress.org‘. This saga has become so absurd that it warrants pasting in the post on WordPress.org in full:

“Any WP Engine customers having trouble with their sites should contact WP Engine support and ask them to fix it.

I won’t bore you with the story of how WP Engine broke thousands of customer sites yesterday in their haphazard attempt to block our attempts to inform the wider WordPress community regarding their disabling and locking down a WordPress core feature in order to extract profit.

What I will tell you is that, pending their legal claims and litigation against WordPress.org, WP Engine no longer has free access to WordPress.org’s resources.

WP Engine wants to control your WordPress experience, they need to run their own user login system, update servers, plugin directory, theme directory, pattern directory, block directory, translations, photo directory, job board, meetups, conferences, bug tracker, forums, Slack, Ping-o-matic, and showcase. Their servers can no longer access our servers for free.

The reason WordPress sites don’t get hacked as much anymore is we work with hosts to block vulnerabilities at the network layer, WP Engine will need to replicate that security research on their own.

Why should WordPress.org provide these services to WP Engine for free, given their attacks on us?

WP Engine is free to offer their hacked up, bastardized simulacra of WordPress’s GPL code to their customers, and they can experience WordPress as WP Engine envisions it, with them getting all of the profits and providing all of the services.

If you want to experience WordPress, use any other host in the world besides WP Engine. WP Engine is not WordPress.”

Thoughts

My comments:

• I have 10 WP Engine sites and I have built sites on WP Engine for others. As far as I am aware, I and they had zero problems yesterday. In any event, if WP Engine wants to limit the visibility of attacks upon it, so be it. That doesn’t concern me and the newsfeed is a needless distraction anyway. I don’t go to my WordPress dashboard to discover WordPress news. It wouldn’t surprise me if the reference to “thousands of sites” is exaggerated.
• The post asserts there are “claims and litigation against WordPress.org”. It is not clear that this is correct. WP Engine’s cease and desist letter was sent to Automattic and, as far as I’m aware, WordPress.org is not a legal entity. It is, rather, a platform to host the self-hosted version of WordPress together with (among other things) theme and plugin repositories.
• Given that WordPress.org is a repository for WordPress itself, as well as themes and plugins, denying access (at whatever level) to WP Engine flies in the face (in my view) of the WordPress project. Doing so is not contrary to the GPL, but how many of the thousands of people that contribute to core and to themes and plugins hosted on WordPress.org would be impressed by this? Very few, I suspect.
• The assertion that “WP Engine wants to control your WordPress experience” could be characterised as a projection of what WordPress.com does, in the sense that it rolls out WordPress in a particular way, and with the existence or absence of certain features depending on the plan one purchases (that is, of course, absolutely okay).
• The post seems to imply that a lack of server to server access by WP Engine may impact its security. If that is not true, then it is irresponsible.
• There is way too much hostility going on here, bearing in mind that this whole saga commenced (at least in terms of the recent escalations) with an attack on WP Engine at WCUS. No company in the shoes of WP Engine would just sit idly by and not respond in some way. And note also that the things said of WP Engine at WCUS and in a subsequent blog post were not outwardly premised on asserted trademark infringement but on something completely different.
• The characterisation of  WP Engine as offering a “hacked up, bastardized simulacra of WordPress’s GPL code” is incorrect and, quite frankly, offensive to the tens if not hundreds of thousands of WordPress users who host their sites with WP Engine.
• It is difficult to conceive of any universe in which alienating WP Engine customers in this way and potentially putting their sites at risk could result in anything good for WordPress itself or Automattic.
• I have not seen any evidence of WP Engine speaking with the hyperbole, the unprofessionalism, and the hostility we are seeing from the other side (if there is, let me know).
• In my respectful view, Automattic – yes Automattic the company – needs to step up and put a stop to this. For the sake of the WordPress community, it needs to take steps to dial down the hostility and procure the taking of action that sees WP Engine being able to have server access to WordPress.org. If it doesn’t then, rightly or wrongly, it might be seen as implicated in adversely affecting tens if not hundreds of thousands of WordPress users, and all in consequence of its CEO having waged war on a competitor.
• And to be clear, I am not questioning the right of Automattic to take steps to protect its intellectual property rights (assuming, for present purposes, there’s a valid claim, despite my preliminary views on that), but there are ways of doing these things, and ways of doing these things… .

The saga continues

The saga does indeed continue. On 23 September 2024, Automattic Inc and WooCommerce Inc’s lawyers sent their own cease and desist letter to WP Engine, Silver Lake, and others. To me, these are the key points and assertions:

• Automattic/WooCommerce own all intellectual property rights in and to the WOOCOMMERCE and WOO trademarks and the exclusive commercial rights to the WORDPRESS trademark;
• Automattic/WooCommerce assert that WP Engine has violated their intellectual property rights by, they say, doing the following (and note I’m quoting):
  • “promoting its services as bringing ‘WordPress to the masses'” (this is followed by reference to the number of hours WP Engine contributes per week versus the number Automattic contributes each week);
  • “WP Engine’s entire business model is predicated on using [Automattic/WooCommerce’s] trademarks – particularly WORDPRESS, WOOCOMMERCE, and WOO – to mislead consumers into believing there is an association between WP Engine and Automattic” (there’s a reference to examples in Exhibit B which, most unfortunately from a transparency perspective, is not included in the published version of the cease and desist letter);
  • “WP Engine has developed a business generating annual revenues of over $400 million, which has been based entirely on extensive and unauthorized uses of [the] trademarks”.

The cease and desist letter goes on to say:

• • “WP Engine’s infringing commercial uses of [the] trademarks have created consumer confusion as to whether WP Engine is affiliated with [Automattic/WooCommerce]; including many references to WP Engine being ‘WordPress Engine’.”
  • “Negative reviews and comments regarding WP Engine and its offerings are imputed to [Automattic/WooCommerce], thereby tarnishing [their] brands, harming their reputation, and damaging the goodwill [they have] established in [the] marks. [The] unauthorized use of [their] intellectual property has enabled WP Engine to unfairly compete with [them], and has led to unjust enrichment and undue profits.”

The cease and desist letter also asserts that WP Engine has “violated the terms of [its] WordCamp US Sponsorship Agreement, which specified … that ‘any use of the WordPress trademarks is subject to the WordPress Trademark Policy … .” The letter asserts that WP Engine “repeatedly and intentionally violated the WordPress Foundation Trademark Policy’s prohibition on the ‘use [of] the[] [WordPress marks] as part of a product, project, service, domain name, or company name’.

The cease and desist letter says Automattic/WooCommerce are willing to amicably resolve the matter, including through a licensing relationship for use of the trademarks, but until such time as a licence is in place, WP Engine must (among other things):

• stop all unauthorised use of the trademarks;
• remove offerings making unauthorised use of the trademarks from any websites and social media accounts under WP Engine’s control; and
• pay Automattic/WooCommerce compensation, “the specific amount of which may be ascertained once we have an accounting from you … (even a mere 8% royalty on WP Engine’s $400+ million in annual revenue equates to more than $32 million in annual lost licensing revenue for our Client)”.

Descriptive and nominative fair use

I am not a US trademark lawyer, but to my mind much of this ‘case’ falls to be considered by reference to the defences to infringement known as ‘descriptive fair use’ and ‘nominative fair use’ (nominative fair use being the more likely defence).

The International Trademark Association describes ‘descriptive fair use’ and ‘nominative fair use’ as follows:

“Descriptive fair use permits use of another’s trademark to describe the user’s products or services, rather than as a trademark to indicate the source of the goods or services. This usually is appropriate where the trademark concerned has a descriptive meaning in addition to its secondary meaning as a trademark. For example, WD-40 Company’s use of the term “inhibitor” was found to be descriptive fair use of the registered mark THE INHIBITOR when used to describe a long-term corrosion inhibitor (WD-40) product.

Nominative fair use permits use of another’s trademark to refer to the trademark owner’s goods and services associated with the mark. Nominative fair use generally is permissible as long as: (1) the product or service in question is not readily identifiable without use of the trademark; (2) only so much of the mark as is reasonably necessary to identify the product or service is used; and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. For example, one could refer to “the professional basketball team from Chicago,” but it is simpler and more understandable to say the Chicago Bulls. Here, the trademark is used only to describe the thing rather than to identify its source, and does not imply sponsorship or endorsement. … .”

I have not seen the exhibits to Automattic/WooCommerce’s cease and desist letter and so cannot comment on all the circumstances in which the companies are asserting that WP Engine has infringed their trademarks or rights as exclusive licensee. However, as a long-time WP Engine customer who is therefore pretty familiar with WP Engine’s website and marketing, it strikes me that at least a good deal of WP Engine’s uses of the words ‘WordPress’, ‘WooCommerce’ and ‘Woo’ are descriptive/nominative in nature and therefore non-infringing. It is certainly not within Automattic/WooCommerce’s power to prevent all descriptive/nominative uses of those words by WP Engine. Context is key. And I do note that WPEngine says things like this on its website:

Who created WooCommerce?

WooCommerce is developed and supported by Automattic, the creators of WordPress.co and Jetpack. The plugin’s development teams also work with hundreds of independent contributors to provide regular updates, new features, and improved security measures that keep your store up-to-date and protected.

And when WP Engine talks about the likes of ‘WooCommerce hosting’ and that the ‘path to WooCommerce® success starts here’, the webpage states expressly in the footer that WooCommerce is a registered trademark of Automattic Inc.

Some reflections

Now, we could get lost in the minutiae of this cease and desist letter for hours or days. But let’s not. Instead, I’ll just make these remarks:

• In my view there is nothing wrong with using the word ‘WordPress’ descriptively to refer to the content management system that ‘WordPress’ is, including in the context of a commercial offering. That is extraordinarily commonplace, in all manner of commercial contexts.
• The same applies to descriptive uses of the term ‘WooCommerce’ (e.g., the ecosystem of WooCommerce plugins).
• In one sense, WP Engine has brought WordPress to the masses (or at least a portion of the masses). Its number of users and its revenue would seem to be evidence of that, not to mention its support for the WordPress and WooCommerce ecosystems.
• It seems hyperbolic to assert that WP Engine’s entire business model is predicated on using [Automattic/WooCommerce’s] trademarks to mislead consumers into believing there is an association between WP Engine and Automattic. Personally, I have never perceived there to be any such association. Perhaps that reflects my historic knowledge of the WordPress ecosystem, but I just don’t see this. I see the two companies for what they are in the hosting space: competitors.
• It seems fanciful to suggest that negative reviews of WP Engine are imputed to Automattic. I accept that I don’t know what I don’t know, and of course the exhibits to the cease and desist letter have not been published so we cannot consider them, but I also note that it does not necessarily follow from the existence of some confusion among a probably very small number of the massive community of WordPress users that WP Engine has infringed the trademarks.
• In terms of the reference to the Trademark Policy and the quoted excerpt from it, I note that Automattic itself has said on ‘X’: ‘We know there is confusion around WordPress trademarks and fair usage. We’re working to get guidance out ASAP’.
• If WP Engine is misusing the WordPress/WooCommerce/Woo trademarks (and I’m not saying it is), should other WordPress-related businesses be worried? For example, plenty of other WordPress hosting and commercial plugin providers use ‘WooCommerce’ and ‘Woo’ in ways similar to WP Engine. Will we see challenges to them too?
• Automattic appears to be asserting exclusive rights in relation to commercial use of the ‘WordPress’ trademark, including demanding payment of a large sum of money, when ‘WordPress’ the CMS that we know and love has, for a very long time, been the creation of a large community of contributors. Whilst Automattic is of course the major contributor (for which I’m sure we are all grateful), Automattic does not own all the source code, and does not control large numbers of WordPress contributors. Whilst these points are separate to Automattic’s rights as exclusive licensee of the WordPress trademarks, I make them because this is not a typical situation where a company seeks to assert exclusive trademark-related rights in relation to a product or brand of which it is the sole owner or creator. Questions will doubtless arise as to what the community of developers thinks of this. I assume Automattic is taking that into account.
• This saga has shifted from an attack at WCUS said to be based on a poor level of contribution by WP Engine back to the community (at that point there was zero reference to trademark issues), to an attack based on asserted trademark infringement, with a demand by one company that has commercialised WordPress for payment of a huge amount of money from a competitor. Perceived ‘insufficient giving back’ by the competitor may be driving some of this, but one might infer from the demand for payment of annual lost trademark licensing revenue that it’s about more than that. Make of that what you will.

You might think I’ve penned this post with the goal of supporting WP Engine over MM and Automattic, given that I’m a long-time WP Engine customer, but I haven’t. As I’ve said many times before, I have a huge amount of respect and gratitude for MM and Automattic, and no one can doubt Matt’s own contributions to WordPress and his charitable contributions to other causes. Any attempts to smear his personal character would be offensive and should, I suggest, be resisted. But, as a long time WordPress user and member (through this site) of the WordPress community, what’s happening here does not sit well with me, from either legal or commercial perspectives.

My heartfelt hope is that none of this gets near a court. My suggestion is for the two companies to appoint a highly-skilled commercial mediator with knowledge of open source communities to help them chart a way forward.

Update: I have now seen the exhibits to Automattic/WooCommerce’s cease and desist letter, as they have been posted on the Automattic website. They make no difference to my views. I can only see one reference to ‘WordPress Engine’ in the context of a third party partner listing on the WPEngine website. That can (and should) be amended to refer to WP Engine instead but there is no evidence in the exhibits of widespread use by WP Engine of the term ‘WordPress Engine’. All other examples of this term being used are on third party sites. I see no evidence in the exhibits on which WP Engine can be held responsible for that.

The WordPress Trademark Policy

Back in 2015, I described the WordPress Trademark Policy as it then stood in Using the WordPress trademarks for your business, product or service. That post:

• explained what trademarks are;
• discussed Automattic Inc’s WordPress trademarks and how they were being enforced;
• described Automattic’s transfer of WordPress trademarks to the WordPress Foundation; and
• discussed the care that’s required when using WordPress trademarks, contrasting that with the use of ‘WP’ or ‘Press’.

Now, as Matt’s/Automattic’s criticisms of WP Engine continue, the WordPress Foundation’s Trademark Policy has been updated, as follows:

For the reasons I’ll discuss below, these changes are interesting, surprising, and in my view completely unnecessary.

WordPress Foundation owns trademark, but Automattic is exclusive commercial licensee

First, we learn that Automattic is the exclusive licensee of the WordPress trademark for commercial use. Perhaps others were aware of this. I was not.

Let’s go back in time a little. As I explained in my post in 2015:

“On 9 September 2010, Matt announced that Automattic had transferred the WordPress trademark to the WordPress Foundation, “the non-profit dedicated to promoting and ensuring access to WordPress and related open source projects in perpetuity”. As Matt noted on his blog, this meant that the most central piece of WordPress’s identity had become fully independent from any company.

This was, as Matt noted, a pretty dig deal, as Automattic – a commercial organisation – had donated one of its most valuable assets and ceded control of it to a non-profit organisation.

Why did Automattic do this? This wasn’t, after all, the approach that most commercial enterprises would take to a valuable business asset. The answer to why Automattic did it is this: it was in the best interests of the wider WordPress community. This is how Matt put it:

‘Automattic might not always be under my influence, so from the beginning I envisioned a structure where for-profit, non-profit, and not-just-for-profit could coexist and balance each other out. It’s important for me to know that WordPress will be protected and that the brand will continue to be a beacon of open source freedom regardless of whether any company is as benevolent as Automattic has been thus far.’”

Returning now to 2024, I find it somewhat interesting that, despite the WordPress Foundation owning the WordPress trademark, it has (it appears) granted an exclusive licence to Automattic for commercial use, with the right to sublicense use of the trademark. In substance, this seems to confer complete control on use of the WordPress trademark for commercial purposes on Automattic. I am not implying or insinuating anything in pointing this out. I just find it interesting. You be the judge.

Use of ‘WP’

As you can see from the tracked comparison above, the Trademark Policy used to say that the abbreviation ‘WP’ is not covered by the WordPress trademarks and people could use it in any way they see fit. Now, whilst the Policy still states that the abbreviation ‘WP’ is not covered by the WordPress trademarks, we see the Policy trying to tell people not to use ‘WP’ in a way that confuses people, from which it launches into another attack on WP Engine.

To castigate WP Engine by reference only to the company not having donated to the WordPress Foundation is surprising. The company has clearly done a range of other things to contribute to the community, as I discussed in Thoughts on the attack on WP Engine, from hosting and sponsoring events, to maintaining free plugins, Torque, Local, and a rich Resource Center).

Neither the WordPress Foundation nor Automattic is legally entitled to tell people what to do with the letters ‘WP’. There is no trademark over those letters in relation to WordPress and they have been in wide use for at least 15 years.

As for the notion that ‘WP Engine’ has been confused for ‘WordPress Engine’, that seems to be pushing the bounds of credulity. As a long-time customer of WP Engine, I am familiar with their brand and how it has evolved over time. I have never confused ‘WP Engine’ for ‘WordPress Engine’, and it has always been clear to me that they are a WordPress host, competing with the likes of Bluehost, Kinsta, GoDaddy and all the other WordPress hosts out there, including WordPress.com itself.

Did the company choose a name that helps people realise it specialises in WordPress hosting? Yes, but in my view there was nothing wrong with that. Many, many companies have done exactly that over the years with all manner of WordPress-related businesses and interests. Here are some examples:

WPBeginner
WPMU DEV
WPForms
WPWeb Infotech
WPRiders
WPExplorer
WPCrafter
WP Rocket
WP Mail SMTP
WP Job Manager
WP All Import
WPML (WordPress Multilingual Plugin)
WPCustomize
WPEverest
WP Activity Log
WP-Optimize
WPSiteCare
WP Buffs
WP All Import
WP Media
WP Simple Pay
WP Reset
WP User Frontend
WP Quiz
WPRocket
WPLift
WPFusion
WPTavern
WPTouch
WP and Legal Stuff

A short time ago, Automattic posted on ‘X’ to say:

“We want to make this clear: Using ‘WP’ is not a trademark issue.”

Yes, correct. But if that’s the case, why amend the Trademark Policy in the way shown above? In my view, there was no need to do that.

What a difference 24 hours makes

Well, it’s amazing – but not surprising – what can happen in 24 hours. Yesterday I posted Thoughts on the attack on WP Engine in which I gave my own (and deliberately somewhat muted) reflections on the attack on WP Engine. In a nutshell, ‘not cool’.

I sensed what would be happening within WP Engine and Silver Lake, and I expressed my hope that legal action would not follow:

“My hope is that the inevitable tension that will now exist between you can be resolved for the benefit of your respective customers and the wider community. None of us needs it. And Silver Lake/WP Engine, my plea to you is to keep your hounds at bay, and address this problem in a way that best serves your customers. My suggestion is that you can achieve this with open and honest communication with the community, without resorting to anything stronger. I believe your customers (myself included) will want to see unity, and nothing that results in further division. Please close the chasm, rather than deepen it.”

Of course, when I wrote that, I was not aware of everything set out in the cease and desist letter from WP Engine’s lawyers (which, given its gravity, I will not repeat here). If what they say is true (and if it weren’t, they’d be risking a defamation claim) then, well, it’s hardly surprising that the hounds have been unleashed. ‘Nuclear’ has been met with a correspondingly powerful response.

Will good sense prevail?

I remain of the view, though, that this matter can be resolved without recourse to the courts, and I sincerely hope that that is how this story ends.

I think we should make no mistake though: this is the most serious issue to occur between significant players in the WordPress community since the community’s inception, and it’s happening between two of its most influential and competitive participants. For the benefit of WordPress and the ecosystem that surrounds and nurtures it, I hope good sense can prevail because, if this matter is allowed to get to the courts, nothing good will come from it other than vindication or who is right and who is wrong and, quite possibly, who has to pay certain sums to the other. That may be pleasing to one or other company but will do nothing for WordPress. It will sow further division among the community, it will unsettle those with loyalties to both Matt/Automattic and WP Engine (I suspect many WP Engine customers are in that boat, myself included) and it could result in a loss of business for both companies.

How this can probably be brought to a swift close is obvious. But I don’t like pointing out the obvious, so I won’t.