I can read I am not a US trademark lawyer. I am, however, a lawyer who has practised in three jurisdictions, and I know how to read. I remain of the view that, if Automattic’s infringement claims were to go to court, nominative fair use would be one of the central issues, coupled with issues relating to confusion and alleged attempts to suggest a relationship with Automattic/WordPress.com, as well as other potential defences (on which I express no firm view). Novel issues may arise as well. In an earlier post, I proffered my preliminary view that much of the asserted trademark infringement might be categorised as nominative fair use. I should, perhaps, have said more, including that whether that defence is available would depend on a number of factors, including what each party is able to establish to the required standard (Automattic in relation to the elements it needs to establish for its claim, and WP Engine in relation to defence elements it needs to establish). Some points I do feel reasonably confident in making …

A letter, of sorts Dear WP Engine I am a long-time customer. I moved my sites to WP Engine a long time ago, and have built many sites since, due to (among other things) the security you offer (and after a site that was up-to-date was hacked on another company’s inferior hosting due to a server issue). For a range of reasons, I liked the service you provide, and I still do. Having used WP Engine for so long, I don’t want to shift off it and, unless the current problems get worse and impact site availability or performance, I have no plans to do so. Many of your customers will be aware of your cease-and-desist response to the attack on WP Engine at WCUS (personally I think it’s fair to characterise it as an ‘attack’), of Automattic’s response asserting trademark infringement, of the block on WP Engine having server-to-server access to WordPress.org, and of today’s temporary lifting of that block. I’m mindful, though, that the lifting of the block is only until “October 1, …

The WordPress trademarks With all this talk of Automattic, WP Engine, and trademarks, I thought it might help to share a table I’ve created that lists the WordPress trademarks, when they were registered, the goods and services or classes of activity they cover, the original owner, the current owner, and whether there have been any ‘assignments’ (transfers and the like). All information comes from the United States Patent and Trademark Office. Here it is (the text of the exclusive licence to Automattic is set out after the table): * The licence was (get ready for some legal verbiage): “an exclusive, fully-paid, royalty-free, perpetual, irrevocable, worldwide, sublicensable right and licence to use and otherwise exploit the trademarks identified in Exhibit A [attached to the transfer], and any and all related or similar names, marks, designs, domain names, and other rights (excluding www.wordpress.org, www.wordcamp.org and www.wordpressfoundation.org), along with all associated applications, registration and goodwill (the “Trademarks”), in connection with the hosting of blogs and websites that utilise any version or component of the WordPress open source publishing …

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, …

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 …

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 …

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 …

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 …

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 …

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 …