Introduction
On 3 October 2024, an Associate General Counsel at Automattic published a useful post on “WordPress Trademarks: A Legal Perspective”.
The post is useful for a few reasons, including because it acknowledges, I believe for the first time during the current controversy, the role of nominative fair use. And so, in that sense, it contributes to the community’s understanding of Automattic’s take on the trademark issues. I have been saying for a while now that nominative fair use would likely be a central issue in any trademark litigation between Automattic and WP Engine. WP Engine’s court filing confirms that.
Why I have written this post
I have written this post because Automattic’s positions on:
- trademark infringement in its cease and desist letter to WP Engine; and
- nominative fair use in the post referred to above,
are potentially significant for large numbers of other WordPress hosting providers (excluding WordPress.com). As a long-time user of WordPress, it concerns me that such an important topic is not being more openly discussed by other lawyers, particularly US trademark lawyers (I am only aware of one US lawyer openly discussing these issues, in a live streamed format rather than in blog posts or articles).
Usually trademark disputes would, at least at first, be addressed in private between the trademark owner or exclusive licensee and the entity accused of trademark infringement, and more often than not other entities would not be affected by the dispute. But what we’re seeing here is quite different. We have a particularly public and potent set of allegations against one WordPress hosting provider that is potentially relevant to hundreds if not thousands of other WordPress hosting providers around the world (as well as other WordPress-related businesses who preface descriptions of their offerings with ‘WordPress’). I appreciate that Automattic’s CEO has said that only WP Engine is in the firing line and that Automattic has no beef with any other hosting provider, but other WordPress hosting companies may well be asking questions, if not feeling a measure of concern.
So this post is written with those other hosting companies in mind. It is not written for the purpose of taking sides with WP Engine or Automattic.¹
Nominative fair use
On nominative fair use, the post by Automattic’s Associate General Counsel says this:
“What about users of WordPress software?
In the bundle of sticks that is the WordPress trademarks, users of WordPress software have a twig of rights as well, called nominative fair use. This means users have the right to refer to genuine WordPress software by name. (Genuine WordPress software comes only from a WordPress Foundation- or Automattic-approved repository.) For example, they are allowed to say: “I built a website with WordPress.”
The right to nominative fair use has clear limits under the law: it doesn’t include logos and it does not include the right to use the WordPress marks in a manner that suggests one is offering a product or service that comes from WordPress or is officially affiliated with WordPress. For example, calling a service “WordPress Hosting” would not be nominative fair use because it makes many people think it is a hosting service offered by WordPress. By contrast, offering “Hosting for websites built on WordPress software” would not lead anyone to think the hosting service itself is offered by WordPress. Thus, calling a service “Hosting for websites built on WordPress software” would be fair use of the WordPress marks.”
Commentary
I agree on the basis of US materials I have reviewed that including logos is generally not covered by nominative fair use (and one can add that copying logos without permission can also amount to copyright infringement in the form of unauthorised reproduction of an artistic work). It’s also correct, in my view, to say that nominative fair use “does not include the right to use the WordPress marks in a manner that suggests one is offering a product or service that comes from WordPress or is officially affiliated with WordPress”.²
The sentence I would like to focus on is this:
“For example, calling a service ‘WordPress Hosting’ would not be nominative fair use because it makes many people think it is a hosting service offered by WordPress.”
Note the choice of words: “calling a service” rather than, for example, “describing a service as”. What exactly did Automattic’s Associate General Counsel have in mind when saying this? If he meant giving a hosting service the business name of ‘WordPress Hosting’, without qualification, then yes, that might (depending on all the circumstances) create the level of confusion or perceived affiliation required for trademark infringement. Using someone else’s trademark in the name of one’s business is generally a ‘big no no’ (despite the existence of some cases where this has been held not to infringe, as in a case involving the business name ‘Independent Volkswagen Porsche Repairs’).
However, in the WordPress hosting community, phrases like ‘WordPress Hosting’ and ‘Managed WordPress’ are not being used as business names. They are being used in the context of describing the services offered by the hosting provider, referable to the WordPress software. I am not saying this would always be covered by nominative fair use and therefore never be capable of giving rise to trademark infringement. And indeed, the risk-averse and prudent approach may be to avoid the risk of confusion or perceived affiliation by using the alternative kinds of statements to which the Associate General Counsel has referred (e.g., ‘Hosting for WordPress websites’) and/or clear disclaimers.
But, and I think this is the important point, one cannot make an absolute statement that using phrases like ‘WordPress Hosting’ would necessarily fall outside of nominative fair use and amount to trademark infringement. Trademark owners and exclusive licensees are able to control uses of their trademarks to the extent that those uses would, without permission, amount to trademark infringement, but they are not in a position to state rules as to what does and does not amount to nominative fair use. That is a matter for the courts and the application of legal principle to the facts surrounding a given use of a trademark. One cannot make absolute statements in relation to business names and, even more so, one cannot make absolute statements in relation to descriptors. Context is everything.
Now, I need to emphasise that the Associate General Counsel has not said that using phrases like ‘WordPress Hosting’ would necessarily fall outside of nominative fair use. Instead, as noted above, his sentence uses the words “calling a service ‘WordPress Hosting’ would not be nominative fair use”.
What concerns me is the particular choice of words (“calling a service …”) together with the absence of qualification when discussing phrases like ‘WordPress Hosting’. Some people may read the post as meaning that Automattic takes an absolute stance against the use of terms like ‘WordPress Hosting’ to describe hosting services for WordPress. Despite the Associate General Counsel’s choice of words, that would not be an unreasonable thing to infer. However, as I’ve said, context is everything. Context might include historic use of terms like these throughout the WordPress hosting community and, more significantly, context would include words and site get-up surrounding terms like ‘WordPress hosting’ (if any) that make it clear that the hosting service is not provided or endorsed ‘by WordPress’ (or Automattic).
It’s important to remember that this whole discussion goes to the question of confusion. As the United States Patent and Trademark Office notes, “[t]rademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”
If the context surrounding one’s use of terms like ‘WordPress hosting’ makes it clear to people that the hosting service is not provided ‘by WordPress’ (or Automattic, in the form of WordPress.com) and that there’s no affiliation or endorsement, then the element of actual or likely confusion may not exist and the nominative or referential or collateral use of ‘WordPress’ might be okay.
No legal advice
To be clear, I am not giving legal advice here to anyone. If any particular WordPress host (or other WordPress business) is concerned that it may be infringing the WordPress trademarks, or faces allegations that it is infringing, then it would be its responsibility to consult a US trademark lawyer if it requires legal advice. The only point I’m trying to make in this post is that the application or non-application of nominative fair use is not as simple and clearcut as Automattic’s post may be taken to suggest. Context matters, and it needs to be taken into account.
Footnotes
¹ If Automattic, or any US trademark lawyer (not acting for Automattic or WP Engine), disagrees with anything I’ve said in this post and would like me to consider amendments, feel free to let me know. I’m happy to consider them with an open mind.
² I take the reference to ‘WordPress’ in this statement to be a reference to the official WordPress project or perhaps the WordPress Foundation. ‘WordPress’ alone is not a legal entity. It would be helpful for Automattic to clarify what it means by ‘WordPress’ when stating ‘that comes from WordPress’ or ‘is afficially affiliated with WordPress’. I suggested this on X in response to Automattic’s announcement of its blog post but, to date, there has been no clarification.