WP AND LEGAL STUFF

We have no entitlement to WordPress

The first thing to get out of the way, before descending into feudalism, is that we have no entitlement to WordPress. Three forces may combine to give people a sense of entitlement, but the truth is something different.

The three forces

The three forces are the GPL, longevity, and community:

• Force 1 – the GPL: Anyone who gets their hands on a copy of WordPress can do whatever they want with it as long as they comply with the terms of the GPL (and don’t do anything that, properly construed, infringes the WordPress trademarks). They can turn features off and on, host it as a SaaS offering, fork it, etc. That’s the beauty of the GPL.
• Force 2 – longevity: When people have been using WordPress for so long, and with so many free benefits, it’s natural perhaps to develop a feeling of ‘WordPress will always be there when I want it’. For theme and plugin developers and WordPress hosts, that includes access to WordPress.org, despite the fact that – until very recently – many of us (myself included) had not appreciated that one person owns and funds WordPress.org.
• Force 3 – community: The third and perhaps even more significant component of this is that, given that WordPress is truly the fruits of so many individual labours (most notably, but not only, the tireless work of core developers from around the world) and that it floats within such an enormous ecosystem, the sense of community can be akin to being part of a wave that’s carrying everyone along in unison.

Entitlement

These combined forces – the GPL freedoms, the longevity of WordPress, and the enormous community on which it surfs – can morph into a sense of entitlement. I am not using the word ‘entitlement’ in a negative or pejorative sense. I simply mean that people may think they have a right to it, including a right to developer access to WordPress.org and server-to-server access to WordPress.org. To my mind, it’s completely understandable for people to have acquired some sense of entitlement (not in a bad way, just in a ‘I have every right to this like everyone else’ kind of way).

There is no entitlement

However, the reality is that, for 99 point something % of the population, ongoing use of WordPress is a privilege, to which we have no entitlement. In practical terms, the GPL freedoms make no difference to that. Why? Because the vast majority of the global population is simply not in a position to maintain the WordPress core, to fork WordPress into something else, to maintain the themes and plugins on which they rely, to identify security risks and patch them, or to replicate the functionality of WordPress.org on which we’ve all come to rely.

And so, the vast vast vast majority of us remained privileged. Not entitled. We are akin to serfs in a feudal system. Those who till the land may contribute to its upkeep, but most of them are serfs nevertheless.

The resemblance to feudalism¹

I mean no offence in using the analogy, but the governance of WordPress can be considered feudal in nature. It began at the hands of someone with a benevolent vision who, through toil and sacrifice, created something that, in a very real sense, would change the world, and over time and through that toil and sacrifice, he would become king and assemble a close group of lords (in this sense, the king was self-made through conquest, rather than a product of ascendence, but let’s ignore that for now). To maintain that power, he needed support. Skilled developers and others came to his aid, and the fruits of that support is free access by anyone in the world to the software created by the king and those who have rallied around him to support his vision.

At the end of the day, though, nearly all of us but the king and his lords are serfs, and we have no real power over the thing on which we have come to depend: WordPress. We are allowed to live on the land of WordPress, but it is not truly ‘ours’, we have no contractual right to its upkeep, and we face ongoing risk of the privilege being withdrawn or of being taxed for ongoing receipt. There’s zero complaint or criticism here. It’s just fact.

From feudalism to democracy

If we cast our minds back in history we remember that, over time and as a result of various factors, feudalism would come to be replaced with a more democratic way of life. The factors prompting change included:

• Growth of trade and commerce: As trade expanded during the late Middle Ages, urban centres grew, and a new class of wealthy merchants and artisans emerged. This middle class (the bourgeoisie) gained economic power and began challenging the dominance of the feudal lords.
• Decline of feudal land ownership: The feudal system was built on a land-based economy, with nobles controlling lands and serfs working them. The Black Death and agricultural changes reduced the population, leading to a labor shortage that weakened the manorial system. Serfs gained more bargaining power, and in some cases, even abandoned feudal obligations altogether, moving to cities where wealth was not tied to land.
• Magna Carta and early legal reforms: Documents like the Magna Carta (1215) limited the power of kings and granted certain rights to nobles, sowing the seeds for broader legal and political frameworks that emphasised individual rights and rule of law.
• The Renaissance: Beginning in the 14th century, the Renaissance sparked a renewed interest in classical Greek and Roman ideas, including those about governance and citizenship. Humanism promoted the idea that individuals had value and should participate in public life.
• The Enlightenment: In the 17th and 18th centuries, Enlightenment thinkers such as John Locke, Jean-Jacques Rousseau, Montesquieu, and Voltaire began promoting ideas like liberty, equality, and popular sovereignty. Locke’s social contract theory argued that legitimate governments derive their authority from the consent of the governed, challenging the idea of divine-right monarchy and autocratic rule.
• War: Wars and revolutions occurred.
• Communications: The printing press and communication networks came into being.
• End of feudal loyalties: As centralised monarchies and nation-states emerged, loyalty shifted from local feudal lords to the nation-state. This created an environment where broader political participation (through parliaments and assemblies) became possible, setting the stage for modern democracy.

Some similarities

Returning now to the MM/Automattic-WPEngine controversy, there are some interesting similarities:

• Trade and commerce involving WordPress has soared. It has changed people’s economic fortunes, others have developed careers out of it, and entire industries have sprung up to support it.
• At the same time, and despite its huge uptake (40+% of websites on the Internet), numerous competitors chomp at WordPress’ heals, giving the serfs far greater choice which, if exercised in ways involving a departure from WordPress, would result in a decline of the feudally-governed territory.
• War has broken out between MM/Automattic and WP Engine. It is not the first such war, but it is the most serious to date and, if steps are not taken to quell it, things could get quite bloody (metaphorically speaking).
• As a result of that war, people are asking for clearer rules, advance notice, no surprises, limits on expulsion, and community buy-in. Given the communication channels at our fingertips, these ideas are circulating quickly, and far and wide. What might happen? A Magna Carta of sorts springs to mind.
• The storm is sparking a renaissance of sorts, in that people are coming to appreciate the importance of participation in the public life of WordPress, while also standing up for what they believe to be right or wrong. Obviously that is a good thing.

Will we see enlightenment?

The question that arises, then, is whether some kind of WordPress-related enlightenment is on the horizon, one that involves:

• more distributed governance arrangements or advisory input;
• a greater willingness on the part of some of the larger players to contribute more;
• an agreed set of rules relating to the likes of community contribution; and
• a legally accurate and balanced policy on trademark usage for significant commercial entities playing in the WordPress sandpit and on which the community is given an opportunity to comment (including more clarity around nominative fair use).

Such enlightenment could even include agreement between the current warring parties to mediate their differences, in the interests not only of their respective businesses but, just as importantly, the wider WordPress ecosystem on which they both rely for their survival. That would take honesty, humility, and maturity on both sides. Gaslighting would need to cease, the needs and interests of the community would need to be respected, and extreme positions would need to be dropped (and yes, we can see extreme positions on both sides). It’s easy for parties to a relationship to fight. Recognising the need for repair and taking steps to repair is harder.

Is there any chance for enlightenment? Who knows. Your guess is as good as mine. But if the answer is no, the current war will continue at great cost to both sides, many may revolt (including by leaving for more peaceful places or forking which, in my view, is in no one’s interests), loyalties will erode, and a reduction in territory may well occur. If that happens, the greatest irony will be that the very thing the current war sought to achieve as articulated at WCUS, namely, ‘survival and thriving of the commons’, may stand to be irreparably damaged by it.

Footnotes

Question from a reader

I had decided to end my posts on the Automattic-WP Engine saga but, following changes by WP Engine to its website in response to the trademark infringement allegations against them, a reader has asked for my views on why it has done this.

First things first

The first thing to note is that I have no contact with WP Engine on this and so my thoughts are opinion only. I could be wrong.

The changes

The changes WP Engine has made include:

• changing the hero text from “We power the freedom to create on WordPress” to “We power the freedom to create”
• changing the text underneath the hero text from “Build, power, manage and optimize extraordinary WordPress, WooCommerce and headless sites with the world’s #1 platform” to “Build, power, manage, and optimize your WordPress¹, Headless and WooCommerce¹ sites with the #1 hosting platform” (with the footnote ¹ linking to the disclaimer set out below)
• changing the text “The most trusted WordPress platform” to “The most trusted platform for WordPress”
• removing phrases like “Managed WordPress Platform” and “Essential WordPress Hosting”
• changing the phrase “The Most Trusted WordPress Hosting Platform” to “The Most Trusted Hosting Platform for WordPress”
• changing the term “Headless WordPress” to “Headless Platform”
• changing “Powered by the Most Trusted WordPress Platform” to “The Most Trusted Platform for WordPress”
• changing “Expert WordPress Support” to “Expert Support for WordPress”
• changing the terms it uses for some of its hosting plans, i.e., from “Essential WordPress” to “Essential”, from “Core WordPress” to “Core”, and from “Enterprise WordPress” to “Enterprise”; and
• added new disclaimer text:

“¹ WP Engine is a proud member and supporter of the community of WordPress® users. The WordPress® trademark is the intellectual property of the WordPress Foundation, and the Woo® and WooCommerce® trademarks are the intellectual property of WooCommerce, Inc. Uses of the WordPress®, Woo®, and WooCommerce® names in this website are for identification purposes only and do not imply an endorsement by WordPress Foundation or WooCommerce, Inc. WP Engine is not endorsed or owned by, or affiliated with, the WordPress Foundation or WooCommerce, Inc.”

Likely reasons

The most likely and perhaps obvious reason for the changes is to reduce WP Engine’s level of trademark infringement-related risk, and almost certainly it will have done so after taking legal advice. Despite the likelihood that WP Engine and many other hosts have (rightly or wrongly) been using the word ‘WordPress’ as a shorthand way of describing their services, rather than using longer phrases like ‘Hosting for WordPress’, changing the expressions and adding the fuller disclaimer in the way WP Engine has done will likely lower its level of risk based on US case law, and doing so can be seen as a tangible response to address at least some of MM/Automattic’s concerns.

The goal will have been to reduce the risk of confusion in the minds of consumers, including the risk of consumers perceiving an affiliation with or endorsement by the likes of the WordPress Foundation, Automattic Inc, or WooCommerce Inc.

Some may say things like “Look, this is a concession by WP Engine, so clearly they were at fault!”. I make no comment on that. However, we need to appreciate that WP Engine will have found itself in a situation where it had been using WordPress-related terms for a long time and in a way commonly deployed across the industry and which, until a week or so ago, had not created the controversy that recently befell it (or at least not publicly).

So, for example, as I write this, GoDaddy is still using terms like:

• Managed WordPress Basic
• Managed WordPress Deluxe
• Managed WordPress Ultimate
• WordPress Hosting
• WordPress Ecommerce Hosting
• WordPress Premium Support
• WordPress Experts.

Similarly, DreamHost uses terms like:

• WordPress Basic
• WordPress Business
• Managed WordPress
• WooCommerce Hosting.

WP Engine has changed terms like these and added a pretty clear disclaimer.

An issue for WP Engine, unlike these other hosts, is that WP Engine has been put on very clear and public notice that neither Automattic Inc nor WooCommerce Inc accepts WP Engine’s usage of the WordPress and WooCommerce trademarks in the ways it had been using them, and is claiming it is infringing the WordPress and WooCommerce trademarks. Once WP Engine is put on notice to this effect, any reliance on the likes of a past implied licence or non-enforcement of the trademarks or reliance on a particular interpretation of the WordPress Trademark Policy might be perceived as going out the window, and so WP Engine will be acting prudently to lower its level of risk. This doesn’t necessarily mean it won’t make arguments around past non-enforcement or the like if taken to court, but continuing to use terms and phrases that are now the subject of infringement claims could be considered less than prudent, especially when lower risk terms and phrases can be used.

Changing terms like “Managed WordPress” to something like “Managed Hosting for WordPress” can be seen as distancing WP Engine from a direct use of the WordPress mark, reducing the risk that consumers will think the service is officially offered or endorsed by WordPress or Automattic or that there is an affiliation with them.

Whilst WP Engine might argue nominative or referential fair use (because it’s offering hosting services for WordPress), to avail itself of that defence it still needed to only use so much of the mark as is necessary to describe its own services, and to ensure that the usage didn’t imply endorsement or affiliation. I am not expressing a view on whether it was implying anything but, by adjusting the language to emphasise that its service is independent of and not endorsed by WordPress and WooCommerce, it may better align with the requirements of nominative fair use as outlined in the likes of New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir. 1992) and later cases and reduce the risk of falling foul of the WordPress Trademark Policy.

Interesting questions

Three interesting questions arise:

First, from a trademarks perspective, will the changes be enough for Automattic Inc and WooCommerce Inc? If they are not enough, presumably Automattic Inc and WooCommerce Inc will make that known (whether publicly or directly to WP Engine).

Second, to what extent will the changes do anything to bridge the deep divide that currently exists between MM/Automattic and WP Engine (which concerns more than alleged trademark infringement)? For my part, I doubt these changes alone will be enough. In addition to the issue of ‘giving back’, I’m getting the feeling from things that have been said that there are things under the public surface that have not been said. Pure speculation on my part but the jigsaw puzzle still seems to be missing some pieces.

Third, will other hosting companies like GoDaddy and DreamHost follow WP Engine, so as to lower their risk, or will they willingly enter licensing deals with Automattic Inc and WooCommerce Inc, or will they do nothing and expose themselves to risk? Whilst I understand it has been made clear to those and other hosts that only WP Engine is in the public firing line, logically, if Automattic (as exclusive commercial licensee of the WordPress trademark) and WooCommerce Inc (as owner of the Woo and WooCommerce trademarks) take action against WP Engine then, for the purposes of consistency of enforcement or other reasons, it could do the same against other hosts. I suppose that might depend on whether any particular host exceeds an enforcement threshold or criteria that Automattic appears to have set internally but, in the absence of knowing what that threshold is or receiving assurance from Automattic, we may see some other hosts taking steps to reduce their own risk.

All that said, who knows what may be happening behind closed doors or how deep the rabbit hole goes. I do not.

An invitation

If Matt or WPEngine would like me to add comment from them on the subject-matter of this post, feel free to get in touch.

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 these points, but US lawyers can shoot me down if they disagree:

1. MM/Automattic is referring to 15+% confusion that WP Engine is or has an association with WordPress or Automattic or WordPress.com (I’m not sure which) to reflect the level of confusion that some courts have said is necessary for an actionable trademark infringement claim in a case like this. I cannot comment on whether the survey that has been done is reliable and acceptable evidence (I simply don’t know), but that kind of level of confusion might be required for Automattic’s infringement claims to succeed. Matt has been quite open about that. Automattic says that level of confusion exists. That is an issue of fact that would need to be established.

2. The ‘WP Engine is not WordPress’ statements are most probably being made to defeat nominative fair use arguments. The reason for that, I understand (from an article from an expert US trademark and open source lawyer), is that “[f]or the defense to apply, the trademark use must be in reference to the original product, not as a name for the infringing product” (that is, an altered version of the original). “[T]he owner of the trademark for free and open source software is well within its rights when it does not allow others to label their newly-created versions with the same mark” (PS Chestek, “The Uneasy Role of Trademarks in Free and Open Source Software: You Can Share My Code, But You Can’t Share My Brand” (2012) 102(4) The Trademark Reporter, 1028, at 1039-1040). MM/Automattic says WP Engine has materially altered the release version(s) of WordPress. WP Engine appears to deny this, stating it installs the released zip file and merely turns off revisions (and, I imagine, that doing that and the likes of turning off news and events feeds is essentially nothing more than common configuration). If this matter were to go to court, technical evidence would need to be adduced to make a determination on this issue. I don’t know the answer.

(The WooCommerce/Stripe issue might be relevant to the issue above in relation to the WooCommerce trademark infringement claim, but it doesn’t seem relevant to the WordPress trademark infringement claim.)

3. If Automattic could not establish the ‘WP Engine is not WordPress’ argument, that would not of itself resolve the question of whether everything that has happened can be defended on the basis of nominative fair use. The availability of that defence would still need to be considered in the usual way by reference to the elements that need to be established (and exactly how it would be determined might depend on the court circuit in which the case is heard).

4. If the nominative fair use defence is not available, WP Engine would likely need to consider other potential defences. I would rather not attempt to wade into them here, or express any view on them. I have alluded to one before but I do not have enough information to express a view on whether it would succeed.

5. There is a difference in what Automattic can do with the WordPress trademark as exclusive commercial licensee versus what other commercial enterprises who are not sublicensed can do, even when the nominative fair use defence applies. The exclusive commercial licence from the WordPress Foundation to Automattic is, in essence (the actual wording is longer), as follows:

‘an exclusive, sublicensable right and licence to use and otherwise exploit the trademarks identified in Exhibit A [i.e., ‘WORDPRESS’ trademarks in multiple jurisdictions] in connection with the hosting of blogs and websites that utilise any version or component of WordPress or in connection with www.wordpress.com and www.wordpress.tv (each and collectively, together with any subdomains of any of the foregoing, “Automatic Sites”), providing support for the Automatic Sites, and/or substantially similar uses in connection with the Automatic Sites’

On my reading of this, if WordPress.com’s version of WordPress were not the same as an official release version of WordPress (and I’m not saying it is), one could not really argue against Automattic that its use of ‘WordPress’ in association with WordPress.com is problematic. This is because Automattic can use the trademark “in connection with the hosting of blogs and websites that utilise any version or component of WordPress or in connection with www.wordpress.com“. By contrast, if another and non-sublicensed WordPress host were to provide customers with an altered version of WordPress, Automattic might argue that the reference to ‘WordPress’ is not to actual shipped ‘WordPress’ and so that even if, theoretically, nominative fair use may be a runner for some, it is not a runner for a web host who does that. In other words, and repeating a point above, nominative fair use could be limited to hosts who do nothing to materially alter WordPress as shipped (and assuming the elements of the defence can be established).

To be clear, I am not suggesting this difference is ‘bad’. It’s just a consequence of the rights the trademark protects and that an exclusive licensee has, versus the rights that a non-sublicensed competitor does not have and the limits of a defence it might rely on to avoid liability.

Hopefully these points are a bit more illuminating than what I’ve said in previous posts, and perhaps a bit more balanced.

Further reading

For those who really want to explore such issues further, you might want to take a look at these discussions of US law:

• P S Chestek, “The Uneasy Role of Trademarks in Free and Open Source Software: You Can Share My Code, But You Can’t Share My Brand” (2012) 102(4) The Trademark Reporter, 1028, at 1039-1040
• I C Ballon “Fair Use of Trademarks Under the Lanham Act and State Law” (paper at a Midwest Intellectual Property Institute event in Minneapolis, September 26-27, 2019)
• P S Chestek, Chapter 9 Trademarks, in Open Source Law, Policy and Practice (Oxford Academic, 2nd edn, 2022)
• Google “Trademarks in Open Source” (Google Open Source Casebook, date unknown).

(Yes, I’ve been reading quite a lot about US trademark law.)

To be clear, I have not been seeking to influence any particular outcome with my posts, and I agree that whatever is best for the WordPress community is the desirable outcome. The problem is that, on the facts of what’s happening, I’m not sure what that is. I won’t explore that further here. I have been surprised by what has happened and have sought to explain what I see and think, in an attempt to help flush things out, but that is all. If MM/Automattic think anything I’ve said is palpably wrong, let me know and, if I agree, I’ll amend it.

(Updated 1 October 2024)

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, UTC 00:00”.

I, and probably many other customers, have some questions please:

1. Is WP Engine working on a permanent workaround or alternative solution to the WordPress.org block and, if so, what is it?

2. Does it make sense to put an alternative solution in place or, bearing in mind the number of sites you host, might WP Engine negotiate a WordPress.org access arrangement with WordPress.org/Automattic? Would that be preferable for the purposes of community cohesion? This could be structured in a way to avoid perceptions of subordination. For example, if WP Engine’s use of WordPress.org resources is disproportionately high as Matt appears to contend, it could be explained in other ways, including community contribution.

3. If WP Engine were to enter into such an arrangement, might it contribute to WordPress.org/Automattic’s thinking as to how all hosts with annual profit (not revenue) over a certain amount, or who otherwise place high resource demands on WordPress.org, might contribute to the running costs of WordPress.org? It would be odd for WP Engine to be subject to such an arrangement if others with similar demands on WordPress.org resources were not.

4. Have you considered creating a full listing of all your various contributions to the community (that someone cannot attack as mere marketing), perhaps using the three-part categorisation suggested by Brian Coords?

5. Have you considered trying to mediate a longer-term solution with MM/Automattic, one that addresses the complaints they’ve raised but without conceding fault and with an agreed communications plan?

6. Have you considered treating the current situation as an opportunity, not in terms of conceding you’ve done anything legally wrong, but in terms of offering to assist with the kinds of governance arrangements that Joost has suggested (not necessarily in a voting capacity, but in the form of assisting with set-up, having a trusted member like Brian Gardner on the advisory board, assisting with a Secretariat, etc)? This won’t sound palatable right now, I’m sure, but – to my mind – WP Engine has some great people within it that the community trusts and respects. Might other opportunities rise up from the ashes of the current fallout?

7. You obviously have very good lawyers backing you up. In addition to having them defend you, are you instructing them to assist you with constructive solutions (none of my business, I know)? For example, looking forward, might it be possible to divert a fractional percentage of customers’ yearly hosting plan fees into a ‘Pooled WordPress Community Fund’, perhaps up to a capped annual sum, and allow your staff or your customers to vote periodically on how that pooled fund is spent?

8. Overall, are you proposing to release further communications to your customers about what’s happening and what lies ahead? I suspect many of us would like to know.

Not a real letter of course

I imagine you are considering all these issues and more. Needless to say, I do not expect you to respond publicly to this post or directly to me, and of course I appreciate that, from the perspective of customer retention, this is a delicate situation. It’s delicate for a whole host of reasons, including the fact that it’s unprecedented in the world of WordPress, and because litigation (regardless of who brings it) would be time-consuming, costly, deepen rifts, and pose risks to both parties. As an example of the risks, WP Engine might succeed in litigation, but what impact might the existence of proceedings and the evidence that would need to be adduced by both sides have on customers and the wider community? The same applies to Automattic. For WP Engine, I can see how challenging this is when many customers will have divided loyalities, for despite everything that has happened, we would not have WordPress, or it would not be what it is today, if it weren’t for the decades of actions and financial contributions of Matt and Automattic (while not for one second overlooking all core contributors). I appreciate there are limits to the goodwill that can reasonably be attached to those contributions, but they are undeniable and so must be taken into account.

Thank you

As always, thank you to both MM/Automattic and WP Engine for the services you provide. From my perspective as someone who has used WordPress since 2005 and WPEngine for well over a decade, you’re both key players in the WordPress ecosystem.

With any luck, this will be my last post on this overall topic. Then again, who knows what might happen tomorrow…

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 platform product or open source successor of any of the foregoing on or in connection with www.wordpress.com and www.wordpress.tv (each and collectively, together with any subdomains of any of the foregoing, “Automatic Sites”), providing support for the Automatic Sites, and/or substantially similar uses in connection with the Automatic Sites. This licence is subject in all respects to that Trademark Donation, License and Security Agreement, by and between Licensor and Licensee, effective as of June 7, 2010.”

That legal verbiage can be shortened to: an exclusive, sublicensable right and licence to use and otherwise exploit the trademarks identified in Exhibit A in connection with the hosting of blogs and websites that utilise any version or component of WordPress or in connection with www.wordpress.com and www.wordpress.tv (each and collectively, together with any subdomains of any of the foregoing, “Automatic Sites”), providing support for the Automatic Sites, and/or substantially similar uses in connection with the Automatic Sites.

Exhibit A (headed ‘Schedule A’), was as follows:

Other trademarks owned by the WordPress Foundation

The WordPress Foundation also owns trademarks for ‘OPENVERSE’, ‘BUDDYPRESS’, ‘WP-CLI’, ‘WORDCAMP’, and has applications pending for ‘bbPRESS’, ‘MANAGED WORDPRESS’, and ‘HOSTED WORDPRESS’. The applications for ‘MANAGED WORDPRESS’, and ‘HOSTED WORDPRESS’ were filed in July 2024.

WooCommerce trademarks

WooCommerce Inc owns trademarks for ‘WOO EXPRESS’, ‘WOOEXPERT’, ‘WOOCOMMERCE’ (word mark and logo mark), ‘WOOCOMMERCE PAYMENTS’, ‘WOO’ (word mark and logo mark), ‘and WOOCOMMERCE STOREFRONT’. It also has applications pending for ‘HOSTED WOO’, ‘WOOPAY’, ‘WOO PARTNER’, ‘MANAGED WOO’, ‘WOOPAYMENTS’, and ‘WOO’ (additional classes of activity). The pending applications were filed in May 2022 (‘WOOPAY’), June 2023 (‘WOOPAYMENTS’), November 2023 (‘WOO PARTNER’), January 2024 (‘WOO’), and March 2024 (‘HOSTED WOO’ and ‘MANAGED WOO’). Until checking, I hadn’t appreciated the number of trademarks owned or applied for by WooCommerce Inc.

WP Engine’s trademarks

Note also that WP Engine owns a range of trademarks: ‘WPENGINE’ (logo mark), ‘WP ENGINE’ (word mark), ‘PRESS AHEAD’, ‘EVERCACHE’, ‘GENESIS’, ‘TORQUE’, ‘ATLAS’, ‘VELOCITIZE’, ‘FROST’, ‘FAUST.JS’, ‘WP Migrate DB’, ‘WP Offload’, ‘FLYWHEEL’, and ‘STUDIOPRESS’. It has applications pending for ‘ACF’ and ‘ADVANCED CUSTOM FIELDS’, and for a couple of variants of its logo. Note that, with WP Engine owning ‘WP ENGINE’ trademarks, any argument that the name ‘WP ENGINE’ infringes ‘WORDPRESS’ trademarks seems bound to fail.

Hope this helps people’s understanding.

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.