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)