Automattic, WP Engine
Published on September 27, 2024

The Automattic-WP Engine debacle and clarity of concepts

written by Richard Best

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.