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.