Internal blog post reveals Automattic’s plan to enforce the WordPress trademark using ‘nice and not nice lawyers’
Reading Time: 4 minutesMatt Mullenweg, the WordPress co-founder and Automattic CEO, has been embroiled in a very public and legal fight with WP Engine these last few weeks over the use of WordPress as a trademark, and fees Automattic believes WP Engine owes to the WordPress project – sparring that has resulted in WP Engine issuing legal demands of its own.
But Automattic’s position on the matter did not materialize overnight.
The message – penned by Automattic’s then-chief legal officer Paul Sieminski in January 2024 on the company’s ‘P2‘ (a version of WordPress aimed at internal communications) – outlined a plan for how Automattic would approach this strategy, through direct negotiations with companies and via legal action from ‘nice and not nice lawyers and trademark enforcers.’ And Automattic potentially would register further trademarks going forward.
‘We will be using a multi-pronged strategy that will involve some additional trademark registrations… legal cease-and-desist letters, and a formal paid licensing program for the partners,’ Simineski noted. (He left the company in April 2024.)
This is effectively what has played out.
In July, the WordPress Foundation filed trademark applications for both ‘Managed WordPress’ and ‘Hosted WordPress’, which are pending in status. And Automattic issued a cease-and-desist letter to WP Engine at the end of last month. Neither Automattic nor the WordPress Foundation has yet to publish any further guidance, however, on fair use.
The WordPress Foundation, a non-profit, has owned the trademark for WordPress since 2010, when Mullenweg founded Automattic as a commercial entity to sit on top of the open source framework.
Mullenweg’s reasoning for transferring that trademark to the foundation was that, even if there were a changing of the guard at Automattic, the trademark would remain safe with the foundation and the open-source project could live on.
Automattic holds the exclusive commercial license for WordPress, and its recent actions signal a major shift in how it’s positioning itself as a guardian.
In addition to giving some context to Automattic’s recent legal actions, the internal blog post also underscores how tension has escalated in the WordPress ecosystem, where the collaborative aspects of open source projects have had to be balanced against business interests.
Many contributors and developers have pointed out how this fight could impact the WordPress community negatively. That would be a change from past form since Automattic previously appeared to have a less adversarial relationship with prominent players in the ecosystem. It had even been an investor in WP Engine to spur more ecosystem activity. It was bought out, we have learned and confirmed, when Silverlake took a controlling stake in WP Engine in 2018.
The internal post — which only refers to Automattic, no mention of WP Engine nor other companies building on the WordPress framework — is primarily focused on the ‘WordPress’ trademark, including its circular logo. Simineski emphasized Automattic is the only company allowed to use these in its name and branding.
He also clarified Automattic’s role around WordPress.org. The initiative ‘doesn’t involve creating or explaining any new rules’ beyond its trademark policy, he writes.
Google also makes an appearance in the post – primarily as a vehicle for enabling abuse of the trademark.
‘A brief perusal of Google Ads and hosting company landing pages will turn up a lot of ‘Managed WordPress’, or companies that offer ‘WordPress Hosting.” he wrote. ‘Is this OK? Can we clamp down on these things? The answers are… no, and yes.’
Automattic, he wrote, would seek to work with Google to keep it from amplifying companies and links that misused the branding. ‘Overall, they can help but we cannot rely on them 100%,’ he added.
The post covers trademarks related to WooCommerce, Automattic’s Shopify competitor that it acquired in 2015. WooCommerce is 100% owned by Automattic, and Automattic is following the same enforcement strategy for it and its ‘Woo’ branding. Enforcement, the counsel wrote in the internal blog post, ‘will probably be easier and cleaner because it’s less of a community asset.’ (WooCommerce itself is also open source.)
The Foundation has three directors, including Mullenweg. The others are Mark Ghosh, who sold his website, a popular WordPress blog, to Mullenweg in 2014, and Chele Farley, a former Republican politician whose campaign Mullenweg lent money to. Both of them have been almost invisible from foundation activities or speaking about the WordPress ecosystem.
We reached out to Automattic for comment for this story and Mullenweg replied directly. He did not give a direct answer to the question of whether the dispute with WP Engine was a one-off or setting a precedent for further action.
‘We do trademark enforcement all the time! It’s part of protecting the trademark,’ he wrote. ‘Usually it’s pretty minor, and a UDRP or email takes care of it. However, WP Engine’s misuse of the WordPress and WooCommerce trademarks was so intrinsic to their business it required a more substantive deal, which I honestly thought was going to happen (it makes sense, from a business point of view) prior to [the September WordPress conference] WordCamp, which is why we allowed them to sponsor [the U.S. event].’
He added that the company was ‘upgrading a lot of our legal team right now.’
You can contact this reporter at im@ivanmehta.com or on Signal: @ivan.42
Ref: techcrunch
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