Automattic demanded web host pay $32M annually for using WordPress trademark

“WPE’s nominative uses of those marks to refer to the open-source software platform and plugin used for its clients’ websites are fair uses under settled trademark law, and they are consistent with WordPress’ own guidelines and the practices of nearly all businesses in this space,” the lawsuit said.

Mullenweg told Ars that “we had numerous meetings with WPE over the past 20 months, including a previous term sheet that was delivered in July. The term sheet was meant to be simple, and if they had agreed to negotiate it we could have, but they refused to even take a call with me, so we called their bluff.” Automattic also published a timeline of meetings and calls between the two companies going back to 2023.

Mullenweg also said, “Automattic had the commercial rights to the WordPress trademark and could sub-license, hence why the payment should go to Automattic for commercial use of the trademark. Also the term sheet covered the WooCommerce trademark, which they also abuse, and is 100 percent owned by Automattic.”

Automattic alleged “widespread unlicensed use”

Exhibit A in the lawsuit includes a letter to WP Engine CEO Heather Brunner from a trademark lawyer representing Automattic and a subsidiary, WooCommerce, which makes a plugin for WordPress.

“As you know, our Client owns all intellectual property rights globally in and to the world-famous WOOCOMMERCE and WOO trademarks; and the exclusive commercial rights from the WordPress Foundation to use, enforce, and sublicense the world-famous WORDPRESS trademark, among others, and all other associated intellectual property rights,” the letter said.

The letter alleged that “your blatant and widespread unlicensed use of our Client’s trademarks has infringed our Client’s rights and confused consumers into believing, falsely, that WP Engine is authorized, endorsed, or sponsored by, or otherwise affiliated or associated with, our Client.” It also alleged that “WP Engine’s entire business model is predicated on using our Client’s trademarks… to mislead consumers into believing there is an association between WP Engine and Automattic.”