On stage at WordCamp US last week, Matt Mullenweg gave a keynote presentation which made a wide range of points about contribution, the ethics of open source, and the commitments various companies make to contributing. In particular, he called out WP Engine in what was a fairly clear direction to the community to stop using them. This was then followed with a post on WordPress.org.
Since then, further details have emerged about the conversations happening behind the scenes, as a result of WP Engine’s cease and desist, and Matt’s live Twitter Spaces (thanks to Courtney Robertson for her notes). It has also emerged that the WordPress Foundation has filed trademarks for “managed WordPress” and “hosted WordPress”.
In particular, the following details from WP Engine’s letter stand out:
Automattic CFO Mark Davies told a WP Engine board member that Automattic would “go to war” if WP Engine did not agree to pay its competitor Automattic a significant percentage of its gross revenues – tens of millions of dollars in fact – on an ongoing basis. Mr. Davies suggested the payment ostensibly would be for a “license” to use certain trademarks like WordPress, even though WP Engine needs no such license. WP Engine’s uses of those marks to describe its services – as all companies in this space do – are fair uses under settled trademark law and consistent with WordPress’ own guidelines.
These have been confirmed by Automattic’s counter letter, which also states Automattic is asking WP Engine to pay 8% of their revenue.
Until yesterday, the stated policy of the WordPress Foundation was:
All other WordPress-related businesses or projects can use the WordPress name and logo to refer to and explain their services
And:
The abbreviation “WP” is not covered by the WordPress trademarks and you are free to use it in any way you see fit.
(As of writing, the page was last updated at 2024-09-24T16:45:36; the prior version recorded by the Internet Archive was active at 2024-09-24T02:45:55.)
As WP Engine’s filing notes, it is long established trademark case law that trademarks may be used descriptively under fair use. In the phrases “hosted WordPress”, “headless WordPress, “WordPress platform” (etc), the term “WordPress” is clearly being used descriptively – it is website hosting for the WordPress open source software.
There are no other terms that can substitute, and a reasonable person who understands that WordPress is an open source, installable project can clearly make this distinction. In the same manner, seeing other hosts offering “Apache & PHP hosting” is clearly descriptive, and not an attempt to pass off as officially licensed products of the respective trademark holders. (“Managed WordPress”, a term the Foundation has now filed trademarks for, has been used by the community since at least 2010 since it was popularised by Pagely.)
The first statement may have been the WordPress Foundation’s policy, but it is also clearly explaining cases of fair use. The second statement is a matter of fact: “WP” is not trademarked.
The trademark policy now states (2024-09-24 22:21):
The abbreviation “WP” is not covered by the WordPress trademarks, but please don’t use it in a way that confuses people. For example, many people think WP Engine is “WordPress Engine” and officially associated with WordPress, which it’s not. They have never once even donated to the WordPress Foundation, despite making billions of revenue on top of WordPress.
If you would like to use the WordPress trademark commercially, please contact Automattic, they have the exclusive license. Their only sub-licensee is Newfold.
(This policy page was authored by Matt, who is also CEO of Automattic. Automattic and Newfold also have a business relationship beyond trademark licensing, with Bluehost Cloud using Automattic’s WP Cloud infrastructure-as-a-service product. Newfold is also an investor in Automattic.)
Across these conversations, there is a clear letter of intent from Matt, Automattic, and the WordPress Foundation: if you use the term “WordPress” commercially in any way, Automattic may dictate the terms under which you may use it.
If Automattic were to win this legal argument, this would mean it is no longer possible for “WordPress agencies” to use the term, nor for hosts to offer “WordPress hosting”, nor for “WordPress plugins” to be commercially available. These would, under their argument, not be fair use, but rather an attempt to pass off your products as officially sanctioned by the WordPress Foundation and Automattic.
The only way any of these businesses would be able to operate is under the terms that Automattic chooses – in WP Engine’s case, that was 8% of their revenue. Any company could be subject to a shakedown for an arbitrary amount, or face ruinous legal action and intimidation in the public space.
If Automattic had the right to dictate any use of the trademark, this would be a severe net-negative for the WordPress project, the WordPress Foundation, and for open source projects in general. It would severely encumber any company merely seeking to describe the products and servicesthey offer.
It would also have a chilling effect upon any commercial activity using WordPress, as any business could be targeted by Automattic for licensing fees, even those using the trademark descriptively, fairly, and in good faith.
This would directly work against the WordPress Foundation’s non-profit goal of serving the public good.
The case that companies should contribute certain amounts (for example, 5% of time or resources) is one that reasonable people can argue over and disagree about – and we see other cases of this across the open source community. Raising whether certain companies are meaningfully contributing is the sort of advocacy befitting the Foundation, whether you agree with the specifics or not.
However, we should not confuse this worthwhile advocacy with the stunning claims that Matt and Automattic are making, and the impact this would cause upon the industry and the project itself.
WP Engine must win this legal battle for the continued health and vibrancy of the WordPress project.