Open Source, Trademarks, and WP Engine

Your honor, I'd like to enter in Exhibit 0 into the records:

https://pbs.twimg.com/media/GYPsyoSbwAACO7X?format=jpg&name=...

Furthermore, apparently Automattic invested money into WP Engine in 2011? Since the principals of Automattic and the Wordpress Foundation are the same, why did they not call trademark violations then (or negotiate a royalty deal for the use of the marks)?

https://techcrunch.com/2011/11/15/silverton-automattic-put-1...

This whole thing is bizarre.

I know we're not going to get a response, but I'm really curious to hear what the explanation for the allegations covered by WP Engine's Cease and Desist sent to Automattic just yesterday, before this one:

https://wpengine.com/wp-content/uploads/2024/09/Cease-and-De...

There's two sides to every story but sincerely, something seems... very wrong.

I'm no trademark lawyer, but isn't offering "WordPress" hosting fine as long as you are genuinely using the WordPress software? As I understand it that is purely nominative use.

This whole incident (with the information from texts and posts shared in the “Cease and Desist” letter by WP Engine) makes Matt seem like a disgruntled person who’s after another company because his ego is hurt when his efforts to extort money from it failed. This doesn’t do any good to the reputation of Automattic or WordPress.

If this goes to court, I hope WP Engine wins, not because it’s a good open source participant (it doesn’t seem to be one) but because Matt’s angle here seems to twist facts and history.

On a tangential note, I personally wouldn’t use WP Engine because I think it’s quite expensive compared to similar WordPress hosting offerings from other companies (which in turn could be expensive compared to self-hosting).

A link to yesterday's conversation after WP Engine sent their cease-and-desist letter to Automattic:

https://news.ycombinator.com/item?id=41631912

It’s going to get really spicy in here if the EFF stands up for a private equity company, but this is pretty clearly an important open source issue.

I’m far from being an expert in trademark law (esp. US trademark law). But I think WP Engine could be more clear about their usages of such trademarks.

I work for a company (aiven.io) which offers hosted services mostly for OSS products. All of our products are always called “Aiven for…” to prevent confusion, and there’re strict rules in place about that. It’s always “Aiven for ClickHouse(R)”, never just “ClickHouse”.

This is one of the the worst corporate shakedowns I've ever had to pretend to care about.

"Provide an accounting of all profits from the service offerings that have made unauthorized use of our Client’s intellectual property;"

How is this determined?

I see this kind of thing all the time with third-party WordPress and WooCommerce plugins, it seems like WP Engine managed to generate enough perceived consumer confusion (looking at the exhibits, frequently in the form of support requests from WP Engine customers posted to official WordPress channels), such that Automattic felt compelled to do something about it. That said, from what I can tell, there are dozens of similarly branded "WP [something]" plugins that engage in a lot of the same "brand-borrowing"--there's probably an actual term for this, but deliberately leaving one's association with WordPress ambiguous to leave open the interpretation that your plugin is more official than it is.

EDIT: changed consumer confusion from "obvious" to "perceived"--I have no idea whether these examples were obvious, and it would likely depend on your own perceptions.

Anyone knows why this conflict is coming to head now ? Is Automattic looking to go Public soon and needs to show hockey stick revenue growth ?

This is going to be interesting.

It would be great to see more court tested clarity on trademarks used in Open Source - both abuse and fair use.

Private equity Vs open source. Interesting.

This needs to go to court ASAP, because WP Engine ain't breaching anything.

This is such a pathetic attempt. The exhibits even includes someone saying "hey maybe you should use items where WPEngine itself refers as WordPress engine" (twice!) and you obviously won't find that... so they're going after clueless users of WPEngine. WP Engine is called WP Engine and uses WordPress. There's nothing infringing with any of that. If people call it WordPress Engine, it's their problem and WPEngine isn't liable for it... As for all the "WordPress" mentions on WPEngine's site... well that is the software they're selling. Would Matt not throw another fit if they'd fork WordPress and call it WildPages?

Fantastic，流弊了