Open Source, Trademarks, and WP Engine | Hacker News Reader

Open Source, Trademarks, and WP Engine

automattic.com

61 pointswesti48 comments

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.

Out of curiosity, I looked at WP Engine's website, and counted thirty uses of "WordPress" (before I stopped counting), as well as at least a few uses of "WooCommerce". I am only casually following this dispute, but WP Engine does seem to be using the branding. That said, "WordPress" may be descriptive (I'm not sure whether it is).

edit: I did not address the investment component of the parent comment, as that was added after my comment was posted

I agree. The complaint here isn’t about WP, it’s about the full trademark being used without the repeated asterisk being used to call out that it’s a name owned by a different entity and used with permission / under fair use.

For comparison, the text of the screenshotted web page (https://wordpressfoundation.org/trademark-policy/) now reads:

> 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.

This is kind of a wild change. And the change of tone about "WP" aside, it is very strange to make complaints like this on a trademark policy page of all places.

This whole thing is very bizarre and not a great look.

Wow that reads incredibly petty, almost childish. And "billions of revenue"?

Odds that it was written by the CEO himself?

Likely they could buy Automattic if that were true.

Well they probably have made at least 1 billion over the lifetime of the company, it looks like their annual revenue is a couple hundred million. But multiple billions? And forgetting to say "dollars"? Does anyone proofread this stuff?

I don’t think it’s a wild change. Explicitly enumerated or not, one might assume that any open-source trademark owner does not allow use of their trademark that implies connection to, or authority over, the root project or that “creates confusion”.

Take a look at the Red Hat Trademark guidelines page, which is based on the Model Trademark Guidelines (CC-BY-4.0) designed for the open-source community. They explicitly mention that you cannot “Use the Red Hat Marks in a way that expresses or implies sponsorship or endorsement by, or affiliation or a relationship with Red Hat when one does not exist.” They also remind you that “Red Hat, at its sole discretion, may terminate or modify your permission at any time. Red Hat retains and reserves all rights to the Red Hat Marks and their use, including the sole right to modify these Guidelines, with immediate or later effect.”

If the WordPress Foundation had explicitly included a similar reminder would you still find the change “wild”?

https://www.redhat.com/en/about/trademark-guidelines-and-pol...

The part that is so weird to me is that Automattic (Matt is the CEO) owns WordPress.com which is a WP Engine competitor. So many people are confused about WordPress.com vs WordPress.org (The WordPress subreddit even has a sticky about it, since so many newbies are unaware that free self hosted WP exists). Matt is saying that the WordPress Foundation (non profit) gives Automattic an exclusive commercial license to use the trademark. So, WP Engine _may_ legally be in the wrong here (despite the trademark policy saying it was okay for a decade) - but his arguments about how WP Engine is ruining WordPress, is misleading customers, and is competing unfairly is so weird considering his own company does exactly the same. I guess his moral argument is that Automattic contributes so much to the WP source code, and other companies need to be doing the same or purchase a license to support it.

His post about WP Engine not being real wordpress because they disable post revisions to save space is also strange, someone on Reddit mentioned WP Engine has been doing that for over 11 years, so it's not something new. (WordPress.com also reduces features unless the user pays for a higher plan) Automattic was an early investor in WP Engine even, and was seemingly fine with this until now?

>Matt is saying that the WordPress Foundation (non profit) gives Automattic an exclusive commercial license to use the trademark.

Automattic originally registered the trademark. They donated it to the Foundation and retained the exclusive unlimited license for commercial purposes.

Thank you for the clarification, that was not clear from what I had read about this

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.

Matt has a reputation for flying off the handle, a smaller scale Elon Musk. Matt has been trying to get WPE to contribute more to the Wordpress project for years. Last week Matt heard that WPE were pressuring employees to stay silent about WPEs internals and so he flew off the handle and started throwing everything at the wall… thus, the festering resentment towards WPE for their lack of contributions to the project became the basis of all the things he’s throwing. Demand for payment was the easiest thing in reach. That didn’t work, and now trademark infringement claim is the easiest legal-shaped thing in reach. There’s no deeper explanation than man throws things.

The Wordpress foundation is Matt. Automattic is Matt. For all the pomp and circumstance, Wordpress is just Matt doing whatever he wants unchecked. Hence the trademark pages of the Wordpress website mysteriously changing today to reflect the version of reality needed to make this case stronger.

Wrong? Maybe. Consistent? Yes.

Did the page contents actually get changed?

Yes, you can check the wayback machine to see the before version.

Yes: https://pbs.twimg.com/media/GYRDoy8XgAE1CuR?format=jpg&name=...

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).

Correct me if I have the timeline wrong but is my assessment correct that this played out roughly:

1) Matt creates WordPress under GPL, his friend coins the software’s name, Matt creates a company to offer commercial services of it, and registers the trademark. (2003—2006)

2) Automattic donates the trademark to a Foundation while retaining an unlimited license to the marks for commercial use and is designated to enforce and sublicense the marks. (2010)

3) The Foundation makes the trademark widely available for noncommercial uses and available for limited commercial uses, within guidelines. (2010)

4) WP Engine uses the Foundation’s marks for commercial purposes. (2010—2024)

5) WP Engine is informed that their current use exceeds the parameters of the limited policy and that they need to come into compliance with the policy, commit to specific contributions to the noncommercial project, or acquire a sub-license from the exclusive unlimited use licensee. (2024)

6) WP Engine refuses all three options.

7) Matt issues an ultimatum that he will clown on WP Engine at a conference for the noncommercial project by announcing that WP Engine won’t commit to any of the three options (unless they can commit to one of them before he is slated to give his remarks).

8) Without a change, Matt makes this announcement.

9) WP Engine threatens legal action against the commercial licensee? And issues a legal hold on the trademark owner for potential discovery? So that they can continue using the trademark owner’s marks?

Comments like yours that malign Matt for “extortion” (a criminal offense) seem reckless to me.

Don't forget the part where Automattic invests money into WPEngine, 13 years ago.

I’m not sure that data point constitutes evidence that anyone was opposed to commercial uses of the mark that avoided creating confusion around the mark and the project.

WPEngine can likely show there hasn't been a material change in their marketing dress since that investment was made that would constitute active confusion on their behalf.

I’m imagining they weren’t calling themselves "The most trusted WordPress platform" and "The Most Trusted WordPress Tech Company" 13 years ago. 'Trusted' can be read with the meaning 'seen as trustworthy' rather than the meaning 'utilized' which could be found to be creating confusion.

Correction on 1: he forked a GPL project (b2/cafelog). He had no choice but to release it under GPL if he wanted to release it at all. It's a very long ago piece of history that, while acknowledged by WordPress in its history pages, doesn't seem well-known.

People who don't know sometimes present it as some grand act of charity for the good of open source. It was just what you did.

>Correction

Aware of the fork, “creates” still applies.

>It was just what you did.

Contemporary projects at the time were Movable Type and Blogger, both proprietary. You didn’t have to contribute to open source: it was a philosophy.

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.

Where did you read about EFF involvement?

They haven't yet, but given the situation, if other open-source foundations, controlled by corporations like Automattic, start acting this way, it sets a dangerous precedent. Open source is like free speech—you can't support free speech and then suddenly claim it's only for you, not for others. Automattic's main argument seems to be, "But they're private equity baddies."

Are you unfamiliar with other open-source project’s trademark protections?

From Red Hat’s: “Nothing in these Guidelines is meant to limit your rights under the terms of a free and open source software license. Trademarks and copyright are different rights, so regardless of what rights or permissions you may or may not have to use the Red Hat Marks, you always have all your rights under any applicable free and open source software licenses.”

The Mozilla Foundation is not going to let you call your Softonic/CNET/SourceForge download site "The Most Trusted Firefox Tech Company" or your distribution "The most trusted Firefox download" and if you do (as WP Engine did in their marketing) the EFF is not going to work for free to defend you.

The trademark argument is a smokescreen. Just watch Matt’s video—he clearly uses the word “contribute” in the context of source code.

Additionally, you’re required to defend your trademark to maintain your rights. So why is this issue surfacing now, after 14 years of inaction?

I think you may be mistaken. My understanding is that while courts encourage trademark owners to pursue timely enforcement, the Lanham Act does not mention a time limit. Maybe their use of the marks has changed over the years? A court will decide.

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.

We didn't need more reasons to dislike WordPress, and now they're really working to give us a new reason. At least that's how I feel. I'd much rather just use any other CMS.

"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 think it's a verbose way of saying $0.

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.

Did WP Engine generate the confusion or was it a lack of consumer understanding of the structure of the Wordpress ecosystem that did that?

Fair point. I'd be interested to learn where those distinctions are drawn, legally speaking?

So is the out for wpengine that they aren't enforcing it across the board but using it to "extort" a dollar amount that they perceive that they are owed?

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

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