Automattic sends cease-and-desist letter to WP Engine over trademark usage

On September 23, 2024, Automattic, the parent company of WordPress.com, took legal action against web hosting provider WP Engine by sending a cease-and-desist letter. The letter, delivered via email and courier, demands that WP Engine immediately stop all unauthorized use of Automattic's trademarks, including WordPress and WooCommerce.

The legal confrontation stems from Automattic's claim that WP Engine has been extensively and improperly using these trademarks in its marketing efforts. According to the letter, sent by James R. Davis II of Perkins Coie LLP on behalf of Automattic and WooCommerce, Inc., WP Engine's actions have led to consumer confusion and trademark infringement.

Automattic asserts ownership of all intellectual property rights globally for the WooCommerce and Woo trademarks, as well as exclusive commercial rights from the WordPress Foundation to use, enforce, and sublicense the WordPress trademark. The company claims that WP Engine's use of these trademarks without proper licensing has resulted in trademark infringement, dilution, and unfair competition.

Key points from the cease-and-desist letter include:

1. Automattic demands WP Engine immediately cease all unauthorized use of their trademarks, particularly WordPress, WooCommerce, and Woo.
2. WP Engine is accused of generating annual revenues exceeding $400 million based on unauthorized use of Automattic's trademarks.
3. Automattic claims that WP Engine's actions have led to significant consumer confusion, with many referring to WP Engine as "WordPress Engine."
4. The letter cites violations of the WordPress Foundation Trademark Policy, which prohibits using WordPress marks as part of a product, project, service, domain name, or company name.
5. Automattic requests an accounting of all profits from service offerings that have made unauthorized use of their intellectual property.
6. The company seeks compensation for unauthorized use and unfair competition, suggesting that even an 8% royalty on WP Engine's annual revenue would amount to over $32 million in lost licensing revenue.
7. A legal hold has been requested, requiring WP Engine to preserve all relevant physical and electronically stored data, documents, and information related to the issues raised in the letter.

The letter reveals that prior attempts to reach an amicable resolution, including discussions about securing a proper license to use the trademarks, have been unsuccessful. Automattic expresses willingness to resolve the matter, potentially through a licensing relationship, but demands immediate action to address the alleged infringements.

This legal action follows recent public criticism of WP Engine by WordPress co-founder Matt Mullenweg at WordCamp US 2024. During his keynote speech on September 20, 2024, Mullenweg accused WP Engine of not contributing enough to WordPress core development despite generating significant revenue from the platform.

The controversy highlights ongoing tensions in the open-source community regarding the balance between commercial interests and community contributions. As WordPress powers over 40% of websites globally, the outcome of this dispute could have far-reaching implications for the open-source ecosystem and the web hosting industry.

WP Engine has not yet publicly responded to the cease-and-desist letter. The company has until October 3, 2024, to confirm its understanding of and compliance with Automattic's requests.

On September 23, 2024, the legal dispute between Automattic and WP Engine took an unexpected turn when WP Engine responded with its own cease-and-desist letter. This counter-action demands that Automattic and Matt Mullenweg, WordPress co-founder, immediately cease making what WP Engine claims are false factual statements about their company.

Key facts

• Cease-and-desist letter sent on September 23, 2024
• Automattic claims ownership of WooCommerce and Woo trademarks
• Automattic has exclusive commercial rights to the WordPress trademark
• WP Engine accused of generating $400+ million annually from unauthorized trademark use
• Deadline for WP Engine's response: October 3, 2024
• WordPress powers over 40% of websites globally
• WordCamp US 2024 took place from September 19-21 in Portland, Oregon
• Matt Mullenweg's keynote criticizing WP Engine occurred on September 20, 2024

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