Automattic Responds to WP Engine’s Cease and Desist with Legal Action

After the incidents at WordCamp US 2024, WP Engine sent a “cease and desist” letter to Automattic demanding that Automattic and its CEO, Matt Mullenweg, retract and stop making false, harmful, and disparaging statements about WP Engine.

Automattic Confirms Legal Action

Matt Mullenweg has confirmed that they have officially initiated legal action against WP Engine for the “Unauthorized Use of WordPress Foundation and WooCommerce, Inc. Intellectual Property” and requested them to stop the unauthorized use of trademarks belonging to Automattic & Woo.

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The document reads, “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. We are writing about WP Engine’s web hosting and related services that improperly use our Client’s WORDPRESS and WOOCOMMERCE trademarks in their marketing.“

The letter further asserts: “We understand that our Client has contacted you about securing a proper license to use its trademarks, yet no such agreement has been reached. As such, 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. WP Engine’s unauthorized use of our Client’s trademarks also dilutes their rights, tarnishes their reputation, and otherwise harms the goodwill they have established in their famous and well-known trademarks, and has enabled WP Engine to unfairly compete with our Client, leading to WP Engine’s unjust enrichment.”

The legal team also accuses that, “WP Engine has developed a business generating annual revenues of over $400 million, which has been based entirely on extensive and unauthorized uses of our Client’s trademarks.”

Automattic’s lawyers warned, “Our Client is entitled to file civil litigation to obtain an injunction and an award of actual damages, a disgorgement of your profits, and our Client’s costs and fees. Our Client also is entitled to seek an award of attorney’s fees due to the bad faith and extraordinary nature of WP Engine’s knowing and willful infringements.”

But Automattic is willing to amicably resolve this matter, including through a licensing relationship for use of its trademarks. WP Engine has time till October 03 to confirm its understanding of and compliance with Automattic’s requests including the below ones.

The document also contains screenshots (shared below) from social media and WP Engine’s website, highlighting alleged misuse of trademarks and community confusion.

The legal battle between the two giants will have long-term effects on the community at large. Even more interesting is that Automattic had invested in WP Engine in 2011.

More About Cease and Desist Letter From WP Engine

WP Engine’s cease and desist letter stated that “WP Engine is fully prepared to take all necessary steps to protect its business, employees and customers, as well as the entire WordPress ecosystem, from the harm Automattic is attempting to inflict upon them.”

The document stressed that “Automattic and its CEO Matthew Mullenweg must immediately cease and desist from disparaging WP Engine and/or its investor by making false factual statements.”

“Mr. Mullenweg’s statements also reflect a clear abuse of his conflicting roles as both (1) the Director of the non-profit WordPress Foundation, and (2) the CEO of at least two for-profit businesses that compete with WP Engine. From his sham assertion of trademark rights, to his market-wide disparagement, to disruption of known business relationships by either convincing or coercing WP Engine’s customers from doing any further business with it, these acts reflect just a few examples of Mr. Mullenweg’s unethical abuse of power. That Mr. Mullenweg quietly demanded tens of millions from WP Engine for his for-profit company while publicly claiming to be selflessly safeguarding the interests of the community is shameful.” WP Engine’s legal team stated.

From WordPress #Announcements Slack channel

Matt also attended a Twitter Spaces discussion and Courtney Robertson has shared an AI-generated version of its transcript.

Other Developments

WP Engine’s News Feed Removed?

Matt tweeted about rumors that WP Engine removed the news feed from wp-admin dashboards. Some users confirmed that the whole WordPress News Metabox has been removed from the WP Engine dashboard but is still available in Local.

Users were divided on the widget’s importance, but several people expressed dissatisfaction with WP Engine’s move.

WP Tavern Articles Missing?

A Reddit post alleged that several WPTavern posts had disappeared after the WC US Q&A session. However, WPTavern founder Jeff Chandler debunked the claims, stating, “With some help, I conducted a thorough investigation and I can confidently say that not only were those posts not deleted, they never existed.” The Reddit post was later deleted.

(This concludes Part 2. Stay tuned for Part 3.)