Automattic Countersues WP Engine in WordPress Trademark Lawsuit

Automattic Files Counterclaims Against WP Engine

On Friday, Automattic, the company behind WordPress.com, submitted its counterclaims in the legal dispute initiated by WP Engine in October 2024. WP Engine had previously accused Automattic and its CEO, Matt Mullenweg, of defamation and misuse of authority.

Automattic contends that WP Engine has been improperly utilizing the WordPress trademark and employing misleading marketing tactics, while failing to adequately contribute to the open-source community.

Actions Leading to the Lawsuit

Last year, Automattic responded to WP Engine’s practices by publicly labeling the hosting provider as a “cancer to WordPress” and issuing a cease-and-desist notice. This notice asserted that WP Engine had violated the established rules governing trademark usage.

Further actions included Automattic restricting WP Engine’s access to resources on WordPress.org and initiating attempts to establish a licensing agreement with the host. Automattic asserts that WP Engine deliberately prolonged negotiations without genuine intent.

WP Engine’s Claims and Automattic’s Response

WP Engine ultimately filed a lawsuit against Automattic, positioning itself as the injured party in the wake of Mullenweg’s criticisms.

However, Automattic presents a different narrative. Following a $250 million investment from Silver Lake, a private equity firm, WP Engine allegedly transitioned from legitimate trademark use to infringement. This shift was evidenced by branding themselves as “The WordPress Technology Company” and allowing partners to refer to them as “WordPress Engine.”

Specific Instances of Trademark Infringement

Automattic highlights that the hosting company also introduced products named “Core WordPress” and “Headless WordPress.”

Furthermore, WP Engine reportedly communicated to its clientele that it dedicated 5% of its resources to supporting the WordPress ecosystem, a commitment Automattic claims was never fulfilled.

Automattic alleges the trademark infringement was intentional, stating that WP Engine merely “pretended to engage in licensing discussions, but actually delayed and negotiated in bad faith.”

The Role of Silver Lake

The counterclaims place significant emphasis on Silver Lake’s influence, suggesting that the firm’s interests heavily shaped WP Engine’s conduct.

Specifically, the allegations indicate that WP Engine pursued trademark violations because paying licensing fees would negatively impact its profitability and valuation, consequently affecting Silver Lake’s anticipated returns.

Potential Sale and Valuation

The counterclaims further allege that Silver Lake sought to sell WP Engine at a $2 billion valuation, but was unsuccessful in finding a buyer.

Importantly, the filing reveals that this included attempts to engage Automattic in a potential acquisition.

Impact on Product Quality

Automattic also asserts that WP Engine diminished the user experience and product quality by reducing essential features in an effort to lower costs.

WP Engine’s Response

WP Engine issued the following statement in response to the counterclaims:

“WP Engine’s use of the WordPress trademark to refer to the open-source software is consistent with longstanding industry practice and fair use under settled trademark law, and we will defend against these baseless claims.”