“WPE’s nominative uses of those marks to refer to the open-source software platform and plugin used for its clients’ websites are fair uses under settled trademark law, and they are consistent with WordPress’ own guidelines and the practices of nearly all businesses in this space,” the lawsuit said.
Automattic alleged “widespread unlicensed use”
Exhibit A in the lawsuit includes a letter to WP Engine CEO Heather Brunner from a trademark lawyer representing Automattic and a subsidiary, WooCommerce, which makes a plugin for WordPress.
“As you know, 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,” the letter said.
The letter alleged that “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.” It also alleged that “WP Engine’s entire business model is predicated on using our Client’s trademarks… to mislead consumers into believing there is an association between WP Engine and Automattic.”
The letter threatened a lawsuit, saying that Automattic “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.” The letter demands an accounting of WP Engine’s profits, saying that “even a mere 8% royalty on WP Engine’s $400+ million in annual revenue equates to more than $32 million in annual lost licensing revenue for our Client.”
WP Engine’s lawsuit asks the court for a “judgment declaring that Plaintiff does not infringe or dilute any enforceable, valid trademark rights owned by the Defendants.” It also seeks compensatory and punitive damages.
We contacted Automattic about the lawsuit today and will update this article if it provides a response.
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