SAN FRANCISCO (CN) — WPEngine, a tech company that builds plugins and hosts websites built on WordPress, argued Tuesday morning to keep Automattic CEO and WordPress co-founder Matt Mullenweg from interfering with the site’s operations after he demanded tens of millions of dollars in exchange for WPEngine to continue using the WordPress trademark.
Mullenweg initially owned the WordPress source code and trademark and now also runs Automattic — which owns and operates several for-profit businesses that operate within the WordPress ecosystem and compete with WPEngine, including wordpress.com, WordPress VIP and Pressable.com, as well as WooCommerce, Inc.
Automattic has said that WPEngine’s use of the WordPress brand confuses customers into believing that WPEngine is a part of WordPress.
In a complaint filed in September, WPEngine claims that Automattic gave WPEngine five hours to pay the multimillion-dollar licensing fee or be blocked from using essential services that WPEngine needs to service its customers. When it didn’t pay the fee, Automattic blocked WPEngine, breaking thousands of its customers’ websites.
At a preliminary injunction hearing Tuesday, Rachel Kassabian, counsel for WPEngine, said that in late September Automattic engaged in a self-proclaimed “nuclear war” after WPEngine balked at paying the price for a trademark license it does not need.
WPEngine claims that its use of the WordPress trademark is fair use because WordPress technology is open source and free, and that in 2010, Automattic transferred the WordPress source code and trademark into the nonprofit WordPress Foundation to ensure that the name was fully independent from any company.
U.S. District Judge Araceli Martinez-Olguin, a Joe Biden appointee, asked Kassabian what right WPEngine had to use the WordPress trademark without paying a licensing fee.
Kassabian said WPEngine has been using the WordPress trademark for 15 years, protected by fair use.
“In the record, we have the long-standing use of the mark with absolutely no effort to enforce or even a complaint of any kind,” she said.
Between Sept. 20 and Sept. 25, Kassabian said that Mullenweg repeatedly smeared WPEngine in posts online, including one where he declared WPEngine was a “cancer to WordPress.”
“You look at the record, we see that for 15 years WPEngine was making nominative fair use of the WordPress mark, as the entire community did for 15 years, without so much as a shoulder tap. Nothing whatsoever until the morning of September 20, when we receive this one-page, bizarre trademark license agreement. That’s not how trademark owners operate, that is not how you protect and force your mark,” Kassabian said.
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