Judge Leans Toward WP Engine in WordPress Dispute but Seeks Clarity

The legal fight between WP Engine and Automattic, the company behind WordPress, took a major turn this week. Judge Araceli Martínez-Olguín said she is inclined to grant WP Engine’s request for a preliminary injunction against Automattic. 

However, the judge pointed out that WP Engine’s proposal was too vague to move forward and asked both sides to clarify their positions before the next hearing on December 3.

This case highlights deeper conflicts within the WordPress community, particularly around trademark enforcement and fair use of the WordPress name—a subject that had remained mostly unchallenged for over 15 years.

A Courtroom Clash Over a $32 Million Demand

The dispute traces back to September 20, when Automattic’s CEO, Matt Mullenweg, shocked WP Engine with a one-page demand for a $32 million licensing fee tied to the WordPress trademark. 

The fee represented 8% of WP Engine’s gross revenues for a seven-year term, automatically renewable. WP Engine’s legal team claimed this figure had no basis in trademark valuation but instead reflected an arbitrary “ransom.” 

They alleged that Mullenweg’s calculation was purely opportunistic, stemming from his belief that WP Engine could afford it.

Mullenweg’s defense presented an alternative view, pointing out the option for volunteer hours in lieu of monetary compensation. They also highlighted WP Engine’s failure to respond to follow-up discussions, portraying their claim of coercion as overblown.

The Judge’s Perspective

Judge Martínez-Olguín acknowledged that WP Engine’s case had merit but criticized the lack of clarity in their request for an injunction. 

She said, “Having reviewed everything, I am inclined to grant some sort of injunction,” but emphasized that their current proposal was “exceedingly vague.”

The judge urged both sides to work together to develop a more specific and reasonable injunction. If they couldn’t agree, she asked them to submit separate proposals for her to consider. This decision will shape the next steps in the case, which hinges on whether Automattic’s trademark demands were legitimate or overreaching.

The Legal Arguments

WP Engine claims that Automattic’s $32 million demand was a form of extortion. However, Automattic’s attorneys argued that under California law, WP Engine’s claim doesn’t meet the legal definition of extortion. 

They said the case WP Engine relied on (Tran v. Winn) dealt with different legal concepts, such as duress, and couldn’t be applied here.

Automattic’s lawyers also argued that WP Engine couldn’t prove economic extortion because Automattic had the right to ask for licensing fees or volunteer hours. 

They highlighted that WP Engine ignored a text from Mullenweg suggesting further negotiations, which undermined claims that the demand was coercive.

Why This Case Matters

The outcome of this dispute could significantly impact the WordPress community. For years, businesses like WP Engine used the WordPress trademark freely, assuming that community norms allowed it. 

Automattic’s sudden enforcement of its trademark challenges these assumptions, raising questions about fairness and the responsibilities of trademark owners.

If Automattic wins, it could lead to stricter enforcement of trademark rules within open-source projects, possibly changing how companies operate in the WordPress ecosystem. 

On the other hand, if WP Engine prevails, it could reaffirm the idea that long-standing community practices should hold more weight than sudden legal demands.

What’s Next?

The case is set to continue on December 3, when both sides will present revised proposals for the injunction. 

Judge Martínez-Olguín’s focus on clarity suggests she’s looking for a balanced solution rather than taking sides outright. Her careful approach reflects the complexity of the case, which involves both legal technicalities and community norms.

Important Lessons for Businesses

For companies working in open-source communities, this case is a reminder to:

Stay Informed: Understand the trademark policies of the platforms you rely on.

Respond Quickly: Always engage in discussions or disputes instead of ignoring them.

Document Practices: Keep records of your use of trademarks and any communications with their owners.

Prepare for Changes: Be ready to adapt if long-standing norms shift toward stricter enforcement.

Key Takeaways

• Automattic asked WP Engine for $32 million to use the WordPress trademark.
• WP Engine argued that the demand was unfair and based on arbitrary numbers.
• The judge is open to granting WP Engine’s injunction but wants clearer terms.
• The case highlights the tension between legal enforcement and community traditions.
• The decision could reshape how open-source trademarks are handled.