AutoFiles has filed counterclaims against WP Engine in a WordPress lawsuit, alleging trademark abuse

Friday, Automattic, the maker of WordPress.com, filed its counterclaims in a lawsuit filed by hosting company WP Engine in October 2024, which accused Automattic and its CEO Matt Mullenweg, Defamation and abuse of power. Automattic believes that WP Engine has misused the WordPress trademark and engaged in deceptive marketing practices, without properly giving back to the open source community.

As a result, Automattic took action against WP Engine last year, which included calling the hosting provider a “cancer to WordPress” and sending it a cease-and-desist letter claiming that WP Engine had violated its trademark usage rules. As the battle continued, Automattic blocked WP Engine from accessing WordPress.org resources and attempted to negotiate a licensing deal with the host. Automattic claims the company negotiated in bad faith.

Eventually, WP Engine filed a lawsuit against Automattic, portraying itself as a victim of Mullenweg’s attacks. But in Automattic’s version of events, after private equity firm Silver Lake invested $250 million in WP Engine, it pivoted from fair use to trademark infringement by calling itself “The WordPress Technology Company” and allowing its partners to refer to it as “WordPress Engine.”

Automattic notes that the hosting company has also launched products with names like “Core WordPress” and “Headless WordPress,” and claims to its customers that it has dedicated 5% of its resources to supporting the WordPress ecosystem. Automattic says it never fulfilled those promises. Automattic claims the trademark infringement was intentional, saying WP Engine “only pretended to participate in licensing discussions, but in fact delayed and negotiated in bad faith.”

Silver Lake plays a central role in the counterclaims, implying that the interests of the private equity firm guided much of WP Engine’s behavior. In particular, the counterclaims allege that WP Engine engaged in trademark infringement because paying licensing fees would impact the company’s profits and valuation, and thus Silver Lake’s expected revenue.

Counterclaims also claim that Silver Lake was seeking to offload WP Engine at a $2 billion valuation, but was unable to find a buyer. Notably, the filing states that this includes “Initiatives for Automattic.”

Automattic also claims that WP Engine degraded the consumer experience and product quality in an attempt to cut costs during this time by removing core features.

WP Engine responded to the counterclaims with the following statement:

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