False Statements About Trademark Ownership
Another of the accusations made in the lawsuits is that Mullenweg had made misleading public statements asserting that the trademarks had been transferred to the non-profit WordPress foundation, even though he had secretly transferred the trademark back to Automattic through an exclusive sublicensable license. A sublicensable license is an agreement in which the original license holder (the licensor) grants a second party (the licensee) the right to grant a license to a third party (the sublicensee).
The lawsuit states:
“In 2010, in response to mounting public concern, the WordPress source code and trademarks were placed into the nonprofit WordPress Foundation (which Mullenweg created), with Mullenweg and Automattic making sweeping promises of open access for all: “Automattic has transferred the WordPress trademark to the WordPress Foundation, the nonprofit dedicated to promoting and ensuring access to WordPress and related open source projects in perpetuity. This means that the most central piece of WordPress’s identity, its name, is now fully independent from any company.” Mullenweg and Automattic reiterated this promise later, in even more forceful terms: ‘What’s important is that [] longer than I’m alive, longer than Automattic is alive, longer than any of us are alive, there is something that holds the WordPress code and trademark for the free access for the world.”
What Defendants’ statements and assurances did not disclose is that while they were publicly touting their purported good deed of moving this intellectual property away from a private company, and into the safe hands of a nonprofit, Defendants in fact had quietly transferred irrevocable, exclusive, royalty-free rights in the WordPress trademarks right back to Automattic that very same day in 2010. This meant that far from being “independent of any company” as Defendants had promised, control over the WordPress trademarks effectively never left Automattic’s hands. “
WP Engine writes that it relied on the promises made when it was founded in 2010 as a business built around WordPress, investing hundreds of millions of dollars over the past 14 years only to see WordPress turned against it by the “petulant whims” of Automattic’s CEO, Matt Mullenweg to “inflict harm” to WP Engine’s business.
Further claims are made that the request for payment of tens of millions of dollars for a trademark license (that WPE claims is not needed) came “without warning” and that they were given only 48 hours to make the decision to pay or face being banned and “publicly smeared.”
Alleges Mullenweg Controls WordPress Foundation For Self-Interest
The lawsuit also claims that the recent events at WordCamp and the days thereafter exposes that the non-profit WordPress Foundation is an entity that Mullenweg personally controls for his own and Automattic’s commercial interest.
“Mullenweg’s recent actions have exposed and highlighted his long history of obfuscating the true facts about his control and manipulation of the WordPress Foundation and wordpress.org—which he presents as a not-for-profit ‘dot-org’ enterprise, but which in fact he solely owns and directs with an iron fist to further his own commercial interests in Automattic and associated commercial businesses, to the detriment of Defendants’ competitors.”
Fallout From Lawsuit
The lawsuit was filed October 2nd and there is already a credible report that the WordPress Executive Director/General Manager, Open Source Division; Automattic, Josepha Haden Chomphosy, has resigned and will be making an announcement today October 3rd. The statement about this was posted on X by WP Tavern journalist Jeff Chandler who has been involved with WordPress since 2007.
He tweeted:
“I spoke with Josepha tonight. I can confirm that she’s no longer at Automattic.
She’s working on a statement for the community. She’s in good spirits despite the turmoil.”
I spoke with Josepha tonight. I can confirm that she’s no longer at Automattic.
She’s working on a statement for the community. She’s in good spirits despite the turmoil.
— Jeff (@jeffr0) October 3, 2024
Read the 98 page federal lawsuit here: (PDF)
Featured Image by Shutterstock/Billion Photos