One piece of Matt Mullenweg’s attempted extortion against WP Engine, which has serious security implications, is the WordPress trademark. What hasn’t been clear is the situation with the trademark is. It is well known that previously belonged to Matt Mullenweg’s Automattic and now belongs to the WordPress Foundation, which Matt Mullenweg clearly has control over. But beyond that, the extensive nature of Auttomatic’s ability to use the trademark hasn’t been disclosed by Matt Mullenweg.

Matt Mullenweg announced the transfer of the trademark in September 2010. In his post on his personal website, he made no mention of Automattic still having anything to do with the trademark. In the comments, though, he wrote this:

Correct — WordPress.com (Automattic) and .net/.org (me) are grandfathered in as part of the transfer, so they’ll continue to operate as before, but no special rights for any new domains which would need to go through the Foundation just like anyone else. I’m not really worried about that as there are no plans to call anything new “WordPress.”

That makes it sound like Automattic had very limited rights to the trademark, which doesn’t match up with is going on now.

In the post it sounds like it might be more complicated than he led on, as said this:

I want to recognize and applaud the courage and foresight of Automattic’s board, investors, and legal counsel who made this possible: Mike Hirshland, Phil Black, Tony Conrad, Toni Schneider, Gunderson Dettmer. I’d also like to thank Matt Bartus of Dorsey & Whitney for their counsel on the Foundation side.

Either the Automattic board and investors were convinced to give away a valuable asset or they didn’t really give it away.

In a post he wrote on the WordPress Foundation website the same day, there is no mention of Automattic.

On September 24 of this year, the Trademark Policy page of the WordPress foundation website (before and after) to add this line:

If you would like to use the WordPress trademark commercially, please contact Automattic, they have the exclusive license. Their only sub-licensee is Newfold.

That sounds very different from how he portrayed the situation in the comment on the post on his own website.

The confusion would be cleared up with the agreement that exists between Automattic and the WordPress Foundation. That doesn’t appear to be available on the WordPress Foundation website. It isn’t the only thing.

Richard Best at WP Legal and Stuff has been provided plenty of coverage of the legal element of this situation. That includes a post on the trademark situation, which mentions the legal agreement between Automattic and WordPress Foundation file with United States Patent and Trademark Office. You can view the PDF of that here. Here is the relevant legalese:

an exclusive, fully-paid, royalty-free, perpetual, irrevocable, worldwide, sublicensable right and license to use and otherwise exploit the trademarks identified in Exhibit A attached hereto, and any and all related or similar names, marks, designs, domain names, and other rights (excluding www.wordpress.org, www.wordcamp.org and www.wordpressfoundation.org), along with all associated applications, registration and goodwill (the “Trademarks”), in connection with the hosting of blogs and web sites that utilize any version or component of the WordPress open source publishing platform product or open source successor of any of the foregoing on or in connection with www.wordpress.com and www.wordpress.tv (each and collectively, together with any subdomains of any of the foregoing, “Automattic Sites”), providing support for the Automattic Sites, and/or substantially similar uses in connection with the Automattic Sites.

So they can use trademark forever without paying anything and they can sub-license it as they please. From a non-legal perspective, it sounds like they can use for anything around hosting.