Automattic has agreed to remove the WP Fusion Lite Plugin from WordPress.com following a Cease and Desist letter filed by the plugin’s creator Jack Arturo on October 12, 2024. The letter accused Automattic and WordPress.com of unauthorized trademark usage by displaying the plugin on WordPress.com.
WP Fusion Lite is a WordPress plugin that connects WordPress websites to popular CRM systems and marketing automation tools. It has over 5,000 Active Installs in the WordPress.org Repository.
Jack Arturo, founder of Very Good Plugins LLC and creator of WP Fusion plugin, filed the Cease and Desist letter stating: “As the owner of the federally registered trademark WP FUSION (U.S. Registration No. 6,052,437), which was registered on May 12, 2020, and is associated with software services including website integration with customer relationship management (CRM) and marketing automation systems, I believe that your continued use and distribution of the plugin under the WP Fusion name is a clear infringement of my exclusive trademark rights under U.S. law.
The plugin you are hosting creates a likelihood of confusion, mistake, or deception regarding the source, sponsorship, or affiliation of the WP Fusion brand, which could damage the reputation and goodwill associated with my brand. Please be advised that I will vigorously defend my trademark rights to the fullest extent of the law.”
The letter included three key demands:
- Immediately remove the “WP Fusion Lite” plugin from WordPress.com.
- Cease any use of trademarks, logos, or names confusingly similar to WP Fusion.
- Provide written confirmation within ten business days that these actions have been taken.
He also warned that if the above requests are not met, he would “pursue all available legal remedies, including but not limited to seeking injunctive relief, damages, and attorney’s fees for trademark infringement.”
Automattic’s Response on October 18, 2024
Automattic responded, saying they “would like to resolve this matter swiftly and amicably, and to that end WP Fusion Lite is no longer listed on WordPress.com and we have disabled its landing page. It is no longer available to WordPress.com customers nor will it appear in search results. We trust this resolves your concerns.”
However, Automattic disagreed with the trademark infringement claim, stating: “Automattic disagrees with your assertions that it has infringed the intellectual property rights of Very Good Plugins, LLC. The listing uses the WPFUSION trademark solely and only to the extent necessary to identify the genuine WPFUSION plugin, which constitutes nominative fair use under applicable law.”
Since last year, WordPress.com has displayed all WP.org plugins in a private directory for its hosting customers, a practice that has raised concerns among developers. They worry that WordPress.com plugin listings are outranking WordPress.org on Google, causing confusion for users. Many users, unaware of the distinction between WP.com and WP.org, click the WP.com link, which prompts them to create an account and sign up for premium hosting. Jack mentioned that this confusion was affecting his customers, who had already purchased the pro version of the plugin.
Automattic has maintained that featuring plugins on WP.com benefits authors by increasing exposure. They responded to Jack’s complaints on X, asking, “So, to clarify, you’d like us to hide your plugin from the ~248M registered users on @wordpressdotcom?” Matt had also tweeted last year, “It’s providing distribution to the plugin authors, literally millions and millions of installs.”
Jack clarified that he has no objection to others mirroring his plugins, except for Automattic. Also, WP Fusion Pro does not require the free version to function, and they have been delivering updates to pro customers via their own servers for many years.
The issue has been resolved, but it remains to be seen whether more plugin authors will choose to remove their plugins from WP.com.
