WP Fusion Lite Plugin Taken Down for Unauthorized Trademark Usage
After taking over a popular plugin, Automattic has agreed to remove WP Fusion Lite from WordPress.com after creator Jack Arturo filed a Cease and Desist letter, accusing them of unauthorized trademark usage.
About WP Fusion Lite
WP Fusion Lite is a WordPress plugin that synchronizes WordPress users with leading CRMs and marketing automation systems. It keeps user profiles in sync with CRM contact records and protects site content based on CRM tags. It has over 5,000 Active Installs in the WordPress.org Repository.
The plugin Advanced Custom Fields, which was used on over 2 million websites, was taken over on the WordPress.org repository. The plugin was retitled “Secure Custom Fields” but otherwise remained unchanged. The plugin code, URL, file names, thousands of reviews, and even links to documentation still referenced Advanced Custom Fields, which is a trademark of WP Engine.
Cease and Desist Letter
After filing the Cease and Desist letter on October 12, 2024, Jack Arturo, founder of Very Good Plugins LLC and creator of WP Fusion plugin, stated: “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.”
Demands and Warnings
In the letter, Jack Arturo demanded immediate removal of the WP Fusion Lite plugin from WordPress.com, cessation of any use of trademarks, logos, or names confusingly similar to WP Fusion, and a written confirmation within ten business days that these actions have been taken. He warned that if his demands were not met, he would take every possible legal action to protect his trademark, including seeking a court order to stop infringement, claiming damages, and recovering attorney’s fees.
Automattic’s Response
Automattic responded on October 18, 2024, stating that 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 customers nor will it appear in search results. We trust this resolves your concerns.”
Automattic further added, “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.” disagreeing with the trademark infringement claim.
In his blog, Jack Arturo mentioned that in September 2024, WordPress.com had copied all the free plugins from WordPress.org and was displaying them in a private directory, exclusive to WordPress.com hosting customers.
Even though the air has been cleared, it is yet to be seen whether more plugin authors will choose to remove or discontinue their plugins from WordPress.com.
