Autodesk v. Dassault Systemes

Citation: Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 685 F.Supp.2d 1023 (N.D. Cal. 2009)(full-text).

Factual Background
Autodesk, Inc. filed suit against Dassault Systemes Solidworks ("Solidworks") for the use of “DWG” as a file extension. According to the functionality doctrine, “no one can have rights to a trademark that is functional, because trademark law is meant to promote competition by protecting a firm’s reputation, and not to inhibit competition by allowing a trademark owner to control and monopolize useful and functional product feature.” First Action: In the first civil action, Autodesk sought summary judgment against Solidworks. The main issue became whether Autodesk had a common law tradement in “DWG.” At this hearing, Solidworks asserted that this functionality doctrine precluded Autodesk from asserting trademark rights over “DWG.”  Instead however, Autodesk  “sought trademark protection only for its use as a word mark—namely, to have exclusive use of ‘DWG’ in packaging, advertising, and marketing materials used in connection with the sale of its goods and services. In this way Autodesk took the functionality doctrine off the table. It should be emphasized that this was not a casual concession but a calculated strategy…” (1024)Also in this hearing, counsel for Autodesk expressly disavowed future legal actions against those using “.DWG” as a file extension because it would be non-trademark use. “’Unauthorized use of a trademark that does not implicate the ‘source-identification function that is the [sole] purpose of the trademark’ is a ‘non-trademark use’ and is not actionable under the Lanham Act.” Abdul-Jabbar v. General Motors Corp., 85 F. 3d 407, 412 (9th Cir. 1996). As a result in this action, the judge found for the Plaintiff for summary judgement against Solidworks, predicating the decision upon Autodesk’s express disavowal of ownership over the use of “.DWG.” District Court Proceedings: After Autodesk’s victory, they sought to renege on their disavowal over these ownership rights stating, they only intended to disavow “uses of ‘.DWG’ as a file extension when needed to achieve interoperability with the DWG file format defined by Autodesk” (Dkt. No. 231 at 2). Autodesk stated that the attorney that made this express disavowal was young and inexperienced and the other more experienced counsel would not have agreed to this. However, the court noted that it was acceptable for senior counsel to step in during the proceedings and they could have very easily sent a written retraction immediately after the proceedings, and they chose not too. According to the doctrine of judicial estoppel, a party is “preclude[ed] from gaining an advantage by asserting one position and then later—after a tribunal relief on or accepted that position—taking a clear inconsistent position in the same litigation concerning the same dispute…” See Hamilton v. State Farm Fire & Cas. Co., 270 F.3d 778, 782-83 (9th Cir. 2001). The District Court did not allow Autodesk to renege on its disavowal and affirmed the summary judgment in favor of Autodesk from the initial proceeding.