Autodesk Inc. v. Dassault Systemes Solid Works Corporation, No. 3:2008cv04397 - Document 241 (N.D. Cal. 2009)
Court Description: MEMORANDUM OPINION ON THE USE OF "DWG" AS A FILE EXTENSION AND AUTODESK'S DISAVOWAL THEREOF. Signed by Judge Alsup on December 31, 2009. (whalc1, COURT STAFF) (Filed on 12/31/2009)
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1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 9 AUTODESK, INC., a Delaware corporation, 11 For the Northern District of California United States District Court 10 12 13 14 No. C 08-04397 WHA Plaintiff, v. DASSAULT SYSTEMÃ S SOLIDWORKS CORPORATION, a Delaware corporation, MEMORANDUM OPINION ON THE USE OF DWG AS A FILE EXTENSION AND AUTODESK S DISAVOWAL THEREOF Defendant. 15 / 16 Software programs almost invariably store data in files. Sometimes a program will use 17 18 many thousands of files to store various types of information. To ensure that individual data files 19 can be located on a computer or electronic device, each is given a unique name. A file name, at 20 least in the most widely used operating systems, is usually in the form of a prefix and suffix 21 separated by a period (e.g., smartlaw.abc ), where the prefix usually describes or denotes the 22 contents of the file, and the suffix also called a file extension or just an extension denotes 23 the type of data being stored.1 The function of the extension is, when combined with a prefix, to 24 be part of the unique file name, so that when a computer program calls up the file, it will be 25 uniquely identifiable and locatable. These extensions are handy to group like types of files (e.g., 26 .jpg for photos, .txt for simple text, .dat for numerical data). However, the naming of file 27 The undersigned is aware that the use of file extensions has been supplemented and even replaced in some computing environments. Instead of using a file extension to denote the type of data being stored, some computing environments embed this information within the file data itself. For example, Mac OS X the current Apple operating system uses a combination of file extensions and embedded file attributes data to serve this function. 1 28 1 extensions is a function employed by the programmer to suit the needs of the software. While 2 industry conventions may exist for the sake of convenience and organization, there is no 3 imperative demanding that a programmer use any particular extension with any particular file. 4 Indeed, this is why the .rpm file extension is used for both RPM Package Manager packages 5 and RealPlayer Media files, the .qif file extension is shared by DESQview fonts, Quicken 6 financial ledgers, and QuickTime pictures, and the .gba file extension is shared between GrabIt 7 scripts and Game Boy Advance ROM images. These programs and file formats have nothing to 8 do with each other. This is not surprising, since there are only a finite number of permutations 9 available in a conventional three-character file extension.2 And without doubt, the use of .abc, .rpm, or any other file extension is functional that being to name a computer file for the 11 For the Northern District of California United States District Court 10 purposes of organization and identification. 12 When the instant civil action came up for summary judgment, a main issue was whether 13 plaintiff Autodesk, Inc. has a common law trademark in DWG. Defendant SolidWorks 14 Corporation pointed out that no one can have rights to a trademark that is functional, because 15 trademark law is meant to promote competition by protecting a firm s reputation, and not to 16 inhibit competition by allowing a trademark owner to control and monopolize a useful and 17 functional product feature. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 164 (1995). 18 Indeed, without the functionality doctrine, trademarks could be abused to provide the protections 19 of patents, but with potentially limitless duration. Since Autodesk was using .dwg as a file 20 extension for its proprietary file format (i.e. as a functional use), SolidWorks asserted that no 21 trademark rights were possible. It must be said that there was considerable force to this argument, 22 and that the undersigned was inclined to this view. At the hearing on the parties summary judgment motions, however, Autodesk disavowed 23 24 any such claims against the use of .dwg as a file extension, and sought trademark protection 25 only for its use as a word mark namely, to have exclusive use of DWG in packaging, 26 advertising, and marketing materials used in connection with the sale of its goods and services. 27 28 The three (or four) character file extension is no longer a technical restriction imposed by an operating system. However, it is still generally adhered to by convention. 2 2 1 In this way, Autodesk took the functionality doctrine off the table. It should be emphasized that 2 this was not a casual concession but a calculated strategy alluded to in its briefing. Early on in 3 the hearing, the Court felt obligated to obtain a clear disavowal. In a discussion on the 4 functionality issue, the colloquy between the undersigned and counsel for Autodesk, Mr. Nathan 5 Sabri, went as follows (Tr.10:18 11:18): 6 THE COURT: I want you re skating by something that s very important to me. So I want to get a clear answer. All right? 7 8 9 MR. SABRI: Your Honor, it may be the case it violates patent law. We re not addressing that today. I will state 11 For the Northern District of California United States District Court 10 Will you disavow, from here to eternity and for the rest of the universe, that the world has a right to use .dwg as a file extension, and you re not going to try to assert, here or anywhere else, that that use as a file extension violates any law? 12 THE COURT: You will be in trouble if you don t give me listen. If you are trying to monopolize .dwg, you and your company are in big trouble. 13 MR. SABRI: We absolutely are not, your Honor. 14 THE COURT: Well, then disavow it. 15 MR. SABRI: Autodesk cannot 16 THE COURT: You re not disavowing it? 17 19 MR. SABRI: I am disavowing it, your Honor. Autodesk cannot state claims against functional uses of .dwg, and the distinction between a word mark DWG and the functional uses I believe will be very clear by this presentation. 20 THE COURT: I want to hear you say we disavow it. 21 MR. SABRI: We disavow any claims against functional uses of the .dwg, your Honor. 18 22 THE COURT: Thank you. 23 24 25 26 27 28 3 1 Moments later, Mr. Sabri added to his disavowal by characterizing the use of DWG as a file 2 extension as a non-trademark use.3 Specifically, Mr. Sabri stated to the Court (Tr. 12:16 23) 3 (emphasis added): 4 MR. SABRI: . . . However, the DWG claims in this case only pertain to word marks. Autodesk is not attempting, as our Honor noted and I addressed a moment ago, Autodesk is not attempting to address any functional uses of DWG. It s stated nowhere in the complaint that SolidWorks cannot append a .dwg at the end of a file so the computer will recognize that file. This case is only about the use of DWG as a word mark. 5 6 7 8 When discussing the entirely different trademark doctrine of genericness, Ms. Jacqueline Bos 9 another attorney for Autodesk argued that in the relevant industry, DWG refers to Autodesk s file formats. The undersigned again focused on the use of DWG as a file extension 11 For the Northern District of California United States District Court 10 (Tr. 27:6 13): 12 13 THE COURT: You say is it absolutely clear that everybody, every neutral person, every consumer is going to think that DWG belongs to you and only to you and it identifies only your products, as opposed to just DWG CAD files in general? 14 15 16 17 18 19 MS. BOS: In yes, in the there in the CAD industry DWG refers to Autodesk s file formats, and each of the competitors has their own file formats. There are many different types the evidence has at least 26 different types of CAD file formats. There s DGN is Bentley, which is one of Autodesk s competitors. SolidWorks has many different types of CAD file formats, SLD DRW. Pro Engineer is another one of Autodesk s big competitors. THE COURT: I thought I just heard your colleague tell me anyone in the world has a right to use DWG as a file extension. 20 21 22 23 MS. BOS: And, in fact, they do. There is interoperability. There are companies that do make file formats make that there are other competitors whose software will save files to the .dwg file format. THE COURT: Why wouldn t the consumer associate DWG with those companies? 24 25 26 27 28 3 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). 4 1 MS. BOS: Because these companies have their own native file format. When they want to save it for the purpose of interacting with an AutoCAD4 file format, that s when they save it as .dwg. 2 3 When they the use even when there s interoperability, it s all of the documents in this case show that all of the that consumers in the industry still associate that format with Autodesk s format. This is when we save as DWG, we are saving in Autodesk s format. There are no other formats. 4 5 6 At no time during the hearing did lead counsel or anyone else seek to qualify Autodesk s 7 disavowal. If anything, Ms. Bos statement reaffirmed it, giving the example of interoperability 8 where anyone s use of the same file extension was to be encouraged. At no time did counsel state 9 that Autodesk reserved the right to claim a protectable trademark interest in a .dwg file extension that was not interoperable with Autodesk s proprietary file format. 11 For the Northern District of California United States District Court 10 In the order that issued five days later resolving the pending summary judgment motions, 12 the undersigned ruled for Autodesk, holding that the alleged word mark was immune from the 13 functionality challenge given the disavowal. The order stated (Dkt. No. 195 at 7 8): 14 Plaintiff, however, expressly disavows any ownership of any even arguably functional use of DWG (Br. 3), including the use of DWG as a file extension. Put differently, anyone is the world is free to use .dwg as a file extension as far as Autodesk is concerned. Thus, there is no concern that plaintiff will obtain a monopoly over the .dwg extension and prevent its use in the industry. 15 16 17 18 Having won a major victory against SolidWorks functionality attack on DWG, 19 Autodesk now attempts to renege on its disavowal, by claiming that it only disavowed uses of 20 .dwg as a file extension when needed to achieve interoperability with the DWG file format 21 defined by Autodesk (Dkt. No. 231 at 2). In other words, Autodesk now claims that it did not 22 agree at the hearing that the world has a right to use .dwg as a file extension (Tr. 10:21 25). 23 Rather, what it meant to say was that the world only has a right to put .dwg at the end of a 24 computer file when the file format is Autodesk s proprietary technology or completely 25 interoperable therewith. Counsel for Autodesk reiterated this argument at yesterday s final 26 pretrial conference, noting tangentially that the attorney who argued this particular issue at the 27 hearing Mr. Sabri was young in age and experience. 28 4 AutoCAD is Autodesk s software product. 5 real experience in the courtroom. It is the best way for the next generation to become excellent 3 federal practitioners and to maintain the ongoing public confidence in our federal court system. 4 As counsel knew, it would have been entirely acceptable for more senior counsel to step in and 5 correct any mistaken representation made in argument by a more junior attorney. If senior 6 counsel for Autodesk had wished to unsay the disavowal made by its young attorney in the face 7 of pointed questioning, he could have and should have done so at the December 3 hearing. There 8 was plenty of time to do so it was a long hearing, and the disavowal was made in its opening 9 minutes. Or, counsel might have sent up a written retraction shortly after the hearing. Five days 10 passed, and no such caveat ever came. Then the summary judgment order issued. Counsel let the 11 For the Northern District of California To be clear, the undersigned encourages giving young attorneys the opportunity to gain 2 United States District Court 1 record stand, let the victory unfold, and only then tried to qualify an otherwise unqualified 12 disavowal on which the Court relied. 13 Under the doctrine of judicial estoppel, which precludes a party from gaining an 14 advantage by asserting one position and then later after a tribunal relied on or accepted that 15 position taking a clear inconsistent position in the same litigation concerning the same dispute, 16 Autodesk cannot wait until the eve of trial to recast the scope of their disavowal. See Hamilton v. 17 State Farm Fire & Cas. Co., 270 F.3d 778, 782-83 (9th Cir. 2001). At the summary judgment 18 hearing, Autodesk disavowed any and all ownership of its putative word mark DWG with 19 respect to its use by anyone as a computer file extension, regardless of the format of the file in 20 question. This it cannot unsay. 21 At least in the judgment of the undersigned, Attorney Sabri, though junior, was both 22 correct and wise to concede the point. Had he not done so, the order would not have ruled in 23 Autodesk s favor on the functionality issue. No one has ownership of file extension designations 24 under the Lanham Act because such designations are inherently functional. Any programmer or 25 computer user anywhere is free to designate file extensions as they see fit, without worrying about 26 trademark violations. File extensions are functional, and functional uses cannot be trademarked. 27 28 6 1 To rule otherwise would invite a clog on commerce, given the millions of software applications. 2 The limited universe of extension permutations would soon be encumbered with claimants and 3 squatters purporting to own exclusive rights to file extensions. 4 Furthermore, Autodesk s arguments raise grave and serious concerns regarding the Lanham Act is to protect consumers against deceptive designations of the origin of goods and, 7 conversely, to enable producers to differentiate their products from those of others. Int l Order of 8 Job s Daughters v. Lindeburg and Co., 633 F.2d 912, 918 19 (9th Cir. 1980). Additionally, the 9 targeted unauthorized use of a trademark must be a use in connection with a commercial 10 transaction in which the trademark is being used to confuse potential consumers. Bosley 11 For the Northern District of California potential for trademark holders to monopolize the use of file extensions. The purpose of the 6 United States District Court 5 Medical Institute, Inc. v. Kremer, 403 F.3d 672, 676 (9th Cir. 2005). By contrast, the primary 12 purpose of a file extension is to tell the computer the type of the file it is handling. A computer is 13 not a consumer. Its reading of the file extension is not in connection with a commercial 14 transaction. It doesn t care who made the file format it is trying to read. Whether the proper 15 terminology for this use is a functional use or non-trademark use, a file extension is not 16 actionable under trademark law. 17 This remains true even if computer users associate a particular file extension with a 18 particular manufacturer (e.g. .xls with Microsoft, .pdf with Adobe, or for argument s sake, 19 .dwg with Autodesk). While there is no question that a file extension could serve a tangential 20 purpose of communicating the source of the file or file format, this effect in the vast majority 21 of instances would be incidental. The primary function of a file extension to both a computer 22 and its user is to identify a file or file type. Even if the function were solely to identify the format 23 in which the contents are stored, that would still be a functional use. Functional uses are not 24 protected under trademark law. 25 26 27 28 7 1 In sum, Autodesk will not now be allowed to renege on its disavowal. The summary 2 judgment order will stand. Autodesk has that victory. But, Autodesk must stand by its disavowal 3 of trademark rights in .dwg as a file extension a disavowal that is binding on Autodesk by 4 this order as well as the summary judgment order. 5 6 IT IS SO ORDERED. 7 8 Dated: December 31, 2009. WILLIAM ALSUP UNITED STATES DISTRICT JUDGE 9 11 For the Northern District of California United States District Court 10 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8
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