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.”[1]
First Trial Court Proceedings[]
In the first civil action, Autodesk sought summary judgment against Solidworks. The main issue was whether Autodesk had a common law trademark in "DWG". At this hearing, Solidworks asserted that the functionality doctrine precluded Autodesk from asserting trademark rights over “DWG”. Instead, 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. . . ."[2] Also at this hearing, counsel for Autodesk expressly disavowed future legal actions against those using ".DWG" as a file extension because it would be a 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.”[3] As a result, the judge found for Autodesk on its summary judgement motion against Solidworks, predicating its decision upon Autodesk’s express disavowal of ownership over the use of ".DWG".
Second Trial Court Proceedings[]
After Autodesk’s victory, it sought to renege on its disavowal over the ownership rights of ".DWG", stating that it only intended to disavow “uses of ‘.DWG’ as a file extension when needed to achieve interoperability with the DWG file format defined by Autodesk.”[4] Autodesk stated that the attorney that made this express disavowal was young and inexperienced and 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 he could have easily sent a written retraction immediately after the proceedings, but Autodesk chose not to do so.
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."[5] The District Court refused to allow Autodesk to renege on its disavowal and affirmed the summary judgment in favor of Autodesk from the earlier proceedings.