Court Says File Extensions Not Eligible For Trademarks... Sorta

from the but-maybe-not... dept

JohnForDummies points us to the news that the latest attempt to stretch trademark law to ridiculous levels has been sorta maybe rejected -- though it appears to still be open for abuse. The case involved Autodesk and a competitor, Dassault Systemes Solidworks Corporation, who had released some software that was compatible with Autodesk's .dwg files used in AutoCAD. Dassault had apparently reverse engineered the file type (which, by itself, is perfectly legal). Some of Dassault's products (under the Solidworks brand) used "DWG" in the name, and Autodesk, overprotective as always, sued -- claiming that the use of DWG in product names infringed. What happened then goes back and forth a bit, but ends up with a court telling Autodesk that file extension names should not be considered trademarkable:

The court found that ownership of file extension designations cannot be appropriated under the Lanham Act -- file extensions are inherently functional, and functional uses cannot be trade-marked. It stated that computer programmers and computer users should be free to designate file extensions as they see fit, without the fear of infringing trade-marks.

The motions judge further opined that the purpose of the Lanham Act is to target unauthorized use of a trade-mark "in connection with a commercial transaction in which the trade-mark is being used to confuse potential consumers." In contrast, the purpose of file extensions is to indicate to a computer the type of file that is being handled. The court noted that "a computer is not a consumer," and its recognition of a file extension is not "in connection with a commercial transaction." In other words, the computer does not concern itself with the question of who made the file format. Therefore, whether on the grounds that a file extension connotes a "functional use" or a "non-trade-mark use," the court held that a file extension per se is not protectable under US trade-mark law.

In its decision, the court did recognize that computer users may associate a particular file extension with a specific vendor or manufacturer. However, the court found this association only incidental to the primary function of file extensions, namely to identify a file or file type.

Of course, it's not all good news. The court did suggest that Autodesk could have gotten away with this by disavowing any use of the mark in functional areas, but had limited it to just product names and such. Autodesk pushed back on this a bit, which resulted in the ruling above. And, actually, the transcript from this part of the court discussion is priceless:

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? 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?

MR. SABRI: Your Honor, it may be the case it violates patent law. We're not addressing that today. I will state --

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.

MR. SABRI: We absolutely are not, your Honor.

THE COURT: Well, then disavow it.

MR. SABRI: Autodesk cannot --

THE COURT: You're not disavowing it?

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.

THE COURT: I want to hear you say we disavow it.

MR. SABRI: We disavow any claims against functional uses of the .dwg, your Honor.

THE COURT: Thank you.

But, still, all is not well. Before the case actually went to trial, Autodesk and Dassault "settled," with part of the settlement being that Dassault agreed that Autodesk had a legitimate trademark on DWG (of course, Dassault isn't the USPTO or a court, so Dassault's agreement on that point is somewhat meaningless). Also, the article notes that our neighbors up in Canada just allowed Autodesk to register a trademark on DWG. So despite the court's clear concern about Autodesk trying to monopolize DWG, don't be surprised if it keeps trying...

Filed Under: dwg, file extension, trademark
Companies: autodesk, solidworks