July 13, 2009
Arnold van der Weide, president of the Open Design Alliance (ODA), must have been relieved when Autodesk‘s case against the ODA was suspended in February due to another legal battle: Autodesk’s pending civil case against SolidWorks. It looked as though the ODA could sit by the sideline and watch the two CAD titans fight over the right to use the coveted acronym DWG.
But last week, van der Weide discovered that bearing witness to this historic fight was not a privilege but an obligation, one that could place a heavy burden on the ODA itself. The organization has been served with a supboena to testify in Autodesk’s case against SolidWorks.
“I am disappointed that the ODA has once again been summoned to deposition,” van der Weide said. “It puts an unnecessary burden on the ODA, especially since lawyers at Autodesk are asking for the same information they asked for before during their petition for cancellation of the ODA’s ‘OpenDWG’ trademark.”
The summon required the ODA to produce, among other things, “the ODA’s communications with SolidWorks; including licensing of DWGdirect or other DWG-related software libraries to SolidWorks; technical support for such libraries ...; and any joint-defense, coorperation, or other litigation agreements regarding DWG ...; the ODA’s communications with Autodesk regarding DWGdirect or other DWG-related software libraries ...; the ODA’s discussions of or references to Autodesk, AutoCAD, or other Autodesk products in product literature, technical manuals, and advertising ...; communications between the ODA and any party regarding Autodesk’s applications to register the mark DWG ...; any studies, analyses, surveys, research, correspondence or communications regarding consumers’ understanding of ‘DWG’ in connection with CAD software ...”
“We might need to hire temporary help to assist in the discovery,” van der Weide said. “The last discovery produced 47,000 pages of information. Also a discovery hampers the internal communication and communication with our members.”
Legal Dramas, Now Playing in a Courtroom Near You
Autodesk vs. ODA began in January 2007, with Autodesk filing a petition with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board to to cancel the ODA’s trademarks for OpenDWG and other DWG-related terms and phrases. “DWG is the Petitioners’ [Autodesk’s] name for the proprietary file format and technology underlying many of its key computer-assisted design (CAD) software products,” the filing reads. “Petitioner has been and will be damaged by the [ODA’s] Registrations because ... Petitioner uses a variety of DWG-related names and trademarks with similar goods and services ...”
In the paperwork archived online at the Appeal Board’s site, the February 3 entry reads, “This case now comes up for consideration of respondent’s [ODA’s] motion ... to suspend this case pending final determination of a civil action in which petitioner is involved with a third party.”
The so-called “third party” happens to be SolidWorks. The civil action referenced here is Autodesk, Inc. vs. Dassault Systemes SolidWorks Corp., filed in the U.S. District Court for Northern California.
In its case against SolidWorks, which was filed in September 2008, Autodesk alleges SolidWorks engages in “unfair competition, false advertising, trademark infringement, and trade dress infringement,” among other things. The company argues SolidWorks is “seeking to trade off or undermine Autodesk’s accumulated goodwill” when SolidWorks uses the term DWG in “product names, domain names, and associated web sites, which specifically target AutoCAD users.” It accuses SolidWorks of “misrepresent[ing] the compatibility of its software and Autodesk and its DWG technology.”
Furthermore, Autodesk argues SolidWorks commits trade dress infringement because the latter’s Real Solutions logo combines “element of Autodesk’s RealDWG program and tagline with the distinctive trade dress found on Autodesk Inventor Packaging.” (See Autodesk’s original court paper in PDF here.)
SolidWorks continues to use the disputed logo today. ODA’s van der Weide hopes the “industry can continue to use DWG freely as a file extension and as a standard abbreviation for the word drawing without fear of a lawsuit.”
Most of the paperwork related to the cases referenced here can be found at CAD/Court, a site devoted to tracking technology-related lawsuits.