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...


Reader Comments (rss)

(Flattened / Threaded)

  1.  
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    Hulser (profile), May 20th, 2010 @ 10:19am

    8.3

    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.

    So...that means I can publish an application that uses a .mickeymouse or a .monstercablesucks file extension? /s

     

    reply to this | link to this | view in thread ]

  2.  
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    crade (profile), May 20th, 2010 @ 10:21am

    I wonder if autodesk ended up paying Dassault in that settlement.

     

    reply to this | link to this | view in thread ]

  3.  
    icon
    ChurchHatesTucker (profile), May 20th, 2010 @ 10:29am

    Oh, me too!

     

    reply to this | link to this | view in thread ]

  4.  
    icon
    ChurchHatesTucker (profile), May 20th, 2010 @ 10:31am

    Re: Oh, me too!

    Damn return key...

    On the plus side, I realized my joke wasn't very clever in the meantime. So, you're all spared that.

     

    reply to this | link to this | view in thread ]

  5.  
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    Dark Helmet (profile), May 20th, 2010 @ 10:33am

    Typo alert

    "are neighbors up in Canada"

    Are = Our?

     

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  6.  
    identicon
    Rick, May 20th, 2010 @ 10:35am

    Corrrection

    'Also, the article notes that are neighbors up in Canada'

    should be OUR not ARE

     

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  7.  
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    Ima Fish (profile), May 20th, 2010 @ 10:35am

    "it may be the case it violates patent law"

    Can someone please explain how using a file extension could violate patent law?!

     

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  8.  
    identicon
    Anonymous Coward, May 20th, 2010 @ 10:39am

    Re:

    Maybe not so much the file extension as a term or phrase, but the actual creation and usage of the file.

    For example, .jpg is a very specific type of image encoding. The large majority of file types involve very specific methods of data formatting. Those practices would be (assumedly) patentable.

     

    reply to this | link to this | view in thread ]

  9.  
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    Chuck Norris' Enemy (deceased) (profile), May 20th, 2010 @ 10:40am

    What...no precedent?

    I can't believe Adobe hasn't long ago tried to sue using the pdf trademark with all the pdf creator programs out there like deskPDF, CutePDF, and so on.

     

    reply to this | link to this | view in thread ]

  10.  
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    :Lobo Santo (profile), May 20th, 2010 @ 10:57am

    Re: Re: *fluff*

    You have your causation backwards. Jpeg is a specific type of image encoding. Generally, the last 4 characters on a file using said encoding are set to ".jpg" in order to denote this.

    While the encoding methodology might be patentable, any type of file can have ".jpg" smacked onto it, whether it uses said encoding or not.

     

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  11.  
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    Ima Fish (profile), May 20th, 2010 @ 11:11am

    Re: Re:

    Yeah, but I could give a .gif file a .jpg extension and most photo programs would open it. There is nothing in the extension that gives the file its particular lossy compression. That's nothing more than an identifier in Windows.

     

    reply to this | link to this | view in thread ]

  12.  
    identicon
    Anonymous Coward, May 20th, 2010 @ 11:21am

    "For example, .jpg is a very specific type of image encoding."

    .BMP is a specific type of image encoding

    .jpg is a specific type of .BMP

    "The large majority of file types involve very specific methods of data formatting."

    As opposed to the filetypes where you can just mash whichever keys you want and compile as such?

     

    reply to this | link to this | view in thread ]

  13.  
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    Dark Helmet (profile), May 20th, 2010 @ 11:37am

    Future fun...

    "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."

    In preparation for the novel I've just started writing, I did a great deal of research into Digital Philosophy and the work of Rudy Rucker, Edward Fredkin, etc., and the implications on artificial intelligence and the mapping of the human mind and consciousness. Given all of that, it'll be interesting to see how courts react to questions like these if/when a computer can be said to be either self aware or simulate self awareness. Will decisions such as this have to change?

     

    reply to this | link to this | view in thread ]

  14.  
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    DannyB (profile), May 20th, 2010 @ 12:06pm

    Re: 8.3

    While you cannot trademark a file extension, you can use a file extension to infringe upon a trademark owned by someone else. It is less clear, but would seem acceptable to use a file extension to express a negative opinion about a cable supplier. IANAL.

     

    reply to this | link to this | view in thread ]

  15.  
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    DannyB (profile), May 20th, 2010 @ 12:07pm

    Re:

    It might have been a cheap way to do an end run and still be able to make claims about owning a trademark on a file extension.

     

    reply to this | link to this | view in thread ]

  16.  
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    DannyB (profile), May 20th, 2010 @ 12:09pm

    Re: Corrrection

    But the Canadians ARE neighbors to the US! Who would suggest otherwise? :-)

     

    reply to this | link to this | view in thread ]

  17.  
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    DannyB (profile), May 20th, 2010 @ 12:13pm

    Re:

    How a file extension could violate patent law? A patent troll could probably come up with something.

    A method and system for distinguishing those who should pay us money for using a particular file extension from those who should not make use of that file extension.

    Claim 1: The present invention teaches that the a file extension can be used to extort money based on . . . .


    (You get the idea.)

     

    reply to this | link to this | view in thread ]

  18.  
    identicon
    DesignSmith, May 20th, 2010 @ 12:24pm

    customer loyalty through restriction rather than attraction

    Unfortunately this kind of legal shenanigans is an effect of the maturing MCAD market in the last 2 decades.

    As true innovation in the products becomes harder and harder to accomplish each year, the big players have limited new customers to pick up and start going after each other's previous customers.
    As the ROI on development declines, funds get diverted to marketing and tactics like this to fund off the effects of the competitor's development and marketing.

    Fortunately the judge saw through the flawed legal arguments on both sides and tried to prevent further use of the courtroom for this sort of bickering. (While AutoCAD may be the most popular use of *.dwg recently, the file extension has been in use previously and by tools not related to the MCAD market. It has also been a technical term and abbreviation well before Autodesk itself was a company.)

    Unfortunately this does not mean that the companies involved will simply go back to the business of improving their own products or tools. Or that moving MCAD files to the best available tool will become as easy as porting your cell phone number.
    It is very hard to estimate how much overall economic productivity is lost with proprietary standards and similar practices, but it is certainly not zero.

     

    reply to this | link to this | view in thread ]

  19.  
    identicon
    Anonymous Coward, May 20th, 2010 @ 12:48pm

    Re: Re: Re: *fluff*

    Arguably, that's only because most programs are robust enough to ignore the false labelling, and because most OS's will allow you to improperly change the "file type" in name only.

    Ideally, a file extension should be limited only to the specific file type, but that's a whole other monster entirely.

    However, in terms of the patent, anything that goes beyond the file extension alone is patentable.

     

    reply to this | link to this | view in thread ]

  20.  
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    The Groove Tiger (profile), May 20th, 2010 @ 3:03pm

    Re: Typo alert

    Our neighbors up aboot Canada, eh?

     

    reply to this | link to this | view in thread ]


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