By Dave Culbertson
Special to AECnews
[Editor’s Note: AECnews asked Seattle attorney Dave Culbertson to attend Wednesday’s initial hearing in the trademark infringement suit Autodesk has filed against the Open Design Alliance. This is his report.]
SEATTLE—As presented to US District Court Judge Marsha Pechman, the hearing was over the legal effect of code that the Open Design Alliance has recently inserted into its DWGdirect libraries. The code masks the identity of non-Autodesk-generated files when these are opened in AutoCAD 2007. This leads AutoCAD to consider the files to be generated by Autodesk software, and therefore shuts down a pop-up warning that would inform an Autodesk user that a non-Autodesk file is being opened and that there might be instability or data corruption.
Autodesk attorney Michael Jacobs told the court “The ODA shouldn’t be allowed to claim their files are Autodesk files any more than a guy in the street should be allowed to sell counterfeit Rolex watches.” This, he said, made it a straightforward case of trademark infringement despite the technical complexities: “They’re saying we don’t like what you are saying about us, so we get to pretend to be you…that just can’t be right.”
Judge Pechman appeared to accept this position, at one point asking ODA attorney Jeffrey Edelson whether ODA had decided to deliberately infringe Autodesk’s trademark. Edelson replied that he had not been present during discussions at ODA. But Edelson did not concede that there was a trademark infringement, noting that there was a fair-use exception that might allow ODA to use aspects of Autodesk’s trademark.
Edelson counter-argued that Autodesk was not entitled to a temporary restraining order (TRO) because they themselves had acted improperly. Autodesk, Edelson said, is deliberately creating an atmosphere of fear and concern in order to scare users away from the Open Design Alliance and its DWGdirect libraries. On a large screen, he displayed aspects of Autodesk’s new pop-up: its brightly colored exclamation point, the use of the word “alert,” a warning that the file might corrupt DWG data, and assurances that Autodesk had done testing to support the reliability of its own software. “A user won’t casually walk by these warnings” Edelson said, and ODA’s software “will be in the public eye diminished.” Using legal terminology, he argued that Autodesk was trying to establish its trademark “with unclean hands” and should not be given a temporary restraining order.
However, Edelson had difficulty answering Judge Pechman’s skeptical questions. Near the end of his presentation, she asked “Well, instead of engineering around the pop-up, why didn’t you sue for false advertising?” To this Edelson replied that he could not answer the question. And the judge pressed him repeatedly on his criticism of Autodesk’s claim that they had testing to support the reliability of their product. “How do you know that they don’t?” she asked more than once, and never seemed satisfied with Edelson’s answer that he had seen no evidence of such testing.
The court granted Autodesk the temporary restraining order and required it to be effective almost immediately. With the ruling coming at 2:45 pm Pacific time, the court verbally told ODA to switch off the trigger on its code by 3:45 pm that same afternoon and not wait until after the Thanksgiving weekend.
Temporary restraining orders are merely preliminary findings after a quick assessment of initial facts, and not a conclusive ruling on the issues. But to get a TRO a party must convince the court that they stand a good chance to prevail in the end; such initial restraining orders often identify the eventual winner. Despite that, Edelson and ODA have an opening to fight on. The court set a schedule for briefs on further argument on the “unclean hands” defense, to take place on January 18, 2006. Before leaving the court, Autodesk attorney Jacobs joked with his co-counsel that he had e-mailed the office: “Victory—but all shore leave is canceled.”
As ODA and Autodesk prepare for the January hearing, there may be some efforts to negotiate a truce. Edelson had proposed to the court that a more neutral pop-up, one that identified a file as non-Autodesk-generated without dire warnings, could be an acceptable solution. “Let’s keep the lines open” he said to Jacobs as they prepared to leave the courtroom.