Autodesk, Inc. v. Dassault Systemes Solidworks Corporation, 2009 U.S. Dist. LEXIS 121541 (N.D. Cal. 2009).
Back in early December, the northern district granted a motion for summary judgment in favor of Autodesk (I did not have a chance to brief it for TMLB due to the looming deadline for two appeals). The Court ruled that DWG was not generic and was not functional because Autodesk disavowed any trademark claim in the file extension “.dwg” for computer data.
Well, Autodesk apparently thought better of that disavowal and tried to limit it’s earlier assertion that it held no trademark claims to “.dwg” - earning the ire of the court in the process. Lest there be any doubt, the court here clarifies that a file extension is functional and not entitled to trademark protection. Its purpose is to inform the computer what type of data is stored in the file.
“Whether the proper terminology for this use is a ‘functional use’ or ‘non-trademark use,’ a file extension is not actionable under trademark law.
This remains true even if computer users associate a particular file extension with a particular manufacturer (e.g. “.xls” with Microsoft, “.pdf” with Adobe, or for argument’s sake, “.dwg” with Autodesk). While there is no question that a file extension could serve a tangential purpose of communicating the source of the file or file format, this effect — in the vast amjority of instances — would be incidental. The primary function of a file extesnion to both a computer and its user is to identify a file or file type. Even if the function were solely to identify the format in which the contents are stored, that would still be a functional use. Functional uses are not protected under trademark law.”