SolidWorks Wins Partial Victory over Autodesk in Court7 Jan, 2009 By: Kenneth Wong
Legal wrestling continues over SolidWorks' advertising campaign.
In September 2008, Autodesk filed a lawsuit against SolidWorks, alleging unfair competition, false designation of origin, false advertising, and trademark infringement, among other things (read "Autodesk Accuses SolidWorks of Unfair Competition," Oct. 1, 2008). In return, SolidWorks filed a motion to dismiss. In December, SolidWorks scored a partial victory. The court granted the motion in part, but also left some issues unresolved. (For the complete text of the order, visit www.cadcourt.com, which tracks court cases related to CAD).
In its original complaint, Autodesk accused SolidWorks of engaging in "misleading marketing to confuse design professionals about the compatibility of SolidWorks' programs with Autodesk's CAD software." Simply put, Autodesk dislikes SolidWorks' emphasis of DWG compatibility, especially in product names like DWGeditor, DWGgateway, DWGseries, DWGviewer, and DWGnavigator. At the present, Autodesk is approaching the Trademark Trial and Appeal Board to cancel SolidWorks' registration of DWGeditor and to oppose SolidWorks' application to trademark DWGgateway.
SolidWorks argued both the terms DWG and Real are generic, so Autodesk's "unfair competition and false designation claim" should be dismissed. The judge, however, refused to dismiss on this ground.
On the false advertising claim, the judge concluded SolidWorks' statement that its software has the "unique capability [to help] you maintain file and design process compatibility, win business, and save time — all while avoiding expensive AutoCAD upgrade costs or subscription fees" is just "puffery," an acceptable exaggeration for marketing purposes, so it doesn't amount to false advertising.
But other statements made by SolidWorks, such as the claim that SolidWorks can "work easily with DWG files created by any version of AutoCAD software" or "open, edit, and share DWG data" are subject to proof. Accordingly, the judge left those for a jury to decide.
Autodesk also objected to SolidWorks' logo designs that combine the "Real" element of Autodesk's RealDWG program. It believes SolidWorks' "Real Solution" logo enclosed in an orange square imitates Autodesk's Inventor logo enclosed in a yellow square. The judge reasoned, "It is unclear whether Autodesk contends the mark and tagline are also part of the total image, design, and appearance of the product that constitutes its trade dress." So he dismissed Autodesk's trade dress infringement claim.
He also stated in his conclusion that "many of the cited troubles with the complaint may be cured," leaving the door open for Autodesk lawyers to amend the filing and come back for another round.
(To share your thoughts on this case, visit http://www.cadalyst.com/kw.)