Seattle Trademark Lawyer

It’s final: the Western District yesterday entered a Stipulated Motion and Consent Judgment in Autodesk, Inc. v. Open Design Alliance, No. 06-1637, finding Open Design Alliance liable for infringing Autodesk’s trademark and permanently enjoining such infringement in the future. The stipulated order also dismisses the parties’ claims and counterclaims against each other without prejudice, enabling them to re-file such claims again in the future.

The parties’ stipulation summarizes the dispute as follows:

“In this action, plaintiff Autodesk, Inc. (“Autodesk”) sued defendant Open Design Alliance (‘ODA’ or ‘Defendant’) for trademark infringement and false designation of origin based on ODA’s improper simulation of Autodesk’s TrustedDWG^TM authentication mechanism and use of the AUTODESK® trademark (U.S. Reg. No. 1,316,772). On November 22, 2006, the Court held a hearing on Autodesk’s application for a temporary restraining order and order to show cause. The Court found that Autodesk had demonstrated both a strong likelihood of success on the merits and the possibility that it faced immediate, irreparable injury from ODA’s conduct, and granted a temporary restraining order.”

Based on the parties’ agreement, the Western District entered an order that includes the following finding:

“ODA’s simulation of Autodesk’s TrustedDWG technology was not necessary to achieve interoperability with Autodesk software, nor was ODA’s simulation of Autodesk’s TrustedDWG technology necessary to achieve interoperability with the software product of any third party. ODA’s simulation of Autodesk’s TrustedDWG technology infringed Autodesk’s rights in its federally registered AUTODESK® mark, in violation of Sections 32 and 43 of the Lanham Act. Judgment on its claim for injunctive relief under the Lanham Act is entered in favor of Autodesk.”

The parties also agreed to a permanent injunction with the following terms:

“The Court hereby permanently RESTRAINS AND ENJOINS ODA, its agents, servants, employees, attorneys, and all others in active concert or in participation with Defendant, from simulating Autodesk’s TrustedDWG technology, including but not limited to the Autodesk watermark and/or TrustedDWG code, without Autodesk’s authorization; and from distributing DWGdirect libraries or other ODA software that use or incorporate or simulate Autodesk’s TrustedDWG technology or that otherwise insert or mimic the unauthorized Autodesk watermark and/or TrustedDWG code. For the sake of clarity, the Consent Judgment neither binds nor benefits any ODA member(s) acting on its or their own accord, and not in active concert or participation with the ODA.”

The parties agreed to bear their own attorneys’ fees and litigation costs incurred in the dispute.