Attorney Steve® Software Law Essentials .- Autodesk Lawsuits.

Introduction

In one lawsuit Autodesk filed suit in the Northern District of California alleging copyright and trademark infringement.  Autodesk, who often uses the law firm Donahue Fitzgerald, filed this case with the powerhouse law firm of  Johnson & Pham, LLP out of Woodland Hills, California.

Complaint allegations

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION AUTODESK, INC., a Delaware Corporation, Plaintiff,

v.

XXXXXXXX

COMPLAINT FOR DAMAGES:

(1) COPYRIGHT INFRINGEMENT [17 U.S.C. § 501(a)];

(2) TRADEMARK INFRINGEMENT [15 U.S.C. § 1114/Lanham Act § 32(a)];

(3) FALSE DESIGNATION OF ORIGIN/UNFAIR COMPETITION [15 U.S.C. § 1125(a)/Lanham Act § 43(a)];

(4) TRADEMARK DILUTION [15 U.S.C. § 1125(c)];

and

(5) UNFAIR BUSINESS PRACTICES [California Business & Professions Code § 17200].

[DEMAND FOR JURY TRIAL]

 Here are some sample allegations pulled from the complaint:

“Plaintiff AUTODESK, INC. (“Autodesk” or “Plaintiff”) files this COMPLAINT against Defendants XXXXXXXX (“Defendant”); XXXXX XXXXXX; XXXXXX, and Does 1-10, inclusive (collectively “Defendants”), for copyright infringement in violation of 17 United States Code (“U.S.C.”) § 501, et seq., trademark infringement in violation of 15 U.S.C. § 1114, false designation of origin/unfair competition in violation of 15 U.S.C. § 1125(a), trademark dilution in violation of 15 U.S.C. § 1125(a), and unfair business practices in violation of California law.”

“Founded in 1982 and publicly traded on the Nasdaq Exchange since 1985, Autodesk is a pioneer and global leader in digital design technologies. Autodesk develops, advertises, markets, distributes, licenses, and supports numerous computer software programs. Autodesk's software programs are recorded on distributable media, such as DVDs, or are made available for download through various authorized distribution channels. Autodesk's software products include innovative computer-aided design (CAD) and drafting software for professionals, consumers, and students. Autodesk's CAD software allows its users to create visual designs and simulate and analyze real world implementation with digital prototypes at the design stage. Autodesk's products and services are applied to such industries as architecture, engineering, construction, product design, manufacturing, and media and entertainment. Autodesk's products and services offer its customers the tools for design, collaboration, building and manufacturing, and data management processes for multiple operating systems, including from mainframe computers and engineering workstations to personal devices and media.”

“Autodesk's principal product, AUTOCAD®, is in constant development and improvement and is one of the most widely used CAD programs in the world since its release. Autodesk's AUTOCAD® programs have well over twelve million users worldwide. Autodesk's product line has expanded to industry-specific CAD applications such as AutoCAD Architectureã, AutoCAD Mechanicalã, AutoCAD Electricalã, and AutoCAD Civil 3Dã, as well as model design programs like Inventorã, Revitã, Aliasã, and animation-based programs such as Mayaã.”

“Autodesk has secured trademark registrations for its AUTODESK® and AUTOCAD® marks, among others, with the United States Patent and Trademark Office (“U.S.P.T.O.”). A non-exhaustive list of Autodesk's marks is attached hereto as Exhibit A (hereinafter collectively referred to as “Plaintiff's Trademarks”)”

Autodesk's software programs are copyrightable subject matter, and Autodesk has secured registrations for numerous software programs with the U.S. Copyright Office (hereinafter collectively referred to as “Plaintiff's Copyrights”). Attached hereto as Exhibit B is a non-exhaustive list of Plaintiff's Copyrights. Specifically, Autodesk owns copyright registrations for the following software programs:

(i) AutoCAD, 2004 (TX 5-673-291)

(ii) AutoCAD, 2005 (TX 5-958-414)

(iii) AutoCAD, 2006 (TX 6-125-535)

(iv) AutoCAD 2007 and User's Guide (TX 6-363-178)

(v) AutoCAD 2008 and user's guide (TX 6-576-172) (vi) AutoCAD 2009 and User Assistance Cue Cards (TX 6-861-815) (vii) AutoCAD 2010 (TX 6-984-218)

(viii) AutoCAD 2011 (TX 7-211-002)

(ix) AutoCAD 2011 for Mac (TX 7-307-015)

(x) AutoCAD 2012 (TX 7-393-098) (xi) AutoCAD 2013 (TX 7-638-014)

(xii) AutoCAD 2013 for Mac (TX 7-544-660)

(xiii) Autodesk AutoCAD 2014 (TX 7-729-537) (xiv) Autodesk AutoCAD 2015 (TX 7-932-491)

(xv) Autodesk AutoCAD 2016 (TX 8-065-298)

(xvi) AutoCAD LT 2007 and User's Guide (TX 6-363-177) (xvii) AutoCAD LT 2008 and user's guide (TX 6-586-280) (xviii) AutoCAD LT 2009 (TX 6-864-726)

(xix) AutoCAD LT 2010 (TX 6-984-220)

(xx) AutoCAD LT 2013 (TX 7-554-057)

(xxi) Autodesk AutoCAD LT 2014 (TX 7-728-641)

(xxii) Autodesk AutoCAD LT 2015 (TX 7-910-733)

(xxiii) Autodesk AutoCAD LT 2016 (TX 8-051-829) (xxiv) Autodesk Architectural desktop : release 3 (TX 5-225-940) (xxv) Autodesk AutoCAD Architecture 2014 (TX 7-748-093)

(xxvi) Autodesk AutoCAD Architecture 2015 (TX 7-932-519) (xxvii) Autodesk AutoCAD Architecture 2016 (TX 8-172-690) (xxviii)Autodesk land desktop, 2007 (TX 6-380-581)

(xxix) AutoCAD Land Desktop 2009 (TX 6-873-173).

“As part of its international licensing and distribution programs, Autodesk imposes various restrictions on the distribution of all Autodesk® software. Every piece of Autodesk®- branded software is licensed. Specifically, Autodesk's License and Services Agreement (“LSA”), which accompanies each and every piece of Autodesk® software, provides only a limited, nontransferable license to install and access the software up to the number of computers purchased, within the scope of the license type and within a specific territory.

Autodesk's LSA specifically states that no license is granted to distribute, rent, loan, lease, sell, sublicense, transfer, or otherwise provide to others any portion of any Autodesk® software.

Autodesk maintains title to the Autodesk® software at all times and at no point does it transfer any ownership of title Autodesk has never authorized or granted a license to Defendants to manufacture, sell, or distribute any Autodesk® software bearing any of Plaintiff's Copyrights or Trademarks.

Attorney Steve® Tip – Plaintiff argues that it does not transfer TITLE to their software (instead only a LICENSE) so that the FIRST SALE DOCTRINE is not at play, which would allow a person or company to RESELL Autodesk Software.

VIDEO:  Watch this video on the “First Sale Doctrine.”  Make sure to SUBSCRIBE to our legal channel and join over 8,200 people who love our legal channel on Youtube.

Autodesk has never authorized or consented to Defendants' use of Plaintiff's Trademarks, or any confusingly similar mark, or Plaintiff's Copyrights outside of the use allowed in the LSA.

Despite this lack of authorization, Defendants have offered for sale, sold, and/or distributed unauthorized copies of Autodesk® software bearing Autodesk's Copyrights and Trademarks.

Specifically, Autodesk is informed and believes that Defendants own and operate the websites located at XXXXXX (collectively “the Websites”), through which they have offered for sale, sold, and distributed unauthorized Autodesk® software.

Autodesk is also informed and believes that Defendants have offered for sale, sold, and distributed unauthorized Autodesk® software through Amazon. 38. Autodesk is informed and believes that Defendants redistribute serial numbers for Autodesk® software that are already registered to other users

Defendants have contacted Autodesk on hundreds of occasions to reactivate serial numbers, claiming computer crashes and other issues. Autodesk is informed and believes that Defendants merely seek to reactivate these serial numbers in order to sell and/or distribute the serial number to a customer who is unaffiliated with the original licensee. 40. It has thus become apparent to Autodesk, upon information and belief, that Defendants are engaged in an ongoing piratical concern whose primary business consists of systematically infringing upon Plaintiff's Copyrights and Trademarks in order to generate substantial illegal revenues.

By these sales and on information and belief, Defendants have imported, advertised, marketed, offered for sale, sold, and/or distributed numerous counterfeit and/or unauthorized Autodesk® products that infringe upon Plaintiff's Copyrights and Trademarks, resulting in thousands if not millions of dollars in ill-begotten gains from Defendants' infringement. Defendants' numerous dealings in counterfeit and/or unauthorized product violate Autodesk's exclusive rights in Plaintiff's Copyrights and use images and marks that are confusingly similar to, identical to, and/or constitute counterfeit reproductions of Plaintiff's Trademarks to confuse consumers and aid in the promotion and sales of Defendants' unauthorized products.

Defendants' conduct and use began long after Autodesk's creation of its copyrighted software, after the adoption and use of Plaintiff's Trademarks, after Autodesk had obtained the registrations alleged above, and well after Plaintiff's Copyrights and Trademarks became famous. Indeed, Defendants had knowledge of Autodesk's ownership of Plaintiff's Copyrights and Trademarks, and of the fame that has accrued in the same, prior to the actions alleged herein, and adopted them in bad faith

In committing these acts, Defendants have, among other things, willfully and in bad faith committed the following, all of which have and will continue to cause irreparable harm to Autodesk:

(i) infringed Plaintiff's Copyrights;

(ii) infringed and diluted Autodesk rights in Plaintiff's Trademarks;

(iii) applied counterfeit marks;

(iv) misled the public into believing there is an association or connection between Autodesk and Defendants and/or the products advertised and sold by Defendants;

(v) used false designations of origin on or in connection with Defendants' goods and services;

(vi) committed unfair competition;

(vii) and unfairly profited from such activity. Unless enjoined,

Defendants will continue to cause irreparable harm to Autodesk

Defendant raised Defenses

Defendants also assert the following separate and additional defenses to each of the causes of action in Autodesk's complaint:

1. Failure to State a Claim: Autodesk fails to allege facts sufficient to state a claim upon which relief can be granted.

2. Statute of Limitations: The maintenance of this action is barred to the extent that Autodesk seeks relief for any purported claims that did not accrue within the applicable statutes of limitations periods.

Attorney Steve® Tip:  In general, the copyright infringement statute of limitations is THREE YEARS.

3. Failure to Mitigate: Autodesk is not entitled to recover for its damages, if any, to the extent that it has failed to mitigate or reasonably attempt to mitigate such damages as required by law.

4. Waiver: Autodesk's claims are barred in whole or in part to the extent that Autodesk prevented Defendants from performing in any way, and released Defendants from any duty or liability to Autodesk. Should any breach of duty have occurred on the part of Defendants, said breach was waived by the conduct and actions of Autodesk.

5. Estoppel: Autodesk is estopped from recovery by virtue of acts of directing, ordering, approving, or ratifying the matters complained of in its claims. Autodesk's claims are also barred in whole or in part to the extent that Autodesk is estopped from asserting any claim against Defendants by its own acts and omissions with respect to the events cited in Autodesk's claims and its failure to adequately protect its own interests.

6. Laches: Autodesk's recovery is barred because Autodesk unreasonably delayed in providing notice and in commencing and prosecuting this action which caused unfair prejudice to Defendants.

7. Unclean Hands: Autodesk's claims are barred by reason of its own unclean hands with regard to the matters alleged in Autodesk's claims.

8. Discharge: Autodesk's claims are barred to the extent that Autodesk has released and discharged Defendants from any liability.

9. Lack of Consideration: Autodesk's claims are barred to the extent that any alleged contract was executed without consideration.

10. Unjust Enrichment: Autodesk's recovery is barred to the extent that such recovery would cause Autodesk to be unjustly enriched.

11. Improper Notice of Breach: Autodesk's recovery is barred by reason of its failure to provide proper notice to Defendants, depriving Defendants sufficient opportunity to remedy the breach.

12. Parol Evidence Rule: Autodesk's recovery is barred to the extent that its claims rely on evidence barred by the parol evidence rule.

13. Disclaimer of Implied Warranties: Autodesk's recovery is barred to the extent that Defendants disclaimed all implied warranties associated with any alleged sale of property in the pleadings.

14. Autodesk's Comparative Fault: Autodesk's recovery should be reduced, be abated, or eliminated to the extent that Autodesk's own fault caused or contributed to any damages to Autodesk. In the event Autodesk has suffered any damages as a result of anything related to the allegations in Autodesk's claims, such damages are, in whole or in part, the proximate result of the Autodesk's own negligence and its recovery, if any, should be reduced proportionately to its comparative fault.

15. Intervening and Superseding Causes: Autodesk's claims fail to the extent that the cited damages were the result of intervening and superseding causes.

16. Autodesk's Failure to Perform: Autodesk's recovery is barred to the extent that Autodesk failed to meet and perform all necessary covenants, conditions and promises it was required to perform in accordance with the terms and conditions of any alleged written, oral, or implied warranty.

17. Uniform Commercial Code: Autodesk's recovery is barred to the extent that Autodesk's causes of action are barred by the applicable statute of limitations, including, but not limited to: Uniform Commercial Code §§ 2607(3)(a) and 2725.

18. Corporate Veil: Autodesk's claims against Alex Bassin as an individual are barred because Autodesk has failed to plead facts sufficient to justify piercing the corporate veil of the entity defendant.

19. Attorney's Fees: Autodesk's recovery is barred to the extent that attorney's fees are not allowable in this action as a matter of law

Time will tell how this case plays out, but it does show that Autodesk is willing to file lawsuits.

Contact an Autodesk software audit & defense law firm

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