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| Supplemental Amicus Brief from USL v BSDi and Mr. Pfeffer |
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Saturday, September 11 2004 @ 07:53 PM EDT
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Update: This was a document that we intended to do in HTML, but time got away from us. I'm adding it now as plain text, so it's publicly available (2013).
We think we have found our Mr. Pfeffer, thanks to rand who remembered a reference to a Pfeffer Declaration in an amicus brief
[http://www.ltg.ed.ac.uk/~richard/ftp-area/usl-vs-bsd/930119.sup-amicus]
by the Regents in the old USL/BSDi case. There was a Martin Pfeffer, and presumably still is, who was once an AT&T employee. He handled, among other things, software licensing. Here is a brief bio at the firm he joined after retiring from AT&T
[http://www.ostrolenk.com/attorneys/ofcouncil.htm]:
"Mr. Pfeffer received a Bachelor of Electrical Engineering from the City College of New York in 1958 and an LLB from New York University in 1961. He joined AT&T as a patent attorney in 1961 and worked for them continuously in various assignments until his retirement in December 1989 as General Attorney-Intellectual Property Matters. Among his areas of specialty at AT&T were semiconductor technology and software and technology licensing. He also is the Chairman for the Practicing Law Institute's Programs on Fundamentals of Patent Prosecution and Advanced Claim Drafting and Amendment Writing. He is registered to practice before the United States Patent and Trademark Office."
His testimony in the BSD case was to the effect that AT&T/USL had not put copyright notices on 32V deliberately:
"USL's Mr. Pfeffer has admitted that:
"No copyright notice was included in those [object code] files
in order to avoid any possible implication that AT&T had
'published' these files so as to deprive them of their trade
secret status. Pfeffer Decl., at Para. 4. In 1984, when AT&T
initiated its general purpose computer business, it decided
that the binary code which it was planning to provide with
such computers should bear a copyright notice in the name of
AT&T."
Under the old copyright law, such failure to affix a copyright notice was fatal to any copyright claim. Under the 1976 Copyright Law [http://www.copyright.gov/circs/circ1.html],
publication was defined as "the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a work does not of itself constitute publication." Before the law was changed, here's what you did to get a copyright, unlike today, when it is automatic:
"NOTE: Before 1978, federal copyright was generally secured by the act of publication with notice of copyright, assuming compliance with all other relevant statutory conditions. U. S. works in the public domain on January 1, 1978, (for example, works published without satisfying all conditions for securing federal copyright under the Copyright Act of 1909) remain in the public domain under the 1976 Copyright Act."
Back in the old days, then, you had a choice: copyright protection or trade secret. According to Mr. Pfeffer, and he should know, AT&T/USL chose trade secret, believing it back then to be the stronger protection.
Here is the amicus brief that rand remembered, and it's worth reading whether or not we have correctly identified Mr. Pfeffer. You can find more documents on Dennis Ritchie's page at
http://cm.bell-labs.com/cm/cs/who/dmr/bsdi/bsdisuit.html
and on Frank Sorenson's at
http://sco.tuxrocks.com/?Case=USL,
and Frank has the Docket sheet as well.
**************************<P>
UNIX SYSTEM LABORATORIES, INC.,
Plaintiff, (DRD)
-against-
BERKELEY SOFTWARE DESIGN, INC., and
the Following lndividuals in their Collective
Capacity as THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA: PETE
WILSON, LEO T. MCCARTHY, WILLIE L.
BROWN, JR., et al.,
Defendants.
Civil Action No.92-1667
SUPPLEMENTAL AMICUS BRIEF BY DEFENDANTS THE REGENTS OF
THE UNIVERSITY OF CALIFORNIA RE PLAINTIFF'S MOTION FOR
PRELIMINARY INJUNCTION
JAMES E. HOLST
JOHN F. LUNDBERG
MARY E. MacDONALD
University of California
300 Lakeside Drive, 7th Floor
Oakland, California 94612-3565
Telephone: (510) 987-9800
JOEL LINZNER [JL 6426]
CARLA J. SHAPREAU [CJS 2689]
CROSBY, HEAFEY, ROACH & MAY
Professional Corporation
1999 Harrison Street
Oakland, California 94612
Telephone: (510) 763-2000
FREDERICK B. POLAK [FBP 3095]
POST, POLAK & GOODSELL
280 Corporate Center
65 Livingston Avenue
Roseland, New Jersey 07068
Telephone: (201) 994-1100
Attorneys for Defendant
The Regents of the University of California
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
UNIX SYSTEM LABORATORIES, INC.,
Plaintiff, (DRD)
-against-
BERKELEY SOFTWARE DESIGN, INC., and
the Following lndividuals in their Collective
Capacity as THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA: PETE
WILSON, LEO T. MCCARTHY, WILLIE L.
BROWN, JR., et al.,
Defendants.
Civil Action No.92-1667
SUPPLEMENTAL AMICUS BRIEF BY DEFENDANTS THE REGENTS OF
THE UNIVERSITY OF CALIFORNIA RE PLAINTIFF'S MOTION FOR
PRELIMINARY INJUNCTION
Date: 1-22-93
Time: 10:00 a.m.
Court: Honorable Dickinson R. Debevoise
TABLE OF CONTENTS
I INTRODUCTION
II ARGUMENT
A. NET2 IS NOT AN INFRINGING WORK
1. THE UNIVERSITY CANNOT INFRINGE ITS
OWN COPYRIGHT
B. DE MINIMIS "LITERAL COPYING" DOES NOT PROVE
INFRINGEMENT
C. USL CANNOT DISTINGUISH ATARI GAMES AND
COMPUTER ASSOCIATES
D. USL FORFEITED ITS COPYRIGHT IN 32V
1. CONGRESS' DEFINITION OF PUBLICATION UNDER
THE 1976 COPYRIGHT ACT DOES NOT ALTER USL'S
FORFEITURE OF ITS COPYRIGHT IN 32V
2. USL DISTRIBUTED 32V WELL BEYOND A SELECTED
GROUP
3. USL DID NOT DISTRIBUTE 32V FOR A LIMITED
PURPOSE
III CONCLUSION
TABLE OF AUTHORITIES
Apple Computer v. Microsoft Corp.,
799 F.Supp. 1006 (N.D. Cal. 1992) 8
Atari Games Corp. v. Nintendo of America, Inc.,
___ F.2d ___, 24 U.S.P.Q.2d 1015 (Fed. Cir. 1992) 8,9
Brown Bag Software v. Symantec,
960 F.2d 1465 (9th Cir. 1992) 8
Computer Assoc. International, Inc. v. Altai, Inc.,
___ F.2d ___, 1992, 23 U.S.P.Q.2d 1241 (2nd Cir. 1992) 8
Feder v. Videotrip Corp.,
697 F.Supp. 1165 (D. Colo. 1988) 7
Harper & Row Publisher's, Inc. v. The Nation,
471 U.S. 539 (1985) 8
Koontz v. Jaffarian,
787 F.2d 906 (4th Cir. 1986) 11
Lotus Development Corp. v. Borland International, Inc.,
799 F.Supp. 203 (D. Mass. 1992) 8
Narell v. Freeman,
872 F.2d 907 (9th Cir. 1989) 7
National Broadcasting Co., Inc. v. Sonneborn,
630 F.Supp. 524 (D. Conn. 1985) 14
Paramount Pictures Corp. v. Rubinowitz,
271 U.S.P.Q. 48 (E.D.N.Y. 1981) 14
PRC Realty Systems v. National Ass'n of Realtors
766 F.Supp. 453 (E.D. Va. 1991) rev'd in part
without opinion, 972 F.2d 341 (1992) 14
R.L. Polk & Co.v. Musser,
105 F.Supp. 351 (E.D. Penn. 1952) 7
Rokeach v. Avco Embassy Pictures Corp.,
1097 U.S.P.Q. 156 (S.D.N.Y. 1977) 7
SAS Institute, Inc. v. S&H Computer Systems, Inc.,
605 F.Supp. 816 (M.D. Tenn. 1985)
Sega Enterprises, Ltd. v. Accolade, Inc.,
___ F.2d ___, slip op. at 41 (9th Cir. 1993) 9
Stewart v. Abend,
495 U.S. 207 (1990) quoting Russell v. Price,
612 F.2d 1123 (9th Cir. 1979), cert. denied,
446 U.S. 952 (1980) 12
Universal Athletic Sales Co. v. Salkeld,
511 F.2d 904 (3rd Cir. 1975) 6
Werlin v. Reader's Digest Assoc., Inc.,
529 F.Supp. 451 (S.D.N.Y. 1981) 7
White v. Kimmell,
193 F.2d 744 (9th Cir.1952) 13
Page
Statutes
17 U.S.C. Section 301 3
17 U.S.C. Section 405 10,13
1976 Copyright Act 10,13
H.R. Rep. No. 1476 (1976) 13,14
Publications
Goldstein, The Law of Copyright 12,13
Nimmer, Nimmer on Copyright 11,13
I. INTRODUCTION
USL has made no showing of either quantitative or qualitative
similarity between its 32V code and the University's Net2 software.
Nonetheless, USL asks this Court to avoid a "morass of issues" and,
instead, summarily to condemn 4,176 Net2 source code files en
masse and put out of business one independent company that plans to
use them. Essentially, USL would have this Court skip the trial and
proceed directly with the sentence.
In its haste to rush this Court to an erroneous judgment, USL hopes
to cover up a gaping hole in its copyright claim by virtually ignoring
it (apparently hoping the Court will do likewise), i.e., USL has ceded
to the University the copyright in all modifications. improvements
and enhancements to 32V developed by the University.Thus, even if
one assumes that USL holds a valid copyright in 32V, USL cannot
claim that Net2 is an infringing derivative work based upon 32V
because -- by agreement with AT&T -- the University owns the
copyright in that derivative work.
As a result of AT&T's grant of ownership to the University of all
modifications, enhancements and improvements to 32V, USL cannot
complain that the University's distribution of its Net2 software
infringes any copyright USL may hold in 32V. While USL may wish to
complain that the University has breached an agreement not to
distribute to non-USL licensees any University-owned code that
"contains" old 32V code, that is a matter of contract law. As the
Second Joint Declaration of Dr. McKusick and Keith Bostic ("Second
Joint Decl.") and the Second Declaration of Dr. McKusick ("Second
McKusick Decl.") explain, there has been no substantial breach of
that commitment.
USL would lead this Court to believe that Dr. McKusick provided the
equivalent of a "smoking gun" with his deposition testimony on the
subject of whether Net2 contains 32V code. In reality, however,
McKusick's testimony was as explosive as a "pop gun." As Dr.
McKusick states in his second declaration, his testimony was
intended to explain the University's treatment of AT&T 32V code for
which a trade secret possibly could have been asserted: before the
University would release code that contained a reimplementation of
a 32V algorithm, the CSRG staff looked forpublic explications of the
algorithm in question; if an algorithm was publicly describedin
pseudo-code, the University included the algorithm (implemented by
improved codedeveloped by the University) in the Net2 release.
Second McKusick Decl., at Para. 2.3.Header files -- which were
essential to ensure the compatibility of Net2 withapplications,
programs and peripherals -- were also included in Net2. Id. at Para.
4. Itis a gross misuse of the McKusick deposition to represent it as
an admission ofwidespread incorporation of 32V code in Net2
because -- in fact -- there is virtuallyno 32V code in the Net2
source files. Id. at Para. 2.
A painstaking review of the Net2 source code files has uncovered
only 14 files (out of the total 4,176 Net2 source files) which
contain any 32V code in them. As explained in the Second McKusick
Declaration, those files collectively contain only 186 lines of
common code (out of the 1.5 million lines of source code in Net2).
Id.at 1 2. In the kernel -- which USL concedes is the core of the
system -- only 56 lines of source code from Net2 (which has
230,995 lines of source code in the kernel)match lines from the
14,293 lines of source code in the 32V kernel. Id. at Para 1.
After spending hundreds of hours searching for textual matches,
USL's paid expert could only find and report on two source files in
Net2 that actually contain 32V code which he considered significant.
The first, Net2's "ufs_disksubr.c" file contained 14 lines of code (out
of 358 total lines) that also appeared in 32V. Id. at Para. 2.1.1.
The second example belatedly cited by Dr. Carson in his Reply
Affidavit, is the "cpio.c" file: this file was included in Net2 by the
University at the specific request of AT&T. See Second Joint Decl.,
at 1 6.2. But even if it were not estopped to complain about "cpio.c,"
the inclusion of that file and the 14 lines from "ufs_disk.subr.c" --
out of the total 1.5 million lines of source code in Net2 -- hardly
amounts to either copyright infringement or a material breach of the
agreement not to distribute the University-owned enhancements
that "contained" 32V code.
In any event, USL's judicial admissions confirm that its claimed
copyright in 32V has been waived. DeFazio Exhibit F establishes that
32V was created in 1978. USL's moving papers admitted that 32V
was published in object code. But -- as the certificate attests --
the copyright in 32V was not registered until 1 991, long after the
five year grace period expired. Although USL may claim copyright
protection for its current version of Unix (SVR4), any copyright in
the long-obsolete 32V code was forfeited years ago.
USL's trade secret claim (at least on this record) is wholly
specious because no specific trade secret has been identified by USL.
First, insofar as USL would like to claim trade secret protection
for,the 32V source code in its entirety, the claim is surely
preempted by the Copyright Act. See 17 U.S.C. 301(a). Indeed, the bar
of Section 301 (a) is so clear that USL makes no effort to dispute
the point. Second, to the extent USL's expert claims trade secret
protection for specific file names or values, Messrs. McKusick and
Bostic previously demonstrated the documentation of those
"secrets" in the public domain. USL's predecessor-- AT&T-- had
agreed that the University need not keep secret "any information or
technical data relating to the licensed software which is now
available to the general public or which later becomes available to
the general public" See DeFazio Decl., Exh. B, Para. 4.07. Even if the
law recognized a claim where the alleged trade secrets were
publicly documented (which it does not) it is far too late for USL to
renege upon the release granted to the University in 1 4.07 of the
32V license.
Finally, the equities in no way favor USL. As set out in detail in
the University's amicus brief and supporting declarations, USL has
incorporated huge portions of the University's code into its current
SVR4 Unix operating system. USL does not deny that it pays the
University nothing to use the original code and ~ functionality
developed by the University, yet it charges over $200,000 per
license for an operating system that is approximately 50%
University code. A court sitting in equity cannot condemn a public
university which has so freely bestowed its gifts upon a private
corporation simply because it also has made them available for
other members of the public to use.
II. ARGUMENT
A. NET2 IS NOT AN INFRINGING WORK
USL would have the Court believe that McKusick's testimony that
Net2 contains some 32V code -- regardless of how slight and
insignificant that code maybe -- is some kind of "trump" card which
dictates "the end of the case." USL should not be so smug: (1) the
University's copyright in the derivative Net2 code is an absolute
defense to USL's copyright claims; (2) USL has made no showing that
the trivial (and accidental) duplication of 186 lines of 32V source
code sprinkled among the 1.5 million lines of Net2 source code is
either quantitatively or qualitatively substantial and its default on
this critical issue renders it impossible for the Court to find
infringement of any protectible expression in 32V (even if the
University were not privileged to create derivative works).
1. The University Cannot Infringe Its Own Copyright
USL's copyright claim proceeds upon an erroneous syllogism: i.e.,
(1)USL owns the copyright in 32V [fn.1]; (2) Net2 is a derivative
work based upon 32V; therefore, (3) Net2 (or any program
incorporating Net2) is an infringing work. The flaw in USL's
reasoning was hidden from the Court in USL's opening papers but
revealed by the University's amicus brief and supporting evidence.
Although parts of Net2 may be derivative programs which enhanced
and improved 32V, USL expressly granted the University the right to
create such derivative works and -- furthermore-- granted the
University ownership of all such derivative works. Accordingly, as
the copyright certificates attached as Exhibits G and H to the
DeFazio Declaration attest,the University holds the copyright in the
BSD code (of which Net2 is a subset).
USL inexcusably failed to bring to the Court's attention the numerous
written, signed agreements between the parties in which AT&T
surrendered any claim to joint ownership of the derivative BSD code:
"AT&T does not assert any ownership interest in any
modification or derivative work made by [the University].... "
Karels Decl., Exh. A
* * *
"AT&T-IS claims no ownership interest in any portion of
such modification or derivative work that is not part of a
[AT&T] Software Product." Shapreau Decl., Exh. G.
* * *
"The Regents of the University of California (the University)
is the proprietor and owner of enhancements and additions
to 32V ... AT&T shall have no right, title or interest in or
to such proprietary software...." Towers Decl., Exh. A.
[fn.1] As the Court is well aware, the issue of whether the
copyright in 32V has been forfeited is subject to much debate. For
purposes of this section of the argument, however, the Court may
assume that USL holds a valid 32V copyright.
The University supplied the omissions in USL's half-told story by
placing this critical evidence before the Court. Although USL
dismisses these contracts as mere "wasted paper," the University
trusts the Court sees their significance. Net2 cannot be an infringing
work because the creation of the derivative code in Net2 was
expressly authorized by AT&T and ownership of that derivative code
was expressly given by AT&T to the University.
Significantly, USL makes no effort to dispute the University's
ownership of the copyright in the derivative code in Net2. For this
obvious reason, this case is far different from cases such as SAS
Institute, Inc. v. S&H Computer Systems. Inc., 605 F. Supp. 816 (M.D.
Tenn. 1985) where the defendant had no right to create a derivative
work, much less ownership of the copyright in such derivative work.
Essentially, USL asks this Court to find the University has infringed
its own copyright; that is a legal impossibility which the Court
should not pause long to consider. [fn2]
[fn2] The question of whether the Net2 software contains any
significant portion of 27 | 32V code is a "red herring" in the context
of USL's copyright claim because the University owns all of the
derivative code it developed, including those 14 files (out of
4,176 Net2 files) which contain a smattering of original 32V code.
USL may attempt to seek remedies under contract law for any
material breach of the University's agreement not to distribute
University-owned derivative programs which "contain" 32V code but
USL has no copyright claim against Net2.
B. DE MINIMIS "LITERAL COPYING" DOES NOT PROVE INFRINGEMENT
In Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904 (3rd Cir.
1975), the Third Circuit recognized the rule for cases (such as this
one) of de minimis similarity:"[I]f the points of dissimilarity not
only exceed the points of similarity, but indicate that the remaining
points of similarity are (within the context of plaintiff's work) of
minimal importance either quantitatively or qualitatively then no
infringement results."511 F.2d at 909 n.4. Reversing a preliminary
injunction, the Court of Appeals recognized that mere copying is
not enough to prove infringement: "substantial similarity to show
that the original work has been copied is not the same as substantial
similarity to prove infringement." 511 F.2d at 911. USL must prove
similarities between 32V and Net2 that are quantitatively or
qualitatively substantial. Thus, USL's assertion that proof of trivial
copying "establishes literal copyright infringement" and "renders
unnecessary the substantial similarity analysis" is plain wrong. See
Narell v. Freeman, 872 F.2d 907, 910 (9th Cir. 1989) ("A finding that
a defendant copied a plaintiff's work, without application of a
substantial similarity analysis, has been made only when the
defendant has engaged in virtual duplication of a plaintiff's entire
work.")
USL has established neither quantitative nor qualitative
substantiality on this motion. First, the 14 lines of common source
code, the few common file names and two common comments are
quantitatively de minimis. See Joint Decl., at 11 13, 28,39, and 47;
Second Joint Decl., at 114, 6; Second McKusick Decl., at 12.
Second,USL has made no effort to explain why -- qualitatively -- the
14 lines of common code (out of 1.5 million) or two comments (out
of 33,350) are so important to either it or the University's work as
to justify a finding of infringement. The only evidence before this
Court is that the common code is insignificant and easily could be
replaced and that the comments are automatically omitted from the
program once it is compiled. Second Joint Decl., at 11 6.1, 6.2. This
trivial, fragmented (and accidental, Second McKusick Decl., at 1 5)
duplication of code/comments is insufficient to establish
infringement. [fn3]
[fn3] Compare, Feder v. Videotrip Corp., 697 F. Supp. 1165, 1176 (D.
Colo. 1988) ("If, however, the similarity is only as to non-essential
matters, then a finding of no substantial similarity should result...
thus the Courts have applied a de minimis standard in ruling that
some similarities, while suspect, may be too insignificant to arise
to the level of 'substantial."'); Werlin v. Reader's Digest Assoc., Inc.,
528 F. Supp.464 (S.D.N.Y. 1981) ("the Court finds the literal
duplication that occurred hereto be so fragmented as to be de
minimis, and accordingly declines to rely on this similarity to find
copyright infringement."); Rokeach v. Avco Embassy Pictures Corp.,
1097 U.S.P.Q. 156, 161 (S.D.N.Y. 1977) (one hundred words out of
70,000 a de minimis taking); R.L. Polk & Co. v. Musser, 105 F. Supp.
351, 353 (E.D. Penn. 1952)(less than one-half of one percent of a
work being copied "was trivial and inconsequential").USL's citation
of Harper & Row Publisher's. Inc. v. The Nation, 471U.S. 539 (1985) is
off point because the misappropriated text was qualitatively the
most important part of plaintiff's work.
C. USL CANNOT DISTINGUISH ATARI GAMES AND COMPUTER
ASSOCIATES
USL misuses the opinion in Lotus Development Corp. v. Borland
International Inc., 799 F. Supp. 203 (D. Mass. 1992). That case
addresses duplication of a "user interface," i.e., the screen display
generated by a program and the keystrokes used to operate it.
Borland argued that its emulation of Lotus' screen display, menu
structure and keystroke sequences were justified because people
were familiar with Lotus 1-2-3, and therefore it had become a
"standard."
This case is far different. It does not involve mere user interfaces
with which the public has become comfortable; this case deals with
technical requirements. If certain header files, symbols or function
names are not included in a system, that system simply will not
work with certain applications programs or peripherals. See Joint
Decl., at 1 28.3, 1 47. Thus, unlike Lotus, this case falls squarely
within the description of the unprotected elements of a computer
program set forth only a few months ago by the Federal Circuit: the
unprotected elements of a computer program include "expression
dictated by external factors (like the computer's mechanical
specifications, compatibility with other programs, and demands of
the industry served by the program) ..." Atari Games Corp. v. Nintendo
of America. Inc., F.2d 24 U.S.P.Q.2d 1015, 1020 (Fed. Cir. 1992). See
also Computer Assoc. International, Inc. v. Altai. Inc., __F.2d ___,
1992, 23 U.S.P.Q.2d 1241, 1252-3 (2nd Cir. 1992); Brown Bag
Software v. Symantec, 960 F.2d 1465, 1475-6 (9th Cir. 1992); Apple
Computer v. Microsoft Corp., 799 F.Supp. 1006, 1020-21 (N.D. Cal.
1992).
USL's effort to distinguish Atari Games and Computer Assoc. is off
base: contrary to USL's reading of those cases, they do not turn on
when the infringed program was created. Indeed, the CONTU Report
explicitly acknowledges that an original program may lose
copyright protection under circumstances such as those presented
here.
"[C]omputer programs are, in essence, utilitarian articles - articles
that accomplish tasks. As such they contain many logical,
structural, and visual display elements that are dictated by the
function to be performed, by considerations of efficiency, or by
external factors such as compatibility requirements and industry
demands. [citing Computer Assoc.] In some circumstances, even the
exact set of commands used by the programmer is deemed functional
rather than creative for purposes of copyright. When specific
instructions. even though previously copyrighted. are the only and
essential means of accomplishing a given task. their later use by
another will not amount to infringement."
Sega Enterprises. Ltd. v. Accolade, Inc., ___F.2d___, slip op. at 41.
(9th Cir. 1993) (as amended), quoting CONTU Report at 20. All of the
recent cases and the legislative history as set forth in the CONTU
Report recognize that when the copyright holder's program was
created is not important; what is important is whether the code in
the accused work is "dictated by external factors." As explained in
detail in the First Joint Declaration and the Second Joint
Declaration, the header file names and symbols that are common to
32V and Net2 are required by the need for "compatibility with other
programs and demands of the industry served by the program." Atari
Games, supra. As such, they are not protectible by USL's claimed
copyright in 32V.
D. USL FORFEITED ITS COPYRIGHT IN 32V
USL forfeited its copyright in 32V when it globally published 32V
without a copyright notice and failed to timely cure the notice
defect. USL's use of the limited publication argument to escape the
consequences of its conduct stretches the bounds of the limited
publication doctrine beyond all reasonable parameters in light of
USL's admissions that:
32V was created in 1978 (DeFazio Decl., Exh. F);
32V was distributed in source and object code to thousands of
licensees around the world (Exh. M and 0 to Forte Aff.; Greene
Depo., at 82:20; 83:7-9 attached to the Shapreau Decl.);
USL published 32V in object code (USL's Moving Papers at 11
and 27 and Reply at page 5 footnote 10 and page 10, first
bullet);[fn4]
USL failed to affix copyright notices to its 32V UNIX operating
system in both source and object code until 1984 (Pfeffer
Decl.,at Paras 4-5;[fn5] see also McKusick Decl., at Para. 5 and
Joint Decl., at Para 28.4; Exhibit A attached to the Second
Shapreau Decl. and Shapreau Decl., at 12; compare Exhibit A
attached to the Second Karels Decl. and Karels Decl., at Para.
2)[fn6] and
USL failed to register 32V until 14 years after it first
published this work. DeFazio Aff., Exh. F.
USL is mistaken when it claims that the University has not looked in
the proper place for USL's missing copyright notices. The University
has looked at a copy of the container for the source code version of
32V and found no copyright notice affixed. Exhibit A, attached to the
Second Shapreau Decl.; see also McKusick Decl., at 1 5. In addition,
the header files contained in the object code version of 32V have
likewise
[fn4] USL does not dispute the University's legal argument and
authority that the source and object code for 32V are but one work.
[fn5] USL's Mr. Pfeffer has admitted that:
No copyright notice was included in those [object code] files
in order to avoid any possible implication that AT&T had
"published" these files so as to deprive them of their trade
secret status. Pfeffer Decl., at Para. 4. In 1984,when AT&T
initiated its general purpose computer business, it decided
that the binary code which it was planning to provide with
such computers should bear a copyright notice in the name of
AT&T." Id. at Para. 5.
[fn6] USL erroneously contends in footnote 10 of its Reply that
because the copyright notice requirements have been removed from
post-Berne Convention Implementation Act works, that USL should
be relieved of the statutory requirements of the 1976 Copyright Act.
If Congress had intended the Berne Convention Implementation Act
to be retroactive, it would have provided for such a result. Instead,
Congress specifically required that copyright notice be affixed to
"copies...publicly distributed ...before the effective date of the Berne
Convention Implementation Act of 1988...." 17 U.S.C. Section 405(a).
SUPPLEMENTAL AMICUS BRIEF BY DEFENDANT THE REGENTS 10
entered the public domain as a result of publication without
copyright notice. Joint Decl., at 1 28.4; see also Second Karels Decl.,
and Exhibit A attached thereto.i
Moreover, USL's reliance on Exhibits 1-4 attached to the Weitz Reply
Aff., as evidence that copyright notices were properly affixed to its
32V code is nothing short of ridiculous, in light of the fact that
Exhibits 1-4 are not versions of 32V and are, therefore, irrelevant.~
Moreover, Sun Microsystems copyright notices, affixed to Exhibits
1-2, did not transform 32V, which had already entered the public
domain, into a properly copyrighted work.9
USL incorrectly claims at footnote 21 that a copyright notice in a
derivative work is "deemed notice of the copyright in all underlying
works." As Nimmer has pointed out:
if the underlying work itself had previously been published without a
copyright notice, then a derivative work incorporating such pre-
existing work cannot, under any circumstances regardless of the
notice used,serve to revive the pre-existing work, which had
theretofore entered the public domain. Nimmer, Nimmer On
Copyright, 7.12[C], at 7-100.1(1992) .
[fn7] USL's citation to Koontz v. Jaffarian, 787 F.2d 906, 909-910
(4th Cir. 1986) does not support its copyright notice argument
because even if USL had provided reasonable copyright notice for its
code within its 32V manual (which it did not), no notice existed
whatsoever for the multitude of copies of 32V code distributed
through Western Electric and AT&T's source code exchange program,
in which copies of 32V were exchanged without a manual.
Moreover, in the case of a time-sharing system such as 32V, it is
highly doubtful whether a copyright notice affixed to a manual or
to packaging would give reasonable notice of the claim of
copyright under 17 U.S.C. Section 401(c); see also Nimmer, Nimmer
on Copyright, 7.10[A][1], at 7-69 (1992)..
[fn8] The University does not contend that USL's forfeiture of its
copyright in the antiquated, outdated 32V version of the Unix
operating system constitutes a forfeiture of USL's copyright in
subsequent versions of the UNIX operating system which contain new
code. Therefore, copyright notices contained in System III and V code
are not germane to this litigation
[fn9] The University's copy of the copyright notice purportedly
affixed to Exhibit 4 attached to the Weitz Aff. is not legible and
Exhibit 3 does not appear to contain any copyright notice.
Moreover, if USL had carefully read Stewart v. Abend, 495 U.S. 207
(1990), cited by USL, it would have discovered that the case involved
the issue of whether the owner of a derivative work infringed the
rights of a successor owner of the preexisting work by continued
distribution and publication of the derivative work during the
renewal term of the pre-existing work. In fact the Supreme Court
quoted the
'well-established doctrine that a derivative copyright protects only
the new material contained in the derivative work, not the matter
derived from the underlying work.' Stewart v. Abend 495 U.S. 207,
223 (1990) quoting, Russell v. Price, 612 F.2d 1123, 1128 (9th Cir.
1979), cert denied, 446 U.S. 952 (1980).
In fact, the Copyright Act itself addresses this very issue in Section
103(b) which provides:
The copyright in a compilation or derivative work extends only to
the material contributed by the author of such work, as
distinguished from the preexisting material employed in the work,
and does not imply any exclusive right in the preexisting material.
The copyright in such work is independent of, and does not affect or
enlarge the scope, duration, ownership, or subsistence of, any
copyright protection in the preexisting material. 17 U.S.C. Section
103(b).
Accordingly, USL's widespread distribution of 32V without a
copyright notice has injected 32V into the public domain.
1. Congress' Definition of Publication Under The 1976 Copyright
Act Does Not Alter USL's Forfeiture of its Copyright in 32V
USL mistakenly contends that under the 1976 Copyright Act its
"contractual restrictions [alone] negate any requirement of notice"
(Moving Papers, at 6 and 7). USL's incredible contention that the
"selected group" requirement no longer exists under the 1976 Act is
unsupported by the Copyright Act, cases construing it and the
commentators. [fn10]
[fn10] USL suggests that cases which continue to apply the three
part test promulgated in Kimmell are "patently inconsistent with
the intent of Congress and should not be followed." Moving Papers at
8. USL does not cite one single case to support its rather unique
legal position. Instead, USL cites a "work for hire" case hoping that
will do.
For example, Goldstein, in The Law of Copyright, analyzes the House
Report discussion of limited publication in the 1976 Act, which
characterizes the "public" as "persons under no explicit or implicit
restrictions with respect. to disclosure of [a work's] contents,"
[fn11] in which Goldstein states:
Congress arguably intended to drop the first element of the test
employed under the 1909 Act [the selected group requirement]. But
the reference to restrictions on "disclosure," rather than to
restrictions on "copying" as required under the 1909 Act, suggests
that Congress probably contemplated distribution to a limited group
beyond which thework would not be disclosed. Courts have adopted
this construction.... (citations omitted, emphasis added). Goldstein,
Copyright, Section 3.3.1, at 258; see also Nimmer, The Law of
Copyright, Section 4.13[B], at 4-72-73 and the cases cited therein.
[fn11] H.R. Rep. No. 1746, 94th Cong., 2d Sess. 138 (1976).
Furthermore, USL is confused when it cites to the legislative history
to support its contention that Congress adopted the definition of
"publication" in the1976 Act because it viewed the common law
definition of "publication" (as crystallized in White v. Kimmell, 193
F.2d 744, 746-747 (9th Cir. 1952) as "defective." Moving Papers, at
6-7, quoting, H.R.Rep. No. 1476, 94th Cong., Second Session, 129-
130 (1976). The House Report to which USL selectively cites at
pages 129-130 discusses "publication" in the context of preemption
of common law copyright claims under Section 301 of the 1976 Act
and the need for national uniformity in copyright protection, as well
as the change in the nature of "publications" in light of the 20th
Century communications revolution. The legislative history does not,
as USL suggests, criticize the three part test used by the courts to
determine when a "limited publication" occurs. [fn12]
[fn12] Reference to other sections of the 1976 Copyright Act, and
its legislative history, which focus on the issue of when copyright
interests are implicated by public distribution, (although not on
point) may aid the Court in its determination of whether 32V has
been distributed beyond a "selected group." For example, the
Copyright Act makes clear that a copyright will not be invalidated if
copyright "notice has been omitted from no more than a relatively
small number of copies... distributed to the public....17 U.S.C. Section
405(a) (emphasis added).
In addition, under clause (1) of the definition of "publicly" in
section 101 (the definitions section of the Act) a performance or
display is "public" if it takes place "at a place open to the public or
at any place where a substantial number of persons outside of a
normal circle of a family and its social acquaintances is gathered."
H.R. Rep. No. 1746, 94th Cong., 2d Sess. at 64 (1976).
2. USL Distributed 32V Well Beyond A Selected Group
As amply discussed in the University's Amicus Brief at 28:1-29:16,
USL has failed to meet the "selected group" requirement. The cases
cited by USL do not undercut the University's facts and law which
demonstrate that USL has published 32V to a non-selected group.
Both Paramount Pictures Corp. v. Rubinowitz, 217 U.S.P.Q. 48 (E.D.
N.Y. 1981) and National Broadcasting Co., Inc. v. Sonneborn, 630
F.Supp. 524 (D. Conn. 1985), arose under the 1909 Act and the courts'
discussion of the 1976 Act is mere dicta. However, neither of these
opinions states that the selected group requirement does not exist
under the 1976 Act. [fn13] PRC Realty Systems v.National Ass'n of
Realtors, 766 F.Supp. 453, 461 (E.D. Va. 1991 ), rev'd in part without
opinion, 972 F.2d 341 (1992), summarily disposes of the publication
issue without any discussion of the change in the publication
analysis in the 1976 Act with respect to the selected group
requirement. Therefore, because USL cannot satisfy the selected
group requirement, its limited publication argument must fail.
...[fn13] Moreover, in National Broadcasting Co.. Inc. v. Sonneborn,
630 F.Supp. 524 (D. Conn. 1985), the court noted that "[t]he number of
persons with the technical ability to broadcast or copy 'Peter Pan'
was relatively small in the early to mid 1960's." Id. at 536. This
comment indicates that had a large number of individuals had
sufficient technical ability to copy or broadcast the work, a general
publication might occur.
3. USL Did Not Distribute 32V For A Limited Purpose
USL fails to address the "limited purpose" requirement which
focuses on the publisher's conduct (not on restrictions placed on the
recipient of the work) and requires that the publication be for a
limited purpose, such as review, criticism, promotion, education, or
performance. Instead, USL contends that one of the general purposes
of the copyright law, i.e., to encourage creativity by enabling
copyright authors to profit from their work, is sufficient to meet
this requirement; it is not. See the University's Amicus Brief, at
30:15-31:18 and cases cited therein. As such, USL's limited purpose
argument falls short of meeting the required showing of a limited
purpose in its publication of 32V.
CONCLUSION
For all of the foregoing reasons, this Court should rule that Net2 is
not an infringing work even if USL possess a valid copyright in 32V.
Nor should the Court find that the University misappropriated any
trade secrets by releasing Net2.
DATED: January 19, 1993.
CROSBY, HEAFEY, ROACH & MAY
Professional Corporation
By
Joel Linzner
Attorneys for Defendant
Regents of the University of California
POST, POLAK & GOODSELL
By
Frederick B. Polak
Attorneys for Defendant
The Regents of the University of California
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