That isn't actually true. There have been cases where it played a role and the judges took it seriously even if they didn't directly rule on it. Now there is a case in Michigan, which just settled, where the GPL not only stood its ground, it came off victorious, and this time it was very much a part of the case. I had a chance to interview the attorney that represented the GPL side, Eric Grimm.

The case involved software written in part by Drew Technologies, Inc., to which others contributed, in reliance upon the GPL. DrewTech, an engineering firm in Michigan, develops custom vehicle communications solutions for the automobile industry. DrewTech released the software at issue on SourceForge, under the GNU General Public License ("GPL").

I never thought I'd find cars fascinating. But this case changed my mind. It's a struggle over ownership of software written and released under the GPL but later claimed as a copyrighted work by a publisher of standards for the automotive industry, the Society of Automotive Engineers. But on a deeper level, it addresses a new issue. With cars now being computerized, can manufacturers assert copyright and trade secret rights over software? Over standards? Before you answer, did you know that there is proposed legislation, the Motor Vehicle Owner's Right to Repair Act?

You can read it and about it here on the Automotive Aftermarket Industry Association's web site. Their overview:

The Issue: Modern cars and light trucks contain advanced technology that monitors or controls virtually every function of the vehicle including: brakes, steering, air bags, fuel delivery, ignition, lubrication, theft prevention, emission controls and in some cases, tire pressure. Car owners and independent shops must have full access to the information and tools necessary to accurately diagnose, repair, or re-program these systems. This information and equipment is necessary to ensure vehicle safety, performance, and environmental compliance. Vehicle manufacturers are making access to such vital information increasingly difficult and costly to obtain for the independent aftermarket and its customers.

Impact on Consumers and the Aftermarket: Without access to critical information and tools, motorists are forced to patronize new car dealerships, which may not be convenient, accessible or otherwise desirable to the car owner. Moreover, the lack of competition and consumer choice will inevitably lead to higher repair prices. Failure to perform necessary maintenance for any reason will result in unsafe and high-polluting vehicles populating the nation's highways.

Action Needed: The Motor Vehicle Owners Right to Repair Act prevents vehicle manufacturers and others from unfairly restricting access to the information and tools necessary to accurately diagnose, repair, re-program or install automotive replacement parts.

So that is the backdrop. Here's an editorial on the bill by Automotive Week. DrewTech in one legal document filed in the case put it this way:

"The development of standards (to which everyone must comply) is left to two standards-setting bodies -- the ISO and the Society of Automotive Engineers. However, the government regulations promulgated by the EPA specifically make reference to published technical reference documents developed by the SAE and by ISO.

"In other words, in order to know what the rules are, so they can comply with EPA and CARB regulations, manufacturers, tool-makers, parts-makers, and anyone else that deals with emissions controls, must have access to the technical manuals -- the drafting of which the EPA and the CARB have delegated to ISO and to the SAE.

"In this sense (because the public and regulated businesses all have the right to know what the rules are, in order to comply with them), the SAE-published technical standard for on-board motor vehicle diagnostic equipment, for emissions controls, is exactly like the building codes at issue in Veeck v. Southern Bldg. Code Cong., Int’l, 293 F.3d 791, 795-97, 802 (5 th Cir. 2002) (en banc) ('"[T]he law," whether articulated in judicial opinions or legislative acts or [municipal] ordinances, is . . . not amenable to copyright.' . . . 'When those [model] codes are enacted into law . . . they become to that extent "the law" . . . and may be reproduced or distributed as "the law" of those jurisdictions.'), cert. denied, No. 02-355 (U.S. June 27, 2003). In order to comply with the requirements of Part 86, of Title 40 of the Code of Federal Regulations, one has to know and comply with the contents of specified SAE “OBD” (on-board dagnostic) standards, which are made (by reference) an actual part of the governmental regulations. E.g. 40 C.F.R. § 86.1806-5(h) ('The OBD system shall provide for standardized access and conform with the following Society of Automotive Engineers (SAE) standards and/or the following International Standards Organization (ISO) standards. The following documents are incorporated by reference.').

"Since one cannot comply with the law -- 40 C.F.R. Part 86 -- without reference to the SAE standards incorporated by reference therein, we think it is especially helpful to ask (hypothetically) whether the SAE (or anyone) ever could or should be permitted to attempt to submit the SAE OBD technical reference document to the Patent & Trademark Office, as an application for a patent on a 'Method to Comply With 40 C.F.R. Part 86,' and thereby seek to obtain (or obtain) a government-backed monopoly to charge patent royalties to any person who might, for the next 20 years, attempt to build any OBD-compatible equipment, or otherwise seek to comply with the EPA- and CARB-mandated requirements of law.

"Although this is a copyright case (meaning that – in contrast to a patent’s 20-year monopoly on specific kinds of novel and useful ideas – any of the ideas embodied in the SAE’s document cannot be monopolized via copyright), we think this thought-exercise is quite helpful. Should anybody (the SAE or anyone else) be permitted to charge royalties for selective access to key information that is necessary and essential to comply with the law?"

In the DrewTech v. SAE case, on one side, you had a company whose employees helped to write the software (three of them, all in a SAE task force at the time) but on DrewTech's premises, using their equipment and on company time, with company permission, on the understanding that it would be released under a FOSS license, and it was, under the GPL. On the other side, you had the SAE, the standards body which publishes the standards, which essentially tried to claim copyright on the software and intended to charge DrewTech thousands per year to use the very software DrewTech employees had written and released under the GPL.

The case is Drew Technologies, Inc. v. Society of Automotive Engineers, Inc., et al., Civil Action No. 03-CV-74535-NGE-PJK (E.D. Mi. filed Oct. 10, 2003). SAE laid claim to ownership of -- wait for it -- "ideas, procedures, processes, methods of operation, concepts, principles or discoveries" in SAE's published technical standards.

The terms of the settlement ¹ included SAE paying DrewTech $75,000 (half of which DrewTech contributed back to SAE as a charitable contribution), and SAE stipulated to the following:

" . . . the Society of Automotive Engineers, Inc. ['SAE'] hereby stipulates and agrees that to the extent that computer software only implements any idea(s), procedure(s), process(es), system(s), methods(s) of operation, concept(s), principles(s), discovery or discoveries that is or are described, explained, illustrated, or embodied in any SAE technical standards (including standards set forth in Technical Report J1699-3), then no copyright claim exists to the extent of such implementation of standards in software code, and SAE shall not assert a copyright claim on that basis, and will dismiss its claim of infringement against Drew Technologies, Inc."

Grimm has represented some clients in previous high-profile cases, particularly domain name cases, including representing Hans Rekestad, the publisher of ClassicVolvo.com, in a dispute with Ford Motor Company, securing a very interesting jurisdiction ruling against actor Kevin Spacey in a California federal court, and also assisting the Electronic Frontier Foundation on a variety of pro bono projects.

You can find all the court filings on Pacer. I enjoyed reading them very, very much, and I know you will too. I've put a selection of them at the end of the interview, ², for those without Pacer accounts, and if you only have time to read one, I suggest reading the Rule 56(b) and (d) Motion and Supporting Memorandum,³ as it is the clearest in giving you the big picture. I think it also helps one to understand why SCO is relying on contracts, and not primarily copyright law.

Also, it mentions Groklaw. All your hard work transcribing Eben Moglen's speech at Harvard was not for nothing. It appears on page 11 of the memorandum in support. This is the second time that I know of that Groklaw has been mentioned in a legal document. Groklaw member cymraeg just sent me a scan of a page in a textbook, "The Complete Guide to Linux System Administration", by Nicholas Wells, now being used at his technical college, that also references Groklaw on page 7 of the chapter, A Brief History. What a feeling *that* is.

Grimm tells me that the final "terms sheet" that resolved the dispute was actually prepared using the OpenOffice word processor, and was printed using CUPS, running on top of SuSE Linux 9.1, at Grimm's law firm in Michigan. "It is fair to say that the GPL prevailed in ways both obvious and subtle in this settlement," says Grimm.

As I say, I had an opportunity to ask Grimm a few questions. Here are his answers:

*************************

PJ: What was the dispute specifically about, Eric?

Eric Grimm: The dispute arose a few months after DrewTech released the software on SourceForge. The SAE claimed that the software was an unauthorized "derivative work" of an in-progress technical standard of the SAE, called J1699-3. According to the SAE, the software belonged exclusively to the SAE, and not to DrewTech.

PJ: Why?

Eric: The SAE viewed the software as a profit opportunity, and wanted to charge "subscription" fees to all users of the software. DrewTech responded with a DMCA "takedown notice," accusing the SAE of contributory infringement by failing to "take down" copies of the software that were published on an SAE Website. When the SAE failed to respond to the DMCA "takedown notice," DrewTech filed suit, alleging (among other things) violations of the GPL, violations of the DMCA, copyright infringement and contributory infringement. The SAE counterclaimed, seeking a declaratory judgment (i.e., a declaration from the Court that the SAE and not DrewTech owned the software), and accusing DrewTech of state-law conversion of the SAE's "intellectual property."

Much like Judge Kimball in the SCO v. IBM case, when the DrewTech case came before U.S District Judge Nancy Edmunds (who has a reputation in Michigan for stellar legal acumen), the Judge was not inclined to issue a substantive ruling right out of the box.

Instead, Judge Edmunds instructed the parties to take more discovery, and to come back to her with the summary judgment arguments that DrewTech had filed -- but after some formal discovery had been conducted. We asked Judge Edmunds to reconsider, and to grant summary judgment on an expedited basis, but she declined to do so. She was adamant. She told us to take discovery, and made it clear that she really meant it. Thus, the only real ruling that has been made in the case is a discovery ruling by Magistrate Judge Paul Komives, permitting DrewTech to take the deposition of a third-party witness. The briefs addressing the issues are available to the public.

PJ: What are the terms of the settlement and what does it mean for the GPL?

Eric: In the settlement, the SAE agrees to drop its claims (and therefore to give up any contention that it owns the software). This paves the way for the software to remain permanently open under the terms of the GPL. The SAE has also agreed to pay DrewTech a substantial sum of money (half of which DrewTech is contributing back to the SAE as a charitable donation). And, finally, on a going-forward basis, the SAE has stipulated and agreed to obey the long-recognized "idea-expression" doctrine, recognized in copyright law, and not to claim ownership of software that merely implements "ideas, procedures, processes, methods of operation, concepts, principles, or discoveries," that may be described, explained, illustrated, or embodied, in any SAE published technical standards.

What this means, as a practical matter, is that computer software -- such as the software contained in the engine of every motor vehicle in the United States, or the software that is used in handheld "scan tool" devices to communicate with on-board vehicle computers -- which software happens to implement an SAE published technical standard -- should not trigger a "derivative work" claim by the SAE, purporting to assert the right to charge arbitrary copyright royalties for every single copy of such computer software.

PJ: So this was a victory for the GPL?

Eric: Yes. I'd say SAE surrendered to the GPL. The general terms of settlement have been made a matter of public record (Doc. Ent. 39), in the form of a terms sheet, signed by both sides and submitted by DrewTech to the Court, although final dismissal papers have not yet been submitted.

PJ: How did the settlement come about, and what about the methods, ideas, procedures angle?

Eric: If you remember, Judge Kimball denied IBM's summary judgment motions but said that the motion could be re-presented after discovery was completed. Judge Edmunds took essentially the same approach in the DrewTech case, and declined to rule in our favor until after discovery was completed.

Discovery in the DrewTech case was in progress when the parties got together, and with the help of a neutral mediator, resolved their differences.

As far as the idea/expression dichotomy is concerned, copyright law is quite clear that ideas, methods, concepts, etc., cannot be copyrighted. Copyright only protects original works of expression that are fixed in a tangible medium -- in other words, copyright protects certain specified aspects of the particular expression embodied in a work, but not any ideas or methods that happen to be described in the work.

The origin of the doctrine is in a Supreme Court decision from the 1870s -- Baker v. Selden, 101 U.S. 99 (1879). In that case, an author published a book (called "Selden's Condensed Ledger, or Book-Keeping Simplified"), that described a particular method of accounting to be used in businesses. Some businesses implemented that particular approach to accounting, without purchasing copies of the book or paying royalties. Author sued for copyright infringement. Supreme Court rejected the claim, because the ideas embodied in the work were considered to be outside the scope of copyright. [PJ Editor note: The case is here. There is an article about this case on Groklaw, and one on "What Can't You Copyright?" that might be of interest.]

The doctrine is now enshrined in 17 U.S.C. 102(b). The relevant section says:

(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

PJ: Why did you donate back half of what you won under the settlement?

Eric: The reason for donation of half back is because the purpose of the lawsuit always has been to benefit and improve the SAE. It may have been necessary to drag them kicking and screaming up the learning curve, but my client has done so precisely because the organization needed the benefit of the learning experience.

The whole point is that DrewTech has been very generous to the SAE by donating 1/2 of the money back as a charitable contribution, to symbolize the educational benefit conferred on the organization (in particular, organization staff -- as distinct from the Membership, who mostly tend to "get" the GPL) through the mechanism of the lawsuit as a whole.

¹Here is the stipulation as text. I also contacted the SAE and offered them an opportunity to comment, but they did not respond to my email:

STIPULATION

The Society of Automotive Engineers, Inc. ["SAE"] hereby stipulates and agrees that, to the extent that computer software only implements any idea(s), procedure(s), process(es), system(s), methods(s) of operation, concept(s), principles(s), discovery or discoveries that is or are described, explained, illustrated, or embodied in any SAE technical standards, no copyright claim exists to the extent of such implementation of standards in software code, and shall not assert a copyright claim on that basis.

ATTRIBUTION

Any computer program that purports to implement an SAE Technical Report in the form of processes, procedures, systems or methods of operation may refer to the SAE Technical Report in the format set forth below, provided that any such reference shall be deemed to constitute an agreement to indemnify and hold SAE harmless from any claim asserted against it arising out of such computer program. Reference to such Technical Report that constitutes an agreement shall be in substantially the following form:

THIS COMPUTER PROGRAM IS BASED UPON SAE TECHNICAL REPORT, ________, WHICH REPORT WAS PROVIDE "AS IS."

FINAL SETTLEMENT STIPULATION

Pursuant to the final settlement of Drew Technologies, Inc. v. Society of Automotive Engineers, Inc., Civil Action No. 03-CV-74535 DT, U.S. District Court, Eastern District of Michigan, the Society of Automotive Engineers, Inc. ["SAE"] hereby stipulates and agrees that to the extent that computer software only implements any idea(s), procedure(s), process(es), system(s), methods(s) of operation, concept(s), principles(s), discovery or discoveries that is or are described, explained, illustrated, or embodied in any SAE technical standards (including standards set forth in Technical Report J1699-3), then no copyright claim exists to the extent of such implementation of standards in software code, and SAE shall not assert a copyright claim on that basis, and will dismiss its claim of infringement against Drew Technologies, Inc.

SAE pays $75,000.00, of which Drewtech donates back 1/2 to the SAE.

___[signature, 1/14/05]___

___]signature, 1/14/05]___

²Here is a selection of documents filed in the case:

• First Amended Complaint for Copyright Infringement, Declaratory Judgment, Contributory Infringement, and Violation of License Agreement [PDF]

• Exhibits A-D, to 1st Amended Complaint

• ANSWER TO PLAINTIFF DREW TECHNOLOGIES, INC. FIRST AMENDED COMPLAINT FOR COPYRIGHT INFRINGEMENT, DECLARATORY JUDGMENT, CONTRIBUTORY INFRINGEMENT AND VIOLATIONS OF LICENSE AGREEMENT

• Fed. R. Civ.P. 56(b) and (d) MOTION AND SUPPORTING MEMORANDUM OF PLAINTIFF DREW TECHNOLOGIES, INC., FOR PARTIAL SUMMARY JUDGMENT, DISMISSING DEFENDANT'S COUNTERCLAIM

• REPLY OF PLAINTIFF/COUNTERCLAIM DEFENDANT DREW TECHNOLOGIES, INC. TO MARCH 22, 2004, COUNTERCLAIM OF THE SOCIETY OF AUTOMOTIVE ENGINEERS

• OPPOSITION MEMORANDUM OF PLAINTIFF DREW TECHNOLOGIES, INC., TO WITNESS KERBY SUHRE'S MOTION TO QUASH

• RULE 12(b)(1) MOTION TO DISMISS FOR LACK OF SUBJECT-MATTER JURISDICTION, AND FED. R. CIV. P. 60(b), and Local Rule 7(g) MOTION REQUESTING THAT SUMMARY JUDGMENT OR DISMISSAL NOT BE DELAYED FOR FUTILE DISCOVERY

• REPLY MEMORANDUM IN SUPPORT OF PLAINTIFF'S FED. R. CIV. P. 12(b)(1) MOTION TO DISMISS FOR LACK OF SUBJECT-MATTER JURISDICTION, AND LOCAL RULE 7.1(g) NOT TO DELAY SUMMARY JUDGMENT

• REPLY MEMORANDUM IN SUPPORT OF PLAINTIFF'S FED. R. CIV. P. 56(b) and (d) MOTION FOR PARTIAL SUMMARY JUDGMENT, DISMISSING DEFENDANT'S COUNTERCLAIM

³ The Rule 56(a) and (b) Motion and Supporting Memorandum, as text:

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

_________________________

DREW TECHNOLOGIES, INC.,
a Michigan corporation,

Plaintiff,

v.

SOCIETY OF AUTOMOTIVE
ENGINEERS, INC., individually
and d/b/a SAE and SAE
INTERNATIONAL,

Defendants.

_______________________

C.A. No. 03-CV-74535 DT

Hon. Nancy G. Edmunds
United States District Judge

Hon. Paul J. Komives
United States Magistrate Judge

___________________________

FED. R. CIV. P. 56(b) and (d) MOTION AND SUPPORTING MEMORANDUM OF
PLAINTIFF DREW TECHNOLOGIES, INC., FOR PARTIAL SUMMARY
JUDGMENT, DISMISSING DEFENDANT’S COUNTERCLAIM

_______________________________

Eric C. Grimm (P58990)
CALLIGARO & MEYERING, P.C.
[address, phone, fax]

ATTORNEYS FOR PLAINTIFF
DREW TECHNOLOGIES, INC.

1

ISSUES PRESENTED AND MOST RELEVANT AUTHORITIES

I. Statute of Frauds: Is the counterclaim of the Defendant barred by the statute of frauds governing transfers of copyrights, 17 U.S.C. § 204(a)?

Most Relevant Authorities:

17 U.S.C. § 204(a) (“A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.”).

II. No Work Made For Hire By Any SAE Employee: Is the counterclaim of the Defendant subject to dismissal because the software program, “J1699.c,” was (so far as the SAE is concerned) ¹ never created, as a work made for hire, by any employee of the Society of Automotive Engineers?

Most Relevant Authorities:

17 U.S.C. §§ 101 (defining “work made for hire”); 201(a), (b):

§ 201 Ownership of copyright.

(a) Initial Ownership. – Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowner of copyright in the work.

(b) Works Made for Hire. – In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

i

Most Relevant Authorities:

Sprecht v. Netscape Communications Corp., 150 F. Supp. 2d 585, 594-96 (S.D.N.Y. 2001);

Pollstar v. Gigmania, Ltd., No. Civ-F-00-5671 (E.D. Cal. Oct. 17, 2000);

See also Register.com v. Verio, Inc., No. 00-9596, __ F.3d __, at __ (2^nd Cir. Jan. 23, 2004) (distinguishing ineffective “browse-wrap” procedures from “shrinkwrap” and “click-wrap” contracts).

IV. Idea-Expression Dichotomy: Is the counterclaim of the Defendant subject to dismissal as a matter of law, because the Society of Automotive Engineers has no legitimate “copyright” claim – or any other “intellectual property” claim for the ownership of ideas –- when copyright law only protects expression, not the ideas (or technical standards, or other information) in a work.

Most Relevant Authorities:

Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349-50 (1991) (“[C]opyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. . . . This principle, known as the idea/expression or fact/expression dichotomy, applies to all works of authorship.”);

Harper & Row Pubs., Inc. v. Nation Enters., 471 U.S. 539, 556-57 (1985);

Kohus v. Mariol, 328 F.3d 848, 855 (6 th Cir. 2003) (“It is axiomatic, to begin with, that mere abstract ideas are not protectible, but the expression of an idea is.”) (citing Mazer v. Stein, 347 U.S. 201, 217 (1954) (“Unlike a patent, a copyright gives no exclusive right to the art disclosed . . . .”)).

ii

iii-vi

_________________________

DREW TECHNOLOGIES, INC.,
a Michigan corporation,

Plaintiff,

v.

SOCIETY OF AUTOMOTIVE
ENGINEERS, INC., individually
and d/b/a SAE and SAE
INTERNATIONAL,

Defendants.

_______________________

C.A. No. 03-CV-74535 DT

Hon. Nancy G. Edmunds
United States District Judge

Hon. Paul J. Komives
United States Magistrate Judge

___________________________

PLAINTIFF'S FED. R. CIV. P. 56(b) and (d) MOTION FOR PARTIAL SUMMARY
JUDGMENT, DISMISSING DEFENDANT’S COUNTERCLAIM

_______________________________

Plaintiff, Drew Technologies, Inc. (“DrewTech”), respectfully moves for partial summary judgment. FED. R. CIV. P. 56. The facts material to dismissal of the Counterclaim are not in dispute, and Plaintiff is entitled to judgment as a matter of law. Accordingly, Defendant’s Counterclaim must be dismissed. Plaintiff respectfully prays for this.

Respectfully submitted,

March 22, 2004

___________________________
Eric C. Grimm (P58990)
CALLIGARO & MEYERING, P.C.
[address, phone, fax]

ATTORNEYS FOR PLAINTIFF

1

_________________________

DREW TECHNOLOGIES, INC.,
a Michigan corporation,

Plaintiff,

v.

SOCIETY OF AUTOMOTIVE
ENGINEERS, INC., individually
and d/b/a SAE and SAE
INTERNATIONAL,

Defendants.

_______________________

C.A. No. 03-CV-74535 DT

Hon. Nancy G. Edmunds
United States District Judge

Hon. Paul J. Komives
United States Magistrate Judge

___________________________

MEMORANDUM OF POINTS AND AUHORITIES IN SUPPORT OF
PLAINTIFF'S FED. R. CIV. P. 56(b) and (d) MOTION FOR PARTIAL SUMMARY
JUDGMENT, DISMISSING DEFENDANT’S COUNTERCLAIM

_______________________________

Plaintiff, Drew Technologies, Inc. (“DrewTech”), respectfully moves for partial summary judgment on Defendant’s Counterclaim. FED. R. CIV. P. 56(b), (c), (d), (e).

OVERVIEW OF PUBLIC POLICY ISSUES GERMANE TO THIS LAWSUIT

Automobiles, today, contain computers. Indeed, the automotive industry is increasingly reliant on microprocessor devices, and this computerization trend is only likely to accelerate in the future. What does this mean for owners of modern automobiles, when they want to diagnose or repair their own vehicles, or when they want to use the services of independent mechanics or technicians? What does it mean for independent mechanics and technicians? What does it mean for independent makers of repair parts and diagnostic tools?

Should there be uniform standards, to which all manufacturers adhere, so that the

2

These are not just abstract concerns. These issues already impact multitudes of customers and vendors, all over the United States. Recently, 87 Members of the House of Representatives, and Senator Lindsey Graham have all co-sponsored the proposed Motor Vehicle Owners’ Right To Repair Act of 2003 (H.R. 2735) (introduced Sept. 15, 2003); (S.2138) (introduced Feb. 26, 2004). Among the findings, in the Bill as introduced, are:

(8) Vehicle owners in the United States should have the right–

(A) to all information necessary to allow the diagnosis, service, and repair of their vehicles;

(B) to choose between original parts and aftermarket parts when repairing their motor vehicles; and

(C) to make, or have made, repairs necessary to keep their vehicles in reasonably good and serviceable condition during the expected vehicle life.

(9) The restriction of vehicle repair information limits who can repair motor vehicles and what parts may be used to repair those vehicles, which limits consumer choice and thus limits competition.

Id. Parallel efforts to develop and require open standards and transparency in the automotive industry are underway in Europe, too. In at least one area -- pollution control -- however, the United States Environmental Protection Agency and the California Air Resources Board, are

3

In order to ensure that motor vehicle emissions control systems can be tested and monitored (including testing and monitoring by independent service providers, government agencies, and government contractors), the EPA and the CARB already mandate that all motor vehicle manufacturers must ensure that the computerized on-board diagnostic devices meet certain minimum transparency and inter-operability standards. E.g., id. §§ 86.005-17, 86.094-17, 86.098-17, 86.099-17, 86.1717-01, 86.1717.99, 86.1806-01 to 86.1806-05. Of course, the EPA and the CARB did not, themselves, establish the specific technical protocols and communication codes that diagnostic tools employ (electronically) to talk to the mandatory on-board computers on automobiles, trucks, and other motor vehicles.

The development of standards (to which everyone must comply) is left to two standards-setting bodies -- the ISO and the Society of Automotive Engineers. However, the government regulations promulgated by the EPA specifically make reference to published technical reference documents developed by the SAE and by ISO.

In other words, in order to know what the rules are, so they can comply with EPA and CARB regulations, manufacturers, tool-makers, parts-makers, and anyone else that deals with emissions controls, must have access to the technical manuals -- the drafting of which the EPA and the CARB have delegated to ISO and to the SAE.

4

Since one cannot comply with the law -- 40 C.F.R. Part 86 -- without reference to the SAE standards incorporated by reference therein, we think it is especially helpful to ask (hypothetically) whether the SAE (or anyone) ever could or should be permitted to attempt to submit the SAE OBD technical reference document to the Patent & Trademark Office, as an application for a patent on a “Method to Comply With 40 C.F.R. Part 86,” and thereby seek to obtain (or obtain) a government-backed monopoly to charge patent royalties to any

5

Although this is a copyright case (meaning that – in contrast to a patent’s 20-year monopoly on specific kinds of novel and useful ideas – any of the ideas embodied in the SAE’s document cannot be monopolized via copyright), ³ we think this thought-exercise is quite helpful. Should anybody (the SAE or anyone else) be permitted to charge royalties for selective access to key information that is necessary and essential to comply with the law?

STATEMENT OF FACTS

This case arises out of the second-round development of OBD (on-board diagnostic) standards for motor vehicle emissions -- the so-called “OBD-II” process.

For several years, motor vehicle OBD equipment has been governed by a set of published OBD standards, mandated by the EPA and the CARB (the standards themselves are published by the SAE at the behest of EPA and CARB). Each manufacturer, however, has managed to implement the standards in a peculiar, quirky, way.

Thus, despite the existence of published standards, incompatibilities have arisen in the field, which tend to lock-in customers to aftermarket services from their original equipment

6

In Paragraph 91 of the Counterclaim, the SAE alleges that “[o]ne of [the SAE’s] projects is to create a technical paper known as a recommended practice. This paper is currently known as the SAE J1699-3 OBD-II Test Procedures Recommended Practice (‘J1699-3 Document’).” This J1699-3 Document (essentially, a technical reference manual that describes, in prose, all of the tests that a vehicle must pass, before its OBD equipment can be deemed OBD-II compliant, including the technical details of implementing the standard set of OBD-II tests and functionalities), is still in preparation and has not been finalized by the Task Force whose job is to develop the J1699-3 standard (in the form of the prose Document serving as a reference description of the standard).

Two employees of Plaintiff Drew Technologies, Inc. (“DrewTech”), its President, Mike Drew, and employee Dan DeMaggio, are presently active participants in the J1699-3 Task Force. Additionally, a former employee of DrewTech, Kerby Suhre, previously participated in the Task Force. All three have worked on and contributed to the J1699-3 Document. Obviously, because the J1699-3 Document is being prepared by a committee (with broad industry participation), and the Document is intended for publication (indeed, for incorporation by reference into government regulations), none of its contents can be considered a “trade secret.” See, e.g., MICH. COMP. L. §§ 445.1901 - 445.1910 (Michigan

7

From a practical standpoint -- since the testing of computerized OBD equipment on vehicles requires one to use a computer to access a vehicle’s OBD equipment, and to perform tests -- a prose Document describing the OBD-II compliance tests is not quite so helpful to end-users as computer software that is designed to run the tests in an automated manner.

Of course, there is absolutely nothing to prevent the Society of Automotive Engineers from creating its own computer software program to serve as a reference implementation of the SAE J1699-3 OBD-II tests, using its own employees,⁴ or an independent contractor, specifically hired for such a task.⁵ But there is no dispute in this case that the SAE has not -- at present -- done so. The SAE remains focused on encouraging those Members participating in the Task Force, to prepare the prose Document. The SAE doesn’t develop software.

The mere fact that one or more SAE Members, who have developed software that automates the J1699-3 OBD-II tests, also happened to attend Task Force meetings, or participated in preparation of the Document, does not mean that the SAE automatically owns their computer software, any more than such participation would mean that the SAE owns every Member’s notes taken during meetings. See 17 U.S.C. § 201(a), (b) (copyright resides

8

Next, to the limited extent that the prose Document contains original copyrightable expression, see Kohus v. Mariol, 328 F.3d 848, 855-56 (6^th Cir. 2003) (adopting 2-part test from Sturdza v. United Arab Emirates, 281 F.3d 1287 (D.C. Cir. 2002)), then Title 17 affords specific, enumerated, rights to the author(s)⁶ of the prose Document. See 17 U.S.C. § 106. At the same time, the SAE J1699-3 OBD-II technical standard, itself, consists entirely of non-copyrightable ideas, not protectable expression. 17 U.S.C. § 102(b) (“In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”); Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349-50 (1991) (“[C]opyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work . . . . This principle, known as the idea/expression . . . dichotomy, applies to all works of authorship.”); Kohus, supra.

During the time that both Mike Drew (President of DrewTech) and Kerby Suhre were actively participating in the J1699-3 Task Force (Drew still participates actively), Suhre approached Mike Drew (Suhre’s boss), and asked for permission to begin working on some

9

Suhre subsequently worked on the Program, using DrewTech equipment, at DrewTech facilities, with input from Mike Drew, during working hours. Other Members of the Task Force made suggestions for changes to and improvements of the Program, but it was Suhre (and, later, other employees of DrewTech) that committed any changes to the program code. The Members of the Task Force unanimously approved the view that the Program should be “Open-Sourced,” because of the benefits of collaborative software development

10

DrewTech has registered the Program, and several improved versions of it, with the Copyright Office of the Library of Congress. See, e.g., Tabs A, B. Interestingly, the Copyright Office has made a special point of emphasizing on the registration forms that “Ideas [are] not copyrightable” -- meaning that neither the SAE nor DrewTech can claim exclusive ownership of the ideas necessary to comply with the J1699-3 OBD-II tests. Id. Ultimately, the license selected by the owner of the software Program (DrewTech, not the SAE) was the GNU General Public License. See Note 9, supra.

However, the SAE had other ideas about DrewTech’s Program.

The SAE’s staff (which evidently thinks that the SAE’s Membership exists for the benefit of the Staff -- to work for free on projects that the SAE Staff can then use as a source of revenue to hire more workers and pay themselves bigger salaries -- and the Staff is not really there for the benefit of the Membership), one day informed DrewTech’s management that DrewTech -- which had invested tens of thousands of dollars of employee time into developing the Program -- could expect to pay the SAE several thousand dollars per year, for a license to DrewTech’s own software, if DrewTech ever wanted to use the software commercially. DrewTech reasonably responded that the Program is GPLed -- which means that DrewTech, or Ford, or GM, or Honda, or anyone in the world can copy, and modify, and use the software -- free of charge -- so long as they satisfy the requirements of the GPL.

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LEGAL ANALYSIS

I. Summary Judgment Standard.

Summary “judgment shall be rendered forthwith if the pleadings . . . together with the [evidence] . . . show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(c). Rule 56(d) enables the Court to streamline trial by granting partial summary judgment:

[T]he court at the hearing of the motion, by examining the pleadings and the evidence before it and by interrogating counsel, shall if practicable ascertain what material facts exist without substantial controversy and what material facts are actually and in good faith controverted. It shall thereupon make an order specifying the facts that appear without substantial controversy, including the extent to which the amount of damages or other relief is not in controversy, and directing such further proceedings in the action as are just. Upon the trial of the action the facts so specified shall be deemed established, and the trial shall be conducted accordingly.

Id. Here, the Defendant’s Counterclaim should be dismissed because it is entirely without any valid legal basis, and trial on the Counterclaim would be an exercise in futility.

Under Rule 56, the moving party bears the initial burden of informing the Court of the basis of its motion. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The burden then

12

“There must be evidence on which the jury could reasonably find for the [non-movant].” Klepper, 916 F.2d at 342 (quoting Anderson, 477 U.S. at 252).

“[A]n adverse party may not rest upon the mere allegations or denials of his pleading, but his response, by affidavits or as otherwise provided . . . must set forth specific facts showing that there is a genuine issue for trial.” Celotex, 477 U.S. at 321 n.3. If the nonmoving party cannot muster sufficient evidence to make out its claim, a trial would be useless and the moving party is entitled to summary judgment as a matter of law. Id. at 331.

Thus, the SAE, as the non-movant must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co., 475 U.S. at 586-87 (citations omitted). All justifiable inferences are drawn in the non-movant’s favor. Anderson, 477 U.S. at 250 (emphasis added). But only if “reasonable minds could differ as to the import of the evidence” should DrewTech be denied summary judgment on the Counterclaim. See Anderson, 477 U.S. at 255 (emphasis added). When the record taken as a whole cannot “lead a rational trier of fact to find for the non-moving party,” there “is no genuine issue for trial.” Matsushita Elec. Indus. Co., 475 U.S. at 586-87 (citations omitted).

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We start with the time-honored idea/expression dichotomy:

If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it. He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density in any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation. . . .

Letter from Thomas Jefferson, to Isaac McPherson (Aug. 1813), reprinted in VI WRITINGS OF THOMAS JEFFERSON, at 180-181 (Washington ed.) (quoted in Bepex Corp. v. Black Clawson Co., 713 F.2d 202 (6 th Cir. 1983), and in Graham v. John Deere Co., 383 U.S. 1, 9 n.2 (1966)). This case revolves around a computer program, called “J1699.c” (the “Program”) which automates a set of government-mandated tests, to determine whether motor vehicle diagnostic computer equipment is compliant with OBD-II standards.

The government-mandated technical standards tests that the Program automates, are precisely the kind of “idea[s], procedure[s], process[es], system[s], method[s] of operation, concept[s], [or] principle[s]” that 17 U.S.C. § 102(b), specifically prohibits anyone (including the SAE) from claiming as exclusive property. Id.; Feist Pubs., Inc., 499 U.S. at 349-50; Mazer v. Stein, 347 U.S. 201, 217 (1954) (“Unlike a patent, a copyright gives no exclusive

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III. The SAE’S Website “Intellectual Property Policy” Does Not Make The SAE
Owner of DrewTech’s Program.

Needless to say, the administrative staff of the Society of Automotive Engineers have a very different perspective from that of President Jefferson. The SAE wants to view any ideas floating in the air at a Task Force or other meeting as the “intellectual property” 10 of the SAE – even if Congress has established a completely different set of rules in Title 17 of the United States Code. SAE’s “Intellectual Property Policy” 11 argument must be rejected – not only because it violates the Statute of Frauds in 17 U.S.C. § 204(a), but also because the SAE’s unilateral posting of such a “policy” in some remote corner of its Website, is categorically insufficient to establish any binding contract with any SAE Member.

The SAE’s “intellectual property” policy on its Website asserts:

SAE Intellectual Property Policy

Policy

11

Intellectual property is SAE's most valuable asset. The Society's Intellectual Property may only be used in a manner that furthers its purposes. It is the responsibility of staff to protect these assets and insure that they are used in accordance with this Policy.

Applicable sections of other SAE policies: * SAE Bylaws:

Article III, Section 7: SAE Emblem
Article XII, Section 6: Engineering Standards

* Technical Standards Board Governance Policy, Section 2.10 Patents Copyrights and Trademarks (April 1, 1998 version)

* Standard Operating Procedure, No. 300 “Rules for the External Release of SAE Mailing Lists.”

SAE owns and maintains the rights to its Intellectual Property.

SAE reserves the right to copyright any of its print, electronic products, databases, audio/visual products and any other subject matter covered by the Copyright Act. This is intended to protect SAE and its members from unauthorized copying and distribution of SAE Intellectual Property.

By participating in any SAE technical committee and/or participating in the creation and adoption of SAE's Intellectual Property, participants and committee members acknowledge that the copyright to such property, as defined in the Copyright Act (17 U.S.C. § 101 et. Seq.) resides in SAE. Such participants and committee members agree, if necessary, to execute any and all documents deemed necessary or appropriate by SAE to transfer and effectuate ownership of all such rights, including but not limited to copyrights, they may have in SAE Intellectual Property.

Individuals who participate in SAE technical committees and related activities may, from time to time, where appropriate, be required to sign an agreement acknowledging the transfer of any rights in SAE Intellectual Property to SAE. The rights granted to SAE by this assignment shall belong to SAE in perpetuity. It is SAE policy that the copyrights and other intellectual property rights of third parties be respected and not infringed by SAE or any of its committees,

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or any employee, member or other person acting on behalf of SAE.

Electronic Networks: The Copyright Act provides copyright protection for certain works fixed in any tangible medium of expression, now or later developed, from which they can be perceived, reproduced or otherwise communicated, either directly or with the aid of technology. Therefore, inputting, uploading, downloading, reproducing, or transmitting SAE Intellectual Property without SAE's prior written permission is prohibited, with the exception that SAE is not intending to limit the applicability of the “fair use” doctrine developed under the Copyright Act.

See http://www.sae.org/about/intelproperty/ >. In case there is any question, DrewTech has categorically rejected the SAE’s “policy” in writing and refused to sign over the Program. See Tab C. 12 Much more importantly, the “policy” has no legal effect.

A. Statute of Frauds:

Simply put, the SAE’s “policy” simply cannot transfer DrewTech’s copyright to the SAE, because 17 U.S.C. § 204(a) (the Copyright Act Statute of Frauds) requires such a transfer to be in writing and signed by the copyright owner:

A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.

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B. Browse-Wrap Unenforceability:

Separate from the statute of frauds, we also point out that the manner in which the SAE has elected to publish its “policy” is categorically insufficient to establish any enforceable obligations for any SAE members (including, without limitation, DrewTech).

Hidden far at the bottom of the homepage of the SAE Website is a tiny World Wide Web hyper-link, that says, “Intellectual Property Policy.” If and only if one notices and “clicks on” the buried link, one is treated to the SAE’s recently-revised policy. Because the policy is hidden behind a tiny hyperlink, at the bottom of the Website homepage, it is essentially invisible to most members. In particular, DrewTech and its management were completely unaware of the “policy” until the SAE brought it up in their court filings.

The courts have routinely distinguished “browse-wrap” policies (such as the SAE’s) from “click-wrap” policies, in which the existence of an offer is prominently brought to the attention of a Website visitor, and the visitor is required to take some affirmative step to express assent, to establish a contract. See, e.g., Sprecht v. Netscape Communications Corp., 150 F. Supp. 2d 585, 594-96 (S.D.N.Y. 2001); see also Pollstar v. Gigmania, Ltd., No. Civ-F00-5671 (E.D. Cal. Oct. 17, 2000). For a Website-mediated agreement to be enforceable (unless the Statute of Frauds requires even more), the SAE’s “policy” would need to be more like the “click-wrap” agreement addressed by the Second Circuit in Register.com, Inc. v.

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IV. The SAE Does Not Own DrewTech’s Program Because the Program Was
Written By DrewTech And Its Employees, Not By Any SAE Employees.

It is undisputed that the Program was never created by any SAE employee. Nor was it created by any independent contractor employed by the SAE or anyone but DrewTech. DrewTech certainly was not acting as an SAE contractor, when it developed the Program.

Rather, the Program was created by DrewTech and its employees – which means that the Program belongs to DrewTech (and not the SAE) as a matter of law:

§ 201 Ownership of copyright.

(a) Initial Ownership. – Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are coowner of copyright in the work.

(b) Works Made for Hire. – In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.

17 U.S.C. §§ 201(a), (b). See also 17 U.S.C. § 101 (defining “work made for hire”).

Because the SAE has no legitimate claim of ownership of the Program, its Counterclaim must be dismissed as a matter of law.

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CONCLUSION

For the foregoing reasons, Plaintiff respectfully prays for partial summary judgment, dismissing the Counterclaim of the Defendant.

March 22, 2004

___________________________
Eric C. Grimm (P58990)
CALLIGARO & MEYERING, P.C.
[address, phone, fax]

ATTORNEYS FOR PLAINTIFF
DREW TECHNOLOGIES, INC.

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¹The Program (J1699.c) is a work made for hire – but a work for hire made for DrewTech, not the SAE. A DrewTech employee was authorized to work on the Program, during business hours, using DrewTech equipment, on the understanding that all work would belong to DrewTech, and that DrewTech always intended to release the Program as Free or Open-Source Software (“FOSS”). The employee always was an employee of DrewTech, never an employee of the SAE. Thus, DrewTech owns the Program – not the SAE. 17 U.S.C. § 201(b).

²The EPA regulations can be obtained online via http://www.access.gpo.gov/nara/cfr/waisidx_03/40cfr86a_03.html >).

³Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349-50 (1991) (“[C]opyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work . . . . This principle, known as the idea/expression or fact/expression dichotomy, applies to all works of authorship.”); Harper & Row Pubs., Inc. v. Nation Enters., 471 U.S. 539, 556-57 (1985); Kohus v. Mariol, 328 F.3d 848, 855 (6^th Cir. 2003) (“It is axiomatic. . . that mere abstract ideas are not protectible . . . .”) (citing Mazer v. Stein, 347 U.S. 201, 217 (1954) (“Unlike a patent, a copyright gives no exclusive right to the art disclosed . . . .”)).

⁴If the software were developed by an SAE employee, then the copyright would actually belong to the SAE itself, due to the operation of 17 U.S.C. § 201(b).

⁵In order for the SAE, and not the contractor, to own the copyright, the SAE would need to spell that out in a written agreement with the software developer. 17 U.S.C. §§ 101, 201.

⁶The author(s) of the J1699-3 Document, according to 17 U.S.C. § 201(a), would appear to be the individual non–SAE-employee Members of the Task Force, who have volunteered their time to work on the Document. However, the issue of ownership of the J1699-3 Document does not need to be resolved here. DrewTech does not oppose the SAE’s plans to sell the Document itself, according to its ordinary customs and practices, after the Document is finalized.

⁷In correspondence with the SAE, we have analogized this computer software to James Madison’s Notes of Debates, taken during the Constitutional Convention, in 1787. Assuming (somewhat anachronistically) that the 1976 Copyright Act applied in 1787 – because it was Madison, himself, that fixed his personal notes in a tangible medium, Madison would be the owner (during the term of the copyright) of his Notes. The SAE’s apparent position – that “The Constitutional Convention” owns ideas floating in the air, during discussions among participants, and that Madison was a thief, when he reduced those ideas to writing and thereby acquired a copyright in the Notes – simply has no basis in law. See 17 U.S.C. §§ 102(a), 201(a).

⁸The Program is just one, particularized, expression of how to implement the J1699-3 OBD-II tests, through computer code (in this case, the “C” programming language). Other possible implementations (none of which infringe the J1699 Document, because they only rely on ideas – the technical standard itself – and not any copyrightable aspect of the Document) are too numerous to count. At least one other company has already developed a (proprietary) software implementation of the J1699-3 OBD-II standard, and claims that its software is not derivative in any way of the Program, developed by DrewTech. We do not believe that the SAE has demanded copyright royalties from the developer of the proprietary software.

⁹See Progress Software Corp. v. MYSQL, AB, 195 F. Supp. 2d 328, 329 (D. Mass. 2002) (Saris, J.) (discussing GNU General Public License); see also Planetary Motion, Inc. v. Techsplosion, 261 F.3d 1188, 1198-99 (11 th Cir. 2001).

¹⁰The term “intellectual property” is employed by the SAE in a rather haphazard way, to state a counter-legal conclusion (i.e., the SAE contends it “owns” not only works created by its employees, but also considers itself entitled to claim title to the “intellectual property” that, legally speaking, belongs to each of its Members, too), instead of tackling the more-difficult, yet important, question of what specific, exclusive rights, if any, exist, under specific bodies of law, governing (respectively) patents, copyrights, trademarks, and trade secrets.

¹¹The SAE “Intellectual Property Policy” has been amended during the time this lawsuit has been pending. This is the most recent version. Plaintiff, Drew Technologies, Inc., (“DrewTech”) never knew about any such “policy” prior to the time it was alleged in the Defendant’s Counterclaim. The “policy” can only be seen if one “clicks on” a tiny hyperlink, buried at the bottom of the homepage of the SAE Website. Most visitors to the SAE Website undoubtedly remain completely unaware of the “Intellectual Property Policy.”

¹²Letter from Eric C. Grimm to Thomas Wettach, at 1 (Feb. 10, 2004) (“In this regard, please also let me make clear on behalf of DrewTech and Mr. Michael Drew that neither DrewTech, nor any person employed by or affiliated with DrewTech . . . in any way accepts or consents to any of the ‘policies’ posted on the SAE International Website (and, in particular, any aspect of your ‘policy’ that purports to confiscate DrewTech’s intellectual property for the SAE’s financial enrichment). To the contrary, the position taken by the SAE, in the SAE’s ‘policy,’ is categorically rejected because it is completely unenforceable. Mike Drew and other DrewTech representatives absolutely will not be subject to any aspect of your client’s silly ‘policy’ when they continue to attend and participate in technical committee meetings. They will continue to retain all rights in all ‘intellectual property’ that they affix in any tangible medium – without transferring any of it to the SAE (except to the very limited extent they specifically and voluntarily do so in writing on a case-by-case basis).”).