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Declaration of Allison Amadia as text - Amendment 2 Didn't Transfer Copyrights
Saturday, April 21 2007 @ 06:26 PM EDT

Here's the Declaration of Allison Amadia [PDF] as text, thanks to Groklaw's very speedy feldegast. The declaration is attached to Novell's Motion for Summary Judgment on SCO's First Claim for Slander of Title and Third Claim for Specific Performance [PDF], which you can read about in detail in the previous article.

Amadia negotiated Amendment 2 on behalf of Novell back in 1996. At the time she was in-house counsel. A Novell executive, then CFO Jim Tolonen, signed the document (and he has provided a supporting declaration [PDF] as well), but she was the legal representative that negotiated it directly with Steve Sabbbath, her counterpart at Santa Cruz and it was she who explained it to Tolonen. She tells an interesting tale.

It seems that in 1996, Sabbath called her, and he told her that the APA, which she hadn't been involved in drafting, excluded the copyrights to UNIX and UnixWare and he claimed it shouldn't have. He wanted Novell to amend the APA to give the copyrights over to SCO. So she looked into what the intent had been.

First, she read the contract, and sure enough. There she saw the copyrights were excluded. Next she contacted the guy who actually drafted the APA, then at the law firm of Wilson, Sonsini, Tor Braham, who confirmed that the copyrights were excluded and has also provided a helpful a declaration[PDF], with many exhibits. So by then she had confirmed that the copyrights were excluded from the APA by intent.

Later, Sabbath sent her a draft of an Amendment 2. She copied that first draft into another document and saved it, and amazingly enough she is able to offer it now as Exhibit 1 all these years later. Man. Talk about digital preservation.

Anyway, the language Sabbath wanted was quite broad, and it would have had the result of accomplishing what he originally asked for, by excluding copyrights from the APA's "Excluded Assets" list.

She rejected that language, telling Sabbath that Novell wasn't going to transfer them. It was willing, though to confirm that SCO had a license to them. So, together they drafted a narrower Amendment 2 draft version, the one we are accustomed to seeing, with the "required for SCO to exercise its rights" language. You can now understand how the language ended up so strange. There were two lawyers, each pushing against the other. We've always wondered about that.

The new language was to be effective on October 16, 1996. Sabbath never brought up making it retroactive to the day the APA was signed in September of 1995, she testifies. Further, on the issue of intent, since she was there and negotiated the language, she is well positioned to speak to that, and it was not Novell's intent that Amendment 2 would transfer the copyrights, only that it would affirm that SCO had a license under the APA to use the copyrighted works in its business. Oh, and there was no bill of sale associated with Amendment 2 for the obvious reason that nothing was intended to transfer.

All of this testimoney rebuts SCO's alternative version, or versions, since it has at various times claimed that the APA transferred the copyrights, that the bill of sale did, that Amendment 2 did, and that Amendment 2 plus the bill of sale did. None of the above, this witness testifies, happened. The copyrights never transferred from Novell at all.

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

MORRISON & FOERSTER LLP
Michael A. Jacobs (pro hac vice)
Kenneth W. Brakebill (pro hac vice)
[Address]
[Phone]
[Fax]

ANDERSON & KARRENBERG
Thomas R. Karrenberg, #3726
John P. Mullen, #4097
Heather M. Sneddon, #9520
[Address]
[Phone]
[Fax]

Attorneys for Defendant & Counterclaim-Plaintiff Novell, Inc.

IN THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH, CENTRAL DIVISION

THE SCO GROUP, INC., a Delaware
corporation,

Plaintiff,

vs.

NOVELL, Inc., a Delaware corporation,

Defendant,

DECLARATION OF ALLISON
AMADIA

Case No. 2:04CV00139

Judge Dale A. Kimball

I, A. Allison Amadia declare as follows:

1. The statements made in this Declaration are based on my personal knowledge. In connection with this Declaration, I have also reviewed documents contemporaneous to the transaction discussed herein. I have attached two of these documents as Exhibits to this Declaration.

2. I am an attorney duly licensed to practice law in the state of California.

3. From 1995 through 1997, I was employed by Novell, Inc. as in-house corporate counsel. During this time, I was known by my maiden name, Allison Lisbonne.

4. In 1996, I negotiated Amendment No. 2 to the September 19, 1995 "Asset Purchase Agreement By and Between The Santa Cruz Operation, Inc. and Novell, Inc." ("Original APA"). In fact, I was the legal representative of Novell that directly interacted with Santa Cruz in negotiating Amendment No. 2. Jim Tolonen, Novell's Chief Financial Officer, was a Novell business executive assigned to Novell's Amendment No. 2 team. I kept Mr. Tolonen apprised of the negotiations and Mr. Tolonen signed Amendment No. 2 on Novell's behalf.

5. I negotiated Amendment No. 2 with Steve Sabbath, an in-house lawyer at Santa Cruz. I was acquainted with Mr. Sabbath because in 1996 I was also negotiating a dispute concerning Novell's right to enter into "buy outs" of UNIX System V license agreements.

6. During the summer of 1996, Mr. Sabbath telephoned me and raised an issue relating to the UNIX and UnixWare copyrights. He told me that the Original APA explicitly excluded copyrights to UNIX and UnixWare as assets being sold by Novell to Santa Cruz and that it shouldn't have. He wanted Novell to amend the Original APA to explicitly give Santa Cruz rights to copyrights in UNIX and UnixWare.

7. Because I was not involved in the negotiation and drafting of the Original APA, subsequent to my conversation with Mr. Sabbath, I tried to find out what the intent of the Original APA was concerning copyrights. First, I read the language in that contract and it confirmed the copyright exclusion Mr. Sabbath discussed. I saw that the Original APA had an

1

"Excluded Assets" list in Schedule 1. 1 (b) and that this list provided that certain "Intellectual Property" was excluded from the asset transfer, including "[a]ll copyrights and trademarks, except for the trademarks UNIX and UnixWare." I also saw that the Original APA had an "Assets" list in Schedule 1.1 (a) that specifically identified the "Intellectual Property" included in the assets to be transferred by Novell to Santa Cruz; that list only identified certain UNIX and UnixWare trademarks. In addition, I contacted Tor Braham, a lawyer at the law firm of Wilson, Sonsini, Goodrich & Rosati and the principal drafter of the Original APA. He confirmed to me the fact that Novell had not transferred ownership of the UNIX and UnixWare copyrights to Santa Cruz in the Original APA.

8. Later in the summer of 1996, Mr. Sabbath sent me a first draft of Amendment No. 2. I copied Mr. Sabbath's initial proposal into a document that I saved on Novell's computer system, a true and correct copy of which I attach as Exhibit 1 to this Declaration. On the issue of copyrights, Mr. Sabbath proposed that Section V of Schedule 1.1(b) be "revised" from "All copyrights and trademarks, except for the trademarks UNIX and UnixWare" to read:

All copyrights and trademarks, except for the copyrights and trademarks owned by Novell as of the date of this Amendment, which pertain to the UNIX and UnixWare technologies and which SCO has acquired hereunder ...

(Exhibit 1 at 1.)

9. This initial Santa Cruz proposal was quite broad. First, it proposed that copyrights owned by Novell as of the date of Amendment No. 2 and that pertained to UNIX and UnixWare technology be excised from the Original APA's list of Excluded Assets. Further, it provided that Santa Cruz "has acquired" this set of copyrights through Amendment No. 2.

10. I rejected Mr. Sabbath's proposal. I told Mr. Sabbath that while Novell was willing to affirm that Santa Cruz had a license under the Original APA to use Novell's UNIX and UnixWare copyrighted works in its business, Novell was not going to transfer ownership of any copyrights to Santa Cruz through Amendment No. 2.

2

11. Mr. Sabbath and I subsequently negotiated a final copyright-related provision reflecting that intent. The agreed-upon Amendment No. 2 was more narrow and restrictive than the original Santa Cruz proposal. For example, the final Amendment No. 2 did not include any provision that Santa Cruz "has acquired" any copyrights. In addition, instead of Santa Cruz's broad proposal to make an exception for copyrights "which pertain to UNIX and UnixWare technologies," the final Amendment No. 2 limited this exception to copyrights that are "required for SCO to exercise its rights with respect to the acquisition of UNIX and UnixWare technologies." A true and correct copy of the final, executed Amendment No. 2 is attached hereto as Exhibit 2.

12. In final form, Paragraph A of Amendment No. 2 provided that Section V of Schedule 1. 1 (b)'s Excluded Asset list would be "revised" from "All copyrights and trademarks, except for the trademarks UNIX and UnixWare" to:

All copyrights and trademarks, except for the copyrights and
trademarks owned by Novell as of the date of the Agreement
required for SCO to exercise its rights with respect to the
acquisition of UNIX and UnixWare technologies ...

(Exhibit 2 at 1.)

13. As indicated on the first page of the signed Amendment No. 2, Amendment No. 2's revision of Section V of Schedule 1.1(b) was effective "as of the 16th day of October 1996." (Exhibit 2 at 1.) During the negotiations, Mr. Sabbath did not propose to me that Amendment No. 2's revision of Section V of Schedule 1.1(b) would be retroactively effective as of the date the Original APA was executed in September 1995.

14. Based on my personal involvement in the negotiations and drafting of Amendment No. 2, I am well-situated to describe the intent of Amendment No. 2. Amendment No. 2 was not intended to alter the Original APA's copyright ownership exclusion. Amendment No. 2 was not intended to transfer ownership of any UNIX or UnixWare copyrights owned by Novell. As I mentioned above, Amendment No. 2 affirmed that Santa Cruz had a license under the Original APA to use Novell's UNIX and UnixWare copyrighted works in its business.

3

15. During the negotiations, Mr. Sabbath and I did not discuss what, if any, specific copyrights might be "required" for Santa Cruz to exercise its rights. Should, after Amendment No. 2, Santa Cruz believe its license to use Novell's copyrighted works was insufficient and that it needed ownership of any particular UNIX or UnixWare copyright rights because ownership of such copyrights was "required" to run its business, I believe Santa Cruz would have to have made such a request to Novell. Indeed, as I've discussed, Novell remained the owner of the UNIX and UnixWare copyrights after Amendment No. 2.

16. To the extent that SCO is now contending that Amendment No. 2 acted to transfer ownership of the UNIX and UnixWare copyrights to Santa Cruz, that contention is inaccurate. That was not the intent during the negotiations of Amendment No. 2.

17. There was no Bill of Sale or other similar legal document executed in connection with Amendment No. 2 that transferred ownership of any UNIX or UnixWare copyrights from Novell to Santa Cruz. The reason is simple: Amendment No. 2 was not intended to transfer ownership of any copyrights to Santa Cruz.

18. To the extent that SCO is now contending that Amendment No. 2 was meant to clarify or confirm that the parties intended to transfer ownership of the UNIX and UnixWare copyrights to Santa Cruz in the Original APA, that contention is also inaccurate. That was not the intent during the negotiations of Amendment No. 2. From the outset of the Amendment No. 2 negotiations, Mr. Sabbath was not seeking a clarification that the Original APA gave copyright ownership to Santa Cruz. On the contrary, Mr. Sabbath wanted Novell to change the Original APA in 1996 to give Santa Cruz ownership of copyrights in UNIX and UnixWare because the Original APA did not so provide. I rejected his proposal and ultimately we agreed on the language that became Paragraph A of Amendment No. 2.

4

I declare under penalty of penury of the laws of the United States that the foregoing is true and correct.

Executed on this 18th day of April, 2007 in Santa Cruz, California.

___[Signature]___
A. Allison Amadia

5

CERTIFICATE OF SERVICE

I HEREBY CERTIFY that on this 20th day of April, 2007, 1 caused a true and correct copy of the foregoing DECLARATION OF ALLISON AMADIA to be served to the following:

Via CMIECF:

Brent O. Hatch
Mark F. James
HATCH JAMES & DODGE, P.C.
[address]

Stuart H. Singer
William T. Dzurilla
Sashi Bach Boruchow
BOIES, SCHILLER & FLEXNER LLP
[address]

David Boies
Edward J. Normand
BOIES, SCHILLER & FLEXNER LLP
[address]

Devan V. Padmanabhan
John J. Brogan
DORSEY & WHITNEY, LLP
[address]

Via U.S. Mail, postage prepaid:

Stephen N. Zack
BOIES, SCHILLER & FLEXNER LLP
[address]

/s/ Heather M Sneddon

6


  


Declaration of Allison Amadia as text - Amendment 2 Didn't Transfer Copyrights | 107 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections
Authored by: snorpus on Saturday, April 21 2007 @ 06:38 PM EDT
Misteak --> Mistake in the title works quite well.

---
73/88 de KQ3T ---
Montani Semper Liberi
Comments Licensed: http://creativecommons.org/licenses/by-nc/2.0/

[ Reply to This | # ]

Off-topic
Authored by: snorpus on Saturday, April 21 2007 @ 06:40 PM EDT
Clicky links, if you please.

---
73/88 de KQ3T ---
Montani Semper Liberi
Comments Licensed: http://creativecommons.org/licenses/by-nc/2.0/

[ Reply to This | # ]

Declaration of Allison Amadia as text - Amendment 2 Didn't Transfer Copyrights
Authored by: Anonymous on Saturday, April 21 2007 @ 07:12 PM EDT
This one in particular is going to leave a mark. Ouch!! -- take that, SCO.

This declaration, in conjunction with the admissions that Amadia's counterpart
from Santa Cruz, Steve Sabbath makes in his own declaration (and his honesty is
noted and very much appreciated), sticks a fork into the wishful-thinking,
this-is-the-contract-I-wish-I-had-signed, legal theory of Boies and company.

[ Reply to This | # ]

Well, that about wraps it up for "Malice"
Authored by: Jude on Saturday, April 21 2007 @ 07:27 PM EDT
If one of Novell's own lawyers is saying this stuff under penalty of perjury,
SCO's going to have a wretched time trying to show that Novell acted with malice
when they said SCO didn't get copyrights. IANAL, but I think this pretty much
torpedoes Slander of Title.

[ Reply to This | # ]

See that fuzzy spot disappearing on your screen?
Authored by: kawabago on Saturday, April 21 2007 @ 09:24 PM EDT
It's SCO's hopes evaporating.

[ Reply to This | # ]

Declaration of Allison Amadia as text - Amendment 2 Didn't Transfer Copyrights
Authored by: Anonymous on Saturday, April 21 2007 @ 09:29 PM EDT
<<<
I negotiated Amendment No. 2 with Steve Sabbath, an
in-house lawyer at Santa Cruz.
>>>

What does Steve Sabbath have to say about? Does his
declaration support Allison Amadia's?

[ Reply to This | # ]

Tenuous copyrights
Authored by: arch_dude on Saturday, April 21 2007 @ 09:36 PM EDT
I believe that the APA and its amendments are ambiguous for a reason. Novell did
not know exactly waht rights it held in UNIX, so it did not want to describe
them explicitly. Therefore the APA excludes "all copyrights" except
for an explicit list of specific copyrights. The explicit list is very strange.
The only explanation I can think of is that this is a list of copyright for
which Novell had explicit claim, via explicit prior copyright registration by
AT&T and/or USL. The reason that the set happend to be explicitly registered
is that these are copyrights in material that had been published by traditional
means as peper books.

Any other copyright claim by Novell was implicit, based on the Berne convention
and USC 204 rules that a copyright exists even when the copyright is not
explicitly registered. This is why SCOG registered the copyrights in 2003(?) and
Novell subsequently counter-registered the same copyrights.

In actual fact, Novell did not get an explicit set of registered copyrights from
USL, and therefore could not convey an explicit set of registered copyrights to
Santa Cruz, except for the trivial set that was explicitly listed in the APA.

I believe that he APA is vague precisely because both Novell and Santa Cruz knew
that the UNIX copyright status was tenuous.

Note "all copyrights" is a valid term, even if the set of "all
copyrights" is the null set.

[ Reply to This | # ]

I hope she's learned from this...
Authored by: Anonymous on Saturday, April 21 2007 @ 09:37 PM EDT
IANAL, but I've been part of many contract negotiations, and I always find
pieces that need rewording, even on 'final' drafts. I can't see how anyone
would have agreed to such vague wording.

Next time someone calls and says 'hey, we'd like to change that contract we
signed', after doing your due diligence, just say 'sorry'.

ie What did Novell gain by the Amendment?

[ Reply to This | # ]

Are you sure she is a lawyer?
Authored by: Anonymous on Saturday, April 21 2007 @ 09:57 PM EDT
Are you sure she is a lawyer? Her declaration seems straightforward and in clear
English, she must be an imposter :)

[ Reply to This | # ]

Declaration of Allison Amadia as text - Amendment 2 Didn't Transfer Copyrights
Authored by: Harry Nicholls on Saturday, April 21 2007 @ 10:23 PM EDT
These declarations of Allison Amadia and Tor Braham were really great reads.
Full of things that seem to put a lot of perspective to the "intent" of the
parties. After reading these, I just kept thinking about how SCO just got
"sandboxed" by those drafts and "redlined" prior APA versions from those
lawyers' files.

Harry Nicholls

[ Reply to This | # ]

Is Steve Sabbath's original draft the source of SCO's position?
Authored by: Anonymous on Saturday, April 21 2007 @ 10:36 PM EDT
I've wondered about the source of some of their statements such as Novell only
having an interest in binary royalties, not source code even though that
distinction does not appear to be in the APA. The view that the copyrights were
transfered is supported by this draft as well. SCO seems to be proceeding on
the basis that Sabbath's original draft is somehow part of the agreement.

[ Reply to This | # ]

Amendment 2 Didn't Transfer Copyrights
Authored by: SilverWave on Sunday, April 22 2007 @ 04:29 AM EDT
Oh dear poor SCOG heh heh...

This has got to be a body blow to their case...Next!

---
Ubuntu is like a breath of fresh air.
Free yourself
Year1 Use foss apps as replacements ff tb ooo
Year2 Ubuntu dual boot
Ubuntu user as of 181206

[ Reply to This | # ]

So, will SCO quietly skulk home with their tails between their legs?
Authored by: DaveJakeman on Sunday, April 22 2007 @ 06:20 AM EDT
Oh no!

Neither inconvenient facts nor the bothersome truth will have any bearing on
SCO's forthcoming vociferous reply. We've seen how they won't let go of a minor
point somewhat fatal to them in SCO vs. IBM - lack of specific evidence - so
let's see how this one turns out.

I predict it will be long, rambling and difficult to comprehend, yet will appear
to refract the light of truth into self-cancelling interference patterns.

It should be interesting to see how Novell deal with it.

---
Only two things are infinite: the universe and human stupidity and I'm not
sure about the former. -- Einstein

[ Reply to This | # ]

Exactly what I've been saying
Authored by: GLJason on Sunday, April 22 2007 @ 02:10 PM EDT
14. Based on my personal involvement in the negotiations and drafting of Amendment No. 2, I am well-situated to describe the intent of Amendment No. 2. Amendment No. 2 was not intended to alter the Original APA's copyright ownership exclusion. Amendment No. 2 was not intended to transfer ownership of any UNIX or UnixWare copyrights owned by Novell. As I mentioned above, Amendment No. 2 affirmed that Santa Cruz had a license under the Original APA to use Novell's UNIX and UnixWare copyrighted works in its business.

Amendment #2 didn't transfer exclusive copyrights, it just validated that SCO was able to make derivative works (creating the merged product of OpenServer and UnixWare) and that they were able to copy and distribute SVRX code in order to manage the existing SVRX contracts (when a licensee requested more copies for instance). In its original form, the copyright exclusion would seem to prevent Santa Cruz from exercising any rights governed by copyright law, when the APA was clearly intended to license them these certain rights.

[ Reply to This | # ]

Declaration of Allison Amadia as text - Amendment 2 Didn't Transfer Copyrights
Authored by: bakkerM on Sunday, April 22 2007 @ 05:05 PM EDT
so they (sco) knew they had no rights in 97. They were told (by the explanary
ammendment 2) they got no rights,
but still they started this mess???

isn't that evil intent or something, which law should punnish?

kr martin

[ Reply to This | # ]

Was amendment 2 good legal language?
Authored by: Anonymous on Sunday, April 22 2007 @ 08:49 PM EDT
I'm a curious if amendment 2 is good legal language.
Is the intended meaning clear to a knowledgeable reader?
How could it have been written to make the meaning clearer?

IANAL, so amendment 2 sounds like it must include some copyrights, since there
is an exception to its exclusion of all copyrights. "All copyrights"
appears to be a homogeneous set containing only copyrights. An exception to the
exclusion if "all copyrights" should logically be an inclusion of
"some copyright". Certainly, it doesn't make logical sense to exclude
anything other than some copyrights from the set of all copyrights.

I've learned from Groklaw that the amendment doesn't meet the requirements of a
writing to transfer copyrights, so that interpretation is invalid.

Is the intended meaning clear to a knowledgeable reader?
To paraphrase Sherlock Holmes, if you know what it doesn't mean, is it clear
what it does mean?

If its not clear, how should it have been written?
Even if it is clear, how should it have been written to be clear to a less
knowledgeable reader?

Since no copyrights were being transferred, maybe the amendment read
"however" instead of "except"?

Excludes... all copyrights and trademarks, except the
Unix and Unixware trademarks. However, Santa Cruz is
deemed to have a license to those rights required to
carry out the business as described herein.

[ Reply to This | # ]

Declaration of Allison Amadia as text - Amendment 2 Didn't Transfer Copyrights
Authored by: AceBtibucket on Monday, April 23 2007 @ 09:00 AM EDT
IANAL, but this certainly seems to be a rather large stake through the heart of
the SCO claims. And, seems to put them on the hook for the $25m. It will be
utterly fascinating to watch the dance around this.

[ Reply to This | # ]

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