decoration decoration
Stories

GROKLAW
When you want to know more...
decoration
For layout only
Home
Archives
Site Map
Search
About Groklaw
Awards
Legal Research
Timelines
ApplevSamsung
ApplevSamsung p.2
ArchiveExplorer
Autozone
Bilski
Cases
Cast: Lawyers
Comes v. MS
Contracts/Documents
Courts
DRM
Gordon v MS
GPL
Grokdoc
HTML How To
IPI v RH
IV v. Google
Legal Docs
Lodsys
MS Litigations
MSvB&N
News Picks
Novell v. MS
Novell-MS Deal
ODF/OOXML
OOXML Appeals
OraclevGoogle
Patents
ProjectMonterey
Psystar
Quote Database
Red Hat v SCO
Salus Book
SCEA v Hotz
SCO Appeals
SCO Bankruptcy
SCO Financials
SCO Overview
SCO v IBM
SCO v Novell
SCO:Soup2Nuts
SCOsource
Sean Daly
Software Patents
Switch to Linux
Transcripts
Unix Books
Your contributions keep Groklaw going.
To donate to Groklaw 2.0:

Groklaw Gear

Click here to send an email to the editor of this weblog.


To read comments to this article, go here
Declarations of Vuksanovich, McDonough, Nelson, Swanson, Kistenberg, Frasure, and Green; & Frasure Deposition
Thursday, October 07 2004 @ 10:14 AM EDT

Here are the declarations of Stephen D. Vuksanovich, Scott Nelson, Richard A. McDonough III, Robert C. Swanson, Ira Kistenberg, David Frasure, and Geoffrey D. Green, which IBM submitted in support of their motion for partial summary judgment on the breach of contract claims.

They all say essentially the same things:

  • that they were in some way involved in the AT&T-IBM license agreements, and/or the AT&T-Sequent agreements, or knew the AT&T policies regarding license terms and thus have firsthand knowledge of the Unix System V licenses,
  • that AT&T never claimed rights over code the licensees wrote themselves or ownership or control over modifications or derivative works prepared by its licensees, except to the extent that the licensed UNIX software product was included in such modifications or derivative works,
  • that there was one standard license for everyone, whether or not there was a side letter, from day one, and the meaning of the terms didn't alter,
  • that when the licenses speak about "SOFTWARE PRODUCT" they referred to UNIX System V source code and related materials, not modifications or derivative works.

Significantly, four of them are (or were at relevant time periods) AT&T employees. The unanimity with which they speak seems to pull the rug out from under SCO. How can they ask for intermediate AIX versions and comments to try to trace code from UNIX System V to AIX to Linux, if the end result has no original System V code in it, when everyone who was there negotiating and signing the licensing agreements testifies that IBM and Sequent were free to do as they pleased with their own code, including modifications and derivative code, as long as no System V code remained?

And IBM is quite thorough, answering all the "But what about. . ." footnotes you and I ever thought of: Does the fact that Sequent didn't have the side letter mean they had lesser rights? "No", answers the Declarations chorus. Did the $ echo newsletters mean that only licensees after that date had freedom to use their own code any way they wanted, but those earlier didn't unless they signed a new contract? "No", says the Declarations chorus. Was there a difference between IBM's license terms and Sequent's? "No." Etc. One declarant even tells us that Dynix was partly written by third parties, with the obvious implausible implication that if SCO's interpretation of the license were accurate, it would mean that they assert control not only over Dynix code written by Sequent, but even over code written by outsiders, code merely licensed by Sequent.

It's really devastating to SCO's position. They have tried to undermine the impact of the chorus by picking out one or two, alleging they are not to be believed for one reason or another. But even if you granted them those few, and I personally don't, the rest of the chorus remains, a group of those who were there at the time and have firsthand knowledge, all united in saying that SCO has apparentlly misunderstood the agreements and that SCO's theory of the case doesn't match the meaning of the agreements as these men understood them. I guess it is unsurprising that SCO got confused, if that is the problem, since SCO was not in any way involved in the negotiation or signing of these documents. AT&T was. But, since SCO says they are the successor-in-interest to AT&T, I can't help but ask why they didn't first contact AT&T and ask about the interpretation of the contracts, prior to bringing this action. It seems such a natural first step.

The testimony here is that IBM was told by AT&T that it was free to use, copy, modify, and distribute any code that they themselves wrote, that AT&T did not assert ownership or control over modifications or derivative works prepared by its licensees, except to the extent that the licensed UNIX software product was included in such modifications or derivative works, and that Section 2.01 didn't restrict them at all, except with respect to UNIX System V code. With that being the understanding between IBM and AT&T (and Sequent and AT&T)-- and these AT&T individuals say that is what they told IBM (and Sequent) -- on what basis can SCO claim that IBM (or Sequent) has harmed them or breached their contracts? And if they didn't breach their contracts, then on what basis did SCO "terminate" their licenses? And if they didn't have the right to terminate the licenses, what happens to SCO's claim of copyright infringement post-"termination"? You can see how much is at stake.

It's no wonder SCO frantically begged the court for more time to answer. Where, oh where, can they find rebuttal evidence or anyone to dispute this testimony? From the BSDi case? Not really. That wasn't about System V at all, so the licenses would presumably be quite different. I really can't see what they can possibly say to undermine this testimony, though I await their filing. Unless they can present something that contradicts this effectively, I can't see on what basis the court would grant them further AIX and Dynix code. I could be missing something, but what would the justification be? If the licensees were free to copy, use, distribute and disclose their own code, as long as System V code was not disclosed with it, it doesn't matter how similar or whatever ideas, structures, methods, blah blah are. The licensees are free.

Another thing I noticed. Several of the declarations use the phrase "except as otherwise permitted by the license agreements" when talking about restrictions on licensees' using, copying, distributing or disclosing System V code. I think that refers to the wording in the contract that licensees did not have to protect code, from a trade secret perspective, if it had already been disclosed to the public by entities others than the licensees. So, if there were books printed with the code, and there were, presumably that code would then be free of those restrictions.

We also have the Deposition of David Frasure. In the deposition, you will note three lawyers participating. Scott Gant of Boies Schiller, who participated in the deposition of Otis Wilson ("Where is Dr. Freud when we need him?") and who again represents SCO, but this time IBM is represented not by David Marriott but by Kris Kao of Cravath, Marriott's firm. And David Frasure has his own lawyer there, James Szymanski of Harkins Cunningham. If anyone can do a transcription, that would be lovely. It's a scan of a paper document, and it's quite hard to read, I'm afraid, but it's better than nothing and it is legible.

Here are some samples from the declarations:

  • David Frasure, who personally negotiated the IBM Software Agreement, side letter, the Sublicensing Agreement, and the Substitution Agreement and the Sequent Software Agreement, Sublicensing Agreement and Substitution Agreement, as national sales and licensing manager at AT&T Technologies, a subsidiary of AT&T, with responsibility for licensing UNIX software:

    "12. Each of these provisions [2.01, 2.05, 4.01, 7.06(a), 7.10] was intended to define the scope of the licensee's rights only with respect to the "SOFTWARE PRODUCT" or "SOFTWARE PRODUCTS", in other words, the UNIX System V source code and related materials. We did not intend these provisions to restrict our licensees' use, export, disclosure or transfer of anything besides the licensed UNIX System V source code and related materials. It would be inconsistent with the language of the software agreements, and the intentions of AT&T Technologies in licensing UNIX System V, to say that the provisions apply, for instance, to our licensees' own code (that, for example, they developed.) . . .

    "14. In early versions of the standard software agreement, again including the IBM Software Agreement and the Sequent Software Agreement, Section 2.01 contained the following language regarding modifications and derivative works:

    Such right to use includes the right to modify such SOFTWARE PRODUCT and to prepare derivative works based on such SOFTWARE PRODUCT, provided the resulting materials are treated hereunder as part of the original SOFTWARE PRODUCT.
    As we assured our licensees, this language does not, and was never intended to, give AT&T Technologies the right to assert ownership or control over modifications or derivative works prepared by its licensees, except to the extent of the licensed UNIX System V source code that was included in such modifications or derivative works. The term 'resulting materials' in the context of the software agreements was intended only to mean those portions of a licensees' modifications or derivative works that included the licensed UNIX System V source code.

    "15. Obviously, any materials created by the licensees that could not even be considered modifications or derivative works of UNIX System V were not subject to the software agreements at all. Licensees were free to use and disclose any such materials.

    "16. As I understood it, and as I believe AT&T Technologies intended it at the time, Section 2.01 did not in any way expand the scope of the software agreement to restrict our licensees' use, export, disclosure or transfer of their own original code, even if such code was contained in a modification or derivative work of UNIX System V. The purpose of the software agreement was to protect AT&T Technologies' UNIX System V source code, and was never meant to encumber our licensees' own work."

  • Stephen D. Vuksanovich, originally with Western Electric, but sometimes on loan to Bell Labs working on a classified military project, and then from 1984 to 1993 account representative responsible for licensing UNIX software and related materials, first with AT&T Technologies and then with UNIX System Laboratories (USL) and finally with Novell. He was account representative for the IBM account with firsthand knowledge of the agreements and later account representative for the Sequent account after Ira Kistenberg (whose declaration we also have) left the licensing group:

    "12. . . . These provisions [2.01, 2.05, 4.01, 7.06(a), 7.10] were only meant to define the scope of our licensee's rights with respect to the "SOFTWARE PRODUCT" or "SOFTWARE PRODUCTS", in other words, the UNIX System V source code and related materials. As I told the licensees for whom I was responsible, we did not intend these provisions to restrict our licensees' use, export, disclosure or transfer of any source code that our licensees developed on their own. During the months we spent negotiating the IBM Agreements, we made this very clear to IBM.

    "13. Our standard software agreements also gave licensees the right to modify UNIX System V source code and to prepare derivative works based upon the code. As I believe we intended the agreements, and as I told our licensees, our licensees owned their modifications and derivative works they prepared based on UNIX System V, and were therefore permitted to do as they wished with those modifications and derivative works, as long as they treated those portions of the modifications or derivative work consisting of any UNIX System V source code the same way they treated the UNIX System V source code that we provided to them. I recall that during our negotiations IBM specifically wanted to make sure that IBM, and not AT&T, would own and control code that was developed by or for IBM, even if that code was mixed with AT&T's UNIX System V code in a product. I assured IBM that we had the same understanding. . . .

    "16. As I mentioned, IBM was one of our licensees that was particularly interested in clarifying that it owned the code that it developed, even if it was meshed with UNIX System V. We therefore gave IBM written clarification of this in the side letter agreement, which I participated in negotiating with IBM.. . .

    "17. In fact, since so many licensees had requested clarification of Section 2.01 of the standard software agreement in particular, we ultimately decided to change the language of Section 2.01 to better reflect what we had always understood the language to mean and what we always told our licensees the language meant.

    "18. In early 1985, therefore, at seminars hosted by AT&T Technologies and in a newsletter called '$ echo', we told our licensees that we would be modifying the language of our standard software agreements to clarify even further that licensees owned their modifications and derivative works, except for the licensed UNIX System V source code included in such modifications and derivative works. . . .

    "23. An example of the revised language referred to in the '$ echo' newletter appears in Section 2.01 of a software agreement between AT&T Information Systems, Inc. and The Santa Cruz Operation, Inc. ('Santa Cruz') entered into in May 1987, a true and correct copy of which is attached hereto as Exhibit 10.

    "24. The agreement with Santa Cruz includes the following language:

    Such right to use includes the right to modify such SOFTWARE PRODUCT and to prepare derivative works based on such SOFTWARE PRODUCT, provided that any such modification or derivative work that contains any part of a SOFTWARE PRODUCT subject to this Agreement is treated hereunder the same as such SOFTWARE PRODUCT. AT&T-IS claims no ownership interest in any portion of such a modification or derivative work that is not part of a SOFTWARE PRODUCT. (emphasis added).

    "This revised language was intended only to clarify the original meaning of Section 2.01 in the standard software agreement, not to change it. We interpreted Section 2.01 of all of our software agreements the same way.

    "25. When we used the term 'ownership', both in our conversations with our licensees and in our agreements, we meant ownership in every sense of the word. When we said to our licensees that they owned their code and we owned our code, we meant that our licensees were free to do whatever they wanted with their own code. . . .

    "28. From time to time, AT&T Technologies in fact desired to integrate into UNIX System V software technology developed by one of our licensees for its own sublicensed product. In such instances, we entered into a cooperative development agreements with the licensees because, in the absence of such an agreement, we did not have the rights to the works prepared by the licensee, even if they were modifications or derivative works of UNIX System V. Under the license agreements, we did not even have access to the modifications and derivative works developed by our licensees in either source or object code form.

    "29. . . . IBM and Sequent are free to use, export, disclose or transfer AIX and Dynix/PTX source code, so long as they do not export, disclose or transfer any portions of the licensed UNIX System V source code that might be contained therein.

    "30. I understand that plaintiff claims that IBM and Sequent have breached their license agreements with AT&T Technologies by improperly using, exporting, disclosing or transferring AIX and Dynix/PTX source code, irrespective of whether IBM or Sequent has disclosed any specific protected source code from UNIX System V. At least as I understand the IBM Agreements and the Sequent Agreements, that is completely inconsistent with what the parties intended and discussed during the negotiation of the agreements."

  • Scott Nelson, IBM's Manager of the NUMA-Q Transition Engineering team:

    "4. Each release of the Dynix operating system consists of millions of lines of source code. For example, the latest versions of the Dynix base operating system and the other layered products that constitute the Dynix operating system together contain approximately 30 million lines of source code.

    "5. Dynix contains code that was written by Sequent or IBM software engineers (or outside contractors retained by Sequent or IBM) for Dynix and code written by third parties and licensed to Sequent or IBM for inclusion in Dynix."

  • Richard A. McDonough III, from 1984 through 1986 Division Counsel of the Systems Product Division at IBM and responsible for negotiating and executing the license agreements with AT&T on behalf of IBM:

    "12. . . . The language in the standard software agreement relating to the treatment of resulting materials did not give AT&T Technologies the right to assert ownership or control over modifications or derivative works prepared by its licensees, except to the extent that the licensed UNIX software product was included in such modifications or derivative works. I understood this language to mean that licensees owned their modifications and derivative works and were permitted to use or disclose them as they might choose, so long as any modification or derivative work containing any part of an AT&T Technologies-licensed software product was treated the same as an AT&T Technologies-licensed software product under the license agreements.

    "13. . . . They indicated that AT&T Technologies did not wish to assert ownership or control over modifications and derivative works prepared by or for IBM or by any other of AT&T Technologies' licensees, only over any portion or portions of licensed software products provided by AT&T Technologies included in any such modifications or derivative work. . . .

    "It is my understanding that IBM's AIX products include some licensed UNIX System V source code. However, I do not know whether AIX is so similar to UNIX System V that it may properly be viewed as a 'modification' or a 'derivative work' based on UNIX System V. In any event, as I understood the AT&T Agreements, IBM is free to use, copy, distribute, or disclose AIX (including source code), provided that it does not copy, distribute or disclose any UNIX System V source code or other licensed software products provided by AT&T Technologies that may be contained therein (except as otherwise permitted by the AT&T Agreements). . . .

    "Based on my role in negotiating and executing the attached AT&T Agreements, I cannot understand the basis for the plaintiff's contentions that the AT&T Agreements restricted IBM's freedom of action with respect to any programming code, source code or otherwise, independently developed by IBM or its contractors. There is absolutely no way that IBM would have entered into an agreement with AT&T giving it the right to control IBM code merely because that code was or had once been associated with AT&T code in an IBM product. Never would we have knowingly agreed to a provision that gave AT&T the right to control what IBM did with its own code (or for that matter the code of third parties). . . .

    "19. . . . the parties were of the same mind: the agreements would not prevent IBM from doing as it pleased with its own code so long as it did not disclose AT&T UNIX System V code; the agreements would not interfere with IBM's right to use or disclose non-UNIX System V code, even if it had once been associated with UNIX System V code."

  • Roger Swanson, from 1983 to 1999 at Sequent, Director of Software Engineering and thus directly involved in negotiating Sequent's licensing agreements with AT&T:

    "8. . . . I did not understand the Software Agreement to restrict Sequent's use, export, disclosure or transfer of anything other than such UNIX System V code, and certainly not any code written by Sequent for any of its own software programs. . . .

    "11. As a small company at the time, it would not have made any sense for Sequent to have entered into an agreement that gave AT&T Technologies control over the source code that we developed for our own software programs. I never would have agreed to a contract that would grant AT&T Technologies rights in Sequent's proprietary code, as that source code was the core of Sequent's software business.

    "12. As AT&T Technologies explained the agreements to me, Sequent was free to use, export, disclose or transfer all of the code contained in any modifications or derivative works of UNIX System V developed by Sequent, provided that Sequent did not improperly use, export, disclose or transfer any portion of the UNIX System V code we were licensing from AT&T Technologies (except as otherwise permitted by the licensing agreements).

    "13. . . . In any case, as I understood the AT&T Agreements, Sequent was free to use the original source code it developed for Dynix and Dynix/ptx in any way it desired, provided that Sequent treated any UNIX System V source code that might be contained therein consistent with the terms of the AT&T Agreements."

  • Ira Kistenberg, who from 1984 to 1988 was an account executive at AT&T Technologies, and one of his accounts was the Sequent account. Note that he reported to David Frasure, but after Frasure left AT&T, Kistenberg remained, reporting to a Steve Edson, and Kistenberg negotiated the Sequent license agreements, so this is firsthand knowledge being testified to. He says he negotiated the license agreements and prepared the license documents for the signature of either Otis Wilson or Mr. Frasure.:

    "6. As a general rule, we at AT&T Technologies intended to treat all of our licensees in the same way. We never intended to give any one of our licensees an edge over another licensee. . . .

    10. . . . As AT&T Technologies intended the agreements, and as we told our licensees, the licensees owned the modifications and derivative works they prepared based on UNIX System V, and could do whatever they wanted with those modifications and derivative works, as long as they treated those portions of the modifications or derivative work consisting of any UNIX System V source code the same way they treated the UNIX System V source code that we provided to them. . . .

    12. In my understanding, Section 2.01 did not in any way expand the scope of the software agreement to restrict our licensees' use, export, disclosure or transfer of their own original code, even if such code was contained in a modification or derivative work of UNIX System V. The purpose of the software agreement was to protect AT&T Technologies' UNIX System V source code, and was not meant to claim for AT&T Technologies our licensees' own work. It would not make sense to me to read this Section 2.01 to place restrictions on code that our licensees created themselves -- that code was theirs.

    "13. A number of licensees requested clarification that they, not AT&T Technologies, owned, and could do what they wanted with, the modifications and derivative works prepared by or for them. We always provided this requested clarification -- both orally and in writing -- when asked, because it was consistent with the original intent of Section 2.01 of the standard software agreement.

    "14. Indeed, since so many licensees requested clarification of that provision of the standard software agreement, we announced in early 1985 at seminars hosted by AT&T Technologies and in a newsletter called "$ echo" that we would be modifying the language of our standard software agreements to clarify even further that licensees owned their modifications and derivative works, except for the licensed UNIX System V source code included in such modifications and derivative works.

    "15. Although I did not have any responsibility for preparing the $ echo newsletters, I reviewed them at the time they were created and am familiar with their content. The $ echo newsletter was published by the licensing group at AT&T Technologies and was intended to communicate, and apply to, all our licensees.

    "16. The April 1985 edition of $ echo, a true and complete copy of which is attached hereto as Exhibit 4, summarizes presentations made by Mr. Frasure at seminars hosted by AT&T Technologies in New York and Santa Clara outlining various revisions we intended to make to the standard software and sublicensing agreements.

    "17. With respect to Section 2.01 of the software agreement, the newsletter states that '[l]anguage changes will be made to clarify ownership of modifications or derivative works prepared by a licensee.' As is emphasized in the newsletter, the changes we intended to make to Section 2.01 did not alter the meaning of the standard software agreements that our UNIX System V licensees had already entered into, but instead were intended to provide clarification as to the original intent of the section.

    "18. The August 1985 edition of $ echo, a true and complete copy of which is attached hereto as Exhibit 5, describes in detail the changes we made to the standard software and sublicensing agreements. With respect to Section 2.01, the newsletter states:

    Section 2.01 -- The last sentence was added to assure licensees that AT&T will claim no ownership in the software that they developed -- only the portion of the software developeed by AT&T.

    This is consistent with our position that the new language we added to the standard software agreement was intended only to serve to clarify the original intent of Section 2.01 that AT&T Technologies did not claim any right to its licensees' original work contained in modifications or derivatives of UNIX System V. The language did not represent in any way a departure from the original intent of Section 2.01.

    "19. An example of the revised language referred to in the $ echo newsletter appears in Section 2.01 of a software agreement between AT&T Information Systems Inc. and The Santa Cruz Operation, Inc. ('Santa Cruz') entered into in May 1987 . . . . I was the account executive responsible for Santa Cruz and I participated personally in the negotiation of this agreement with Santa Cruz.

    "20. . . . This revised language was intended only to clarify the original meaning of Section 2.01 in the standard software agreement, not to change it. We interpreted Section 2.01 of all of our software agreements the exact same way.

    "21. Although the $ echo newsletter notes that all UNIX System V licensees could request 'specimen copies' of the revised software agreement from the Software Sales and Licensing group, we did not require our licensees to enter into new agreements. We intended the revised language of Section 2.01 (and other sections) to apply to all of our UNIX System V licensees, including Sequent, regardless of which version of the standard software and sublicensing agreements they had specifically entered into.

    "22. As it was our general policy not to treat our licensees differently, whether or not our licensees had a side letter clarifying the treatment of modifications or derivative works or had entered into agreements containing the revised Section 2.01 of the standard software agreement, our intent with respect to each or of licensees was the same. To my knowledge, no one at AT&T Technologies ever intended to assert ownership or control over any portion of a modification or derivative work that did not contain our licensed UNIX System V code. Our licensees, including Sequent, were free to use and disclose the modifications or derivative works they created, provided that they did not use and disclose any portion of the licensed UNIX System V source code. . . .

    "24. I understand that plaintiff claims that Sequent has breached its license agreement with AT&T Technologies by improperly using, exporting, disclosing or transferring Dynix source code, irrespective of whether Sequent has disclosed any specific protected source code from UNIX System V. At least as I understand the Sequent Agreements, that is simply not consistent with what the parties intended by the agreements."

  • Geoffrey D. Green , from 1956 through 1996 an employee -- he is an attorney -- of various AT&T-related companies, including AT&T Technologies. He says he was involved in some of the UNIX System V licensing agreements but not, to the best of his recollection, either the IBM or the Sequent licenses:

    6. Without disclosing any legal advice that I may have rendered while employed at AT&T (or any requests I may have received for legal advice), I can say that, as I understood AT&T's UNIX System V licensing agreements, AT&T did not intend to assert ownership or control over modifications and derivative works prepared by licensees, except to the extent of the original UNIX System V source code included in such modifications and derivative works. Accordingly, a licensee was free to do with as it wished ( e.g., use, copy, distribute or disclose) code developed by or for the licensees in its modifications and derivative works, provided that the licensee did not use, copy, distribute or disclose any portions of the original UNIX System V source code provided by AT&T (except as otherwise permitted by the license agreements)."


  View Printable Version


Groklaw © Copyright 2003-2013 Pamela Jones.
All trademarks and copyrights on this page are owned by their respective owners.
Comments are owned by the individual posters.

PJ's articles are licensed under a Creative Commons License. ( Details )