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To read comments to this article, go here
IBM Motion For Order Limiting Scope of 9th CC - PDF and text
Wednesday, February 23 2005 @ 12:21 AM EST

Well, this is the first time we've had a legal document filed in SCO v. IBM that has me stumped. The problem is, it's in response to SCO filings that were completely sealed (#s 322, 323, 369 on Pacer, which you can also find on our IBM Timeline page, and IBM's opposition memo was sealed also, #337), so I'd only be guessing as to what it means, and I don't like to guess when there is so little info. However, if you reread the October hearing notes we published at the time, it will give you a pretty big hint, the part under the heading "SCO's Rebuttal.".

This filing is titled, IBM's Motion for Entry of Order Limiting Scope of IBM's Ninth Counterclaim. All I clearly understand is that once again SCO and IBM can't settle a matter without the court refereeing.

I gather SCO is trying to interpret IBM's 9th CC in a broader way than IBM says it ever intended. They see no reason why SCO should be writing IBM's counterclaims, so it apparently explained to SCO that it had no interest in pursuing such a broad counterclaim as SCO was envisioning, and they asked SCO to stipulate. But SCO said no, so now they are back before the judge again.

But, you say, didn't the judge say no more motions until discovery is over? No. He said no more *dispositive* motions, and this isn't dispositive. Well, it disposes of the annoyance of dealing with an intransigent SCO, I suppose, but it doesn't dispose of any claim, so they can bring this motion.

I confess, I've never witnessed a case where one side in litigation tried to expand the other side's counterclaims. I am crazy wild to read what SCO filed, naturally, but I know from experience that with time, we'll get the gist of it. For one thing, SCO has to answer this motion, and then IBM must reply, so that gives us opportunities to discern what is going on.

IBM also filed a motion asking to be allowed to file an overlength sur-reply memorandum in opposition to SCO's motion for leave to file a third amended complaint. They point out that SCO filed two overlength documents regarding this matter already, so it needs more space to respond. Judge Kimball has never refused such a request, so it's likely he will grant this request as well.

IBM's argument goes like this: First SCO presented its Second Amended Complaint, with a Fifth Cause of Action, alleging copyright infringement by IBM for continuing to distribute AIX and Dynix after SCO's purported termination of IBM's license. In direct response to SCO's allegation, IBM asserted a Ninth Counterclaim that mirrors the claims of SCO's Fifth Cause of Action, "seeking a declaration of non-infringement with respect to IBM's UNIX activities. In asserting its Ninth Counterclaim, IBM intended to seek only a declaration that because IBM has not breached IBM's license agreements with AT&T and SCO's purported termination of those licenses is invalid, IBM's continued distribution of AIX and Dynix products does not infringe SCO's alleged copyrights." Now, IBM tells the court, SCO is trying to add a Tenth Cause of Action, asserting copyright infringement for activities that are not here spelled out, trying to construe IBM's Ninth Counterclaim "broadly to encompass the conduct challenged by SCO's proposed new copyright claim." The "conduct" is not spelled out, so we are left hanging. The judge knows what they are talking about, however.

If you are curious and wish to review IBM's Ninth Counterclaim, it goes like this:

NINTH COUNTERCLAIM

Declaratory Judgment of Noninfringement of Copyrights

162. IBM repeats and realleges the averments in paragraphs 1 through 161, with the same force and effect as though they were set forth fully herein.

163. SCO purports to hold copyrights relating to UNIX software, including the following copyrights:

Registration No. Date of Registration

Title of Work

TXU-510-028 March 25, 1992 UNIX Operating System Edition 5 and Instruction Manual
TX u-511-236 April 7, 1992 UNIX Operating System Edition 6 and Instruction Manual
TXu-516-705 May 15, 1992 UNIX Operating System Edition 32V and Instruction Manual
TXu-516-705 May 15, 1992 UNIX Operating System Edition 7 and Instruction Manual
TXu-301-868 November 25, 1987 Operating System Utility Programs
TX5-787-679 June 11, 2003 UNIXWARE 7.1.3
TX 5-750-270 July 7, 2003 UNIX System V RELEASE 3.0
TX 5-750-269 July 7, 2003 UNIX SYSTEM V RELEASE 3.1
TX 5-750-271 July 7, 2003 UNIX SYSTEM RELEASE 3.2
TX 5-776-217 July 16, 2003 UNIX SYSTEM V RELEASE 4.0
TX 5-705-357 June 30, 2003 UNIX SYSTEM V RELEASE 4.1ES
TX 5-762-235 July 3, 2003 UNIX SYSTEM V RELEASE 4.2
TX 5-762-234 July 3, 2003 UNIX SYSTEM V RELEASE 4.1
TX 5-750-268 July 9, 2003 UNIX SYSTEM V RELEASE 3.2

164. SCO has sued IBM claiming that IBM has infringed, induced the infringement of, and contributed to the infringement of, SCO's purported UNIX copyrights by, among other things, continuing to "reproduce, prepare derivative works of, and distribute" copyrighted UNIX materials through its activities relating to AIX and Dynix.

165. IBM does not believe that its activities relating to AIX and Dynix including any reproduction, improvement and distribution of AIX and Dynix, infringe, induce the infringement of, or contribute to the infringement of valid, enforceable copyrights owned by SCO.

166. An actual controversy exists between SCO and IBM as to the noninfringement of SCO's copyrights and the validity of any purported SCO copyrights concerning UNIX.

167. IBM is entitled to a declaratory judgment pursuant to 28 U. C. Section 2201 that IBM does not infringe, induce the infringement of, or contribute to the infringement of any SCO copyright through the reproduction, improvement, and distribution of AIX and Dynix, and that some or all ofSCO' s purported copyrights in UNIX are invalid and unenforceable.

IBM also references SCO's Second Amended Complaint, Fifth Cause of Action, which reads like this:

FIFTH CAUSE OF ACTION

(Copyright Infringement)

173. Plaintiff incorporates and re-alleges paragraphs No. 1-172, above.

174. As set forth above, SCO is the successor in interest to the IBM Related Agreements and the Sequent Agreements.

175. Despite termination of such Agreements, IBM has continued to reproduce, prepare derivative works of, and distribute UNIX software, source code, object code, programming tools, and documentation related to UNIX operating system technology, and has induced others to do the same.

176. SCO is the owner of copyright rights to UNIX software, source code, object code, programming tools, documentation related to UNIX operating system technology, and derivative works thereof. These materials are covered by numerous copyright registrations issued by the United States Copyright Office (the "Copyrighted Programs"). These registrations have been obtained by SCO and its predecessors in interest and are owned by SCO. For example, included among such registrations (attached as Exhibits H to U) are the following:

Table E
 TitleRegistration NumberRegistration Date
HUNIX Operating System Edition 5 and Instruction ManualTXU-510-028March 25, 1992
IUNIX Operating System Edition 6 and Instruction ManualTXu-511-236April 7, 1992
JUNIX Operating System Edition 32V and Instruction ManualTXu-516-704May 15, 1992
KUNIX Operating System Edition 7 and Instruction ManualTXU-516-705May 15, 1992
LOperating System Utility ProgramsTXu-301-868November 25, 1987
MUNIXWARE 7.1.3TX 5-787-679June 11, 2003
NUNIX SYSTEM V RELEASE 3.0TX 5-750-270July 7, 2003
OUNIX SYSTEM V RELEASE 3.1TX 5-750-269July 7, 2003
PUNIX SYSTEM V RELEASE 3.2TX 5-750-271July 7, 2003
QUNIX SYSTEM V RELEASE 4.0TX 5-776-217July 16, 2003
RUNIX SYSTEM V RELEASE 4.1ESTX 5-705-356July 30, 2003
SUNIX SYSTEM V RELEASE 4.2TX 5-762-235July 3, 2003
TUNIX SYSTEM V RELEASE 4.1TX 5-762-234July 3, 2003
UUNIX SYSTEM V RELEASE 3.2TX 5-750-268July 9, 2003

177. SCO and its predecessors in interest created the Copyrighted Programs as original works of authorship, and, as such, the Copyrighted Programs constitute copyrightable subject matter under the copyright laws of the United States. The Copyrighted Programs were automatically subject to copyright protection under 17 U.S.C. Section 102(a) when such programs were fixed in a tangible medium of expression. Copyright protection under 17 U.S.C. Section 106 extends to derivative works which are defined in 17 U.S.C. Section 101 to include works based on the original work or any other form in which the original work may be recast, transformed, modified or adapted.

178. Pursuant to U.S.C. Section 410(c), the certificates of copyright registrations for each Copyrighted Program constitute prima facie evidence of the validity of the copyrights and of the facts stated in the certificates. SCO and its predecessors' registered copyrights in the Copyrighted Programs are entitled to such statutory presumptions.

179. IBM's breaches of the IBM Related Agreements and the Sequent Agreements and its post-termination actions have infringed, have induced infringement of, and have contributed to the infringement of, copyright registrations of SCO and its predecessors. Such actions have been willful and have been done with knowledge of the copyright rights of SCO.

180. SCO has been damaged by IBM's conduct and has no adequate remedy at law. IBM's conduct has caused, and, if not enjoined, will continue to cause, irreparable harm to SCO. As a result of IBM's wrongful conduct, SCO is entitled to injunctive relief pursuant to 17 U.S.C. Section 502 and SCO's actual damages and IBM's profits as a result of the infringing acts pursuant to 17 U.S.C. Section 504(a), statutory damages to the extent applicable pursuant to 17 U.S.C. Section 504(b) and enhanced damages, together with attorneys' fees and costs pursuant to 17 U.S.C. Section 505.

For now, then, that is all I know. With time, we'll fill in the blanks, and here we have collected the information we need to be able to recognize the rest when it shows up.

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

SNELL & WILMER L.L.P.
Alan L. Sullivan (3152)
Todd M. Shaughnessy (6651)
Amy F. Sorenson (8947)
[address]
[phone]
[fax]

CRAVATH, SWAINE & MOORE LLP
Evan R. Chesler (admitted pro hac vice)
David R. Marriott (7572)
[address]
[phone]
[fax]

Attorneys for Defendant/Counterclaim-Plaintiff
International Business Machines Corporation

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH

THE SCO GROUP, INC.,

Plaintiff/Counterclaim-Defendant,


v.

INTERNATIONAL BUSINESS MACHINES
CORPORATION,

Defendant/Counterclaim-Plaintiff.
IBM'S MOTION FOR ENTRY OF
ORDER LIMITING SCOPE OF
IBM'S NINTH COUNTERCLAIM



Civil No. 2:03CV-0294 DAK

Honorable Dale A. Kimball

Magistrate Judge Brooke C. Wells

1

Defendant/Counterclaim-Plaintiff International Business Machines Corporation ("IBM") respectfully moves the Court for entry of an order limiting the scope of IBM's Ninth Counterclaim.

SCO's Fifth Cause of Action (Copyright Infringement) in its Second Amended Complaint alleged that IBM infringed SCO's alleged copyrights by continuing to distribute AIX and Dynix products after SCO's purported termination of IBM's license agreements with AT&T. In response, IBM asserted its Ninth Counterclaim, seeking a declaration of non-infringement with respect to IBM's UNIX activities. In asserting its Ninth Counterclaim, IBM intended to seek only a declaration that because IBM has not breached IBM's license agreements with AT&T and SCO's purported termination of those licenses is invalid, IBM's continued distribution of AIX and Dynix products does not infringe SCO's alleged copyrights.

SCO, attempting to amend its complaint for the third time and add a Tenth Cause of Action (Copyright Infringement), construes IBM's Ninth Counterclaim broadly to encompass the conduct challenged by SCO's proposed new copyright claim. IBM did not, and does not, intend its Ninth Counterclaim to encompass the conduct challenged by SCO's proposed new copyright claim, and IBM does not otherwise seek a declaration in this litigation that the conduct challenged by SCO's proposed new copyright claim does not infringe SCO's alleged copyrights.

Even assuming that SCO's reading of the text of IBM's Ninth Counterclaim is plausible, it makes no sense to require IBM to prosecute a broader claim when IBM has no interest, in this litigation, in doing so.

IBM has asked counsel for SCO to stipulate to the entry of the attached proposed order narrowing the scope of IBM's Ninth Counterclaim, but SCO has refused.

Based on the foregoing, IBM requests that the Court enter an Order in the form submitted herewith.

2

DATED this 18th day of February, 2005.

SNELL & WILMER L.L.P.

___[signature]____
Alan L. Sullivan
Todd M. Shaughnessy
Amy F. Sorenson

CRAVATH, SWAINE & MOORE LLP
Evan R. Chesler
David R. Marriott

Attorneys for Defendant/Counterclaim-Plaintiff
International Business Machines Corporation

Of counsel:

INTERNATIONAL BUSINESS MACHINES CORPORATION
Donald J. Rosenberg
Alec S. Berman
[address, phone]
Attorneys for Defendant/Counterclaim-Plaintiff
International Business Machines Corporation

3

CERTIFICATE OF SERVICE OF CLERK

I hereby certify that on the 18th day of February, 2005 a true and correct copy of the foregoing was sent by U.S. Mail, postage prepaid, to the following:

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

Stephen N. Zack
Mark J. Heise
BOIES SCHILLER & FLEXNER
[address]

Robert Silver
Edward Normand
Sean Eskovitz
BOIES SCHILLER & FLEXNER
[address]

____[signature]____
Amy F. Sorenson

4


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