(8)        [IBM has asked for]“The pleadings, deposition transcripts and deposition exhibits from UNIX System Laboratories, Inc. (“USL”) suit against BSD.”
SCO does not have such documents in its custody, control or possession.

"[fn11]   The SOFT-00089 license agreement was intended to 'clarify' the prior intent of the parties.Wilson Depo., at 139:10-140:1. AT&T's Director of Licensing, Otis Wilson, testified that the language used prior to that contained in the SOFT-00089 license agreement was 'somewhat confusing to some people in that they thought we were trying to assert ownership to anything they created, even though it contained nothing of ours. So this is to clarify that what's yours is yours and what's ours is ours' (emphasis added). Wilson Depo., at 75:24-76:4.

"USL's Mitzi Bond admitted that she understood 2.01(b)ii) meant that 'enhancements and modifications made by the licensee were to be made available to anyone so long as they did not include any portion of the software products licensed under the agreement' emphasis added). Bond Depo., at 137:19-138:19.  [Dr S: this SCO do not reference for some strange reason]

"However, Ms. Bond also has espoused a mental 'contamination' theory by which any university student exposed to
AT&T code would be beholden to AT&T for any software product he/she might subsequently develop. Bond Depo,at 220:2-13, 237:24-238:8. [Dr S: this is the section SCO reference]

"USL's Mitzi Bond participated in the preparation of [$echo]. She testified that the clarification to  2.01 'indicates that all we did was add a sentence to the existing one so that licensees would clearly understand that we were not claiming the ownership in code that they developed that didn't contain ours' (emphasis added). Bond Depo., at 189:14-191:21."

"After divestiture, which took place in 1984, AT&T began to market its UNIX source code actively in the United States and in many other countries as a commercial product. As a result of this widespread licensing and the access permitted to students all over the world, as USL admits, the UNIX source code has become 'world-renowned,' and many portions of it have become industry standards. Although USL may have strict internal safeguards in place, it has so widely licensed its UNIX source code that it cannot be considered a 'secret' by any stretch of the imagination. Indeed, since the source code has been licensed to universities all around the country, most people who have studied computer science at universities over the past fifteen years have had access to the source code at some time, E to the Forte Aff.). Further, the strict safeguards USL claims to observe have not been observed by its thousands of licensees. consequently, USL's licensed code periodically appears on publicly accessible computers. (Bond Dep. T. 71-24 to 74-16;[fn4] Adams Aff., ~ 10). "[fn4] All citations to the deposition transcript of Mitzi D. Bond are attached as Exhibit F to the Forte Aff.

"USL has also permitted numerous books to be written on the UNIX source code. These books describe nearly every aspect of the code, including its design, architecture, sequence, organization, structure, implementation and algorithms, and provide instruction on how to write UNIX-compatible code. See infra. Among other things, such publicly available reference materials disclose the specific features USL's expert relies upon as evidence of copying and trade secret misappropriation. (See generally McKusick and Bostic Decl.; Kashtan Aff., ~l 6, 8). . . .

"2. The Header Files Which USL Claims Have Been Infringed Have Been Included in Binary Distributions Made by USL Licensees With No Copyright Notice.

"The binary version of the UNIX operating system has been even more widely distributed than the source code version. Although current binary versions of the code contain copyright notices, earlier versions did not. (See Bostic & McKusick Decl., 28.4).

"Moreover, these binary distributions included some source code files, and in particular, included the header files USL accuses the University of copying in Net2. (Bostic & McKusick Decl., ~ 28.4; Kashtan Aff. ~ 8).

"USL itself has never distributed binary code, but has sublicensed numerous other companies to distribute binary versions of its UNIX operating system, placing no limitations on whom they could license it to, other than those required by law. Thus, USL cannot possibly argue that the distribution of the binary code (including the header files in source form) was a limited publication. Not only is it impossible for USL to meet the 'definitely selected group' test, but simply offering a work 'for further distribution,' as USL did with its binary code, in itself constitutes a general publication of the work. See White, 193 F.2d at 746-47; Rexnord, 379 F. Supp. at 1197. Thus, USL has no basis for claiming any copyright in the header files. . . .

"Although the language in these agreements was clarified over time, the basic intent with respect to the University's right to use the software and its confidentiality obligation was the same in each of them. (See, Karels Aff., 1 24; see also Wilson Dep. T. 36-17 to 37-8). Under each of these agreements, the University was authorized to make modifications, enhancements and derivative works using the licensed software. If a derivative work contained the licensed software or disclosed any proprietary methods or concepts used in the licensed software, it could be distributed only to those who had purchased a source code license from AT&T. As demonstrated below, however, if an enhancement, modification or derivative work did not contain or disclose any AT&T proprietary information, it belonged to the University, and was not governed by the restrictions applicable to the licensed software. See discussion infra.

"2. The License Agreements Permit Derivative Works Not Containing USL Trade Secrets To Be Made Available To Non Licensees

"Section 2.01(b) of the E-SOFT-00089 Agreement expressly provides that the University was to distribute to anyone, on an unrestricted basis, modifications and enhancements that did not include USL's proprietary information. Likewise, Section 2.01(a) of the E-SOFT- 00089 Agreement, provides that derivative works "that contain" licensed software must be treated as licensed software i.e, must be subject to the same restrictions on disclosure as the licensed software:

[Licensee's] 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.* (See Exhibit D-25 to Bond Dep.T. (emphasis added)).

"The negotiations leading up to the execution of this agreement, as well as the prior course of dealing between the parties, make it clear that the words "that contains any part of a software product subject to this agreement" were intended to distinguish between derivative works that actually contained licensed software and derivative works that did not- while the former were subject to the license restrictions, the latter were not.

"In the negotiations leading up to the execution of the E-SOFT-00089 Agreement, USL initially proposed language providing that any derivative work 'based on' the licensed materials was to be treated as licensed software. The University objected to that language, however, and insisted that it be changed to cover only derivative works 'that contain' licensed software. USL accepted this modification, providing a new version of the E-SOFT-00089 Agreement in which the language 'based on' licensed materials had been changed to 'that contains' licensed software. (Wilson Dep. T., Exh. D-67 and D-68 (attached as Exhibits Y and Z to the Forte Aff.).

"This same clarification i.e., that only derivative works containing AT&T code had to be treated as licensed software had also been made in discussions surrounding a prior license agreement, the 'UNIX System V Agreement'. This agreement initially included within the definition of 'LICENSED SOFTWARE' any derivative works prepared by the licensee 'based on' the licensed materials. The University objected to that provision, which had not appeared in any of its prior agreements with AT&T, and was contrary to its understanding of its obligations. (See Karels Aff., ~ 23-26). Following discussions regarding the provision, USL wrote a letter agreement to the University 'clarifying' the definition of 'Licensed Software' by deleting from the definition 'derivative works prepared by the licensees'. The letter further stated that AT&T never had intended to claim any interest in such works. (See Exhibit B to Karels Aff.; Exhibit D-34 to Wilson Dep. T. (Bates P000243) (Exhibit aa to the Forte Aff.)). In place of the prior language, a sentence was added stating 'LICENSEE agrees that any modification or derivative work prepared by it *that contains any LICENSED SOFTWARE* shall be treated as LICENSED SOFTWARE hereunder.' (Emphasis added).

"USL now attempts to read into the earlier 32V agreement (which it mistakenly argues applies), the same language that was deleted from both the System V Agreement and the E-SOFT-00089 Agreement even though no such language appears in either of those agreements. Contrary to USL's argument, this same point also was clarified with respect to the April, 1979 Agreement: In a letter dated January 18, 1978, the University inquired whether it could distribute UNIX-derived software.[fn18] In a written response, Edwin G. Baldwin, who was AT&T's Director of Technology Licensing at the time, stated:

We take no position with regard to your use or distribution of software developed by you which does not contain any of our proprietary information such as, without limitation, the computer programs and documentation, or any portion thereof, related to the UNIX operating system, including the methods and concepts utilized therein. With regard to the distribution of any software which does contain some of our proprietary information, our primary concern is the prevention of unauthorized disclosure, either intentional or inadvertent, which might jeopardize our valuable proprietary rights in such information.

[fn18] Exhibit D-11 to Baldwin Dep. T. (attached as Exhibit bb to the Forte Aff.).

(See Exhibit-12 to Baldwin Dep- T- (attached as Exhibit cc to the Forte Aff.) (emphasis added)). Mr- Baldwin testified at his [REDACTED]

(Baldwin Dep. T. 33-15 to 34-16). Mr. Baldwin further testified that [REDACTED]

"Another USL employee, Mitzi Bond, similarly testified to her understanding that [REDACTED]

  [fn19]  ?

(Bond Dep. T. 138-14 to 138-19, 137-13 to 138-13).

"After consulting with Ms. Bond during a break at the deposition, USL's attorney cross-examined her, at which point she changed her testimony, now stating that it was her understanding [REDACTED] 215-24, 216-20 to 216-25, 217-6 to 217-15, 219-3 to 219-15,
224-18 to 224-25).

"[REDACTED]

(Frasure Dep. T. 172-11 to 172-20).

[REDACTED]

36-18 to 39-10, 49-20 to 50-2).

"Given that USL twice attempted to include a provision that any derivative work "based on" the licensed software would have to be treated as licensed software (in the 1983 System V Agreement and the 198S E-SOFT-00089 Agreement) and both times the University insisted that the language be narrowed to cover only derivative works that "contain" licensed software -- the argument that the intent was to cover any work "based on" the licensed software, or any work benefiting from knowledge of the licensed software, is completely unsupportable, much less the argument that anyone who has ever seen UNIX source code is "mentally contaminated" and may never write another piece of code that is not subject to USL's license."

From: dds@doc.ic.ac.uk (Diomidis D Spinellis)
Newsgroups: alt.suit.att-bsdi
Subject: Re: What happened with AT&T's copyright clearing procedure

[snip]

In article dds@doc.ic.ac.uk (Diomidis Spinellis) writes:
>I seem to remember, that some public domain source code that making the
>rounds of the net a number of years ago (five?) had a statement from an
>AT&T person attached, stating that the code did not contain and was not
>based on any AT&T intelectual property.  It also gave a contact for
>further enquires.  The idea I got was, that if you had some code that
>could have been AT&T's intellectual property you mailed it to someone
>at AT&T who told you whether it was or not.  Does anyone know whether
>that procedure still exists, and if yes, why BSDI did not use it, if no
>why it was dropped by AT&T?

Thanks to Alan Cox's memory, I managed to locate the file I was talking
about.  It is part of the uuslave distribution (an early UUCP clone)
written by John Gilmore.  The file s named CERTIFIC.ATT and is dated
Jun  8  1987; I enclose a copy at the end of this message.  

An interesting
point is, that John Gilmore had almost definitely been exposed to Unix
source code at that time.

Diomidis
----------------------------------------------------------------------
Return-Path:
Date: Mon, 23 Mar 87 23:49:43 PST
From: ihnp4!attunix!gcss20!gcdwf
Message-Id:
Apparently-To: hoptoad!gnu

John Gilmore,

Listed below is the source code for uuslave that you electronically
mailed to me on February 20, 1987. Our product management personnel
have reviewed this code and have determined that it was not derived
from source code from versions of our UNIX(r) operating system. If
you have any further questions, please feel free to call me at
1-800-828-UNIX.


David W. Frasure
AT&T UNIX Software Licensing
--
Diomidis Spinellis    Internet:   UUCP: ...!uknet!icdoc!dds
Department of Computing, Imperial College, London SW7     #include "/dev/tty"

From: gnu@hoptoad.uucp (John Gilmore)
Newsgroups: alt.suit.att-bsdi
Subject: Re: What happened with AT&T's copyright clearing procedure

[snip]

Thank you, Mr. Spinellis (who posted this).

I and some friends proposed a "sift" project at Jan '87 Usenix.  The
idea was that some impartial Unix wizards would sift through Berkeley
Unix and decide which parts were Bell, and which parts were Berkeley,
and then get Berkeley and AT&T to verify that decision.

[snip]

I initially got involved with AT&T in checking the license status
of software in a somewhat roundabout fashion.  As a contemporaneous
correspondence from me describes it:

Actually they first contacted me; I was working on uuslave and I got
some anonymous warnings (relayed through friends) that said AT&T thought
it was theirs and was going to "crack down" on whoever was working on
it.  I posted a challenge to the net, saying if they thought it was
theirs they'd better come public or lose whatever rights they might have
had in it.  Someone in AT&T forwarded it to the right people, who turned
out to be at the licensing dept at 828-UNIX, I sent them a copy, and
they gave it a clean bill of health.  They end up sending it to Summit
to be read over by the experts, which is why it's so slow -- I can
imagine your reaction to having to read a bunch of this stuff and say
whether it's part of Unix or not, rather than doing more development.
But there's way too much stuff that's not theirs which is hiding in the
shadows of "they might sue us because we don't really know who owns it"
and if AT&T really does want to control Unix, they'll have to bite the
bullet and say what Unix really is and isn't.

    (end of that excerpt.  Here is another with further history.)

The next two things I sent in were mdbm and rcs.  I sent mdbm on 25
March 1987, but it got lost inside AT&T because David Frasure, who was
handling it, retired.  I checked on May 29th and discovered they
had lost it; talked with Chuck Green who took over for Dave.  I also
mentioned RCS and they said "send it too, we will do them both".

I sent both to Mitzi Bond, who works for Chuck, on 1 June 1987,
in 9 shar files (one mdbm, 8 RCS).  I checked to make sure they
received it, and got email back from Mitzi on 13 June saying that they
got it all and were sending it to the developers.  I checked again and
got mail on 2 July saying that Charlie Thiel in Summit was still
reviewing the code but expected an answer by the end of next week.
On 13 July, Mitzi was on vacation for a week.  On 24 July I got the
final answer by email:

Return-Path:
Date: Fri, 24 Jul 87 22:47:47 PDT
From: ihnp4!attunix!gcss20!gcmdb
Message-Id:
Apparently-To: hoptoad!gnu

To:  John Gilmore

From:  Mitzi Bond

Charlie Thiel at our UNIX software development group in Summit called me back
to say that his developers has examined the code that you sent.  Their results
were basically indecisive.  There was nothing in either set of code to
determine that it was solely AT&T's.  There was a lot of similarity but not
enough for AT&T to build a case to say that this was strictly AT&T code
and its use in both instances is a violation of the copyright of our
software.

Charlie also says that it is the duty of the University of Maryland to protect
the software and their lies the responsibility in that particular instance.

I apologize for taking so long to respond.  I talked with Charlie on Monday
when I returned, and again today for the final results, which don't seem to
be as conclusive as we would have hoped.

Thank you for your patience.

-----------

    (end of 2nd excerpt of old correspondence.)

[snip]

I think (personal opinion) that AT&T decided it was better to risk
losing the big court case over this (refusal to help potential
infringers check if they were infringing) than to have to certify, piece
by piece, that indeed major chunks of what the world thinks of as "Unix"
did not actually infringe AT&T's rights.


[snip]

--
John Gilmore   {sun,uunet,pyramid}!hoptoad!gnu   gnu@toad.com   gnu@cygnus.com
"It isn't given to us to know those rare moments when people
 are wide open and the lightest touch can wither or heal."