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BSDi Amicus Brief
Wednesday, March 02 2005 @ 02:10 AM EST

Because of the research uncovered by Dr Stupid with regard to Mitzi Bond's deposition testimony in the BSDi case, it seems appropriate to add the following Regents of the University of California amicus brief from that case to our permanent archive. It is available on the Internet, thanks to Dennis Ritchie, who has it in the collection he has put up on his website, but it seems prudent to have it in our collection for future historians here too.

If by any chance anyone out there has any other BSDi documents hidden in a file cabinet somewhere, please do make them available, as they are proving to be a gold mine of helpful information.

University of California
300 Lakeside Drive, 7th Floor
Oakland, California 94612-3565
Telephone: (510) 987-9800

Professional Corporation
1999 Harrison Street
Oakland, California 94612
Telephone: (510) 763-2000

280 Corporate Center
65 Livingston Avenue
Roseland, New Jersey 07068
Telephone: (201) 994-1100

Attorneys for Defendant
The Regents of the University of California



Plaintiff, (DRD)


the Following lndividuals in their Collective
BROWN, JR., et al.,

Civil Action No.92-1667


Date: 1-22-93
Time: 10:00 a.m.
Court: Honorable Dickinson R. Debevoise




32V 20

ACT 3 2


Academy of Motion Picture Arts And Sciences v.
Creative House Promotions,
944 F.2d 1446 (9th Cir. 1991) 27,28

Apple Computer, Inc. v. Franklin Computer Corp.,
714 F.2d 1240 (3rd Cir. 1983) 23

Apple Computer, Inc. v. Microsoft Corp.,
717 F. Supp. 1428 (N.D. Cal. 1989) 15,21,23,24

Aqua Bay Concepts, Inc. v. Grosse Point Bd. of
24 U.S.P.Q.2d 1372 (S.D. Mich. 1992) 33

Ashworth v. Glover,
156 U.S.P.Q. 219 (Utah 1967) 30

Atari Games Corp. v. Nintendo of America, Inc.,
F.2d , 1992 WL 217828 (Fed. Cir. 1992) 20

Avco Corporation v. Precision Air Parts, Inc., 210
U.S.P.Q. 895 (N.D. Ala 1980). Under 33

Bartsch v. Metro-Goldwyn-Mayer, Inc.,
391 F.2d 150 (2nd Cir. 1968) 15

Brignoli v. Balch Hardy And Scheinman, Inc.,
645 F.Supp. 1201 (S.D.N.Y. 1986) 33

Brown Bag Software v. Symantec,
960 F.2d 1465 (9th Cir. 1992) 20

Brown v. Tabb,
714 F.2d 1088 (11th Cir. 1983) 29

Bull Publishing Co. v. Sandoz Nutrition,
13 U.S.P.Q.2d 1678 (N.D. Ca. 1989) 27,30,32

Burke v. National Broadcasting Co.,
598 F.2d 688 (1st Cir. 1979) 30

Computer Assoc. Int., Inc. v. Altai, Inc.,
___F.2d___, 23 U.S.P.Q.2d 1241 (2nd Cir. 1992) 21

Computer Associates International, Inc. v. Altai,
777 F.Supp. 455 (E.D.N.Y. 1991) aff'd,___F.2d
___(2nd Cir. 1992) 19,21

Continental Cas. Co. v. Beardsley,
253 F.2d 702 (2d Cir. 1958) 28,30

Data General Corp. v. Digital Computer Controls,
188 U.S.P.Q. 276 (Del. Ch. 1975) 30

Data General Corp. v. Grumman Systems Support Corp .,
F.Supp. , 61 U.S.L.W. 2315, 1992 WL 297641
(D. Mass. Oct. 9, 1992) 31

Del Madera Properties v. Rhodes and Gardner, Inc.,
830 F.2d 973 (9th Cir. 1987) 32

711 F.2d 141 (9th Cir. 1983) 20

Eden Toys, Inc. v. Marshall Field & Co.,
675 F.2d 498 (2nd Cir. 1982) 20

Effects Associates, Inc. v. Cohen,
908 F.2d 555 (9th Cir. 1990) 15

Feist Publications, Inc. v. Rural Tel. Service Co.,
__U.S.__ , 111 S.Ct. 1282 (1991) 21

Foreign Car Parts, Inc. of New England v. Auto
World, Inc.,
366 F.Supp. 977 (M.D. Pa. 1973) 30

GCA Corp. v. Chance,
217 U.S.P.Q. 718 (N.D. Cal. 1982) 29

H.W. Wilson Co. v. National Library Serv. Co.,
402 F.Supp. 456 (S.D.N.Y. 1975) 28,29,30

Hadady Corp. v. Dean Witter Reynolds, Inc.,
739 F.Supp. 1392 (C.D. Cal. 1990) 16

Hub Floral Corp. v. Royal Brass Corp.,
454 F.2d 1126 (2d Cir. 1972) 30

Hubco Data Products Corp. v. Management Assistance
219 U.S.P.Q. 450 (D. Idaho 1983) 27

Jerome v. Twentieth Century Fox Film Corp.,
67 F.Supp. 736 (S.D.N.Y. 1946) 31

Jewelers' Mercantile Agency, Ltd. v. Jewelers'
Weekly Publishing Co.,
155 N.Y. 241, 49 N.E. 872 (1898) 28

Key West Hand Print Fabric s, Inc. v. Serbin, Inc.,
244 F.Supp. 287 (S.D. Fla. 1965) 30

Merton Co. v. Tony Trading of Hong Kong, Ltd.,
6 U.S.P.Q.2d 1156 (S.D.N.Y. 1987) 20

NEC Corp. v. Intel Corp.,
10 U.S.P.Q.2d 1177 (N.D. Cal. 1989) 19,25

Nucor Corp. v. Tennessee Forging Steel Serv., Inc.,
476 F.2d 386 (8th Cir. 1973) 30

Patterson v. Century Productions, Inc.,
93 F.2d 489 (2d Cir. 1937) cert denied, 303 U.S.
655 (1938) 31

Platinum Records Co. v. Lucasfilm, Ltd.,
566 F.Supp. 226 (D.N.J. 1983) 15,16

Public Affairs Associates, Inc. v. Rickover,
284 F.2d 262 (D.C. Cir. 1960), vacated on other
grounds, 369 U.S. 111 (1962) 31

Relational Design & Technology, Inc.,
23 U.S.P.Q.2d 1074 (D. Kan. 1992) 33

Ruskin v. Sunrise Management, Inc.,
506 F.Supp. 1284 (D. Colo 1981) 30

Sega Enterprises Ltd. v. Accolade,
F.2d (9th Cir. 1992) 30

Videotronics, Inc. v. Bend Electronics,
564 F.Supp. 1471 (D. Nev. 1983) 33

Warner Bros. v. American Broadcast Companies,
654 F.2d 204 (2nd Cir. 1981) 19

Whelan Assoc., Inc. v. Jaslow Dental Laboratory,
797 F.2d 1222 (3rd Cir. 1986) 20

White v. Kimmell,
193 F.2d 744 (9th Cir. 1952) 31

Williams & Wilkins Company v. United States,
487 F.2d 1345 (Ct. Claims 1973), aff'd, 420 U.S.
376(19 ) 29


17 U.S.C. Section 101 27

17 U.S.C. 106 28,35

17 U.S.C. 301 32,35

17 U.S.C. 405 7,26


Plaintiff Unix System Laboratories ("USL") has brought a motion for
apreliminary injunction against defendant Berkeley Software Design,
Inc. ("BSDI")[fn 1] to halt BSDl's distribution of its 386/BSD
software which is based primarily upon defendant The Regents of
the University of California's ("the University") Networking Release
2 ("Net2") software. Although the motion is not directed against the
University, the Court nonetheless will have to decide whether USL is
likely to prevail on its claims that the University, by releasing Net2,
infringed USL's alleged copyright in UNIX version 32V, or
misappropriated trade secrets allegedly contained in UNIX 32V.
Accordingly, the University files this amicus brief and supporting
declarations to provide the Court with the history and facts relevant
to the development of Net2.

[fn1] BSDI is in no way affiliated with the University.

UNIX 32V was released by AT&T in 1978 (thirteen years before
theUniversity released Net2) for a now-obsolete computer (Digital
Equipment Company'sVAX). AT&T granted the University the right to
enhance, modify, and improve 32V and granted the University all
ownership rights to such enhancements, modifications, and
improvements provided the University made those which did not
contain AT&T code available to the public. At the time AT&T granted
the foregoing rights to the University, it was a regulated public
utility and it charged a nominal fee ofapproximately $1,500 for a
32V license.

As USL states, UNIX has indeed become "one of the most highly
regarded computer systems in the world." This is largely the result
of software developed by the University and its contributors which
has been incorporated into UNIX. The University, not USL or its
predecessor, AT&T, developed the networking 2 and file system
capabilities that have been critical to the success of UNIX. Since
approximately 1979, the University has made modifications,
enhancements, and improvements to UNIX which were licensed by the
University to AT&T and then included by AT&T in successive
versions of UNIX. Version 32V is now completely outdated. The
current version of UNIX, System V Release 4 ("SVR4"), is comprised
substantially of code developed by the University and is licensed by
USL for a $200,000 plus fee. This high fee is now allowed as a
result of the deregulation of USL's predecessor, AT&T. Despite the
large amount of University code in SVR4, the University receives no
royalties from USL.

Contrary to USL's allegations, the University has not infringed
USL'salleged copyright in 32V, or misappropriated trade secrets
from 32V by releasingNet2. Net2 does not contain any USL trade
secrets - the concepts contained thereinare in the public domain, in
some instances put there by AT&T itself. The Universityincluded in
Net2 modifications to 32V which, by the terms of its contracts
withAT&T, were owned by the University. Further, USL does not have
a valid copyrightto UNIX 32V as discussed more fully below;
consequently, there can be no copyright infringement. [fn2]

[fn2] 32V was published without the requisite copyright notice and
was not registered with the U.S. Copyright Office within the
required five-year time period. USL asserts that 32V is an
"unpublished" work and, as such, was excused from these
requirements. To qualify as an unpublished work, however, USL
would have to show that its distribution of UNIX was to a limited
group for a limited purpose, neither of which it can do.

Even if USL had a valid copyright in 32V, those similarities between
Net2and 32V cited by USL are quantitatively minuscule and
qualitatively legitimate and, consequently, provide no basis for
finding that Net2 is an infringing work. USL claims similarities to
32V in only 30 of the almost 10,000 files in Net2; those 30
filescontain less than 1% of the 1.7 million lines of code in Net2. To
the extent similarities exist, they are either well-established
mnemonic devices for file names or interface standards.
Significantly. USL's moving papers do not establish that any code
contained in Net2 is substantially similar to any code in 32V.
Instead, USL merely points to similarities in file names, functions,
or values as alleged evidence of copying. In fact, those similarities
are publicly documented, widely used by programmers, and largely
dictated by interface specifications adopted by independent
standard-setting organizations (or mandated by USL's own standard
interface specifications) to ensure compatibility with applications
programs written for USL's UNIX or any Unix-compatible system. As
such, they cannot support a claim of copyright infringement.

Rather than being a "classic case of unfair competition" as USL
asserts, this case is one where the plaintiff seeks to stifle
competition. The industry deregulation of AT&T led to the marketing
of UNIX as a for-profit product and eventually led to the
establishment in Spring 1991 of a subsidiary, plaintiff USL,whose
primary product was UNIX. USL and Novell Computer formed a joint
venture [fn3] to create and license a version of UNIX that, for the
first time, could be used in personal computers (as opposed to
mainframes and other types of computer configurations). The
University's Net2 software can be used by others, including for-
profit companies, as a basis for an effective operating system for
personal computers. By seeking a preliminary injunction against
BSDI, USL in essence is seeking an injunction against anyone's using
the University's Net2 software. If granted, such an injunction would
eliminate USL's potential competitors. In its attempt to obtain an
injunction, USL is attempting to rewrite history to meet current
goals that could not have been foreseen by its predecessor-in-
interest in 1978.

[fn3] Recent press releases indicate Novell will soon acquire all
USL's shares, thereby buying out USL s current majority shareholder,



Although "UNIX" is a trademark originally adopted by AT&T, there
are-- in fact -- several Unix-like operating systems that are
compatible with USL's "UNIX." These Unix-like operating systems
include Xenix (by Microsoft), SunOS (by Sun Microsystems), Ultrix (by
Digital Equipment Corporation), OSF/1 (by IBM and other computer
vendors), Minix (by Andrew Tanenbaum), Coherent (by Mark Williams)
and Xinu (by Douglas Comer). [fn4] The University began to develop
its own variation of Unix -- named the Berkeley Software
Distribution ("BSD") -- in the 1970s. The University's BSD software
was the basis for SunOS and Ultrix and is generally recognized as
one of the most important variants of Unix.

[fn4] See, Joint Declaration of Dr. Kirk McKusick and Keith Bostic
("Joint Decl.") at 1 28.3. There is substantial question whether
"UNIX" has become a generic term to describe any of the operating
systems described herein. The University takes no position on that
dispute but presents this information to apprise the Court that there
are numerous Unix-compatible systems available from various

As Unix System V Release 4: An Introduction ("Unix Introduction")
[fn5] states at p. 14 "Many important innovations to the Unix system
have been made at the University of California, Berkeley." The
University's involvement began in 1974 and its development of the
Unix-like BSD system was aided by an AT&T scientist who spent his
sabbatical at Berkeley in 1975. Id. at 15. During this period, AT&T
was not in the computer business and made its primitive UNIX
Operating System available to universities, the government and
commercial entities at virtually no cost. Id. at 13. Pursuant to that
program, AT&T licensed, inter alia, an early version of UNIX for the
Digital Equipment VAX Computer ("32V") to the University in 1979
and it relicensed 32V to the University in 1981 with a broader grant
of rights to the University. The University used the early UNIX code
for computer research which led to "valuable innovations." Id. at 15.
The University's BSD releases (described in more detail in the
Declaration of Dr. McKusick) contained numerous performance
enhancements which AT&T has incorporated into its version of Unix.
Id. at 14-15.

[fn5] This text, published in 1990, was authored by K. Rosen, R.
Rosinski, and J. Farber, three AT&T employees at the time. See p.
XXXV. The book is copyrighted by AT&T. Since AT&T is the
predecessor-in-interest of USL and the text was written before
AT&T created USL, the Court should have little hesitation accepting
this text as support for factual assertions. For the Court's
convenience, Chapter 1 of "Unix Introduction" is attached to the
Declaration of Joel Linzner.

The parallel developments of AT&T's UNIX, the University's BSD,
Sun's SunOS, Microsoft's Xenix, etc., created problems for
applications programmers who wished to build programs that could
run on any computer using a Unix-like operating system.

"To solve these problems, *various standards have been
developed.* These standards define the characteristics a
system should have so that applications can be built to work
on any system conforming to the standard."

Unix Introduction at 16-17. AT&T itself led the crusade to
standardize interfaces when it published the System V Interface
Definition ("SVID") in 1983. Id. at 17. These standard interfaces
were published by AT&T so that "[d]evelopers can build programs
that are *guaranteed to work on any machine running a SVID-
compIiant version of the Unix System* [e.g., BSD or Xenix]." Id.
Moreover, an independent effort by users and the Institute for
Electrical and Electronic Engineers has resulted in POSIX, "a family
of standards that define the way applications interact with an
operating system." Id. See also, Joint Decl., at Para. 28.3. POSIX has
been endorsed in the United States by the National Institute of
Standards and Technology and it declares standards for the operating
system interface, system calls, libraries, etc. Id. *As a result of
SVID. POSIX and related international standards. all variants of Unix
have certain similarities which USL incorrectly has seized upon as
"proof" of copyright infringement.*

USL's current version of UNIX, SVR4, melds the most popular
variations of Unix into a single operating system "that meets the
needs described by various standards committees and vendor
organizations." Unix Introduction, at 18. As aresult, approximately
50% of USL's current SVR4 is comprised of BSD code. Id. at18-19,
Fig. 1-2. See also, Id. at 19 (BSD's commands), 20 (BSD's C Shell),
32(BSD's system calls for applications doing real-time processing),
22 (BSD's networking capabilities), 23-4 (BSD's file switch and file
systems); See also, McKusick Decl., at Para. 14. USL pays no
royalties for its use of the University's original code and concepts.
McKusick Decl., at Para. 4. This litigation will determine whether
USL may enjoin others also from freely using the University's
original code and concepts.


The mutual intent of the University and AT&T remained unchanged
throughout a series of license agreements the parties entered with
respect to AT&T's UNIX Operating System Software (Karels Decl., at
Para. 6; Wilson Depo., at 41:7-24; 43:1-17; 75:11-76:4); AT&T
authorized the University to develop enhancements, modifications
and derivative software for the public benefit. Towers Decl., at
Para. 4; Karels Decl., at Para. 5 . The contracts, letters and
communications between the University and AT&T, when read
together, prove the University's ownership over its enhancements
and modifications of AT&T code and illuminate what limitations
actually were imposed on the University's public software
distributions. Those limitations are much narrower than what USL
now claims.

As early as 1978, the University informed Western Electric
(AT&T'ssubsidiary) that it was receiving requests by non-Western
Electric licensees for software the University had derived from
early versions of AT&T's UNIX. Exhibit A, attached to the Shapreau
Decl. Western Electric's response to the University's inquiry
regarding its distribution of derivative software to non-licensees
set the precedent for the future:

[W]e 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 methods and concepts utilized
therein. (Emphasis added.) Exhibit B, attached to the Shapreau Decl.

Mr. Edwin Baldwin, then Director of Licensing at Western Electric
who signed Exhibit B, admitted that any University enhancements
which did not "include our computer programs or documentation or
the methods and concepts ... would appear not to be governed by the
Software License Agreement." Baldwin Depo., at 125:8-128:11. In
other words, as long as programs developed by the University from
UNIX did notcontain UNIX code, documentation or trade secrets, AT&T
had no objection to public dissemination. [fn6]

[fn6] To the extent that the methods and concepts at issue in Net2
can also be found in the Sixth Version of the UNIX Operating System,
USL can make no claim to these methods and concepts because
Western Electric permitted the University to use and disclose its
methods and concepts when it amended the license agreement for
the Sixth Edition of the UNIX Operating System as follows:

This is to advise you that the parenthetical clause "... including
methods and concepts utilized therein)..." in Section 4.05 of the
Agreement may be considered deleted from such section. Exhibit D,
attached to the Shapreau Decl.

Moreover, to the extent USL would point to any "methods or
concepts" in 32V, they were well documented before Net2 was
released. See Joint Decl. Paras. 27, 28.1.1-28.6, 31,33, 36, 37, 39.
40, 45, 47, 50, 53 and 56. [end fn6]

The April 1, 1979 license for 32V attached to USL's first amended
complaint is for a central processing unit (CPU) in the Chemistry
Department and not in the Computer Sciences Department. However,
in August 1981, an educational license for 32V was entered into
between the parties for a CPU in the Computer Sciences Department.
The 1981 agreement provides a much broader grant to use than the
1979 agreement relied upon by USL. The 1981 license agreement
provides in relevant part as follows:

Uses for "academic and educational purposes" means uses directly
related to teaching and degree-granting programs *and uses in
research by students and faculty, provided that the results of such
research are not intended primarily for the benefit of a third party
and that such results are published and are available to the public
for no more than reproduction and shipping charges.* Exhibit C,
attached to the Shapreau Decl.
The underlined language did not appear in the 1979 32V license.

Once AT&T divested, effective January 1, 1984, AT&T's orientation
shifted to a more commercial vein (Wilson Depo., at 129:16-130:15;
Frasure Depo., at 195:3-10) which is evidenced by AT&T's attempts
to impose new restrictions on the University to generate additional
profits. Towers Decl., at 11 5-6. One such attempt by AT&T was the
redefinition of the defined term "Licensed Software" in the System
V license agreement signed by the University on July 27, 1984.
Shapreau Decl., Exhibit E; Towers Decl., at 1 5; Karels Decl., at 1 5.
With its new definition of "Licensed Software," AT&T apparently
was attempting to obtain control over any "modification" or
"derivative work" which was "based on" AT&T source code or
documentation, whereas previously AT&T only had claimed rights
with respect to software that "contained" or "included" its source
code.[fn7] However, paragraph 1.01 (a) of Appendix A to the System
V license agreement created ambiguity (in light of the new
definition of "Licensed Software" in the granting clause) by stating
the historic understanding between the parties:

Uses for 'academic and educational purposes' means...uses made in

connection with the development of enhancements or modifications
to LICENSED SOFTWARE provided that...(ii) such results.
enhancements and modifications (all to the extent that they do not
include any portion of LICENSED SOFTWARE) are made available to
anyone (including AT&T and its associated companies) without
restriction on use, copying, or further distribution notwithstanding
any proprietary right (such as a copyright or patent right) that could
be asserted by [the University]...(Emphasis added.) Exhibit E, attached
to the Shapreau Decl.[fn8]

Concerned by AT&T's apparent attempt to restrict the University's
rights in its BSD software (which had an ancestry in 32V, not
System V), the University requested a meeting in which the
definition of "Licensed Software" could be clarified. Karels Dec., at
Para. 6. This was important to the University because it was about
to license 4.2BSD and 4.3BSD to AT&T and other licensees. Towers
Decl., at Para. 5; Karels Decl., at Paras. 4, 9. A meeting was held in
California on March 6, 1985 between the University and
representatives of AT&T to discuss this vital issue (Karels Decl., at
Paras 6-7) and AT&T's effort to increase the fee BSD licensees
would pay if they used computers other than the DEC VAX. Towers
Decl., at Para. 6.

[fn7] The applicable language in the granting clause of the System
V license agreement prior to its modification by the parties stated
as follows:
LICENSED SOFTWARE means all or any portion of the computer
programs, other information and documentation...(iii) prepared by
LICENSEE as a modification of or a derivative work based on any of
the materials so listed or furnished. Exhibit E, attached to the
Shapreau Decl.

[fn8] Three weeks after the University signed the System V
license agreement, AT&T amended the agreement by stating in an
August 15, 1984 letter that: By way of clarification, while we do
not require that results, enhancements, and modifications be made
public, we do require that if the material is to be released at all,

it must be made available to anyone. Exhibit F, attached to the
Shapreau Decl.

At the March 6, 1985 meeting the University expressed its concern
to AT&T representatives that under the new definition of "Licensed
Software," AT&T arguably would control the distribution of the
original code in the University's enhancements to 32V even if they
did not contain AT&T's source code, which was a clear departure
from the parties' prior understanding of the University's rights with
respect to the enhancements it developed from 32V. Towers Decl., at
Paras 4-5; Karels Decl., at Paras. 5-7. AT&T responded to the
University's concerns by indicating that it had not intended to
change the meaning of the definition of "Licensed Software" and that
it would confirm the parties' understanding with a letter. Karels
Decl., at Para. 7.[fn9]

[fn9] Previously, "Licensed Software" had been defined to include
only "the COMPUTER PROGRAMS and the documentation, or any
portions thereof, generally identified below and specifically listed
in the attached Schedule: Unix/32V' Time-Sharing System, Version
1.0." Exhibit C, attached to the Shapreau Decl. USL's witnesses
testified that "Licensed Software" as that definition was used in the
32V agreement was comprised of source and/or object code
(identified in the software schedule attached to the license
agreement), documentation, and methods and concepts. USL's
witnesses did not identify modifications, enhancements or additions
developed by the licensee as a component of the "Licensed Software."
Wilson Depo., at 103:20-104:21; Baldwin Depo., at 121:5-125:5.

The May 15, 1985 letter of clarification -- signed by both parties --
provides the University with a complete defense to USL's
infringement charge:

This is to clarify our understandings regarding certain provisions in
the referenced agreement and to amend the definition of LICENSED
SOFTWARE therein.

Regarding the definition of LICENSED SOFTWARE in the granting
clause, *AT&T does not assert any ownership interest in any
modification or derivative work made by LICENSEE* [the University]
and does not consider that such definition claims such an interest.
(Emphasis added.)

However, for clarification, AT&T proposes to amend such
definition by substituting the following therefor:

--... 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)

Regarding Section 1.01 (a) in Appendix A, the phrase "provided
that...neither the results of such research nor any enhancement or
modification so developed is intended primarily for the benefit of a
third party..." *permits LICENSEE to use LICENSED SOFTWARE for
sponsored research. provided the fruits of such research are not
restricted by the sponsor and are published or otherwise made
available to the public.* Exhibit A, attached to the Karels

[fn10] Although the "re" line of this letter suggests that the
clarification and amendment pertained to the System V license
agreement, the clarification pertained to future distributions of
University BSD software, which had a heritage in 32V, System V.
Karels Decl. Para. 9.

In other words, AT&T agreed not to claim ownership in any
derivative works developed by the University; however, the
University agreed that any derivative works which "contains" AT&T
code (i.e., "Licensed Software") would be treated as if it were AT&T
code and distributed only to AT&T licensees. See Frasure Depo., at

Shortly thereafter, AT&T further memorialized the parties'
understanding regarding ownership and distribution of Unix
enhancements by drafting the Educational Software Agreement No.
E-SOFT-00089 (SOFT-00089). Wilson Depo.,at 139:10 -140:1 (the
SOFT-00089 agreement was a "clearer representation of our
intent")[fn11]. This supplemental agreement executed in November
1985 expressly provides that AT&T claims no ownership interest in
the University's software as long as it does not contain AT&T's
source code or disclose its methods and concepts.[fn12] Consistent
with the May 15, 1985 letter-amendment (Exh. A to Karels Decl.)
SOFT00089 provides in its "Grant of Rights:"

Para. 2.01 (a) ...[the] 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 [AT&T] SOFTWARE
PRODUCT subject to this Agreement is treated hereunder the same
as such [AT&T] 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 [AT&T] SOFTWARE PRODUCT.* (Emphasis added.)

Para. 2.01(b)(ii) ...results enhancements and modifications (all to the
extent that they do not include any portion of [AT&T] SOFTWARE
PRODUCTS) are made available to anyone (including AT&T-IS and its
corporate affiliates) without restriction on use, copying or further
distribution.... Exhibit G, attached to the Shapreau Decl.

Thus, again, AT&T agreed in writing that the University owned all
derivative code and that such derivative enhancements and
modifications should be made "available to anyone" to the extent
"they do not include" AT&T code.[fn13]

[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. 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-
[fn12] USL's witness,Mitzi Bond,testified that the SOFT-00089
superseded AT&T's earlier agreements.Bond Depo., at 132:10-134:2.
Ms. Bond testified that a licensee's use of 32V on a CPU licensed
under SOFT-00089, would be subject to the terms and conditions of
SOFT-00089. Bond Depo., at 39:7-43:5 referring to Exhibit J,
attached to the Shapreau Decl..
[fn13] It appears that AT&T similarly tried to restrict other
licensees' rights with respect to code they derived from AT&T's
UNIX, because AT&T sent out a clarification to all its licensees in
August, 1985 which stated: "Section 2.01. The last sentence was
added to assure licensees that AT&T will claim ownership in the
software that they developed -- only the portion of the software
developed by AT&T." Exhibit H, attached to the Shapreau Decl. The
2.01 referred to in Exhibit H is the same 2.01 contained in the SOFT-
00089 agreement. Frasure Depo., at 1 08:21 -1 1 0; 1 1 2:7-21. USL's
Mitzi Bond participated in the preparation of Exhibit H. 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.

Finally, AT&T acknowledged the University's ownership rights in the
University's derivative BSD code in June 1986, when AT&T signed
license agreements with the University for 4.2BSD and 4.3BSD
(which originated with 32V). Towers Decl., at Para. 3 and Exhibit A,
attached. The agreement for 4.2/4.3BSD states in relevant part:

WHEREAS, *The Regents of the University of California (the
University) is the proprietor and owner of enhancements and
additions to 32V,* which together with parts of 32V comprise
computer programs and documentation entitled "Fourth Berkeley
Software Distribution ("4BSD)....(Emphasis added.)
* * *

Title: AT&T agrees that 4.2 and 4.3 contain proprietary software
belonging to the University. *AT&T shall have no right, title or
interest in or to such proprietary software* except as expressly set
forth in this Agreement. (Emphasis added.) Exhibit A, attached to the
Towers Decl.

AT&T's admission that the University 'owned'' the enhancements I;d
additions to 32V included the University's right to distribute its
software to the public, as evidenced in the testimony of AT&T's
former Director of Licensing, Otis Wilson:

Q: And you weren't trying to assert restrictions on the part [of the
software] that did not belong to AT&T?

A: That's correct. In other words, if you follow that through, it's
yours. I have no jurisdiction whatsoever. Wilson Depo., at 77:19-23.

Q:... 'when the university owns it,' do you mean that they are free and
clear of any restrictions by AT&T?

A: Right... Wilson Depo., at 122:5-10.

Indeed, the mere fact that AT&T needed a license to use the
University's BSD software constitutes an additional admission that
enhancements contained in 4.2BSD and 4.3BSD that were derived
from 32V were not the property of AT&T.[fn14]

However, because 4.2BSD and 4.3BSD also contained some AT&T
source code, the University never licensed these products to non-
AT&T licensees. Towers Decl., at 13. Net2, on the other hand, did not
contain proprietary AT&T source code and, therefore, could be
distributed to persons not holding an AT&T license

[fn14] In 1988, the University registered its copyrights in 4.2BSD
and 4.3BSD. DeFazio Exhibits G and H. These registrations indicate
that the University was the author of various additions,
enhancements and modifications to 32V. The registration for 4.2BSD
indicates that 50% of the commands were derived from 32V and 80%
of the files and 50% of the commands had been added to 32V by the
University. The registration for 4.3BSD indicates that 45% of the
commands were derived from 32V and that 85% of the files and 55%
of the commands had been added to 32V by the University.


The University released the first Berkeley Software Distribution
(1BSD) in 1978. McKusick Decl., at Para. 2. That first release was
comprised of applications programs for PDP-11 computers running
AT&T's Version 6 UNIX. Over the next ten years, the University
released improved BSD software for various computers, including
the DEC VAX, Computer Consoles' 6/32, and Hewlett-Packard's
9000/300 series. Beginning with 3BSD, released in 1980, each BSD
release has been a complete system, including the operating system.

Since the BSD releases contained some AT&T code, they were
distributed only to AT&T licensees. However, in 1987, the University
began to distribute portions of the system that contained no AT&T
code to non-AT&T licensees. Id., at Para. 2.8 and Para. 2.9. Moreover,
large portions of 4.3BSD-Tahoe and 4.3BSD-Reno were marked as
freely redistributable without an AT&T license; those files
contained no AT&T code and, therefore, under the parties'
agreements were owned by the University and were to be available
to the public. Id., at Para. 2.10 and Para. 2.12.

The University released Net1 in November 1988. Net1 was largely
the AT&T-free files from 4.3BSD-Tahoe and it was clearly marked
as requiring no AT&T license. At least three copies of Net1 were
shipped to AT&T. At no time did AT&T complain that Net1 was an
infringing work released in violation of any license agreement even
though -- like the subsequent Net2 release -- it could be traced back
to 32V. Id., at Para. 2.11.

Net2 was released in June 1991. Unlike USL's SVR4, Net2 is not a
complete system; in its present state, Net2 will not compile and
function. Id., at Para. 2.13. Net2 consists of the redistributable files
from 4.3BSD-Reno which contained no AT&T code, new features that
contain no AT&T software and utility programs that have analogs in
32V but which were completely rewritten with new, original code
that implemented standard POSIX interfaces. Id., at Para. 2.13. The
University made every attempt to ensure that none of the files
released in Net2 contained AT&T code. Id., at Para. 2.13 and Para. 3
[fn15] Accordingly, USL does not claim in its pending motion that
any of the 4,193 source files in Net2 are comprised of 32V code.

[fn15] Indeed, several of the Net2 files specifically deleted all
source code. See e.q.. Joint Decl. Paras. 31, 45. If any Net2 file
mistakenly included a significant volume of 32V code, the University
stands ready to remedy the error.



USL and its predecessor entities contractually authorized the
University to develop and non-commercially distribute to the public
the University's modifications, enhancements and derivative works
as long as the University's software did not contain USL's code or
disclose its trade secrets. See, Section II, B, supra. This contractual
grant of rights provides a complete defense to USL's claim that Net2
is an infringing work. Compare, Platinum Records Co. v. Lucasfilm,
Ltd., 566 F.Supp. 226, 227 (D.N.J. 1983) (rights granted by license
agreement provide complete defense to copyright infringement

The law is clear that the authority to copy, distribute or display a
copyrighted work granted by a license agreement is an absolute
defense to a claim of copyright infringement. See, Effects
Associates, Inc. v. Cohen, 908 F.2d 555,558 (9th Cir. 1990) (company
which created and delivered footage at request of movie maker
impliedly granted movie maker non-exclusive license to incorporate
footage into movie, and thus movie maker did not infringe on maker's
copyright);Apple Computer. Inc. v. Microsoft Corp., 717 F. Supp. 1428,
1432 (N.D. Cal. 1989)(to the extent license agreement authorizes the
use of visual displays, it provides a defense to infringement claims
based on the use of such visual displays).

A copyright license is a contract like any other contract and the
starting point of the analysis concerning the license must be the
terms of the license. Apple Computer. Inc. v. Microsoft Corp., supra,
717 F. Supp. at 1432. The licensee may properly pursue any uses
which may reasonably be said to fall within the license. "If the
words are broad enough to cover the new use, it seems fairer that
the burden of framing and negotiating an exception should fall on the
grantor." Bartsch v. Metro-Goldwyn-Mayer. Inc., 391 F.2d 150, 155
(2nd Cir. 1968). In Bartsch, Judge Friendly held that a license
agreement that authorized a motion picture company to"copyright,
vend, license and exhibit such motion picture photoplay throughout
the world" included the right to televise the motion picture version
of the musical play,although television technology was not known at
the time the contract was entered into. Placing the burden of
expressly excluding a particular use on the grantor, Judge Friendly
wrote: "If Bartsch or his assignors had desired to limit 'exhibition'
of the motion picture to the conventional method where light is
carried from a projector to a screen directly beheld by the viewer,
they could have said so." Bartsch, supra at 155. See also, Platinum
Record Company. Inc. v. Lucasfilm. Ltd., 566 F. Supp. 226,227 (1983)
(where license agreement granted right to perform motion picture
"by any means or methods now or hereafter known," it was
immaterial whether the copyright owner anticipated new
development of video tapes and video tape recorders; Rooney v.
Columbia Pictures Industries, 538 F. Supp. 211 (S.D.N.Y. 1982).

The University's right to develop and non-commercially distribute to
the public the University's modifications, enhancements and
derivative works cannot be repudiated by USL at this late date.
Moreover, the parties' actions throughout the licensing history
demonstrates the intent of the licenses and estops USL from
asserting its copyright infringement claim for the entire period in

Four elements are necessary to establish an equitable estoppel
defense to a copyright infringement claim: (1) the plaintiff must
know the facts of the defendant's infringing conduct; (2) the
plaintiff must intend that his conduct be acted on or must so act
that the defendant has a right to believe that it is so intended;
(3) the defendant must be ignorant of the true facts; and (4) the
defendant must detrimentally rely on plaintiff's conduct. Hadady
Corp. v. Dean Witter Reynolds. Inc., 739 F.Supp. 1392, 1399 (C.D. Cal.
1990). In this case, all four elements are satisfied with respect to
USL's copyright infringement claim.

First, the evidence is undisputed that USL knew that the University
developed and distributed enhancements to the UNIX software. In
fact, the license agreements specifically provided for these

--in 1981, in the 32V license for the University's Computer Sciences
Department, AT&T granted the right to use 32V for research
"provided the results of such research ... are published and are
available to the public ...." [Exhibit C, attached to the Shapreau Decl.;

--the May 15, 1985, the letter-amendment signed by both parties
following a meeting called specifically to discuss the University's
rights to the code it developed stated, "AT&T does not assert any
ownership interest in any modification or derivative work made by
[the University]" [Exhibit A, attached to the Karels Decl.];[fn16]

[fn16] AT&T made similar assurances to other licensees. See
Exhibit H, attached to the Shapreau Decl.

--in November 1985, the new software boiler plate which AT&T
claims superseded prior licenses acknowledged that AT&T "claims
no ownership interest in any portion of such a modification or
derivative work" that does not include AT&T code Exhibit G, attached
to the Shapreau Decl.];

--in June 1986, AT&T signed the University's 4.2/4.3BSD License
Agreement, acknowledging the University "is the proprietor and
owner of enhancements and additions to 32V ...." [Exhibit A,
attached to the Towers Decl.].

Second, the University has exercised the rights granted to it by
AT&T as follows:

- the TCP/IP files (originally part of 4.2BSD) were distributed
to non-AT&T licensees in April 1988;

- over 1300 files from 4.3BSD-Tahoe were released in June
1988 and marked as freely redistributable to non-AT&T licensees;

- Net 1 - 687 source code files - was released in November 1988
to non-AT&T licensees;

- 2200 source code files from 4.3BSD-Reno were released as
freely redistributable in July 1990.

McKusick Decl., at Paras. 2.9-2.12. Third, there is no evidence that
the University had reason to believe that USL was asserting
copyright protection over the University's enhancements until USL
initiated the present lawsuit. At no time did AT&T complain
that the University was in breach of any license agreement or in
violation of the Copyright Act. Id. Finally, the University
detrimentally relied on USL's actions demonstrating that USL was
not asserting its copyright in 32V against the University's
enhancements by expending time and effort in continuing to develop
such enhancements and distributing those enhancements to the
public (and to AT&T).

Only one reasonable conclusion can be drawn from these facts. USL
either granted the University a license to develop and release
enhanced software or USL is equitably estopped to assert a
copyright infringement claim based on the University's development
and release of any enhancement to UNIX software. Any other
conclusion would render the parties' agreements illusory.


USL argues at pps. 28-38 of its memorandum that "substantial
portions of Net2 were copied from UNIX 32V." USL is wrong both as a
matter of fact and as a matter of law

First, Net2 is not copied from 32V. USL cites no portion of the Net2
program source code which is copied from 32V source code. Instead,
USL misleadingly directs the Court's attention to some file names or
function names that are common to both programs; those file and
function names are mnemonics dictated by programming conventions
or interface requirements which are not protectible elements of
32V; more importantly, the files and functions cited by USL are
implemented in Net2 by wholly original source code bearing no
similarity to 32V.

Second, USL is wrong when it argues that Net2 is an infringing
derivative work merely because the "starting point" of Net2 was
32V. Even if the University did not have the contractual right to
develop and distribute enhancements or improvements to 32V, Net2
still could not be considered an infringing work because it is not
"substantially similar" to protected elements of 32V.


USL would have this Court label Net2 an infringing derivative work
simply because the University's development efforts originated in
the late 1970s with 32V. The nation's leading treatise on copyright
law should give the Court pause before it accepts USL's invitation to
commit error in this manner: "[A] defendant may legitimately avoid
infringement by intentionally making sufficient changes in a work
which would otherwise be regarded as substantially similar to that
of plaintiff's." 3 Nimmer on Copyright 13.03 [B] at 13-37 (1980),
quoted with approval in Eden Toys, Inc. v. Marshall Field & Co., 675
F.2d 498, 501 (2nd Cir. 1982) and Warner Bros. v. American
Broadcast Companies, 654 F.2d 204, 211 (2nd Cir. 1981).

"Defendants are correct that if one starts with an infringing copy
and makes enough changes eliminating the copied expression, the
object eventually will cease to infringe. This may occur even
before the last copied vestige have disappeared if the copied
elements has been reduced to de minimis proportions."
Merton Co. v. Tony Trading of Hong Kong. Ltd., 6 U.S.P.Q.2d 1156, 1157
(S.D.N.Y.1987). See also, See v. Durang, 711 F.2d 141, 142 (9th Cir.
1983) ("copying deleted or so disguised as to be unrecognizable is
not copying.").[fn17]

[fn17] These precedents have been applied to copyrighted
computer programs such as the one at issue here. In NEC Corp. v.
Intel Con)., 10 U.S.P.Q.2d 1177, 1187 (N.D. Cal. 1989), NEC had
changed Intel's micro-code to such a degree that "there remain[ed] no
basis for a claim of copying or even substantial similarity. In
Computer Associates International. Inc. v. Altai. Inc., 775 F.Supp.
544(E.D.N.Y. 1991 ) aff'd F.2d (2nd Cir. 1992), defendant recalled an
infringing program and wrote new code for 30% of it to certain
defined parameters (Id. at 554); the revised program was held not to
be infringing notwithstanding its tainted pedigree. Id. at 561-62.

Net2 is light years beyond 32V in terms of its functionality,
efficiency and implementation. The source code which makes Net2
far more powerful than 32V is original code developed by the
University. Joint Decl., at 12. USL does not claim otherwise. Instead,
USL points to an insignificant number of "artifacts" which"prove" a
common starting point in 32V: the similarity in a mere 30 file
names(0.2% of the Net2 files, Joint Decl., at 1 28 and 1 13); 16
kernel functions with similar parameters (out of 3,230 Net2 kernel
functions or 0.4%, Id., at 1 39) and 66 matching symbols (0.5% of
Net2's 12,529 symbols, Id., at 147). The Copyright Act does not
recognize the doctrine of "fruit of the poisonous tree" [3 N. Nimmer
and D. Nimmer, Copyright 14.06 [C] (1991)]; therefore, USL must
demonstrate far more than Net2's ancestry in 32V -- an ancestry
which has all but been erased -- to establish that Net2 is an
infringing work.


To prove that Net infringes 32V, USL must show that Net2 is
substantially similar to 32V. Whelan Assoc.. Inc. v. Jaslow Dental
Laboratory, Inc.,797 F.2d 1222, 1232 (3rd Cir. 1986). In conducting
the "substantial similarity comparison, the Court must disregard
unprotected elements of 32V. Brown Bag 15 Software v. Symantec,
960 F.2d 1465, 1475-6 (9th Cir. 1992). Cf. Feist 16 Publications.
Inc. v. Rural Tel. Service Co., U.S. , 111 S.Ct. 1282, 1290 (1991) 17
("The mere fact that a work is copyrighted does not mean that every
element of the 8 work may be protected.") USL's copyright in 32V
(assuming it is valid) cannot prevent others from using the
unprotected elements of the program. Brown Bag Software, 960 F.2d
at 1476.

The unprotectible elements of a computer program were explicated
bythe Federal Circuit in Atari Games Corp. v. Nintendo of America.
Inc., F.2d 24 U.S.P.Q.2d 1015, 1020 (Fed. Cir. 1992):

"After separating the program into manageable components, the
court must next filter the unprotectible components of the program
from the protectible expression. The court must filter out as
unprotectible the ideas, ... expression already in the public domain,
expression dictated by external factors (like the computer's
mechanical specifications, compatibility with other programs. and
demands of the industry served by the program) "

Accord, Computer Assoc. Int'l., Inc. v. Altai, Inc., F.2d , 1992, 23
U.S.P.(.2d 1241, 1252-3 (2nd Cir. 1992); Apple Computer v. Microsoft
Corp., 799 F.Supp. 1006, 1020-21 (N.D. Cal. 1992). Every one of the
"similarities" between 32V and Net2 cited by USL's expert, Dr.
Carson, falls within the Federal Circuit's description of the
unprotected elements of a computer program.

Although page 31 of USL's brief states "Dr. Carson has found
numerous instances of identity or substantial similarity between
source code within the Net2 and Unix/32V kernels", nothing could be
farther from the truth. As the Court may read for itself, Dr. Carson's
affidavit makes no mention of any source code similarity between
Net2 and 32V. Instead, he points to file names, function names and
defined constants. See, Carson Affid., at Paras. 28, 32, 47. These
alleged similarities are de minimis in number but, more importantly,
they are not protected by any copyright USL may have in 32V because
they are "dictated by external factors." Atari Games,supra; Computer
Associates, supra; Brown Bag Software, supra.

Dr. Carson points to similarities in the names of nine source code
files in Net2 (1..7% of the total 539 Net2 kernel source code files
and 0.2% of the total Net2 source files, Joint Decl., at 128.1). Carson
Affid., at Para. 28. In one of the nine, the Net2 file contained no
source code at all; the code in the other eight source code files is all
original material, Joint Decl., at Para. 28.1. The eight file names are
similar because the file names are mnemonics which -- for
technical reasons -- are limited to 10 characters and which -- by
convention -- describe the contents of the file. Id., at Para. 26. With
such a limited range of possible "expression," one would expect to
find some duplication. Thus "acct" is an obvious mnemonic for
"accounting" and the"clock" file describes the "clock" function. All of
the "similarities" cited by Dr.Carson are explainable as standard
industry mnemonics or programming conventions. Id. at Paras.
28.1.2-28.2. Those mnemonics are not protectible even if they were
probative. [fn18]

Dr. Carson also points to 20 header file names. Carson Affid., at
Para. 28. The "header files define how utilities obtain services from
the operating system." Joint Decl., at Para. 28.3. Similarity in header
file names is dictated by standards and functionality requirements
so that applications programs written for all variants of Unix will
work with Net2:

"If the names of the header files or their contents are changed, or
the function names are changed or take different parameters, then
utility programs and device drivers that were those header files or
use those functions will no longer work."
* * *

"Any operating system wishing to offer kernel services in a
compatible fashion with the Unix interface specifications has no
choice but to have the exact same header file names and contents,
and functional interfaces.... The header files have to exist, with the
name used by the standard, and with the specific contents listed by
the standard, for an operating system to be certified as complying
with the standard."

Joint Decl., at Para. 28.3. Four of the header file names cited by Dr.
Carson are "nonsensical;" the remainder are required interfaces. Id.,
at Para. 28.6. Accordingly, the header file names fall squarely within
the Federal Circuits' holding in Atari Games that "expression
dictated by external factors (like the computer's mechanical
specifications, *compatibility with other programs. and demands of
the industry* ...)" are not protectible elements of a computer
program and, therefore, provide no grounds for a finding that Net2 is
an infringing work. See also, Apple Computer, supra, 799 F.Supp. at
1021 ("The functionality of a feature may deprive it of protection
under the copyright laws.")[fn19]
2 4

[fn18] The Copyright Office's Regulation 325.02(c) states that
mnemonics are not copyrightable elements of a work.

[fn19] Analysis of the function names cited by Dr. Carson is the
same. Joint Decl. Para. 32. The statement by Dr. Carson in Para. 33 of
his affidavit that the functions with the same names do "precisely
the same task in both the UNIX/32V and Net2 code" is misleading.
Joint Decl. Para. 33. Moreover, "The Net2 distribution did not contain
actual source code that implemented any of these functions listed in
1 36], therefore the only possible commonality between 32V and
Net2 was the names and parameters of the functions." Joint Decl.
Para. 36. The names and parameters of these functions are widely
documented mnemonics. Id. Paras. 36, 37, 39. Finally, the Court
should note that only 16 of Net2's 3230 kernel functions (0.5%) are
claimed to have the same parameters; those parameters are well-
documented and widely used. Id. Para. 39. See also, Id. Para. 40-42.

Net2 contains 12,529 symbols similar to those described in Para. 47
of Dr.Carson's affidavit. Joint Decl., at Para. 47. From that large
universe, Dr. Carson has found 116 matches; he admits that 50 of
those 116 matches are required by the POSIX standards, leaving only
66 "unexplained" matches (0.5% of the 12,529 symbols in Net2)
which he claims indicate copyright infringement. Carson Affid., at
Para. 47. But the "remaining 66 matches are also dictated by
industry standards,compatibility, or common usage." Joint Decl., at
Para. 47

"The similarity of such functional elements in products of like kind
does not suggest unlawful copying, but standardization across
competing products for functional considerations."

Apple Computer, supra, 799 F.Supp at 1023. As documented over
three pages in Table 7 of the Joint Declaration, the symbols cited by
Dr. Carson are widely documented and "every single one of them is
part of the interface specification of UNIX or a Unix-compatible
system. Joint Decl., at Para 47. "Application, operating system and
device-driver programmers use these symbols constantly, and to
change them would mean that 20 years of software development
would be useless on the modified system [Net2]." Id. Hence, as with
the header file names, the symbols cited by Dr. Carson are not
protectible; they are mandated by "compatibility with other
programs and demands of the industry served by the program." Atari

The Third Circuit -- unlike the Federal Circuit, Second Circuit and
Ninth Circuit -- has not recently addressed the scope of a copyright
in computer programs,but its older decisions in Whelan and Apple
Computer. Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3rd Cir.
1983) are not inconsistent with the more recent authorities *as
they apply to this action.* This case does not concern screen
interfaces; this case implicates the protectibility of technical
interfaces, i.e., elements of a program that are required for it to
work with other programs.

Apple Computer, one of the seminal computer code copyright
cases,recognized that a program is not a copyrightable expression of
an "idea" if other programs cannot be written to perform the same
function. 714 F.2d at 1253. The Apple Computer Court cited with
approval page 20 of the CONTU Report (Id.)[fn20] which states the
applicable rule:

"The 'idea-expression identity' exception provides that *copyrighted
language may be copied without infringing when there is but a
limited number of ways to express a given idea.* This rule is the
logical extension of the fundamental principle that copyright cannot
protect ideas. *In the computer context this means that when
specific instructions. even though previously copyrighted. are the
only and essential means of accomplishing a given task. their later
use by another will not amount to infringement....* [C]opyright
protection for programs does not threaten to block the use of ideas
or of program language previously developed by others *when that
use is necessary to achieve a certain result."* (Emphasis added)

CONTU Final Report (1979) at 20.

[fn20] In Apple Computer, the Third Circuit stated, "[W]e can
consider the CONTU Report as accepted by Congress ...." 714 F.2d
1252. See also, Apple Computer. Inc. v. Formula Int'l.. Inc., 725 F.2d
521, 525 (9th Cir. 1984)

Whelan likewise recognized there are limits upon copyright
protection for computer programs:

"It is true that for certain tasks there are only a very limited
number of file structures available, and in such cases the structures
might not be copyrightable and similarity of file structures might
not be strongly probative of similarity of the program as a whole."

797 F.2d at 1243 n.43. Applying the "scenes a faire" doctrine
developed for traditional literary works, the Court also recognized
"that anything necessary to effecting [a] function is also,
necessarily, part of the idea, too" and, therefore,unprotected by
copyright. 797 F.2d at 1236. Although the proof necessary to invoke
the limitations on plaintiff's copyright described by the Court was
lacking in Whelan (797 F.2d at 1243 n.43), the Joint Declaration
certainly establishes sufficient facts to support the University's
defense in this case: the similarity in mnemonic filenames and
symbols are neither protected nor probative of similarity between
the programs "as a whole." Id.

After 400 hours of research, the only similarities between 32V and
Net2 found by Dr. Carson which are described in his affidavit are
unprotected elements of the program. If this Court sifts out the
elements of 32V which are found in Net2 because of external factors
(e.g., compatibility with other programs) or in the public domain
(e.g., standardized, technical interface specifications), it has
nothing left with which to conduct the "substantial similarity"
analysis. See Atari Games, supra; Computer Associates, supra;
Brown Bag Software, supra. Accordingly, this Court cannot find Net2
to be an infringement of USL's alleged copyright in 32V.


USL's 32V code was created in 1978. DeFazio Decl., Exh. F. USL
forfeited its copyright protection for 32V when its predecessors,
Western Electric and AT&T, distributed 32V to the public without a
copyright notice (McKusick Decl, at Para. 4 and Joint Decl., at Para.
28.4) and failed to register 32V until 1992, fourteen years after
32V was first published. [fn21]

[fn21] Unlike USL's 32V, post-Berne Convention Implementation Act
works, created after March 1, 1989, are not required to have a
copyright notice. 17 U.S.C. Section 405.

Under the 1976 Copyright Act, omission of a copyright notice from
copies publicly distributed by the copyright owner invalidates the
copyright in the work unless (1) notice has been omitted from a
small number of copies[fn22], (2)registration is made within five
years after publication without notice, or (3) notice was omitted in
violation of an express requirement in writing. 17 U.S.C. Section
405(a).Here, USL can find no refuge in any of the three exceptions
under 405(a) because thousands of copies of 32V were publicly
distributed without copyright notices and registration followed
publication by fourteen years. To the University's knowledge, no
express requirement by Western Electric that notice be included in
32V was violated. In fact, Western Electric intentionally removed
copyright notices from every file contained in 32V prior to
publication. McKusick Decl., at Para. 4.

[fn22] NEC Corp. v. Intel Cor., 10 U.S.P.Q.2d 1177 (N.D. Cal. 1989)
(copyright forfeited when Intel allowed a relatively large number of
copies of its microcode to be publicly distributed without a
copyright notice).


USL contends that its distribution of 32V to thousands of licensees
constituted a "limited publication" which purportedly precludes
"publication" of 32V. See USL's Memorandum, at 27 fn 14. What USL
does not tell the Court is that the distribution of 32V in source and
object code[fn23] was widely distributed to virtually anyone willing
to pay for it (see Greene Depo., at 86:21-90:21; Bond Depo., at 17:13-
20:18; Baldwin Depo., at 71:25-73:5), provided that the United States
government did not prohibit the distribution, and that the licensees
were willing to comply with the licensing restrictions (Greene
Depo., at 80:13-17). USL's licensees for 32V included thousands of
governmental, educational, and commercial licensees [fn24] around
the world. [fn25] USL's limited publication argument is an attempt to
escape the statutory requirements of the Copyright Act while
simultaneously enjoying its exclusive rights under Section 106.

[fn23] The very header files about which USL complains were
published in object code distributions. Joint Decl., at Para. 28.4.

[fn24] USL produced a 1986 data base of its source code licensees,
bates nos. P8832-9312) which is too large to attach in total.
However, the data base contains approximately 5,760 licensees for
AT&T's various software products. A large number of these licensees
could obtain 32V though AT&T's source code exchange program.
Frasure Depo., at 54:25-57:8. The voluminous data base does not even
list every source licensee for 32V, as evidenced by the absence of
any 32V entries for the University of California. Exh. I, attached to
the Shapreau Decl.; see Bond Depo., at 199:1-201:19; Greene Depo., at
124:19-129:9. In addition, AT&T required that each central
processing unit be individually licensed for the use of 32V. Bond
Depo., at 202:15-19. Therefore, the number of licenses for 32V (and
the individuals exposed to 32V) far exceeded the number of entity
licensees.USL's predecessors also distributed 32V in source code
through its "source code exchange program"which enabled an AT&T
licensee for any Unix operating system subsequent to 32V to obtain
32V from another AT&T licensee. Frasure Depo., at 54:25-57:8;
Wilson Depo. at 92:23-93:9.

[fn25] In fact, AT&T divided its international licensing group in the
mid-1980s into three groups: (1) London and Europe; (2) Tokyo and
the Pacific Rim; and 3) "The Rest of the World." Greene Depo., at
82:20; 83:7-9; see also. Exhibit P, attached to the Shapreau Decl.

Under the common law, a publication is "limited" only if it
communicates the contents of a work to:
(1) a definitely selected group;
(2) for a limited purpose; and
(3) without the right of diffusion, reproduction, distribution or sale.
White v. Kimmell, 193 F.2d 744 746-747 (9th Cir. 1952); accord
Academy of Motion Picture Arts And Sciences v. Creative House
Promotions, 944 F.2d 1446, 1452-53 (9th Cir. 1991); Bull Publishing
Co. v. Sandoz Nutrition, 13 U.S.P.Q.2d 1678, 1682 (N.D. Ca. 1989).

Although the text of the 1976 Copyright Act does not make any
reference to the doctrine of limited publication and Section 101
defines "publication," courts have continued to apply the common
law doctrine of limited publication to works published after January
1, 1978, the effective date of the 1976 Copyright Act. Nimmer, The
Law of Copyright, 4.13 [B], at 4-72-73 (1992), citing Hubco Data
Products Corp. v. Management Assistance Inc., 219 U.S.P.Q. 450 (D.
Ida. 1983). Examples of limited publications typically arise where an
author distributes copies of her work to a small group for the
limited purpose of review, criticism, education or performance 2
and with an express or implied understanding that no reproduction or
distribution will take place. See, White v. Kimmell, supra 193 F.2d at


A publication will not be "limited" if the distribution of copies of a
work is available to all comers, even if there is a limited purpose
for the publication or if restrictions are placed upon the use of the
work.[fn26] For example, in Brown v. Tabb,714 F.2d 1088 (11th Cir.
1983) the Eleventh Circuit held that a musical jingle had been
"published." The customized jingle at issue was not distributed to a
"selected group" because it was "available to any automobile dealer
doing business in a market not yet exposed to the jingle who would
pay the price." 714 F.2d 1092. Accord, Continental Casualty Company
v. Beardsley, 253 F.2d 702, 706-07 (2nd Cir. 1958)(distribution of a
work to prospective customers was not a "definitely selected group"
because the only limitation was that attributable to a lack of
general interest in the highly specialized subject matter of the
work).[fn27] "In cases where general publication has been found, the
creator had made his work available in a manner that suggested that
*any interested person could have a copy.*" (Emphasis added) Burke
v. National Broadcasting Co., 598 F.2d 688, 692 (1st Cir. 1979).

[fn26] See e.g., American Visuals v. Holland, 239 F.2d 740, 744 (2d
Cir. 19561 ("while the 'purpose' of the distribution was limited, the
'persons' to whom it might be given was unlimited); Brown v.Tabb,
714 F.2d 1088, 1091 (11th Cir. 1983) ("the requirement that there
be no right of sale or distribution is separate from and in addition to
the requirement that there be a limited purpose."); H.W.Wilson Co. v.
National Library Serv. Co., 402 F.Supp. 456, 457-58 (S.D.N.Y. 1975)
(legend in a book restricting transfer insufficient to constitute
limited publication because the publication was not limited to a
selected group or for a limited purpose; Continental Cas. Co. v.
Beardsley, 253 F.2d 702, 706|07 (2d Cir. 1958); Jewelers' Mercantile
Agency. Ltd. v. Jewelers' Weekly Publishing Co., 155 N.Y., 251, 49 N.E.
872 (1 898) ("The fact that the publisher of the book undertook to
place restrictions on the use which individual purchasers could make
of it. . .does not constitute such a limitation as takes away from the
act of the plaintiff its real character, which is that of publication");
compare American Vitagraph, Inc. v. Levy, 659 F.2d 1023, 1028 (9th
Cir. 1981) (one week screening of motion picture in one location to
gauge audience reaction to the film during the editing process and
with no commercial exploitation was held to be a limited
publication under the 1909 Act.); Academy of Motion Picture Arts v.
Creative House, 944 F.2d 1449, 1452 (9th Cir. 1991).

[fn27] Although USL has indicated that it did not license 32V in
source code to individuals or 27 partnerships, 32V was first
published in an era that predated personal computer proliferation. As
such, there was a lack of general interest in 32V by individuals or
partnerships who, by virtue of the size of their businesses and the
technology of the day, would not be using the large computer
systems on which 32V was generally utilized. Therefore, the lack of
general interest in 32V on the part of individuals and partnerships
does not aid USL in its "selected group" argument.

Similarly, in H.W. Wilson Co. v. National Library Service Co., 402
F.Supp. 456 (S.D.N.Y. 1975), from 1900 to 1970, plaintiff
disseminated its Reader's Guide without a copyright notice. Plaintiff
claimed it did not intend to dedicate the material to the public and
pointed to a *restrictive legend* on many of the volumes which read
"This volume has been supplied on a contract which provides that it
is not to be sold or given away without the permission of the
publisher." Id. at 457-458,fn 1. However, the work was otherwise
unrestricted to either persons or purpose.Therefore, the court found
that a general publication had taken place Id. at 458.

Here, just as in Tabb, Continental and Wilson, the work at issue was
widely available those interested in the product.[fn28] The fact that
USL placed restrictions on the distribution of 32V does not alter the
fact that 32V was distributed to a non-selected group.

[fn28] USL's licensing of 32V to thousands of licensees further
undermines its ability to meet the"selected group" requirement. e.g.,
Williams & Wilkins Company v. United States, 487 F.2d 1345, (Ct.
Claims 1973), aff'd 420 U.S. 376 1975) (publication is a "concept
which invokes general distribution, or at least a *supplying of the
material to a fairly large group"* (emphasis added).


In USL's Memorandum, it admits that 32V was "published" in object
code. (USL's Moving Papers, at 11,[fn29] and 27) In GCA Corp. v.
Chance, 217 U.S.P.Q. 718, 720 (N.D. Cal. 1982), the court stated that
"[a]ny prior distribution of its object code by plaintiff, if public,
would have placed it in the public domain,beyond copyright
protection." It is clear that the source and binary code for 32V are
but one work. As Judge Patel pointed out in GCA Corp. v. Chance, 217
U.S.P.Q.(N.D. Cal. 1982):

Because the object code is the encryption of the copyrighted source

code, the two are to be treated as one work; therefore, copyright of
the source code protects the object code as well. Id. 217 U.S.P.Q. at

Accord, Data General Corp. v. Grumman Systems Support Corp.,
F.Supp. , 612315, 1992 WL 297641, at page 3-4 (D. Mass. Oct. 9,
1992) (the source code and object code are two representations of
the same computer program).Similarly, in Sega Enterprises Ltd. v.
Accolade, F.2d , 24 U.S.P.Q.2d 1561,n.8 (9th Cir. 1992), the Ninth
Circuit rejected plaintiff's argument that its source code was an
unpublished work because plaintiff had published its software in
object code. Therefore, because USL's predecessors published 32V in
object code(which also contained the 32V header files in source
code), *the source code version of 32V also has been published.*

[fn29] Contrary to USL's contention, the object code distributions
of 32V contained no copyright notices. Joint Decl., at Para. 28.4.


A "limited purpose" has traditionally meant distribution of copies of
a work for limited purposes such as review or criticism[fn30],
promotion,[fn31] education[fn32] or performance,[fn33] not for mere
commercial gain.[fn34] In White v. Kimmell, 193 F.2d 744 (9th Cir.
1952), the Ninth Circuit stated that "[o]ne must...look to what [the
publisher] intended to do rather than at what he intended to be the
legal consequence of his acts." Id. at 747. "However, an author's
intent as to publication should not be given controlling weight
against the effect of his acts." Public Affairs Associates. Inc. v.
Rickover, 284 F.2d 262, 270 (D.C. Cir. 1960), vacated on other
grounds, 369 U.S. 111 (1962) (Admiral Rickover's distribution of
almost all of his addresses constituted dedication to public use
because the addresses were available to anyone who was
interested). What USL intended, and what it did, was to publish 32V
for commercial profit.

Here, USL's purpose in distributing 32V has not been limited.
Instead,USL's principal purpose for licensing 32V to governmental
entities, educational institutions, and commercial entities around
the world has been primarily for commercial gain. As USL notes in
its Moving Papers, it currently sells its Unix operating system
licenses for $200,000 each. Accordingly, because USL did not
distribute 32V for a limited purpose, such as review, criticism,
education or promotion, it cannot seek refuge under the limited
publication doctrine.

[fn30] See Key West Hand Print Fabrics. Inc. v. Serbin. Inc., 244
F.Supp. 287,291 (S.D. Fla. 1965)(exhibition of fabric renderings to
get opinion or reaction); Nucor Corp. v. Tennessee Forging SteelServ..
Inc.. 476 F.2d 386 (8th Cir. 1973) (distribution of architectural plan
to contractors for bidding purposes); Ashworth v. Glover. 156 U.S.P.Q.
219, 221 (Utah 1967) (requiring $25 deposit for bidder's review of
architectural plans and filing plans with city pursuant to permit
requirement); Hub Floral Corp.v. Royal Brass Corp., 454 F.2d 1226 (2d
Cir. 1972) (distribution of samples and photographs to dealers for
purpose of obtaining orders held limited publication);

[fn31] Ruskin v. Sunrise Management, Inc., 506 F.Supp. 1284, 1287-
88 (D. Colo 1981 ) (distribution of sound recording to radio stations
without copyright notice for promotional purpose only, and not for
sale or other commercial purpose, constitutes limited publication);
Foreign Car Parts. Inc. of New England v. Auto World, Inc., 366 F.Supp.
977, 979-880 (M.D. Pa. 1973) (distribution of promotional material
to dealers held a limited publication).

[fn32] Bull Publishing Co. v. Sandoz Nutrition. 13 U.S.P.Q.2d 1678,
1682 (N.D. Ca. 1989).

[fn33] See Jerome v. Twentieth Century Fox Film Corp., 67 F.Supp.
736, 739 (S.D.N.Y. 1946) (performance of musical composition and
distribution of copies to professional entertainers); American
Vitagraph, Inc. v. Levy. 659 F.2d 1023, 1027 (9th Cir. 1981) (one
week film screening followed by additional editing).

[fn34] See e.g. American Vitagraph. Inc. v. Levy, 659 F.2d 1023,
1028 (9th Cir. 1981); compare Academy of Motion Picture Arts And
Sciences v. Creative House Promotions, 944 F.2d 1446, 1453(9th Cir.
1991 )("indirect commercial benefits do not necessarily transform a
limited distribution into a general publication where no direct sales
of the work are involved); Patterson v. Century Productions.Inc., 93
F.2d 489, 491 (2d Cir. 1937) cert denied, 303 U.S. 655 (1938)
(limited and non-commercial display and distribution of film
constituted a limited publication);Nimmer, The Law of Copyright,
4.11[A], at 4-54 (1992).


Although USL defines a trade secret as "[a]ny formula, pattern,
device or compilation of information" (USL's Moving Papers, at 39),
it has failed to identify which specific trade secrets have
purportedly been misappropriated by the University in Net2. Instead,
USL claims its entire "source code" constitutes its trade
secrets.(USL's Moving Papers, at 40.) To the extent the University
can guess what USL contends to be its trade secrets, its
misappropriation claim must fail for two distinct reasons: (1) it is
preempted by the Copyright Act and (2) USL's purported trade
secrets are not secrets at all because they were injected into the
public domain prior to the distribution of Net2.


USL's claim that the University misappropriated its trade secrets
when it allegedly reproduced and distributed software "based upon
or derived from" 32V is preempted by the Copyright Act. The
Copyright Act preempts state common law claims that assert rights
equivalent to-those protected by federal copyright law. 17 U.S.C.
301(a). A finding of preemption requires the satisfaction of a two-
prong test: (1) the common law state claim must protect legal or
equitable rights that are equivalent to the exclusive rights under
106 of the Copyright Act and (2) the work must fall within the
subject matter of the Copyright Act as defined in 17 U.S.C.Sections
102 and 103. Del Madera Properties v. Rhodes and Gardner. Inc., 820
F.2d 973, 976 (9th Cir. 1987), citing Harper & Row Publisher. Inc. v.
Nation Enterprises,
501 F. Supp. 848, 850 (S.D.N.Y. 1980), aff'd 723 F 2d 197 (2nd Cir.
1983), rev'd on other grounds, 471 U.S. 539 (1985).

An "equivalent" right is infringed by simply engaging in the
prohibited reproduction, modification or distribution of a work
which are acts within the exclusive right of the copyright holder.
See 17 U.S.C. 106., 1 Nimmer, Nimmer on Copyright 1.01[B]. See e.g.,
Aqua Bay Concepts. Inc. v. Grosse Point Bd. of Realtors, 24 U.S.P.Q.2d
1372 (S.D. Mich. 1992); Relational Design & Technology.g Inc., 23
U.S.P.Q.2d 1074 (D. Kan. 1992); Avco Corporation v. Precision Air
Parts.Inc., 210 U.S.P.Q. 895 (N.D. Ala 1980). Under the 1980
amendments to the Copyright Act, Congress intended to extend
copyright protection to computer programs. Videotronics. Inc. v. Bend
Electronics, 564 F.Supp. 1471 (D. Nev. 1983)."The fact that portions
of the computer programs may be uncopyrightable as "ideas"rather
than "expressions," (citation omitted) does not take the work as a
whole outside the subject matter protected by the Act." Brignoli v.
Balch Hardy And Scheinman. Inc., 645 F.Supp. 1201, 1204 (S.D.N.Y.

Here, USL's trade secret claim is defective because it is based on
the University's alleged reproduction, modification and distribution
of the purported trade secrets embodied in USL's UNIX 32V program.
Without more, USL's trade secret claim is not qualitatively different
from its copyright infringement claim. Accordingly,Section 301 bars
the trade secret claim.


USL's trade secrets -- at least all of those mentioned in Dr. Carson's
affidavit -- were injected into the public domain before Net2 was
distributed. Joint Decl., at Paras. 27, 28, 31, 33, 36, 37, 39, 40, 45,
47, 50, 53 and 56.[fn35] "Public disclosure of a trade secret
destroys any confidential relationship upon which a trade secret is
based." Videotronics. Inc. v. Bend Electronics, 564 F.Supp. 1471, 1475
D. Nev. 1983), 1 Servo Corporation of America v. General Electric
Company, 393 F.2d 551 (4th Cir. 1968). Since USL has not identified
any specific trade secret that is not widely documented, it cannot
obtain any relief for misappropriation.

[fn35] The 32V agreement at issue provides that disclosure of a
trade secret or "technical data" which is publicly available or which
later becomes publicly available will not form the basis for a breach
of contract claim. The relevant portion of 32V license agreement
provides as follows:

4.07 The obligations of the LICENSEE and of its employees and
students under Section 4.06 shall not extend to any information or
technical data relating to the LICENSED SOFTWARE which is now
available to the general public or which later becomes available to
the general public by acts not attributable to LICENSEE, its
employees or students.

The public availability of USL's "information or technical data" prior
to the release of Net2 (see Joint Declaration relieved the University
of any contractual obligation to hold USL's trade secrets in
confidence. As such, USL's breach of contract claim must fail with
respect to the "information or technical data" which already entered
the public domain before the release of Net2.


For all of the foregoing reasons, the University respectfully submits
the Court should not find Net2 to be an infringement of USL's alleged
copyright in 32V or a misappropriation of its claimed trade secrets.

DATED: January , 1993


Re: Unix System Laboratories v. Berkeley Software Design U.S.
District Court - New Jersev No. 92-1667 (DRD)

Michael D. Loprete, Esq. (VIA FEDERAL EXPRESS)
One Riverfront Plaza
Newark, NJ 07102

George L. Graff, Esq. (VIA FEDERAL EXPRESS
James W. Kennedy, Esq.
Charles B. Ortner, Esq.
399 Park Avenue
New York. NY 10022-4697

Sanford Tannebaum, Esq. (VIA FEDERAL EXPRESS)
Executive Vice President
and General Counsel
190 River Road
Summit, NJ 07901-1444

James H. Forte, Esq. (VIA U.S. MAIL)
One Gateway Center, 13th Floor
Newark. NJ 071 02-5311

Robert T. Haslam, Esq. (VIA U.S. MAIL)
Vanessa Wells, Esq.
Leslie A. Fithian, Esq.
Michael A. Bucci, Esq.
525 University Avenue, 9th Floor
Palo Alto, CA 94301

James. E. Holst, Esq. (VIA U.S. MAIL)
John L. Lundberg, Esq.
300 Lakeside Drive, 7th Floor
Oakland, CA 94612-3565

Frederick B. Polak, Esq. (VIA FEDERAL EXPRESS)
280 Corporate Center
65 Livingston Avenue
Roseland, NJ 07068


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