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|BSDi's Opposition To USL's Motion For Preliminary Injunction
Tuesday, September 02 2008 @ 02:13 AM EDT
Here is another BSDi document, Defendant Berkeley Software Design's Opposition
To USL's Motion For Preliminary Injunction, from the 1992 case, which I am adding to our permanent archives.
The document is pertinent because of the references to Mitzi Bond's deposition testimony. My intention back in 2008 was to fine-tune the rough text, but I'm posting it now in 2013, since it's clear I won't get to it, and it's better to have it in the archives than not, even if it's a bit messy.
JAMES H. FORTE (2248)
SAIBER SCHLESINGER SATZ & GOLDSTEIN
1 Gateway Center
Newark, New Jersey 07102-5311
HELLER, EHRMAN, WHITE & McAULIFFE
525 University Avenue, 9th Floor
Palo Alto, California 94301
Telephone: (415) 326-7600
Attorneys for Defendant Berkeley Software Design, Inc.
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
UNIX SYSTEM LABORATORIES, INC.,
BERKELEY SOFTWARE DESIGN, INC.,
Hon. Dickinson R. Debevoise
Civil Action No. 92-1667 (DRD)
Defendant Berkeley Software Design's Opposition
To USL's Motion For Preliminary Injunction
TABLE OF CONTENTS
FACTUAL BACKGROUND .....................
ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . 14
I. USL HAS NOT MET ITS HEAVY BURDEN OF ESTABLISHING
ENTITLEMENT TO A PRELIMINARY INJUNCTION , . . . . . . . 4
II. USL IS NOT LIKELY TO SUCCEED ON ITS COPYRIGHT
INFRINGEMENT CLAIM . . . . . . . . . . . . . . . . . . 16
A. USL Has No Valid Copyright in the 32V code . . . lo
1. The Limited Publication Doctrine is Inapplicable
2. The Header Files Which USL Claims Have Been
Infringed Have Been Included in Binary
Made By USL Licensees With
No Copyright Notice . . . . . . . . , . . . 26
B. THE SIMILARITIES RELIED UPON BY USL WOULD NOT
ESTABLISH COPYRIGHT INFRINGEMENT EVEN IF THE
32V CODE WERE COPYRIGHTED...............
1. The Features Relied Upon By USL's Experts
Are Not Protectible
2. The Similarities Relied Upon By USL's Expert
Are Neither Quantitatively Nor Qualitatively
3. USL Could Not Enforce A 32V Copyright
Against The University Or BSDI Because
Of The Lack Of Copyright Notice . . . . . . 3 7
III. USL CANNOT DEMONSTRATE A LIKELIHOOD OF SUCCESS ON
ITS TRADE SECRET CLAIM
A. To Prevail On Its Trade Secret Claim, USL Must
That BSD/386 Contains USL Trade Secrets
1. The License Agreements Authorize Use Of The
UNIX 32V Code To Create Modifications,
Enhancements and Derivative Works
2. The License Agreements Permit Derivative
Not Containing USL Trade Secrets To Be Made
Available to Non-Licensees
3. The Duty of Confidentiality Does Not Apply
Information That Is Or Becomes Generally
Known . . 1l 9
B . USL Cannot Demonstrate That Net2 or BSD/386
Contain Any USL Trade Secrets
IV. USL CANNOT SHOW IRREPARABLE HARM
V. THE PUBLIC INTEREST FAVORS DENIAL OF THE
VI. EVEN IF USL COULD ESTABLISH THAT NET2 CONTAINED
SOME USL PROPRIETARY INFORMATION, THE INJUNCTION IT
SEEKS IS OVERLY BROAD
A. An Injunction Against The Entire BSD/386 Program
WouldBe Impermissibly Overbroad
B. Plaintiff is Misusing its Copyright by Attempting
to EnjoinAll of BSD/386
787 F.2d 875 (3d Cir. 1986) cert. dismissed, 488
U.S. 918 (1988) . . . . . . . . . . . . . . . . . . . . 53
Apollo Technologies Corp. v. Centrosphere Industrial Corp,.,
No. 92-3712 (AJL), 1992 WL 289943 (D.N.J. 1992) . . . . 15
Apple Computer, Inc. v. Franklin Computer Corp.,
714 F.2d 1240 (3d Cir. (1983), cert. dismissed, 464
U.S. 1033 (1984) . . . . . . . . . . . . . . . . . . . 7
Baker v. Selden,
101 U. S . 99 . . . . . . . . . . . . . . . . . . . . . . 3 6
Breffort v. I Had A Ball Co.,
271 F. Supp. 623 (S.D.N.Y. 1967) . . . . . . . . . . . 54
Brown v. Tabb,
714 F.2d 1088 (11th Cir. 1983). . . . . . . . . . . 19, 20, 23, 24
Brown Bag Software v. Symantec Corp.,
960 F.2d 1465 (9th Cir. 1992) . . . . . . . . . . . . . 33
Campbell Soup Co. v. ConAgra. Inc.,
977 F.2d 86 (3d Cir. 1992) . . . . . . . . . . . . . . 15
Colonial Book Co.. Inc. v. AMSCO School Publications. Inc.,
41 F. Supp. 156 (S.D.N.Y. 1941) . . . . . . . . . . . . 54
Craft v. Kobler,
667 F. Supp. 120 (S.D.N.Y. 1987) . . . . . . . . . . . 54
Data General Corp. v. Digital Computer Controls. Inc.,
188 U.S.P.Q. 276 (Del. Ch. 1975) . . . . . . . . . . . 24
Davis v. Romney,
490 F.2d 1360 (3d Cir. 1973) . . . . . . . . . . . . . 53
Educational Testing Services v. Katzman,
793 F.2d 533 (3d Cir. 1986) . . . . . . . . . . . . . . ~5
Feist Publications. Inc. v. Rural Telephone Service Co.,
499 U.S. ___, 113 L. Ed. 2d 358, 111 S. Ct. 1282
(1991) ~ . . . . . . . . 27, 2~, 29
Ferroline Corp. v. General Aniline & Film Corp.,
207 F.2d 912 (7th Cir. 1953), cert. denied., 347
U.S. 953 (1954) . . . . . . . . . . . . . . . . . . . . 49
Frank's GMC Truck Center. Inc. v. General Motors Corp.,
847 F.2d 100 (3d Cir. 1988) . . . . . . . . . . . . 14, 15
Hubco Data Products Corp. v. Management Assistance. Inc.,
219 U.S.P.Q. 450 (D. Idaho 1983) . . . . . . . . . . . 24
Ideal Toy Corp. v. Plawner Toy Mfg. Corp.,
685 F.2d 78 (3d Cir. 1982) . . . . . . . . . . . . . . 53
International Film Service Co., v. Affiliated Distributors,
283 F. 229 (S.D.N.Y. 1922) . . . . . . . . . . . . . . 54
Landsberg v. Scrabble Crossword Game Players. Inc.,
736 F.2d 485 (9th Cir. 1984) . . . . . . . . . . . 28, 31
Lasercomb America, Inc. v. Reynolds,
911 F.2d 970 (4th Cir. 1990) aff'd without op. 961
F.2d 211 (1992) . . . . . . . . . . . . . . . . . . . . 56
Magic Marketing v. Mailing Services of Pittsburg. Inc.,
634 F. Supp. 769 (W.D. Pa. 198, 1986) . . . . . . . . . 33
McLendon v. Continental Can Co.,
908 F.2d 1171 (3d Cir. 1990) . . . . . . . . . . . . . 53
Merchant & Evans v. Roosevelt Building Products,
963 F.2d 628 (3d Cir. 1992) . . . . . . . . . . . . . . 15
Morton v. Beyer,
822 F.2d 364 (3d Cir. 1987) . . . . . . . . . . . . . . 15
National Broadcasting Co. v. Sonneborn,
630 F. Supp. 524 (D. Conn. 1985) . . . . . . . . . . . 24
Orth-o-Vision. Inc. v Home Box Office,
474 F. Supp. 672 (S.D.N.Y. 1979) . . . . . . . . . 29, 54
Paramount Pictures Corp. v. Rubinowitz,
217 U.S.P.Q. 48 (E.D.N.Y. 1981) . . . . . . . . . . 24, 25
qad. inc. v. ALN Associates, Inc.,
770 F. Supp. 1261 (N.D. Ill. 1991) . . . . . . . . . . ,,
Rexnord. Inc. v. Modern Handling Systems, Inc.,
379 F. Supp. 1190 (D. Del. 1974) . . . . . . . . . 16, 13,27
Reyher v. Children's Television Workshop,
533 F.2d 87 (2nd Cir. 1976) . . . . . . . . . . . . . . 29
SEGA Enterprises LTD., Accolade, Inc.,
24 U.S.P.Q. 2d 1561 (9th Cir. 1992) . . . . . . . . . . 31
Salinger v. Random House, Inc.,
811 F.2d 90 (2d Cir.) cert. denied, 484 U.S. 890
(1987) . . . . . . . . . . . . . . . . . . . . . . . . 54
See v. Durang,
711 F.2d 141 (9th Cir. 1983) . . . . . . . . . . . . . 29
Sen-Torq, Inc. v. K Mart Corp.,,
936 F.2d 851 (6th Cir. 1991) . . . . . . . . . . . . . 33
Walker v. Time Life Films. Inc.,
615 F. Supp. 430 (U.S.D.C. SD. NY, 1985) . . . . . . . 30
Warner Bros. Inc. v. American Broadcasting Companies. Inc.,
770 F.2d 231 (2nd Cir. 1983) . . . . . . . . . . . . . 28
Whelan Associates, Inc. v. Jaslow Dental Laboratory. Inc.,
797 F.2d 1222 (3d Cir. 1986), cert. denied . . . . . . 32
White v. Kimmell,
193 F.2d 744 (9th Cir.), cert. denied, 343 U.S. 957
(1952) . . . . . . . . . . . . . . . . . . . . . . 18, 19,
17 U.S.C. S 401 (former version) . . . . . . . . . . . . . . 16
17 U.S.C. Section 401(a) (former version applicable) . . . . 20
17 U.S.C. S 405 . . . . . . . . . . . . . . . . . . . . . . . 16
37 C.F.R. 202.1(9) (1985) . . . . . . . . . . . . . . . . 27, 3~
37 C.F.R. 202.1(a) . . . . . . . . . . . . . . . . . . . . 33
3 Nimmer, Nimmer on Copyright, 3.03 [F] . . . . . . . . 28
1 Nimmer on Copyright 4.13[A], at 4-70 n.13.1 (1992) . . . 25
11 Wright & Miller, Federal Practice and Procedure: Civil
2947, at 424 (1973) . . . . . . . . . . . . . . . 53
3 Nimmer on Copyright, supra 13.03[F],
3 Nimmer on Copyright, supra, 14.06[C]
3 Nimmer on Copyright. supra, 14.06[c]
JAMES H. FORTE (2248)
SAIBER SCHLESINGER SATZ & GOLDSTEIN
1 Gateway Center
Newark, New Jersey 07102-5311
HELLER, EHRMAN, WHITE & McAULIFFE
525 University Avenue, 9th Floor
Palo Alto, California 94301
Telephone: (415) 326-7600
Attorneys for Defendant Berkeley Software Design, Inc.
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
UNIX SYSTEM LABORATORIES, INC.,
BERKELEY SOFTWARE DESIGN, INC., and
the Following lndividuals in their Collective
Capacity as THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA: PETE
WILSON, LEO T. MCCARTHY, WILLIE L.
BROWN, JR., et al.,
Civil Action No.92-1667 (DRD)
MEMORANDUM OF LAW ON BEHALF OF DEFENDANT
BERKELEY SOFTWARE DESIGN, INC. IN FURTHER OPPOSITION
TO PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION
With this motion, plaintiff UNIX System Laboratories, Inc., ("USL")
asks this Court to prohibit Berkeley Software Design, Inc. ("BSDI")
from selling its only product and from maintaining any of its current
employees, based on the fact that, like most experienced computer
programmers, they have had access to UNIX source code. USL's
supposedly secret source code has been licensed to universities and
companies around the world for many years and has been so widely
available that many aspects of it have become industry standards. In
addition, hundreds of books have been written describing the code in
great detail with no complaint from USL. (See Joint Declaration of
Marshall Kirk McKusick and Keith Bostic, ~ 28.5 and 36; Affidavit of
David Kashtan, ~ 6, 8, 14, 15, 17-19, 23; Affidavit of Michael Karels,
~ 34-36).[fn1] Thus, this is hardly the "garden variety"
misappropriation suit USL claims it is.
Having chosen to disclose its source code to students and computer
programmers all over the world, and having promoted it as an
industry standard, USL's attempt to portray it as a closely guarded
secret, based on its own internal safeguards, is ludicrous.
As in any trade secret case, a finding of misappropriation requires a
showing that the specific items BSDI allegedly misappropriated are
in fact secret. No such showing has been or can be made. In fact,
most of the items USL relies on are standard features, consisting of
file names and mnemonics commonly used, both in USL-licensed
products and in UNIX-compatible products for which no USL license
is required or are disclosed in publicly available materials. (See
McKusick and Bostic Decl. ~ 26-28.4, 28.6.2, 28.7, 32, 33, 37, 39, 45,
53, 56, 59, and 61; Karels Aff. ~ 34-36; Kashtan Aff. ~ 3, 5, 7, 12,
17, 19, 21, 23).
[fn1] The Joint Declaration of Marshall Kirk McKusick and Keith
Bostic shall be referred to as the "McKusick and Bostic Decl.,"
respectively. The Affidavits of David Kashtan and Michael Karels
shall be referred to as "Kashtan Aff." and "Karels Aff.," respectively.
Unable to find significant similarities in the actual code, USL points
to these same standard file names and mnemonics as evidence of
copyright infringement, even though USL forfeited any copyright
protection in the 32V code long ago, by making it widely available
with no copyright notice. Even if USL had not forfeited copyright
protection in the 32V code, it could not show copyright
infringement, since mnemonics and common industry standards are
not protectible under copyright law and their use does not prove
As for the actual code, out of the over 1.5 million lines of code in
BSD/386, USL's expert relies solely on a few lines interspersed in
two functions, ignoring the fact that instructions on how to
implement those functions are contained in various textbooks. (See
McKusick and Bostic Decl., ~1 53-56; Kashtan Aff., ~1 4-6). Given
the specific instructions available in such books, the trivial
similarities relied on by USL are to be expected and prove neither
copying nor use of the 32V code.
In short, with this motion, USL seeks to exclude a legitimate
competitor from the marketplace by attempting to invoke a
nonexistent copyright, by relying on commonly used industry
standards as evidence of copying, and by falsely claiming generally
known information as its trade secrets.
Not content to destroy one potential competitor, USL also seeks to
keep a stranglehold on the entire market by claiming that everyone
who has had ever had access to UNIX source code a group that
include~ most experienced programmers in the industry is "mentally
contaminated" and may not develop any functionally similar product,
without first purchasing an exorbitantly expensive license from USL.
In accordance with this argument, USL requests this Court to
prohibit BSDI from hiring anyone who has had access to UNIX source
code. USL's request would not only require BSDI to fire all of its
current employees, but would make it difficult to find any qualified
replacements. Having chosen to widely disseminate its source code
in order to build a market for its product and having succeeded in
making it an industry standard, USL cannot now claim that everyone
with knowledge of it is restricted from developing competing
USL is also unable to show irreparable harm, as it must in order to
obtain a preliminary injunction. As authorized under its license
agreements with USL, the University of California has distributed
the Net2 software on which BSD/386 is based, with no restrictions
on further disclosure and distribution. The Net2 software was
written by students and employees of the University of California
and thousands of other individuals around the world who have
contributed their work to the University. (See Karels Aff. ~l 13-14).
Hundreds of thousands of copies of Net2 have been publicly
distributed and Net2 remains available from a variety of public
archives. (See Affidavit of Richard F. Adams, Jr., ~1 15-16) ("Adams
Aff.). In addition, at least one other company has created a complete
system based on Net2 and continues to market that system. (Adams
Aff., ~ 17). USL has taken no legal action against that company or
against any of the numerous other entities still distributing Net2.
The number of additional copies of the code BSDI will sell while this
case is pending is insignificant relative to the huge number of
copies already distributed and which remain freely available to the
public. Thus, USL's claim of irreparable harm is totally divorced
from reality. BSDI, on the other hand, will be forced out of business
long before any trial is had and will be unable to pay for its defense,
if it is prevented from continuing to sell its only product. For all of
these reasons, USL is unable to meet the standards required for a
preliminary injunction and its attempt to force BSDI out of business
without affording it a full trial must be denied.
A. The Parties.
Plaintiff USL is a majority-owned affiliate of AT&T. It was
formerly a division within AT&T and was spun off to form a separate
company with the goal of marketing UNIX source code and other
software. (Thiel Dep. T. 80-8 to 80-25, 81-1 to 81-24).[fn2] It has
recently been announced that AT&T's stock in USL will be sold to
Novell Corporation. (See Affidavit of James H. Forte, 2) (hereinafter
Defendant University of California ("the University") is a world-
renowned university. For many years, the University has distributed,
on a nonprofit basis, software developed by its Computer Systems
Research Group ("CSRG"). These distributions are known as Berkeley
Software Distributions, and have been used by many companies,
including USL, in a variety of commercial products. (See Karels Aff.,
11 3-10, 12-13, 20).
Some of the Berkeley Software Distributions have included code
licensed to the University by USL and thus have been provided only to
USL licensees. (Id., 1 9). Others not including any USL-licensed code
have been made available to anyone, without requiring proof of a USL
source code license. (Id., ~1 9-13). As discussed below, such
distributions were expressly authorized in the University's license
agreements with USL.
[fn2] All citations to the deposition transcript of Charles Thiel are
attached as Exhibit A to the Affidavit of James H. Forte.
In July of 1991, the University began distributing its Second
Networking Release ("Net2"), which did not contain USL proprietary
code and thus required no USL license. USL now falsely accuses the
University of violating its trade secrets and copyrights by releasing
Net2 to non-licensees.
Defendant BSDI is a small startup company that has spent
approximately eleven man-years developing the Net2 release into a
commercially viable product - BSD/386 - which is potentially
competitive with USL's UNIX operating system. (Adams Aff., ~ 3-6).
Initially, USL sued only BSDI, even though the claim was based on an
allegation that the University's release of Net2 violated its
intellectual property rights. Subsequently, USL added the University
as a defendant and alleged that the code added to Net2 by BSDI also
violated its rights.
B. The Technology
A computer program is a set of instructions implementing
algorithms that enable a computer to perform various functions.
Computer programs are written in a form called "source code,"
which consists of humanly-comprehensible instructions in one of
many computer languages. UNIX source code is usually written in a
language called "C". Before source code can be run on a computer it
must be compiled into machine-readable code called object code or
binary code. Through the use of a compiler program, the source code
is turned into binary code, which consists of "1s" and "Os" strung
together in a particular order. The binary code is used to operate the
computer or perform a particular application.
There are different kinds of computer programs, including operating
system programs and application programs. An operating system is a
program that directs the internal operations of the computer and
interacts with a variety of compatible application programs. An
application program is a program that enables the computer to
perform a specific task, such as word processing, accounting or
mathematical calculations. See Apple Computer. Inc. v. Franklin
Computer Corp., 714 F.2d 1240, 1243 (3d Cir. (1983), cert.
dismissed, 464 U.S. 1033 (1984). C. History of the UNIX Source Code
The original UNIX operating system was developed by employees of
AT&T's Bell Laboratories in the late 1960's, and was based on an
earlier system called Multics. (See Maurice J. Bach, The Design of
the UNIX Operating System, pp. 1-3, attached as Exhibit B to the
Forte Aff.; McKusick and Bostic Decl., f 28.1.3). At that time, AT&T
was prohibited from selling software and developed the UNIX code
solely for its own internal use. Subsequently AT&T began licensing
the UNIX source code to universities for educational use, ;
This marketing strategy has been so successful that many aspects of
the UNIX operating system have become industry standards. (See
Exhibit D to the Forte Aff.; see generally McKusick and Bostic Decl.).
[fn3] All citations to the deposition transcript of Edwin G. Baldwin
are attached as Exhibit C to the Forte Aff.
Unlike most software companies, who distribute their products only
in object code, USL has distributed its operating system in source
code form. (Thiel Dep- T- 95-20 to 96-5). In licensing its source
code to universities for research and other educational uses, USL has
required universities to distribute their enhancements and
derivative works developed using the code to anyone, including
AT&T, at a nominal cost. (See Karels Decl.,
23). To the extent the enhancements or derivative works have
included the licensed source code, they could be provided only to
licensees, but still had to be provided at nominal cost. (See Karels
Decl., ~ 23). As a result, USL has received the benefit of free
development work from thousands of computer programmers, and has
incorporated the best of that work into its own system. (See Karels
Decl., ~ 20 and 34).
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).
D. The Berkeley Distributions
The University began releasing its Berkeley Software Distributions
in the late 1970's. The original distributions were modifications and
enhancements of the AT&T-licensed code. Over the years, the
University continued to modify the licensed code and rewrote many
of the programs from scratch. It also developed many additional
programs which it included in its releases and obtained a variety of
other programs from outside contributors. (See Karels Aff. Il 2-14).
What is now known as Berkeley UNIX has been very popular and has
been included in a variety of commercial products including
operating systems marketed by Sun Microsystems, Digital Equipment
Corporation, and USL. (See Karels Aff. ~ 6 and 20). Thus, USL has
benefitted enormously by its licensing of UNIX source code to the
University and other educational institutions.
In accordance with the terms of its license agreements with USL,
the University has made several of its releases available to non-
licensees, since they did not contain any of USL's licensed code. The
first of these was in 1987 and consisted of a reimplementation of a
particular function for handling daylight savings time that existed
in the 32V code. The second was a package of networking code
distributed in 1988. Both of these releases were made via
anonymous FTP, which means that they were placed on a publicly
accessible computer network, with over a million users. (See Karels
Aff. ~ 9-10).
Starting with the BSD4.3-Tahoe release in 1987, the University also
began marking files which did not contain AT&T code with a special
legend, indicating that they were freely redistributable. (See Karels
Aff. ~ 9). Although the University provided the 4.3 Tahoe release only
to AT&T licensees, USL has never objected to the designation of
certain files as freely redistributable, and those files have in fact
been redistributed by those who obtained the release. (See Karels
Aff. ~ 9-11).
In 1988, the University distributed its first Networking Release
("Net1"), which consisted of 134 source files from the networking
portion of the BSD kernel, a login program, and a number of utility
and C-Library programs. No AT&T source code license was required
to obtain the Net1 release. (See Karels Aff. I 10). Contrary to USL's
representation, Net1 did include some code that had a functional
analogue in 32V and, like the Net2 release, made reference to code
that was not included. In both the Net1 and Net2 releases, these
references are present because the code is intended to be used with
other programs that contain the referenced code. (See Karels Aff. ~
10, 15-16). Thus, they do not indicate mindless copying, as USL
After the Net1 release, the University made another release called
BSD4.3-Reno. Although this release was provided only to USL
licensees, it contained more files marked freely redistributable, and
such files have in fact been distributed to non-licensees by others.
(See Karels Aff. ~ 12). Although USL received a copy of both the
Tahoe and Reno releases, and used portions of them in its own code,
USL made no objection to any of the designations. Nor has it ever
objected to the distribution of Net1 to non-licensees. (See Karels
Aff. f 12).
The University released its second license-free release, the Net2
software at issue in this action, in July of 1991. This included not
only an updated version of the networking software included in the
earlier Net1 release, but a host of other programs that had been
written by University students and employees or contributed to the
University. (See Karels Aff. ~1 13-14). This release was the
culmination of a project begun years earlier to sort out the
programs that were not subject to AT&T license restrictions and
make them available to anyone, as contemplated by the University's
license agreements with AT&T. (See Karels Aff. 1 17). Thus, it
includes the work of thousands of authors written at different times
over a period of many years.
On several occasions, CSRG members attempted to obtain USL's
views as to whether certain programs contained any USL proprietary
matter. (Bostic Dep. T. 39-7 to 40-1, 41-11 to 41-i,, and exhibits P-
70 and P-71 attached as Exhibit I to the Forte Aff.; McKusick Dep. T.
267-2 to 268-24).[fn5] Although USL has provided such opinions to
others, USL refused to take any position on the code submitted by
the CSRG members. (Id.).
Prior to the release of Net2, CSRG members discussed the release
many times with University counsel and performed a detailed code
comparison to make sure that the Net2 release did not include USL-
proprietary code, applying criteria received from University counsel.
The release was then reviewed by University counsel in conjunction
with outside counsel and a technical expert, and ultimately was
approved by University officials. (see Karels Aff. ~ 18-27).
[fn5] All citations to the deposition transcripts of Keith Bostic
and Marshall Kirk McKusick are attached as Exhibits G and H,
respectively, to the Forte Aff.
E. The Formation of BSDI and the Development of BSD/386
After the release of Net1, CSRG members had made several public
announcements regarding the additional software they planned to
include in the next USL-license-free release. After hearing these
announcements, Richard Adams, who is now the president of BSDI,
became interested in the possibility of developing a commercial
product based on the upcoming release and discussed his idea with
various acquaintances, including three CSRG members, Keith Bostic,
Kirk McKusick and Michael Karels. (See Karels Aff., ~ 19; Adams Aff.,
~ 4). Believing the release to be imminent, in January of 1991, he
organized a meeting with these and several other interested
individuals to explore the feasibility of the idea. Because they were
concerned that USL would not like a high-quality, lower-priced
competitor in the market, and might try to drive them out, they also
discussed the concept with attorneys to satisfy themselves that USL
would have no basis for interfering with the project. (See Karels
Aff., 19; Adams Aff., ~ 4).
At the time of that meeting, the CSRG members had nearly
completed the process of reviewing the University's software to
determine what could be included in Net2, based on the criteria that
had been supplied to them by the University's counsel. They also had
made several public announcements of the upcoming release and
what programs they anticipated would be included in it. These
announcements took place long before BSDI existed, and before
anyone associated with BSDI ever discussed the idea of using the
release in a product. Thus, USL's suggestion that BSDI instigated the
release is ridiculous. It was the announcement of the release that
"induced" the formation of BSDI, not the other way around.
At the time of the January meeting, Mr. Adams was unsuccessful in
persuading any of the CSRG members to leave the University to join
the company he was contemplating. The CSRG members also did not
agree to invest any money in the venture at that time, nor did they
receive any commitments from BSDI. (See Karels Aff., 1 19-21;
McKusick Dep. T. 151-20 to 152-17; Bostic Dep. T. 152-16 to 153-7;
Adams Aff., 1 4). Thus, USL's assertions that the CSRG members had
a financial interest in BSDI while they were working on the Net2
release is completely false. No CSRG member had any interest in
BSDI until after the release of Net2. Although USL has gone to great
lengths to try to portray BSDI as the driving force behind the Net2
release - including misrepresenting the testimony of BSDI and CSRG
employees - USL has failed to present any evidence to support such a
BSDI received the Net2 release with the understanding that it
contained no USL-proprietary code and put a great deal of effort and
expense into making it a usable operating system.[fn6] In doing so,
BSDI relied entirely on publicly available reference materials. (See
Adams Aff., ~ 5). USL now seeks to enjoin BSDI from continuing to
sell its BSD/386 product, which it has been selling in pre-
production form for over nine months. USL further seeks to enjoin
BSDI from hiring any employees that have had access to UNIX source
code, a limitation that would rule out not only all of its current
employees, but the thousands of other computer programmers who
have had access to UNIX source code as students or employees.
[fn6] USL's argument that the indemnification clause contained in
the Net2 agreement should have put BSDI on notice of possible
violations is belied by the fact that the same clause was included in
the University's earlier licenses of BSD code to AT&T. (See Exhibit J
to the Forte Aff., ~ 12).
I. USL HAS NOT MET ITS BURDEN OF ESTABLISHING ENTITLEMENT TO A
The Third Circuit has held repeatedly that "injunctive relief is an
extraordinary remedy which should be granted only in limited
circumstances." Frank's GMC Truck Center. Inc. v. General Motors
Corp., 847 F.2d 100, 102 (3d Cir. 1988). To obtain such extraordinary
relief, the moving party bears a heavy burden of establishing:
(1) The probability of irreparable injury to the moving party in the
absence of relief;
(2) The absence of possibility of harm to the nonmoving party if
relief were granted;
(3) The likelihood of success on the merits; and
(4) The public interest in granting preliminary relief. Merchant &
Evans v. Roosevelt Building Products, 963 F.2d 628, 632 (3d Cir.
1992); Apollo Technologies Corp. v. Centrosphere Industrial Corp., No.
92-3712 (AJL) 1992 WL 289943 (D.N.J. 1992). The injunction should
issue only if plaintiff produces sufficient evidence showing that "all
four factors favor preliminary relief." Merchant & Evans, 963 F.2d at
Of these four requirements, the Third Circuit places particular
weight on the probability of irreparable harm and the likelihood of
success on the merits. If "either or both of these prerequisites are
absent," the circuit court will reverse the grant of an injunction by
the district court. Frank's GMC, 847 F.2d at 102 (quoting In re Arthur
Treacher's Franchisee Litigation, 689 F.2d 1137, 1143 (3d Cir.
1982)); Morton v. Beyer, 822 F.2d 364, 367 (3d Cir. 1987).
Further, the moving party must make a "clear showing of immediate
irreparable harm." Campbell Soup Co. v. ConAgra. Inc., 977 F.2d 86,
91, (3d Cir. 1992). To bear this burden, "the plaintiff must
demonstrate potential harm which cannot be redressed by a legal or
an equitable remedy following a trial. The preliminary injunction
must be the only way of protecting the plaintiff from harm." Id.
As shown in detail below, USL has failed to make the required
showing on any of the four factors necessary to obtain the requested
preliminary injunction. Thus, its motion should be denied.
II. USL IS NOT LIKELY TO SUCCEED ON ITS COPYRIGHT INFRINGEMENT
A. USL Has No Valid Copyright In The 32V Code.
USL's copyright infringement claim is fundamentally flawed, in that
USL has no valid copyright in the UNIX/32V source code, which USL
permitted to be widely published without a copyright notice. Before
March 1, 1989 (the effective date of the Berne Convention
Implementation Act), the law required that a copyright notice be
placed on published works to notify recipients that the author
intended to claim a copyright in the work. See 17 U.S.C. 401 (former
version); 17 U.S.C. 405.[fn7] Without such a notice, those receiving
the work could assume that the author did not intend to claim
[fn7] 17 U.S.C. 401 was amended in connection with passage of the
Berne Convention in 1988, and no longer requires notice to be placed
on copies of published works.
Thus, publication of a work without a copyright notice resulted in
forfeiture of any copyright protection, unless adequate steps were
taken to cure the lack of notice and the work was registered within
five years. See 17 U.S.C. S 405; see also Rexnord. Inc. v. Modern
Handling Systems. Inc., 379 F. Supp. 1190, 1197 (D. Del. 1974)
("Copyrighted material loses its protected status if it is published
without notice of copyright."). No such steps were taken with
respect to the 32V code. As recently as 1992, USL belatedly
registered its copyright in UNIX and 32V. See Exhibits A - D to
Plaintiffs' Amended Complaint (copyright registration for UNIX
operating system, editions 5, 6, 7, and 32V).
Prior to 1989, USL made the 32V code available to thousands of
educational, commercial and governmental entities throughout the
world, without any copyright notice.
In discovery, USL produced a 3-inch-thick list of licenses which
indicates that, as of 1986, at least [REDACTED] computers were
licensed under either System III or System V, and thus also were
licensed under 32V. (A copy of this list is attached to the Forte Aff.
as Exhibit M).
Since AT&T permitted the widespread distribution of the32V source
code without a copyright notice prior to 1989, USL has lost any
copyright protection it might otherwise have had in it,and, as a
matter of law, there can be no claim for copyright infringement of
the 32V code.
[fn8] All citations to the deposition transcript of David Frasure are
attached as Exhibit K to the Forte Aff.
[fn9] All citations to the deposition transcript of Chuck Greene are
attached as Exhibit N to the Forte Aff.
1. The Limited Publication Doctrine Is Inapplicable.
In an attempt to dodge this fatal defect in its copyright claim, USL
makes the incredible assertion that the 32V source code is an
unpublished work, even though it has been marketed to the
commercial world for many years and has been made available to
many thousands of commercial, educational and governmental
entities. Compare USL's Moving Brief, at 27 with R.L. Martin The UNIX
System: Preface, and A.V. Aho, The UNIX System: Foreword, AT&T
Bell Laboratories Technical Journal, Vol. 63, No. 8, October 1984, pp.
1571-73, a copy of which is attached to the Forte Aff. as Exhibit P.
To make such a claim, USL contends that its widespread commercial
distribution has been only a "limited publication," and thus has not
forfeited its copyright protection.
Although courts have created a narrow exception to the forfeiture
doctrine known as the doctrine of limited publication, this doctrine
is not applicable here. Under the doctrine of limited publication, a
work published without the proper notice will not fall into the
public domain if the copyright owner can prove that its distribution
was limited to (1) a definitely selected group, (2) for a limited
purpose, and (3) without the right of diffusion, reproduction,
distribution or sale. See White v. Kimmell, 193 F.2d 744, 746-47
(9th Cir.), cert. denied, 343 U.S. 957 (1952); Rexnord, 379 F. Supp. at
1197. Unless all three of these criteria are met, however, a
publication cannot qualify as a limited publication. White, 193 F.2d
Accordingly, restrictions on use or redistribution alone are not
Plainly, USL cannot meet the first of these requirements.
Distribution of the 32V source code has not been limited to a
definitely selected group. Rather, the 32V source code has been
1988, attached as Exhibit 0 to the Forte Aff.; see also AT&T
Technical Journal, p. 1573 ("UNIX System V is available to the
commercial world from AT&T in a fully supported form) (emphasis
added)) (See Exhibit P to the Forte Aff.). USL representatives have
[REDACTED] as if the category of [REDACTED] could be a "definitely
selected group" under the test set forth in White. The limited
publication exception is much more narrowly drawn than this. See
Brown, 714 F.2d at 1092 (Court found that group consisting of "all
automobile dealers or dealers in markets where the [allegedly
copyrighted work] was not already in use" did not constitute a
Moreover, considering the realities of the marketplace, this so-
called "restriction" is really no restriction at all. As [REDACTED]
well.[fn10] (Affidavit of Michael J. DeFazio in Support of Plaintiff's
Motion for Preliminary Injunction, 11 and n.3 at pp. 11-12). In
reality, rather than limiting its source code to a narrowly selected
group, USL has actively marketed its UNIX source code [REDACTED]
Forte Aff.). Limitations on sales to particular foreign countries are
irrelevant to the publication issue, since a copyright notice was
required to preserve USL's rights upon publication of the code "in the
United States or elsewhere". 17 U.S.C. Section 401(a) (former
[fn10] The fact that one had to pay for a work in order to receive it
does not make it a limited publication. See Brown v. Tabb, 71; F.2d
1088 (11th Cir. 1983).
[fn11] A copy of Plaintiff's Response to Defendant's Third Set of
Interrogatories is attached as Exhibit Q to the Forte Aff.
In comparison with the 3-inch thick list of 1986 licensees USL
produced in discovery, in its interrogatory responses, USL was able
to identify only [REDACTED] who had been refused a license.
[fn12] A copy of Exh. D-2 is attached as Exhibit S to the Forte Aff.
[fn14] All citations to the deposition transcript of Otis L. Wilson
are attached as Exhibit U to the Forte Aff.
. T. 86-21 to 87-4, 87-25 to 88-4, 94-15 to 97-3; Bond Dep. T. 17-
23 to 19-21).
23).[fn15] Thus, this practice did not in fact place any significant
limitation on the group to whom the code was available. Neither the
ability to pay nor the willingness to adhere to restrictions on use
are sufficient limitations to establish a limited publication. See
Brown, 714 F.2d at 1092 (no limited group where the alleged
copyrighted jingle "was available to any automobile dealer doing
business in a market not yet exposed to the jingle who would pay the
price"); White, 193 F.2d at 746-47 (the requirement that there be
restrictions on use is separate and distinct from the requirement
that there be a limited group).
In fact, the instant case is virtually identical to a recent Ninth
Circuit decision, D.C.I. Computer Systems. Inc. v. Pardini, 1992 U.S.
App. Lexis 29951; 1992 Copyright L. Rep. (CCH) ~27,005 ( 9th Cir.) (A
copy of this case is attached as Exhibit V to the Forte Aff.). In D.C.I.,
the Ninth Circuit upheld the district court's ruling that by licensing
its software to automobile dealers without a copyright notice, D.C.I.
published the software and forfeited its copyright in the work. Under
circumstances virtually identical to those in the present case, the
Court found that the limited publication doctrine did not apply:
D.C.I. did not select a particular group of people and then offer to
distribute ~the program] to members of that group. It is undisputed
that D.C.I. licensed its F & I program to any automobile or
recreational vehicle dealership in the country that would agree to
enter into a contract, and so fails the select group test.
The court in D.C.I. also noted that D.C.I. failed to meet the second
prong of the test: "Moreover, it did not meet the limited purpose
prong, since its purpose in distribution was pecuniary gain." See also
Academy of Motion Picture Arts and Sciences v. Creative House
Promotions, 944 F.2d 1445, 1453 (9th Cir. 1991). Obviously, since
USL marketed its 32V code commercially, it cannot meet this prong
of the test either. Having chosen "'the more worldly rewards that
come with exploitation of [its] work"' (Brown, 714 F.2d at 1092),
USL's widespread distribution of the 32V source code without a
copyright notice forfeited any copyright protection in the work.
Both the Hubco case and the Data General case cited by USL are
inapplicable. In those cases, the code was distributed only to those
who purchased a computer from the plaintiff. See Hubco Data
Products Corp. v. Management Assistance. Inc., 219 U.S.P.Q. 450 (D.
Idaho 1983); Data General Corp. v. Digital Computer Controls. Inc.,
188 U.S.P.Q. 276 (Del. Ch. 1975). There has been no such restriction
on the UNIX source code. Although AT&T does sell computers, the
source code itself has been marketed as a separate product.
Nor can USL find solace in a couple of questionable district court
opinions, in which works distributed to a small number of entities
through separately negotiated agreements were held to be limited
publications. See National Broadcasting Co. v. Sonneborn, 630 F. Supp.
524 (D. Conn. 1985); Paramount Pictures Corp. v. Rubinowitz, 217
U.S.P.Q. 48 (E.D.N.Y. 1981). These cases are distinguishable in that, as
explained above, USL has actively marketed its source code
13 to 80-17, 81-16 to 18-23); AT&T Technical Journal, Vol. 63, No
8, p. 1573, attached as Exhibit P to the Forte Aff. ("UNIX System V is
available to the commercial world from AT&T in a fully supported
form"). Moreover, these cases have been criticized by Nimmer, who
reasoned that "[u]nless the [parties] which might engage in such
negotiations were limited in some manner, it would seem that there
was no limitation as to persons." I Nimmer on Copyright 4.13[A], at
4-70 n.13.1 (1992). In the instant case, where USL has permitted
distribution of its source code to thousands of entities, application
of the questionable rationale espoused by Paramount and NBC would
obliterate the notice requirement.
USL emphasizes that its publication has been limited based on the
fact that it has been distributed subject to restrictive licenses.
(See USL's Moving Brief, p. 12 n. 4; Affidavit of Michael J. DeFazio in
Support of Plaintiff's Motion for Preliminary Injunction, p. 27 n. 14).
Unlike other types of copyrighted works, software is virtually
always distributed subject to license restrictions. In any event, this
argument addresses only one prong of the test for limited
publication. As the court emphasized in White v. Kimmel, "the
circulation must be restricted k~ as to persons and purpose, or it
cannot be called a private or limited publication." White, 193 F.2d at
747 (emphasis added). Thus, USL cannot meet the limited publication
test, regardless of any restrictions placed on its customers' use of
the source code.
Because AT&T's distribution of the 32V code constituted a general
publication, and because such publication occurred without a valid
copyright notice, AT&T's work has fallen into the public domain.
Accordingly, USL has absolutely no basis to claim any copyright
protection for its 32V source code.
2. The Header Files Which USL Claims Have Been Infringed Have Been
Included in Binary Distributions Made by USL Licensees With No
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.
B. THE SIMILARITIES RELIED UPON BY USL WOULD NOT ESTABLISH
COPYRIGHT INFRINGEMENT EVEN IF THE 32V CODE WERE COPYRIGHTED.
Even if USL did have a valid copyright in the 32V code, USL would not
be able to establish a substantial likelihood of success on its
infringement claim. Copyright law, unlike trade secret or patent
law, protects only original expression. It does not protect ideas,
processes, concepts or methods. Computer Associates International.
Inc. v. Altai. Inc., 1992 WL 372273, at p. 9 (2d. Cir. Dec. 17, 1992). As
the Supreme Court recently reaffirmed: "The mere fact that a work
is copyrighted does not mean that every element of the work may be
protected." Feist Publications. Inc. v. Rural Telephone Service Co.,
499 U.S. 113 L.E.2d 358, 371 (1991). Whether the claim is based on
direct or indirect evidence of copying, infringement may be found
only where there is substantial similarity in protectible expression.
Computer Associates. Inc. v. Altai. Inc., 1992 WL 372273, p. 7;
Landsberg v. Scrabble Crossword Game Players. Inc., 736 F.2d 485,
488 (9th Cir. 1984). De minimis copying or copying of unprotectible
portions of a work do not give rise to an infringement claim. Feist.
113 L.E.2d at 379 ("not all copying . . . is copyright infringement");
Computer Associates v. Altai, 1992 WL 372273, at 22; Warner Bros.
Inc. v. American Broadcasting Companies. Inc., 720 F.2d at 242; see
also 3 Nimmer on Copyright, S 13-03 [F]. USL has made no attempt
to distinguish between similarities in protectible elements of its
software and similarities in unprotectible elements. As explained
below, virtually all of the specific items discussed in the Carson
Declaration fall into the category of unprotected elements. Moreover
the similarities are neither quantitatively nor qualitatively
Indeed, the Carson Declaration seems to be aimed simply at
establishing that Net2 was "derived" from the 32V code in the
colloquial sense. For purposes of copyright law, however, a
derivative work, like any other work, can be infringing only if it
contains substantial, protectible expression from the prior work. 1
Nimmer on Copyright, 1 3.01 at p. 3-3 (1992) ("A work is not
derivative unless it has substantially copied from a prior work. If
that which is borrowed consists merely of ideas and not of the
expression of ideas, then although the work may have been in part
derived from prior works, it is not a derivative work".); Reyher v.
Children's Television Workshop, 533 F.2d 87, 90 (2nd Cir. 1976)
(quoting from Treatise). Thus, if Net2 does not contain substantial
protectible expression from 32V, it cannot infringe any copyright in
Merely "using" a prior copyrighted work, or referring to it in
developing one's own work, does not amount to copyright
infringement. Feist v. Rural Telephone Service, supra, 111 S. Ct.
1282, 1290; Sega Enterprises Ltd v. Accolade Inc., 1992 WL 293141,
at p. 15 (9th Cir.) ("the fundamental purpose of the Copyright Act [is]
to encourage the production of original works by protecting the
expressive elements of those works while leaving the ideas, facts,
and functional concepts in the public domain for others to build on").
Anyone is free to make a "derivative work" that uses unprotectible
aspects of a copyrighted work, such as ideas, methods or concepts.
It is also permissible to remove or replace those portions of an
otherwise infringing work that are protected by copyright. See, e.q.,
Computer Associates v. Altai, supra, 1992 WL 372273 (program from
which infringing portions had been removed held non-infringing); See
v. Durang, 711 F.2d 141, 143 (9th Cir. 1983); Orth-o-Vision. Inc. v
Home Box Office, 474 F. Supp. 672, 686 n.14 (S.D.N.Y. 1979) ("when
the infringing portion of a defendants work may be removed from the
remainder, injunctive relief ought extend only to the former"); see
also Sega v Accolade, 1992 WL 293941,at p. 6 (intermediate copying
may infringe regardless of whether the final product infringes). In
such instances, even if an intermediate version might have
constituted an infringement, a subsequent version which does not
contain substantial expression from the copyrighted work does not
infringe. Id. In the instant case, there can be no claim for
intermediate copying. As explained at length below in connection
with the trade secret claim, the University's license agreements
with USL expressly permit it to make modifications, enhancements
and derivative works based on the licensed software. Thus, it is not
copying per se that USL challenges, but the fact that Net2 was
distributed to non-licensees. Since any prior BSD releases that
contained AT&T proprietary code were distributed only to licensees,
there can be no claim of intermediate copying. Thus, regardless of
whether portions of Net2 were once included in a distribution that
also included code derived from USL licensed code, the question is
whether the Net2 distribution itself contains any substantial
protectible expression from 32V. As explained below, it does not.
1. The Features Relied Upon by USL's Expert Are Not Protectible.
Not all copyrighted works are entitled to the same level of
protection. See SEGA Enterprises Ltd. v. Accolade Inc., 1992 WL
293141 at p 12. In particular, works that are highly factual,
functional, technical or utilitarian in nature receive less protection
than fictional works." Id. at p. 12-13. The reason for this distinction
is that as a work becomes more technical or functional, the range of
options for expressing ideas narrows. If there are only a limited
number of ways to express a particular idea, of necessity, there will
tend to be similarity in two works expressing the same idea. Such
similarity cannot be the basis for a finding of copyright
infringement. Otherwise, later authors would be barred from using
the unprotected ideas, concepts and methods expressed in an earlier
work a result that is completely contrary to the fundamental tenets
of copyright law. For this reason, a much greater degree of
similarity is required before such works will be found to infringe.
See Landsberg v. Scrabble Crossword Game Players, Inc. v. Crown
Publishers. Inc., 736 F.2d 485, 488-89 (9th Cir.), cert. denied, 469
U.S. 1037 (1984). In some cases, an idea, method or concept can be
expressed in such a limited number of ways that virtual identity in
expression will be required before infringement will be found. This
principle is applicable to computer programs as with any other
[C]opyrighted language may be copied without infringing when there
is but a limited number of ways to express a given idea . . . . 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.
National Commission on Technological Uses of Copyrighted Works
("CONTU"), Final Report 1, at 20 (1979) ("CONTU Report"). [fn16]
[fn16] Congress adopted all of the statutory changes recommended
by CONTU verbatim. Subsequent Congresses, the courts, and
commentators have regarded the CONTU Report as the authoritative
guide to Congressional intent. SEGA Enterprises LTD.. Accolade. Inc.,
24 U.S.P.Q. 2d 1561, 1567 fn.5 (9th Cir. 1992).
A computer programmer's choices of expression also are limited by
efficiency considerations. Thus, although there might be many
possible ways of implementing a given task, there might be a very
limited number of ways to do so efficiently. In such instances, two
programmers attempting to achieve the same result in the most
efficient manner would be likely to arrive at similar programming
solutions. As stated in Altai, "while hypothetically, there might be a
myriad of ways in which a programmer may effectuate certain
functions within a program, i.e., express the idea embodied in a given
subroutine efficiency concerns may so narrow the practical range of
choice as to make only one or two forms of expression workable
options." See 3 Nimmer on Copyright, supra, 13.03~F], at 13-89-
13-90; Whelan Associates. Inc. v. Jaslow Dental Laboratory. Inc., 797
F.2d 1222, 1243 n.43 (3d Cir. 1986), cert. denied, 479 U.S. 1031
(1987) ("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 . . . .) Thus, if there are only a
very limited number of ways to implement a particular feature
efficiently, similarities in such implementations do not provide
evidence of copying. Computer Associates v Altai, supra, 1992 WL
372273, at 15-16.
Other external considerations which limit the range of options for
programmers and hence limit the degree of protectible expression in
computer programs include:
(1) the mechanical specifications of the computer on which a
particular program is intended to run;
(2) compatibility requirements of other programs with which a
program is designed to operate in conjunction;
(3) computer manufacturers' design standards; and
(4) demands of the industry being serviced.
Computer Associates v Altai, supra, 1992 WL 372273, at 17; Sega v.
Accolade, supra 1992 WL 293141 at p. 12. If such external factors
dictate particular features, the use of such features does not give
rise to an infringement claim. Id.
Copyright law also does not protect "fragmentary words and
phrases" and "lists of contents". 37 C.F.R. S 202.1(a); Sen-Torq. Inc. v.
K Mart Corp.., 936 F.2d 851, 854-55 (6th Cir. 1991); Magic Marketing
v. Mailing Services of Pittsburg. Inc., 634 F. Supp.
769, 771 (W.D. Pa. 1986) (copyright law does not protect
"fragmentary words and phrases" or "forms of expression dictated by
functional considerations"). Nor does it protect standard forms of
expression. This is particularly significant in the computer industry
where a variety of accepted programming practices, techniques and
conventions are widely used by programmers. As stated by Nimmer,
"in many instances it is virtually impossible to write a program to
perform particular functions in a specific computing environment
without employing standard techniques." 3 Nimmer on Copyright,
13.03 [F] at 1365. The fact that such standard programming
techniques appear in two programs does not evidence copying, and
such techniques cannot be monopolized by one programmer- See
Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1973 (9th
Cir.), cert. denied, L.E.2d 141 (1992) ("affirming the district courts'
finding that [p]laintiffs may not claim copyright protection of an . . .
expression that is, if not standard, then commonplace in the
computer software industry"); Computer Associates International.
Inc. v. Altai Inc., supra, 1992 WL 372273, at 16-17. There is also a
large amount of software that is freely available and freely
redistributable. Such material is in the public domain and cannot be
claimed by a single author simply by including it in a copyrighted
work. Computer Associates International Inc. v. Altai. Inc., supra,
1992 WL 372273, at p. 17-18.
Virtually all of the specific features relied on by USL's expert fall
into one of these categories and thus are not protectible. It is
notable that with the exception of two extremely short functions
[REDACTED] which on their face differ from the supposedly copied
32V Code - Carson does not point out any similarities in the actual
code itself. Instead, he relies on similarities in things such as file
names and function names, which consist of simple and obvious
mnemonics, all of which are standard in the industry and well-
documented in the literature. As noted above, short words and
phrases are not protectible under copyright law. 37 C.F.R. Section
202.1(9). Indeed the Compendium of Copyright Office Practices
includes such "mnemonics" in a list of examples of noncopyrightable
elements in computer programs. (A copy of this rule is attached as
Exhibit W to the Forte Aff.). USL's expert also attempts to rely on
the ordering of such mnemonics, but since the order has no
significance, it is simply an unprotectible list, devoid of any
element of authorship or expression. (See Kashtan Aff., ~ 14).
UNIX operating systems are specifically designed to permit users to
modify, enhance and write their own additions or replacement
programs. Some of these programs are application programs, while
others, such as device drivers, become part of the operating system
itself. To enable customers to write their own programs, the
required interface definitions are described in the header files. As
noted above, these header files are included not only in the source
code distributed by USL, but also in the binary versions distributed
by various other companies. Header files are provided precisely for
the purpose of being used by programmers in writing UNIX-
compatible software. (McKusick and Bostic Decl., ~ 28.4 and 28.4;
Kashtan Aff., I 9). Thus, there can be no claim of copyright
infringement based on the use of the information contained in such
Likewise, numerous books describe how to write UNIX-compatible
programs. These materials provide all the information needed to
write UNIX-compatible programs, and in particular provide detailed
information about the interfaces and how to write them, including
such elements as the file names, function names, and the defined
symbols which USL's expert relies upon. (See generally McKusick and
Bostic Decl.; see generally Kashtan Aff.). The fact that these
features appear in Net2 or BSD/386 thus does not establish copying.
Id. Nor are these features protectible given that their use is either
dictated by external considerations, including the need for
compatibility with other programs, or merely reflects terms that
are standard in the industry. Id.
With respect to the discussion of [REDACTED] in the Carson
Declaration, these are simply two functions within a single file
called [REDACTED]. The implementation of these functions is well-
described in the literature and includes standard features. Numerous
books have been written telling programmers exactly how to
implement these functions in the most efficient manner. If one
follows those instructions, using standard programming
conventions, the range of options is extremely narrow, and
similarities are virtually guaranteed. (See McKusick and Bostic
Decl., 1 53-56; Kashtan Aff., ~ 4-6). For these reasons, similarities
in the way these functions are implemented do not indicate that the
code was copied, and cannot form the basis for a copyright
infringement claim. 3 Nimmer on Copyright, 13.03 [F]; see also,
Baker v. Selden, 101 U.S. 99, 102-04 (one may copy expressive
elements that must be used to express the underlying ideas,
functional concepts or facts).
A comparison of the 32V implementation of the [REDACTED] and
[REDACTED] functions and the implementation of these functions in
BSD/386 shows that in neither case are they the same. In the
[REDACTED] function, only [REDACTED] lines are similar. And in
[REDACTED]" only [REDACTED] lines are similar. (See tables in
Affidavit of John H. Carson, at pp. 34 and 36). This degree of
similarity is to be expected given the various reference books
available that teach one how to implement such code. (See generally
McKusick and Bostic Decl.; Kashtan Aff., ~ 4-6).
2. The Similarities Relied upon by USL's Expert Are Neither
Quantitatively Nor Qualitatively Substantial.
USL completely ignores how minuscule the points of similarity
relied upon by their expert are in a quantitative sense. USL further
distorts their qualitative significance by equating their value with
the value of the kernel as a whole.
Out of the over 8,000 files in BSD/386, only 80 are accused in this
motion, only 30 of which have even been named. Moreover, most of
them are accused simply because they use similar standard
mnemonics, and not because there was any similarity in the actual
code. (USL's Moving Brief at 21). Only two functions, both contained
in the file [REDACTED] are challenged on the basis of actual working
code. Thus, out of 1.5 million lines of code, only [REDACTED] lines of
working code are challenged, and only a few of them are even similar
to lines in 32V. (See Kashtan Aff., ~ 46 and 23). There has been no
showing whatsoever that these particular lines of code provide any
significant value to the kernel. With respect to the other items,
[REDACTED] (See Affidavit of John Carson, ~ 23). They are
significant now only because they are needed for purposes of
compatibility with other code. Thus, although the kernel as a whole
is significant, the particular items USL claims have been copied are
both unprotectible and de minimis and do not give rise to a claim of
copyright infringement. (See generally Bostic and McKusick Decl.;
Kashtan Aff., ~ 4-6 and 23).
3. USL Could not Enforce a 32V Copyright Against the University or
BSDI Because of the Lack of Copyright Notice.
Even if USL had not forfeited its copyright in the 32V code, such a
copyright could not be enforced against the University or BSDI due to
the lack of notice. 17 U.S.C. 405(b). Where notice has been omitted
from a copyrighted work, section 405 of the Copyright Act bars
enforcement of the copyright against an innocent infringer who
relied on the lack of notice, even if the copyright is later recaptured
by taking the necessary steps to cure the omission. Both the
University and BSDI believed AT&T did not claim copyright in the
32V code because it had been widely distributed with no copyright
notice, and that USL had chosen to rely on trade secret law instead.
(McKusick Dep. T. 247-1 to 25115; McKusick and Bostic Decl., ~ 28.4
and 28.5). Thus, to the extent there were any infringement, it would
not be actionable due to the lack of notice.
III. USL CANNOT DEMONSTRATE A LIKELIHOOD OF SUCCESS ON ITS
TRADE SECRET CLAIM.
The Affidavits submitted by Keith Bostic, Kirk McKusick and David
Kashtan establish unequivocally that none of the features USL relies
on in support of its motion are trade secrets. In an attempt to
salvage its trade secret claim, USL argues that mere access to its
licensed code was sufficient to "taint" the authors of Net2, whether
or not Net2 actually contains or discloses any USL trade secrets. In
order to make this argument, USL blatantly ignores the terms of its
own software license agreements with the University, which
preclude such a claim.
A. To Prevail On Its Trade Secret Claim USL Must Demonstrate That
BSD/386 Contains USL Trade SECRETS.
As USL itself admits, its agreements with the University authorize
the University to develop its own versions of the UNIX software.
What is more, those agreements expressly provide that derivative
works which do not "include" USL proprietary information are to be
made available to anyone for unrestricted use.
1. The LICENSE Agreements Authorize Use of the UNIX 32-V
Code To Create Modifications, Enhancements and Derivative Works
Over the course of their relationship, in the late 1970s and 1980s,
USL's predecessors-in-interest and the University entered into a
series of software license agreements governing use of the UNIX
32V software. Although those agreements were clarified and made
more specific over time, all had the same basic meaning concerning
the University's right to use the licensed software for research
purposes, to create derivative works based upon it and to publicly
release its results, modifications, enhancements and derivative
works, so long as they did not contain the licensed trade secrets.
The first agreement governing use of the UNIX 32V software was the
April 1, 1979 Software Agreement between Western Electric
Company and the University of California (the "April 1, 1979
Agreement"), which USL has attached as Exhibit B to the Affidavit of
Michael J. DeFazio. This agreement-- the earliest of the series-- is
the only agreement USL refers to in its motion papers.
The second agreement governing use of the UNIX 32-V
software,[fnl7] was the August 1, 1981 Software Agreement
between western Electric and the University of California (the
"August 1, 1981 Agreement") (attached as Exhibit X to the Forte Aff.).
[fn17] See, e.q., Baldwin Dep. T. 59-6 to 59-13.
The most recent agreement governing the University's use of the 32V
source code was entered into on November 12, 1985, and is called
the Educational Software License Agreement, E-SOFT-00089
(hereinafter the "E-SOFT-00089 Agreement"). (Bond Dep. T. 32-17 to
32-25, 33-1 to 33-9, 39-7 to 43-5 and Exhibits D-25 and D-26 (see
(Wilson Dep. T. 60-11 to 61-2; Bond Dep. T. 32-25 to 33-9, 132-10
to 133-19). Further, since the E-SOFT-00089 agreement expressly
supersedes all prior agreements on the subject matter contained
therein, it is the language of the E-SOFT-00089 that governs in this
action. See paragraph 4 of the E-SOFT-00089 Agreement (attached
as Exhibit F to the Forte Aff.).
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
[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
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
(Baldwin Dep. T. 33-15 to 34-16). Mr. Baldwin further testified that
Another USL employee, Mitzi Bond, similarly testified to her
(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).
(Frasure Dep. T. 172-11 to 172-20).
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
This argument is further contradicted by USL's own conduct ;
The testimony of USL's witnesses is contradicted by the express
language of the agreements, the conduct of the parties, the
testimony given by other USL witnesses, and in some cases, even
their own prior testimony. Their alleged understanding is also
contrary to the understanding of the representatives of the
University who were involved in the negotiation of those
agreements. (See Karels Aff. 18-36; McKusick Dep. T. 247-1 to
251-25). In interpreting the agreement, the Court should look to the
parties' words and conduct before this litigation arose and
particularly to the language of the agreement itself and not to USL's
litigation construct. The agreements themselves and the conduct of
both parties make it very clear that only enhancements,
modifications and derivative works that contain or disclose USL
proprietary information must be treated as licensed software.
This interpretation is further confirmed by the confidentiality
provision in the agreements. Section 7.05(a) of the E-SOFT-00089
Agreement provides that confidentiality must be maintained for the
Software Products subject to the Agreement, including methods or
concepts utilized therein. It does not require that confidentiality be
maintained for derivative works not containing such Software
Products or methods and concepts utilized therein.[fn.20]
Likewise, section 5.06 of the August 1, 1981 Agreement and section
4.06 of the April 1, 1979 Agreement prohibit only disclosure of the
Licensed Software (including methods or concepts utilized therein."
At page 9 of the August l, 1981 Agreement and p. 7 of the April 1,
1979 Agreement, "Licensed Software" is defined to mean "the
Computer Programs and the documentation, or any portions thereof,
generally identified below and specifically listed in the attached
schedule . . . ."
As explained above, the one time when USL attempted to include
derivative works prepared by the licensee in the definition of
Licensed Software, the University objected to that definition, and
the agreement was "clarified" by removing that language from the
definition. In its place, a new sentence was added providing instead
that derivative works "that contain" licensed software had to be
treated as licensed software. Thus, USL's attempt to read into the
earlier agreements a provision that derivative works not containing
or disclosing AT&T proprietary information are subject to the same
confidentiality restrictions as the licensed software must be
Since the license agreements expressly impose a duty of secrecy
only for the licensed software and methods and concepts utilized
therein, and the parties' understanding in this regard was repeatedly
clarified to limit the license restrictions to derivative works that
actually contain or disclose USL proprietary information, no duty of
secrecy can be implied for derivative works that do not contain or
disclose any of USL's proprietary code, methods or concepts. See
Ferroline Corp. v. General Aniline & Film Corp., 207 F.2d 912, 922,
925-26 (7th Cir. 1953), cert. denied, 347 U.S. 953 (1954) (where a
license agreement expressly imposes an obligation of secrecy with
respect to certain information, no further confidentiality
restrictions can be implied). Thus, the cases USL cites with respect
to advantages obtained by familiarity with the code are inapplicable.
In this case, unlike in those, the University was authorized to use
licensed software in developing its own code and was prohibited
from distributing it to non-licensees only if it contained USL trade
3. The Duty of Confidentiality Does Not Apply to Information
That is or Becomes Generally Known.
Consistent with fundamental trade secret law, the agreements
governing use of the UNIX 32-V Software expressly provide that no
duty of confidentiality extends to information already generally
known. Section 7.05(a) of the E-SOFT-00089 Agreement states:
If information relating to a SOFTWARE PRODUCT subject to this
Agreement at any time becomes available without restriction to the
general public by acts not attributable to LICENSEE or its employees,
students or faculty members, LICENSEE's obligations under this
section shall not apply to such information after such time.
Section 5.07 of the August 1, 1981 Agreement and Section 4.07 of
the April 1, 1979 Agreement contain similar provisions excluding
information that is or becomes generally known from the
University's obligation of confidentiality. Thus, there can be no
claim of misappropriation based on use or disclosure of generally
known information, regardless of where the numerous authors of
Net2 obtained that information.
In this case, therefore, the only issue to be determined is whether
by releasing Net2 to non-licensees, the University disclosed to non-
licensees any code, method or concept that can be considered a trade
secret. USL has not made and cannot make any such showing.
B. USL Cannot Demonstrate That Net 2 or BSD/386 Contain any USL Trade Secrets
The affidavit of USL's expert misses the point entirely since he has
failed to identify any original licensed code, methods or concepts
contained in Net2 that still qualified as USL trade secrets at the
time of Net2's release. Although at one time portions of the code,
methods and concepts may have been trade secrets, UNIX source code
has now been so widely licensed and is so well-documented in the
technical literature that its internal operation, algorithms, design,
sequence, structure and organization, and many portions of the
specific code, are generally known or readily ascertainable. Indeed
in many respects it has become a standard in the industry. The
Affidavits submitted by Keith Bostic, Kirk McKusick and David
Kashtan demonstrate conclusively that USL has failed to establish
the presence of any USL trade secrets in Net2 or BSD/386, since all
the items USL relies on in this motion are disclosed in publicly
available materials and are commonly known in the industry. Thus,
USL's trade secret claim cannot possibly succeed.
IV. USL CANNOT SHOW IRREPARABLE HARM
USL also cannot meet the requirement of irreparable harm. Although
USL has submitted a lengthy declaration outlining the supposed harm
it will suffer if lower-priced competition is permitted, USL ignores
the fact that Net2 has been distributed to hundreds of thousands of
individuals and remains freely available from at least 66 different
sources. At least one other company has already widely distributed a
complete system based on Net2 and USL has taken no action against
that company. (See Adams Aff., 9 -11).
Moreover, a number of other UNIX clones which share many of the
same features USL relies on in its motion, have been available for
years. Although these systems are inferior to BSDI's, they disclose
and make use of the same types of information BSDI is alleged to
have misappropriated. (Bostic & McKusick Decl., ~ 28.1.3). Thus, in
reality, USL cannot show any urgent need to put BSDI out of business
pending the trial in this action.
BSDI, on the other hand, will suffer irreparable harm if the
preliminary injunction USL requests is granted. BSDI will be forced
out of business and will have no way to finance its defense of this
lawsuit. (Adams Aff., ~ 14). USL not only seeks to keep BSDI's only
product off the market, but also seeks to force BSDI to fire all of its
employees based on the fact that they, like so many other
experienced computer programmers, have had access at some point
to UNIX source code. This is a frivolous request that, if taken
seriously, would strike fear into the hearts of programmers all over
the world, who would also potentially be subject to such
restrictions on their employment opportunities as a result of their
access to UNIX source code as students or employees.
V. The Public Interest Favors Denial of the Preliminary Injunction.
BSDI makes its system available to programmers who could not
afford [REDACTED] for a source license from USL. USL is able to
charge this exorbitant fee only because of the lack of competition.
Denial of USL's motion thus will serve the public interest by
promoting competition. Denial will also prevent USL from unjustly
inhibiting the employment opportunities of the thousands of
computer programmers who have had access to UNIX source code.
VI. EVEN IF USL COULD ESTABLISH THAT NET2 CONTAINED SOME USL
PROPRIETARY INFORMATION, THE INJUNCTION IT SEEKS IS OVERLY BROAD.
A. An Injunction Against the Entire BSD/386 Program Would Be
Injunctive relief "must be tailored to remedy the specific harms
shown," Davis v. Romney, 490 F.2d 1360, 1370 (3d Cir. 1973), and
should "be no broader than necessary to provide full relief to the
aggrieved plaintiff." McLendon v. Continental Can Co., 908 F.2d 1171,
1182 (3d Cir. 1990); see also Ameron. Inc. v. U.S. Army Corps of
Engineers, 787 F.2d 875, 890 (3d Cir. 1986) cert. dismissed, 488 U.S.
918 (1988) (an injunction which exceeds what is required to provide
plaintiff with complete relief is contrary to "jurisprudence
governing injunctive remedies."); Ideal Toy Corp. v. Plawner Toy Mfg.
Corp., 685 F.2d 78, 84 (3d Cir. 1982) ("The injunctive decree must be
broad enough to protect the plaintiff, yet sufficiently narrow to
avoid affording undeserved patent protection, and to permit the
defendant to participate in activity outside the intended scope of
This Court thus has the discretion and the responsibility to "mold its
[preliminary injunction] decree to meet the exigencies of [the]
particular case." 11 Wright & Miller, Federal Practice and Procedure:
Civil 2947, at 424 (1973). USL would have this court far exceed
those boundaries by granting a preliminary injunction whose
sweeping effect would enjoin the entire BSD/386 product, even
though USL accuses only 80 of the more than 8000 files, and points
to only a few lines of similar code out of 1.5 million. Given that the
Net 2 files were written separately by thousands of different
authors over a period of many years, there would no basis
whatsoever for finding copying as to all of them based on
allegations or evidence against only one.
Thus, even if USL could establish infringement as to a few lines of
code, which as explained at length above it has not, there would still
be no basis for preventing BSDI from using the remaining code in
[I]f the infringing portion of defendant's work can be removed
without destroying the usefulness of the remainder of the work, the
whole of the work need not be enjoined.
3 Nimmer on Copyrights. supra, li.06[c], at 14-91-92; see also Orth-
O-Vision. Inc. v. Home Box Office, 474 F. Supp. 672, 686 n.14 (S.D.N.Y.
1979) ("When the infringing portion of a defendant's work may be
removed from the remainder, injunctive relief ought extend only to
the former."); Breffort v. I Had A Ball Co., 271 F. Supp. 623, 625-26
(S.D.N.Y. 1967) (excluding from injunction prohibiting performance of
a copyright infringing play the independent performance of original
music created for the play); Craft v. Kobler, 667 F. Supp. 120, 125
(S.D.N.Y. 1987) (noting that injunction prohibiting sale of author's
infringing biography nevertheless allowed author to revise the work
so as to eliminate the infringing materials); Salinger v. Random
House. Inc., 811 F.2d 90, 100 (2d Cir.) (same), cert. denied, 484 U.S.
890 (1987); International Film Service Co. v. Affiliated Distributors,
283 F 229, 235 (S.D.N.Y. 1922) (allowing defendant to remake movie
so as to delete those scenes which infringed plaintiff's copyright);
Colonial Book Co.. Inc. v. AMSCO School Publications Inc., 41 F. Supp.
156, (S.D.N.Y. 1941) (injunction must be limited to the eleven pages
of defendant's work which infringed plaintiff's copyright).
Otherwise, USL would be granted a monopoly over a huge volume of
material which even USL admits was not copied.
In Educational Testing, plaintiffs' request for a similarly broad
preliminary injunction was rejected by this circuit. See Educational
Testing, 793 F.2d 533, 545 (3d Cir. 1986). The plaintiff in
Educational Testing, claiming that defendant infringed its copyright
in certain test materials, sought to enjoin defendants' "use of
information obtained from" plaintiff's copyrighted tests and from
"adapting" any of plaintiffs' materials. Id. The court noted that such
an injunction would prohibit legitimate uses of plaintiffs' work as
well as legitimate original works by defendants. See also 3 Nimmer
on Copyright, supra, 14.06[C], at 14-92-14-93.
B. Plaintiff is Misusing its Copyright by Attempting to Enjoin All Or BSD/386.
A misuse of copyright protection is found when a copyright holder
attempts to utilize his copyright to gain protection beyond that
which copyright law allows. When analyzing a copyright holder's
conduct for misuse, the court does not look to the validity of the
copyright, but rather to the manner in which the copyright is being
used. qad. inc. v. ALN Associates. Inc., 770 F. Supp. 1261, 1266 n.14
(N.D. Ill. 1991). As the court noted in qad, "[n]o party can use the
limited grant that a copyright confers to gain control of components
over which it has no such right." Id. at 1266
The plaintiff in qad asserted copyright infringement of its computer
software program, alleging that its entire program, of which it
claimed defendant's was a derivative, was original with plaintiff.
When it became apparent that, in fact, much of plaintiff's program
was itself copied from yet another program, the court denied
plaintiff any relief even with regard to those portions of defendant's
program which were infringing. The court noted that "[w]hen a
copyright holder attempts to use legal proceedings to protect an
improper extension of a copyright, the court may refuse to enforce
the copyright." See also Lasercomb America. Inc. v. Reynolds, 911
F.2d 970, 976-78 (4th Cir. 1990), aff'd without op., 961 F.2d 211
(1992) (plaintiff was guilty of misuse of copyright where it
licensed copyrighted program on the condition that licensee refrain
for 99 years from creating a competing program).
Plaintiffs in this action likewise are attempting to use their alleged
copyright to enjoin BSDI's use not only of those programs accused
of-being infringing, but of thousands of other files, consisting of
hundreds of computer programs, that USL does not even accuse. In
addition, USL improperly seeks to enjoin the use of standard file
names and mnemonics that are protected neither by copyright nor
trade secret law.
For all of the reasons outlined above, plaintiffs cannot gain the
expansive preliminary injunction that they seek in this action.
Although no injunction is warranted, to the extent the Court grants
any injunction, it must be narrowly tailored to the few lines of code
USL relies upon.
Both USL's trade secret claim and its copyright infringement claim
are fundamentally flawed. One because the information allegedly
misappropriated is not in fact secret. And the other because USL has
no valid copyright in 32V and can show no substantial copying of
protectible expression. A grant of USL's motion will put BSDI out of
business permanently and will prevent it from having the means to
defend itself in this action. A denial of USL's motion will simply
maintain the status quo, since BSDI has been selling BSD/386 for
over twelve months and the Net2 code is available from dozens of
other sources. For all the foregoing reasons, BSDI respectfully
requests that USL's motion for preliminary injunction be denied in
SAIBER SCHLESINGER SATZ
Attorney f or Defendant
Berkeley Software ~ Design, Inc.
JAMES H. FORTE
A Member of the Firm
Dated: January 8, 1992