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IBM's Memo in Support of Motion to Compel Privilege Log Docs
Sunday, December 11 2005 @ 02:47 AM EST

Here is IBM's Memorandum in Support of Motion to Compel Production of SCO's Privilege Log[PDF], as text, thanks to Henrik Grouleff. We've had this memorandum for a while, but I kept having to deal with breaking news in the Massachusetts ODF matter, and so I'm just now swinging back to this complicated tale. As you know, IBM has just filed their Reply Memorandum also, and in order to explain what is going on, you need both documents.

I'll do that in the next article, with the Reply Memo. For now, just notice the cases used, because this motion is all about the cases.

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

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

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

Attorneys for Defendant/Counterclaim-Plaintiff
   International Business Machines Corporation

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF UTAH

THE SCO GROUP, INC.,

Plaintiff/Counterclaim-Defendant,

v.

INTERNATIONAL BUSINESS MACHINES
CORPORATION,

Defendant/Counterclaim Plaintiff.

IBM'S MEMORANDUM IN SUPPORT
OF MOTION TO COMPEL
PRODUCTION OF DOCUMENTS ON
SCO'S PRIVILEGE LOG

(ORAL ARGUMENT REQUESTED)

Civil No. 2:03-CV-0294DAK

Honorable Dale A. Kimball

Magistrate Judge Brooke Wells

    Defendant/Counterclaim-Plaintiff International Business Machines Corporation ("IBM") respectfully submits this memorandum in support of its motion to compel production of documents on SCO's privilege log that were created by or for third parties AT&T and its affiliates and subsidiaries ("AT&T"), UNIX System Laboratories ("USL"), Novell, Inc. ("Novell"), and The Santa Cruz Operation, Inc. ("Santa Cruz").1

Preliminary Statement

    In this case, SCO claims that documents created by or for four entirely different companies, AT&T, USL, Novell, and Santa Cruz, are privileged as to SCO. Although SCO has nowhere articulated the precise basis for such a claim, SCO apparently contends that it may assert an attorney-privilege belonging to other companies still in existence because these companies, like SCO, once owned certain of the UNIX assets at issue in this and other litigation.2 SCO cannot properly claim attorney-client privilege over documents originating with other corporations and their attorneys. The transfer of assets from one entity to another does not transfer the attorney-client privilege as well. Instead, control of the entity possessing the privileges must pass to the purchaser for the privilege to pass. It is undisputed that SCO does not control any of the corporations - AT&T, USL, Novell, or Santa Cruz - whose privilege it now claims. To the extent documents that were once privileged as to these corporations have been transferred to SCO, any privilege in them has been waived. As set forth in further detail herein,

2

IBM respectfully requests that this Court order SCO to produce to IBM all documents on its privilege log created by or for third parties.

Facts

    1.     In the late 1960s and early 1970s, employees of Bell Telephone Laboratories ("Bell Labs"), an AT&T subsidiary, developed the UNIX operating system, and thereafter AT&T began to license rights in UNIX to other companies. (See Second Amended Complaint ¶¶ 1, 23, 63-64; see also Ex. 1 ("The Creation of the UNIX Operating System").)3

    2.     Beginning in 1990, UNIX System Laboratories ("USL"), a subsidiary of AT&T, assumed responsibility for AT&T's UNIX development and licensing activities. (See Ex. 2 (AT&T News Release, dated June 25, 1990).)

    3.     In 1993, AT&T sold USL and its associated UNIX assets to Novell. USL became a wholly-owned subsidiary of Novell (See Ex. 3 (AT&T Press Release, dated June 14, 1993).) Novell continued UNIX product development and also developed UnixWare, a product based on UNIX and Novell's own product, NetWare. (Id.)

    4.     In 1995, Novell sold certain of its assets related to UNIX and UnixWare to Santa Cruz pursuant to an Asset Purchase Agreement (the "APA"). Under the APA, Novell both conveyed and retained certain rights and assets related to UNIX and UnixWare. (Ex. 4 (Novell-Santa Cruz Asset Purchase Agreement) §1.1.)4

    5.     In 2001, Santa Cruz sold certain of its assets related to UNIX, including assets encompassed by Santa Cruz's "Server Software" and "Professional Services" divisions, to Caldera, Inc. ("Caldera").5 (See Ex. 5 (Santa Cruz News Release, dated May 4, 2001).)

3

    6.     On May 8, 2001, Santa Cruz changed its name to Tarantella, Inc. ("Tarantella"). (See Ex. 6 (Santa Cruz News Release, dated May 7, 2001).) Tarantella and Sun Microsystems, Inc. ("Sun") recently announced that Sun will acquire Tarantella, which transaction is expected to be effective in 2006. (Ex. 7 (Tarantella News Release, dated May 10, 2005).)

    7.     On March 6, 2003, "Caldera Systems, Inc. d/b/a the SCO Group" commenced this litigation against IBM. On July 22, 2003, Caldera filed a First Amended Complaint as "The SCO Group Inc. f/k/a Caldera Systems, Inc." and has since proceeded in this litigation as "The SCO Group, Inc." ("SCO").6

    8.     On March 10, 2005, the parties filed their respective privilege logs with the Court, identifying documents withheld from production on the basis of attorney-client privilege or work product protection.

    9.     On April 11, 2005, IBM filed objections to SCO's privilege log. Among other things, IBM objected to SCO's claim that documents created by or for third party corporations and their attorneys, including AT&T, USL, Novell, and Santa Cruz, were privileged as to SCO.

    10.     In an attempt to meet and confer with SCO on this issue, IBM requested that SCO provide its basis for withholding such documents by letter dated September 2, 2005. (Ex. 8 (Sorenson Letter, dated September 2, 2005).) In response, SCO stated that only it had "properly" made claims of privilege over the AT&T, USL, Novell, and Santa Cruz documents identified on its log. (Ex. 9 (Normand Letter, dated September 16, 2005).)

4

Argument

    SCO cannot properly claim privilege over documents created by or for attorneys who represented AT&T, USL, Novell, or Santa Cruz on the ground that these companies once owned some portion of the UNIX assets that SCO now claims. SCO, then known as Caldera, acquired certain UNIX assets from Santa Cruz through an asset purchase in 2001. But SCO did not acquire the attorney-client privilege belonging to companies which previously owned (or continue to own) the UNIX assets - AT&T, USL, Novell, or Santa Cruz - because SCO never acquired control of any of those companies. SCO cannot assert a privilege that, if it exists at all over these old and much-disseminated documents relating to the UNIX assets, belongs only to entirely different corporations. To the extent documents that once may have been privileged as to AT&T, USL, Novell, and Santa Cruz were transferred to SCO, any privilege in them has been waived. SCO should be ordered to immediately produce all such documents to IBM.

    Under settled principles of corporate law, "privilege resulting from communications between corporate officers and corporate attorneys ... belongs to the corporation and not to the officer." Intervenor v. United States, 144 F.3d 653, 658 (10th Cir. 1998). "When control of a corporation passes to new management, the authority to assert and waive the corporation's attorney-client privilege passes as well." Commodity Futures Trading Comm'n v. Weintraub, 471 U.S. 343, 348 (1985). But when a corporation merely sells or transfers assets to another corporation, without transferring control of the corporation, the attorney-client privilege does not also pass to the purchasing company. See, e.g., In re Grand Jury Subpoenas, 734 F.Supp. 1207, 1211 n.3 (E.D. Va. 1990) ("A transfer of assets ... is not sufficient to effect a transfer of the privileges; control of the entity possessing the privileges must also pass for the privileges to pass."), aff'd in relevant part, 902 F.2d 244 (4th Cir. 1990); Federal Deposit Ins. Corp. v. McAtee, 124 F.R.D. 662, 664 (D. Kan. 1988) ("The transfer of assets from one entity to another does not generally transfer the attorney-client privilege."). Instead, "the power to invoke or

5

waive a corporation's privileges is an incident of control of the corporation." In re In-Store Advertising Securities Litigation, 163 F.R.D. 452, 458 (S.D.N.Y. 1995) (citations and quotations omitted). "Where confidential attorney-client communications are transferred from a corporation selling assets to the corporation buying the assets, the privilege is waived as to those communications." Id.

    In Zenith Electronics Corporation v. WH-TV Broadcasting Corporation, 2003 WL 21911066 (N.D. Ill.), attached hereto as Exhibit A, the district court correctly refused to recognize a transfer of the attorney-client privilege between the buyer and the seller of assets relating to a substantial corporate division of Zenith Electronics Corporation ("Zenith"). Id. at *1. The court found that the transfer of Zenith's privileged documents to the buyer waived any privilege in the documents: "The court disagrees that the attorney-client privilege is a corporate asset that can be sold .... [M]ere transfer of some assets from one corporation to another - as was done in this case - does not transfer the attorney-client privilege." Id. (citations omitted).7

    Here, SCO's claim that communications in its hands between AT&T, USL, Novell, and Santa Cruz and their respective lawyers are privileged as to SCO is improper because, at most, SCO acquired only whatever assets Santa Cruz acquired from these companies. SCO and the entity it from which it obtained the UNIX assets, Santa Cruz, never obtained corporate control of the entity from whom they acquired the assets, and the privilege therefore was waived. With the exception of USL, which was owned by AT&T and later merged into Novell, all of these companies continued to operate after the sale of the assets.8

6

    SCO's claims of privilege over Novell documents is particularly striking given that SCO and Novell are adverse parties in litigation pending before this Court - litigation concerning ownership ofthe UNIX assets that SCO apparently believes permit it to assert privilege over communications between Novell and Novell's lawyers. Nor does SCO have any right to claim privilege over communications between Santa Cruz and its lawyers. While SCO purchased certain UNIX assets from Santa Cruz and has subsequently worked to create the appearance that it and Santa Cruz are one and the same entity, SCO did not acquire control of that company. That Caldera changed its name to "The SCO Group, Inc." and now uses the "SCO" brand and the "SCO.com" internet domain name, as Santa Cruz once did, does not give SCO the right to exercise a legal privilege that belonged to Santa Cruz and which has been waived by that company's revealing those communications to Caldera.

    For example, Entry No. 340 on SCO's privilege log describes a "discussion among client representatives" which reflect an "attorney's legal advice regarding IBM contract discussions." The attorney identified in the entry, however, is Steve Sabbath, in-house counsel for Santa Cruz and later Tarantella.9 Moreover, Mr. Sabbath represented Santa Cruz during a time when its interests were adverse to SCO, namely during the sale of its UNIX assets to SCO. For the reasons set forth above, IBM is aware of no basis for SCO to claim privilege over Mr. Sabbath's

7

advice to Santa Cruz. There is even less reason to do so for advice provided to Santa Cruz when it was in an adverse posture with SCO. Similarly, Entry No. 1580 describes an April 28, 1994 email as an "[a]ttorney edit of document reflecting legal advice regarding Draft letter from Novell to IBM regarding UnixWare." While the entry identifies attorney Burton Levine as the email's recipient, Mr. Levine only represented AT&T and later USL and Novell, but never SCO, or, for that matter, Santa Cruz, as far as IBM is aware. In short, the privilege claim at issue in Entry No. 1580 and the scores of entries just like it simply are not SCO's to make.

    These are only two of literally hundreds of entries in SCO's privilege log that claim privilege over documents that were created by or for attorneys representing AT&T, Novell, USL, or Santa Cruz. SCO's log improperly claims privilege with respect to more than a dozen AT&T and USL documents, nearly a hundred Novell documents, and over a thousand Santa Cruz documents. SCO's log also identifies several hundred documents that, based on the limited information provided (i.e., date, attorney, or description) almost certainly are documents that were created for or by one of those entities.10

    While SCO might be able to withhold communications between it and its own attorneys made for the purpose of receiving legal advice, it cannot withhold such communications made by another company to its lawyers simply because such documents may have been given to SCO in connection with its purchase of certain assets. And even if SCO were capable of establishing that its purchase of the UNIX assets it bought from Santa Cruz could somehow qualify as a change in corporate control of Santa Cruz, which it cannot, it also cannot show that the

8

documents were passed from company to company over a period of decades pursuant to an unbroken chain of transfer of control of each seller to each buyer. To the extent documents once privileged as to AT&T, USL, Novell, or Santa Cruz are now in SCO's hands, any privilege in them has been waived. Consequently, SCO should immediately produce all documents in its possession that were created by or for AT&T, USL, Novell, Santa Cruz, or any other third parties.

Conclusion

    Based on the foregoing, IBM respectfully requests that this Court order SCO to immediately produce all documents created by or for AT&T, USL, Novell, or Santa Cruz.

DATED this 26th day of September, 2005.

SNELL & WILMER L.L.P

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

CRAVATH, SWAINE & MOORE LLP
Evan R. Chesler
David R. Marriott
Attorneys for Defendant/Counterclaim-Plaintiff
International Business
Machines Corporation

Of Counsel:
INTERNATIONAL BUSINESS MACHINES CORPORATION
Donald J. Rosenberg
Alec S. Berman
[address, phone]

Attorneys for Defendant/Counterclaim-Plaintiff International Business Machines Corporation


9

CERTIFICATE OF SERVICE


I hereby certify that on the 26th day of September, 2005, a true and correct copy of the foregoing was sent by U.S. Mail, postage prepaid, to the following:

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

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

Robert Silver
Edward Normand
BOIES, SCHILLER & FLEXNER LLP
[address]



___[signature]___
Amy F. Sorenson

10

1 This motion addresses only one of IBM's four categories of objections set forth in IBM's April 11, 2005 Objections to SCO's Privilege Log (Category Two, SCO's improper claim of privilege over documents that originated with the third parties that previously owned the UNIX assets). IBM is in the process of determining the extent to which SCO may have addressed IBM's other objections, but reserves the right to bring further motions should they prove necessary.

2 SCO's and Novell's competing claims of ownership over certain UNIX assets, including UNIX copyrights, is the subject of litigation in The SCO Group, Inc. v. Novell. Inc., No. 2:04-CV- 00 139-DAK, pending before this Court. For purposes of this motion only, we assume that SCO currently owns all of the UNIX assets relating to the materials it claims are privileged. IBM reserves the right to challenge SCO's ownership claims over any and all UNIX assets, however, including the copyrights at issue in the Novell litigation.

3 True and correct copies of all exhibits supporting this motion are attached to the Declaration of Amy F. Sorenson, submitted concurrently herewith, and are cited herein as "Ex. __."

4 Again, the precise nature and scope of this transaction is at issue in The SCO Group. Inc. v. Novell. Inc., No. 2:04-CV-00139-DAK, pending before this Court.

5 Caldera Systems, Inc. was originally formed as Caldera, Inc., a Utah corporation, in October of 1994.

6 In this lawsuit, SCO has repeatedly, if inconsistently, confused the distinction between it and Santa Cruz, which company was commonly known as "SCO" and used both the "SCO" brand name and the "SCO.com" domain name, both of which are now used by The SCO Group, Inc. For example, the Second Amended Complaint does not distinguish between The SCO Group, Inc. and Santa Cruz when describing the background of this dispute, even though many of the events alleged therein necessarily involve only Santa Cruz. (See Second Am. Compl. ¶¶ 37-39, 50-51.) To minimize this carefully orchestrated confusion, IBM refers to the plaintiff herein as "SCO" and The Santa Cruz Operation, Inc. as "Santa Cruz."

7 Even contractual language intending to transfer the privilege does not prevent waiver of the privilege where disclosure to a third party occurred in the course of a sale. Otherwise, such a rule "would allow anyone to evade waiver of the privilege [by] merely agreeing to transfer the privilege and accepting consideration for it." Zenith, 2003 WL 21911066, at *2.

8 This is true for all of the transactions pursuant to which ownership of the UNIX assets has changed hands, with the exception of the 1993 Novell-USL transactions. There, Novell acquired USL, a wholly-owned subsidiary of AT&T. From that point forward, all of the transactions have involved the sale of assets, not the sale of an entire company. In 1995, for example, Novell sold only certain of its assets related to UNIX and UnixWare to Santa Cruz pursuant to an asset purchase agreement. Under the APA, Novell both conveyed and retained certain rights and assets related to UNIX and UnixWare. Under such circumstances, Santa Cruz could not be said to have obtained control of Novell or any entity in connection with such purchase, and therefore whatever formerly privileged communications may have been transferred to Santa Cruz in connection with such purchase did not maintain the privilege. Likewise, when Santa Cruz sold the UNIX assets to Caldera in 2001, Caldera acquired the UNIX assets, and Santa Cruz continued in business under the Tarantella name.

9 On April 11, 2005, IBM also objected to SCO's failure to identify the involvement of a SCO attorney or attorneys in every privilege log entry. While SCO has since made an effort to name an attorney for many of its entries, the vast majority of those named never represented for SCO. Rather, virtually all of the purported "SCO Attorneys" are or were inside or outside counsel for AT&T, USL, Novell, or Santa Cruz.

10 Given the confusion created by SCO's claims of privilege over third-party documents, IBM objects to log entries that fail to identify the corporation or business entity from which a document originated, if this fact is not evident from the entry. SCO has made no revisions or corrections to its log based on this objection. SCO's failure to do so, by itself, should be deemed a waiver of any privilege for those documents. Atteberry v. Longmont United Hospital, 221 F.R.D. 644, 648 (D. Colo. 2004) ("production of an inadequate privilege log may be deemed a waiver of the privilege asserted").


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