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A UK Trademark Tale - the Elkington & Fife Affidavit as Text - Updated
Sunday, December 09 2007 @ 12:28 PM EST

Here's the Affidavit of Ordinary Course Professional [PDF] of Elkington & Fife, by Richard Mark Hiddleston, the law firm for the UK trademark on UnixWare, just filed in the SCO bankruptcy. Since they are filing this affidavit, which is asking to be retained going forward, it's probably an indication that whatever the issue is between SCO and Novell over this trademark, it isn't settled yet.

If it were, they'd line up for their money as a creditor, if any money was owed, or not be involved at all if fully paid, which they say they were. But in this filing, they are asking to be involved as an "ordinary course professional" -- the latter being an entity that already was performing professional services which wishes to continue to do so after a bankruptcy is filed.

I mention that because some have emailed me with the information from the trademark office, telling me that it "proves" that SCO is owner of the mark. However, if you go to the Office for Harmonization in the Internal Market's website, as I'm going to show you, and search for trademark number 000183103, you will find that it lists The Santa Cruz Operation, Inc. of California as owner of the mark, not The SCO Group of Utah. They are not one and the same, however much SCO has tried to claim they are.

Ah! Therein hangs the UK trademark tale, much like the US trademark tale, and if the UK matter were resolved, SCO wouldn't need this firm ongoing, I don't think. Let's look more closely at what's been happening in the UK and review the US story too, and I think you'll see what I mean.

If you look on the attached schedules to the Affidavit, you will see the following:

1. Novell, Inc. - We have been handling an opposition to a Community Trade mark application UNIXWARE on behalf of The SCO Group, Inc. against Novell, Inc.

It's the "against Novell" part of the sentence that tells us that there was/is a dispute, and the language seems to me to indicate that Novell brought an opposition to SCO's claim to the mark. The outcome is not, to me, yet clearly established as having been reached.

Old timers at Groklaw will remember that SCO filed paperwork to try to obtain the trademark "Unix System Laboratories" in the US [SCO's application, PDF], and for a while it tried to justify ownership of the mark as well as the UnixWare mark. Here's the story it told there:

Because UNIX SYSTEM LABORATORIES is now part of the Applicant, this trademark should be sent on to publication. In 1992, Novell purchased UNIX SYSTEM LABORATORIES and all of the UNIX assets, including all trademarks owned by UNIX SYSTEM LABORATORIES. In 1995, The Santa Cruz Operation, Inc. purchased all of the UNIX assets from Novell. As part of the transaction, Novell assigned the UNIX and UNIXWARE trademarks to The Santa Cruz Operation. In 2001, The Santa Cruz Operation completed the sale of, inter alia, the UNIXWARE technologies to Caldera Systems, Inc. Caldera subsequently changed its name to The SCO Group. Because of this, the mark should be allowed to go on to publication.

Well, a gold star for panache and gall, but in fact that wasn't an accurate account, and so it didn't fly. During that long saga, had you checked the USPTO site, it would have indicated that SCO had the mark; but it didn't. It just had filed the paperwork and until it was all worked through, it was confusing to anyone who hadn't already gotten a PhD in SCO strategies. But in the end, after SCO failed to respond to the USPTO examiner's questions, asking for substantiation of the story, SCO's application was marked abandoned and X/Open was established as the owner of the USL mark, and in fact finally SCO just gave up its quest on that, from all we could determine. And as you can UnixWare is listed as owned by X/Open in the US.

But, as seems to happen in stories about SCO and/or Microsoft these days, lo and behold up popped a proxy/individual, like the Lone Ranger, first to battle for the mark UnixWare in the USPTO process, and when that didn't seem to be working out, to file a lawsuit over the mark UnixWare and make a fuss and cause aggravation. It's an amazing coincidence.

It seems at every turn, the Lone Ranger wishes to fight the very same battles that SCO fights. You'll recall the failed anti-GPL litigation that Daniel Wallace brought in Indiana, mirroring SCO's arguments about the GPL. If you go back to the Office for Harmonization in the Internal Market's website, the page for searching for trademarks, and search for trademark number 000183103, you will find that The Santa Cruz Operation, Inc. is listed as owning the mark, the registration date being November 29, 2006. The original filing date is January 4, 1996, which would be after the Novell-Santa Cruz Operation APA, whereby Santa Cruz bought Unix from Novell in 1995.

The SCO Group is not the same entity as The Santa Cruz Operation, however; that company did continue on after selling two divisions to Caldera [part one; part two and further amendments on Groklaw's Contracts page], as you saw in the very funny SCO Follies of 2001, but in 1996, Santa Cruz Operation was still intact. So, this application indicates that Santa Cruz thought it had the UK rights to Unixware in 1996. If you scroll down, though, you'll see the section, Opposition. In 1999, Novell apparently noticed that Santa Cruz had filed this registration, and it filed an opposition. So did X/Open and another entity, Classen-Holding KG.

Next, scroll down to the Renewals section. There you see that the mark expired without being resolved, apparently, and that indicates to me that Santa Cruz Operation couldn't defend effectively and perhaps that there were private negotiations or settlements, and as we often have seen in the Unix story, nobody followed through with paperwork at the trademark office. It isn't until January of 2007 that there was a renewal. But by whom?

Who, exactly, is "The Santa Cruz Operation" in 2007? What was left of Santa Cruz after it sold two divisions to Caldera became Tarentella, and it eventually was acquired by Sun Microsystems. So who got the trademark? If you remember, in the US dispute over USL, SCO Group tried to tell it that they were one and the same company as Santa Cruz. But in the end, X/Open prevailed there, subject perhaps to review by the Lone Ranger.

Perhaps that same dispute is happening in the UK now. It could even be related to some degree. If so, I suggest telling the UK trademark folks that US Magistrate Judge Brooke Wells already ruled on that very subject in February of 2006, against SCO Group's claim that the entire company passed to them, saying "I find that the Novell to Santa Cruz transaction did not transfer the entirety of the business, nor did the Santa Cruz to Caldera transaction." And of course, Judge Dale Kimball has just ruled that Novell retained certain intellectual property, including the Unix and Unixware copyrights, and did not pass everything to Caldera in that deal between them. And I carefully and methodically traced out the US Unixware trademark story back in February of 2006.

And yet, look here, after clicking on the notice for 2006, Bulletin 2006/049, Date of publication: 04/12/2006, you see The Santa Cruz Operation responding to a notice, with the old California address. I know. Weird. By then, there was no Santa Cruz Operation, only Tarantella and what had been Caldera but had changed its name by then to The SCO Group. That isn't the same entity as The Santa Cruz Operation. Is it possible that the notice was sent to California, relayed to Utah, which filled in the form and sent it back without mentioning that there had been some water under the bridge since 1996? Someone may have neglected to mention the changes to the trademark office and just renewed *as if it were the same* entity? After tracking this story every day since 2003, that would not at all surprise me.

It's no wonder SCO is in bankruptcy. That can happen to litigious folks. Suing costs a lot of money, and that is, of course, one reason why we are seeing more proxies showing up. I believe that is part of the anti-Linux strategy, to cost Microsoft's competition money and time and distraction.

Anyway, I traced this all out for you, because some have been scornfully sending me the url to the UK trademark and alleging that SCO clearly owns the mark. They failed to notice that the registered owner is not The SCO Group, but the Santa Cruz Operation of California, and despite all the card tricks, that isn't the same thing at all. In the law, such details matter, and for the moment, the only thing that one can assume is that no one is currently the owner of the UnixWare mark in the UK, as it hasn't yet, from the paperwork on the website, been established as to who has it in 2007, only who registered it in 1996, and judging by the oppositions in 1999, that 1996 registration may have been in error or whatever. So, get your popcorn ready. This story isn't over.

Update: If you go to the German trademark search engine, you will find that X/Open is listed as the owner of the UNIXWARE mark. But scroll down to the history, and what you find is this:

SG55 - Transfers of rights, partial transfers of rights

Bis: 08.07.1994
Name und Anschrift des früheren Inhabers der Marke:
UNIX System Laboratories, Inc., Summit, N.J., US

Bis: 29.07.1998
Name und Anschrift des früheren Inhabers der Marke:
Novell, Inc., Orem, Utah, US

Bis: 20.03.2003
Name und Anschrift des früheren Inhabers der Marke:
The Santa Cruz Operation, Inc., Santa Cruz, Calif., US

Bis: 02.02.2007
Name und Anschrift des früheren Inhabers der Marke:
Caldera International, Inc., Lindon, Utah, US

"Name und Anschrift des früheren Inhabers der Marke" means name and address of the former owner of the mark. It looks to me, judging just from this, that "Caldera International, Inc." is no longer the owner of the UNIXWARE mark, if it ever was, as of February onward, and that X/Open is listed as the owner of the UNIXWARE trademark, number 2035231, old file number U8813. My best guess, and it's only a guess, is that as we've often seen in the Unix story, things were a bit casual as to paperwork sometimes, and now the paperwork is being clarified once and for all. If there is a dispute, it's between Novell and SCO, then, and not between SCO and X/Open at this point in time. As I say, though, it's just a guess.

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

IN THE UNITED STATES BANKRUPTCY COURT
FOR THE DISTRICT OF DELAWARE

In re:

The SCO GROUP INC, et. al., 1

Debtors.

Chapter 11
Case No. 07-11337 (KG)
(Jointly Administered)

AFFIDAVIT OF ORDINARY COURSE PROFESSIONAL

STATE OF UNITED KINGDOM
Kingdom of England
City of London
SS:

RICHARD MARK HIDDLESTON, being duly sworn, deposes and says:

1. I am a member of Elkington and Fife LLP, a limited liability partnership incorporated under the laws of England and Wales (the "Firm"), which maintains offices at Prospect House, [redacted], United Kingdom.

2. The Affidavit is submitted in connection with an Order of the United States Bankruptcy Court for the District of Delaware, entered on or about 14 September 2007, authorizing the above-captioned debtors and debtors in possession (collectively, the “Debtors”) to employ and compensate certain professionals in the ordinary course of business during the pendency of these chapter 11 cases.

3. Prior to the filing of the petitions which initiated the above-captioned cases, the Firm has represented and advised the Debtors as trade mark attorneys. The Debtors

have requested, and the Firm has agreed, to continue to provide such services to the Debtors on a post-petition basis during the course of these chapter 11 cases.

4. The Firm's current customary rates, subject to change from time to time, are GB £282 [282 United Kingdom pounds sterling] per hour together with various standard charges for prosecution of trade mark applications and the handling of oppositions. In the normal course of its business, the Firm revises its billing rates at the beginning of each year and requests that, effective at the date of revision of such rates in each year, the aforementioned rates be revised to the regular hourly rates which will be in effect at that time.

5. In the ordinary course of its business, the Firm maintains a database of trade mark and patent cases for existing clients which can be used for checking for possible conflicts. The Firm's database contains information regarding the firm's present and past representations. Pursuant to Federal Rule of Bankruptcy Procedure 2014(a), I obtained a list of the entities identified in Rule 2014(a) from counsel to the Debtors for purposes of searching the aforementioned database and determining the connection(s) which the Firm has with such entities. The Firm's search of the database identified the following connections:

PLEASE SEE ATTACHED SCHEDULE

The Firm may have performed services in the past, may currently perform services, and may perform services in the future, in matters unrelated to these chapter 11 cases, for persons that are parties in interest in the Debtors' chapter 11 cases. To the best of my knowledge, the Firm does not perform services for any such person in connection with these chapter 11 cases.

2

6. Neither I nor any principal, partner, director, officer, etc. of, or professional employed by, the Firm has agreed to share or will share any portion of the compensation to be received from the Debtors with any other person other that the principals and regular employees of the Firm, as permitted by 11 U.S.C. § 504(b).

7. Neither I nor any principal, partner, director, officer, etc. of, or professional employed by, the Firm, insofar as I have been able to ascertain, holds, or represents any interest adverse to the Debtors or their estates with respect to the matter(s) upon which the Firm is to be employed.

8. Prior to the filing of the above-captioned cases, the Firm was employed by the Debtors. However, the Debtors do not currently owe the Firm any outstanding sums for prepetition services. If the Firm's employment is authorized pursuant to the Ordinary Course Professionals order, the Firm will waive the pre-petition claim.

9. The Firm is conducting further inquiries regarding its retention by any creditors of the Debtors and other parties in interest in these bankruptcy cases, and upon conclusion of that inquiry, or at any time during the period of its employment, if the Firm should discover any facts bearing on the matters described herein, the Firm will supplement the information contained in this Affidavit.

10. I understand that any compensation paid to the Firm is subject to disallowances and/or disgorgement under 11 U.S.C. § 328(c).

I declare under penalty of perjury that the foregoing is true and correct.

3

Executed on 6 December, 2007

[signature]
Affiant

Sworn and subscribed before me
this sixth day of December, 2007.

[signature]
Notary Public

Notary Public London, England
(RUTH M CAMPBELL)
My Commission Expires with Life


CHEESEWRIGHTS
NOTARIES PUBLIC
[address, phone, fax]

4

SCHEDULE

1. Novell, Inc. - We have been handling an opposition to a Community Trade mark application UNIXWARE on behalf of The SCO Group, Inc. against Novell, Inc.

2. Madison & Austin and Parr Waddoups – We have previously handled trade mark matters on behalf of The Sco Group, Inc. through instructions from the above firms.

3. We also have handled or handled matters involving the following entities. However none of these appear to involve The SCO Group, Inc.:

(i) Veritas Software
(ii) Sun Microsystems
(iii) American Express
(iv) AT&T
(v) Dorsey & Whitney
(vi) Goodwin Procter
(vii) Broadcom Corp
(viii) Comverse Network Systems
(ix) EI du Pont de Nemours
(x) Hewlett-Packard
(xi) Lockheed Martin Group
(xii) Northrop Grumman
(xiii) Siemens AG
(xiv) University of Michigan

5

(xv) Univesity of Pittsburgh
(xvi) Yamaha Corporation

1 The Debtors and the last fours digits of the each of the Debtors' federal tax identification numbers are as follows: (a) The SCO Group, Inc., a Delaware corporation, Fed. Tax Id. #2823; and (b) SCO Operations, Inc., a Delaware Corporation, Fed. Tax Id. #7393.

6


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