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From: gwh@soda.berkeley.edu (George William Herbert)
Newsgroups: comp.unix.bsd
Subject: UCB Sues USL
Date: 5 Aug 1993 00:49:20 GMT
Organization: University of California, Berkeley
Lines: 426
Message-ID: <23pleg$7v6@agate.berkeley.edu>
NNTP-Posting-Host: soda.berkeley.edu
Keywords: countersuit
This from the bsdi.com ftp site, (bsdi-info/usl/930610.ucb_complaint)
--
JOEL LINZNER
CARLA J. SHAPREAU
CROSBY, HEAFEY, ROACH & MAY
Professional Corporation
1999 Harrison Street
Oakland, California 94612
Telephone (510) 763-2000
JAMES E. HOLST
JOHN F. LUNDBERG
MARY E. MacDONALD
University of California
300 Lakeside Drive, 7th Floor
Oakland, California 94612-3565
Telephone: (510) 987-9800
Attorneys for Plaintiff
The Regents of the University of California
SUPERIOR COURT OF CALIFORNIA - COUNTY OF ALAMEDA
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
Plaintiff,
v.
UNIX SYSTEM LABORATORIES, INC.,
Defendant.
No. 717864-3
COMPLAINT
Plaintiff The Regents of the University of California
("the University") alleges as follows:
1. Defendant Unix Systems Laboratories, Inc. ("USL")
is a Delaware corporation with its principal place of business in
Summit, New Jersey. USL is a majority-owned subsidiary of AT&T engaged
in the development, manufacture, licensing and sale of computer
software operating systems and related products and services. The
University of California is a public trust created under Article IX,
Section 9 of the California Constitution that is administered by The
Regents of the University of California.
FACTUAL BACKGROUND
2. Commencing in the 1970s, the University began
developing software named the Berkeley Software Distribution ("BSD").
The BSD releases are a series of Unix-compatible software distributions
that incorporate leading edge technology and are developed by the
University of California Berkeley Computer Systems Research Group
("CSRG").
3. On or about March 4, 1986, the University and AT&T
entered into a written license agreement for the use of the
University's 4.2 BSD and 4.3 BSD computer programs and documentation, a
copy of the agreement is attached here to as Exhibit A.
4. On or about May 4, 1989, the University and AT&T
entered into a written license agreement for the use of the
University's 4.3 BSD-Tahoe computer programs and documentation, a copy
of which is attached hereto as Exhibit B. The University's 4.3
BSD-Tahoe computer programs and documentation were made available to
USL under the same terms and conditions set forth in the March 4, 1986
agreement. (The 4.2 BSD, 4.3 BSD, and 4.3 BSD-Tahoe agreements will
hereinafter be collectively referred to as the "BSD Agreements.")
5. AT&T licensed, for itself and its subsidiaries,
the right to use and sublicense the University's BSD software for,
among other purposes, the development of AT&T's (and subsequently
USL's) commercial Unix Operating System. The price charged by the
University for a license to use its BSD software and documentation was,
and is, a nominal fee to cover the cost of production and shipping of
the software and related documentation. The University has never
licensed its BSD software for profit.
6. The BSD Agreements require that USL give the
University proper credit and recognition for its use of any part of 4.2
BSD, 4.3 BSD, and 4.3 BSD-Tahoe in Paragraph 8 as follows:
Proper Credit and Recognition. In the use of any part of 4.2
BSD and 4.3 BSD, AT&T will give appropriate credit to the
University and the Electrical Engineering and Computer
Sciences Department at the Berkeley Campus of the University
of California and Other Contributors for their roles in its
development and will require sublicensees to give such
credit.
If AT&T is providing documentation similar to that which is
provided with 4.2 BSD and 4.3 BSD, notices similar to those
included in that documentation suffice to satisfy this
requirement. If AT&T is providing new documentation, this
requirement will be satisfied if each document includes the
following statement: 'This software and documentation is
based in part on the Fourth Berkeley Software distribution
under license from The Regents of the University of
California. We acknowledge the following individuals and
institutions for their role in its development: [insert
names of individuals and institutions which appear in the
documentation provided to AT&T as part of 4.2 BSD and 4.3 BSD
for those portions of said Distribution used by AT&T.]'
7. In addition, in Paragraph 7 of the BSD Agreements,
the University granted to AT&T and its subsidiaries the right to
sublicense 4.2 BSD, 4.3 BSD, and 4.3 BSD-Tahoe to third parties as long
as AT&T and its subsidiaries required its sublicensees to comply with
the "Proper Credit and Recognition" obligations contained in Paragraph
8, referenced above. The University is informed and believes that USL
has sublicensed 4.2 BSD, 4.3 BSD, and/or 4.3 BSD-Tahoe to sublicensees,
including, but not limited to Silicon Graphics, Inc., the Santa Cruz
Operation, Inc., and Intel Corporation, who have failed to give the
University proper credit and recognition in the following documentation
as required under Paragraph 8 of the BSD Agreements: Silicon Graphics'
IRIX User's Reference Manual," Santa Cruz Operation's "Open Desktop
Administrator's Guide," and Intel's "IBCS2."
8. On or about November 1, 1989, AT&T assigned and
transferred its rights to, among other things, System V, Release 4 of
the Unix Operating System to USL. The University is informed and
believes that AT&T assigned and transferred its rights under the BSD
Agreements to USL.
9. The 4.3 BSD-Tahoe software expressly provides as
follows:
Copyright (c) 1982, 1986 Regents of the University of
California. All rights reserved.
Redistribution and use in source and binary forms are
permitted provided that the above copyright notice and
this paragraph are duplicated in all such forms and that
any documentation, advertising materials, and other
materials related to such distribution and use
acknowledge that the software was developed by the
University of California, Berkeley.
USL failed to include the University's copyright notice in its Unix
System V, Release 4.
10. Substantial portions (perhaps as much as 50%) of
the current version of USL's Unix Operating System, "System V, Release
4," is comprised of the University's BSD code. USL has paid no
royalties for its use of the University's BSD software, although USL
currently licenses its Unix Operating System for approximately
$200,000. Although USL itself states, the Unix Operating System has
become "one of the most highly regarded computer systems in the world,"
this is largely the result of BSD software developed by the University
and its contributors which has been incorporated into USL's Unix
Operating System. The only form of compensation the University
required USL to provide (other than the nominal license fee) was credit
and recognition to the University for its valuable software and related
documentation. USL failed to provide the University with its due
credit and recognition under the applicable license agreements.
FIRST CAUSE OF ACTION
(Specific Performance Cal. Civ. Code 3384)
11. The University incorporates by reference the
allegations set forth in Paragraphs 1 through 10 above, as if set forth
in full herein.
12. The consideration given by USL for the
University's grant of the right to use and sublicense the University's
BSD software and documentation was, among other things, payment to the
University of a nominal license fee and the provision by USL of proper
credit, recognition, and notice to the University whenever USL used the
University's BSD software and documentation.
13. The University has performed all conditions,
covenants, and promises required of it on its part to be performed in
accordance with the terms and conditions of the BSD Agreements.
14. USL has failed, and continues to fail, to perform
the conditions of the BSD Agreements in that USL has failed to give the
proper credit, recognition, and notice to the University for its use of
BSD software and related documentation in USL's products as required
under the BSD Agreements.
15. USL's widely distributed documentation contains
portions of 4.2 BSD and/or 4.3 BSD code and documentation but these
publications fail to provide the University with proper credit,
recognition, and notice. The following documentation are but a few
examples of USL's failure to perform its obligations under the BSD
Agreements:
a. Advanced System Administration, UNIX SVR4.2;
attached hereto as Exhibit C are copies of the title page and
acknowledgement portion of this documentation;
b. User's Guide, UNIX SVR4.2; attached hereto as
Exhibit D are copies of the title page and acknowledgement portion of
this documentation;
c. System Files and Devices Reference Manual for
Motorola Processor (for Unix System V Release 4), attached hereto as
Exhibit E are copies of the title page and acknowledgement portions of
this documentation;
d. System V Application Binary Interface, Intel
i860 Processor Supplement; attached hereto as Exhibit F are copies of
the title page and acknowledgement portions of this documentation; and
e. System V Interface Definition, 3rd Edition;
attached hereto as Exhibit G are copies of the title page and
acknowledgment portion of this documentation. Exhibit G indicates that
USL has failed to give the University the credit and recognition it is
required to provide under the BSD Agreements because the only reference
to the University are the words "(c) 1985 Regents of the University of
California."
16. USL has failed to include the University's
copyright notice in System V, Release 4 and related documentation.
17. USL's failure to give the University proper
credit, recognition, notice for its use and reproduction of BSD
software and documentation in the development of System V, Release 4
and related documentation has caused, and continues to cause,
irreparable injury to the University. USL has caused harm to the
University's reputation by failing to give the University recognition
for its academic, cutting-edge developments that have greatly
contributed to the Unix community's evolution and vitality. The harm
caused by USL to the University cannot be quantified in monetary
terms. Moreover, an accurate assessment of damages is far too
difficult and speculative. If USL fails to provide proper credit and
recognition to the University, the University seeks an Order
terminating the BSD Agreements which will require USL to "immediately
destroy 4.2 BSD, 4.3 BSD, and 4.3 BSD-Tahoe and all copies thereof. .
.and [USL] shall cease use and sublicensing thereof" as provided in
Paragraph 2 of the BSD Agreements. For the reasons stated above, the
University has no adequate legal remedy for its injuries and it,
therefore, seeks specific performance of USL's obligations under the
BSD Agreements.
SECOND CAUSE OF ACTION
(California Unfair Competition)
(Cal. Bus. & Prof. Code 17200 and 17203)
18. The University incorporates by reference the
allegations set forth in Paragraph 1 through 17 above, as if set forth
in full herein.
19. USL's continuing distribution and sale of System
V, Release 4 of the Unix Operating System (in source and object code
form), and related documentation, without proper credit, recognition,
and notice of the University's original work constitutes unlawful,
unfair, and fraudulent business acts and practices, and unfair,
deceptive, and misleading advertising within the meaning of California
Business and Professions Code Section 17200. The acts and practices of
USL have caused, and are likely to continue to cause, the public to be
confused and misled as to the origin of the code contained in System V,
Release 4 and related documentation.
20. Without injunctive relief, the University has no
means by which to control USL's dissemination of software and
documentation which unfairly deprives the University of its due credit
and which passes off portions of USL's System V, Release 4 and related
documentation as its own. The University has been, and continues to be
irreparably harmed by USL's unfair competition. No amount of money
damages can adequately compensate the University if it is without the
ability to prevent USL's continued wrongful acts. The University is
entitled to injunctive relief prohibiting USL from such acts of unfair
competition. In addition, the University is entitled to an Order
requiring that USL disseminate corrective notice to USL's licensees and
the public.
21. In addition, the University is engaged to recover
its costs of suit and its attorneys' fees.
THIRD CAUSE OF ACTION
(False or Misleading Statements)
(Cal. Bus. & Prof. Code 17500 and 17535)
22. The University incorporates by reference the
allegations set forth in Paragraph 1 through 18 above, as if set forth
in full herein.
23. USL's continuing distribution and sale of software
and documentation that fails to notify USL's licensees, sublicensees,
and the public that portions of USL's software and documentation
contain, use, or are based in part on, the Fourth Berkeley Software
Distribution under license from the University, constitutes false and
misleading statements within the meaning of California Business and
Professions Code Section 17500.
24. USL's false and misleading statements have caused,
and are likely to cause, the public to be confused, misled, and
deceived.
25. USL knew, or in the exercise of reasonable care,
should have known, that the acknowledgements, notice, and credit
contained in its System V, Release 4 software and related documentation
was, is, and continues to be, false and misleading. Notwithstanding
USL's knowledge of its misleading statements, USL continues to
distribute and sell the offending software and documentation.
26. Without injunctive relief, the University has no
means by which to control USL's false and misleading statements to its
licensees and the public and has been and will continue to be
irreparably harmed. No amount of money damages can adequately
compensate the University if it is without the ability to prevent such
continued false and misleading statements. The University is entitled
to injunctive relief prohibiting USL from continuing to make false and
misleading statements to its licensees and the public. In addition,
the University is entitled to an Order requiring USL to disseminate
corrective notice to its licensees and the public.
27. In addition, the University is engaged to recover
costs and attorneys' fees.
FOURTH CAUSE OF ACTION
(Declaratory Relief)
28. The University incorporates by reference the
allegations set forth in Paragraphs 1 and 2 above, as if set forth in
full herein.
29. The University seeks a judicial determination that
it is not in breach of its license agreements with USL for that version
of the Unix Operating System identified as "UNIX 32V."
30. UNIX 32V was released by AT&T on or about 1978.
AT&T granted the University the right to enhance, modify, and improve
32V and granted the University all ownership rights to such
enhancements, modifications, and improvements. The University had the
option to release to the public those enhancements, modifications, and
improvements to UNIX 32V that did not contain AT&T code or disclose
AT&T's trade secrets to non-AT&T licensees.
31. USL contends that the University materially
breached the UNIX 32V license agreement when the University released
software called "Net 2" to the public in July 1991. The University
contends that its release of Net 2 did not materially breach the
University's license agreement with USL.
32. There exists a substantial, present, justiciable
controversy between the University and USL with respect to the parties'
contractual rights and obligations under the UNIX 32V license
agreements and related documents.
33. A judicial declaration is necessary and
appropriate at this time so that the University and USL may ascertain
their rights and duties under the applicable license agreements and
related documents.
PRAYER FOR RELIEF
WHEREFORE, the University prays for judgment as
follows:
(a) For an Order requiring USL, its agents,
employees, successors, and assigns and all others in concert and
privity with it to print corrective advertising, giving the University
proper credit, recognition, and copyright notice, in all newspapers,
periodicals, and other publications, in which USL regularly advertises
the Unix Operating System and related products;
(b) For an Order requiring USL, its agents,
employees, successors, and assigns and all others in concert and
privity with it to distribute corrective notices, giving the University
proper credit, recognition, and copyright notice, to all of its
international and national licensees and sublicensees;
(c) For an Order requiring USL, its agents,
employees, successors, and assigns and all others in concert and
privity with it to give the University proper credit, recognition, and
copyright notice in all future releases of the Unix Operating System
and related documentation which contain, use, or are based on, 4.2 BSD,
4.3 BSD, or 4.3 BSD-Tahoe software and related documentation.
(d) For an Order permanently enjoining USL, its
agents, employees, successors, and assigns and all others in concert
and privity with it from making false and misleading statements
regarding the origin of those portions of System V, Release 4 and
related documentation that contain, use, or are based on, BSD software
or documentation and from engaging in unfair and deceptive business
acts and practices.
(e) For an Order that the BSD Agreements will
terminate and USL will be requited to immediately destroy 4.2 BSD, 4.3
BSD, and 4.3 BSD-Tahoe and all copies thereof and USL shall cease use
and sublicensing thereof as provided in Paragraph 2 of the BSD
Agreements if USL fails to provide proper credit and recognition to the
University.
(f) For a declaration that the University did not
breach the UNIX 32V license agreements when the University released Net
2 to the public.
(g) For an Order awarding the University costs of
suit herein incurred;
(h) For an Order awarding the University
reasonable attorneys' fees pursuant to contract and statute; and
(i) For such other further relief as the court
may deem just and equitable.
DATED: June ___, 1993 CROSBY, HEAFEY, ROACH & MAY
Professional Corporation
By:
Joel Linzner
Attorneys for Plaintiff
The Regents of the University
of California