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Path: sserve!manuel!munnari.oz.au!mips!mips!darwin.sura.net!wupost!gumby!destroyer!ubc-cs!fornax!bremner
From: bremner@cs.sfu.ca (David Bremner)
Subject: Re: AT&T vs. BSDI --> 4.3BSD-NET2 distribution requires AT&T license!!!
Message-ID: <1992Jul24.201744.20071@cs.sfu.ca>
Reply-To: bremner@cs.sfu.ca (David Bremner)
Organization: CSS, Simon Fraser University, Burnaby, B.C., Canada
References: <mcuddy.711795634@fensende> <1992Jul22.212903.29537@gateway.novell.com> <7009@skye.ed.ac.uk>
Date: Fri, 24 Jul 1992 20:17:44 GMT
Lines: 1459
In article <7009@skye.ed.ac.uk> jeff@aiai.ed.ac.uk (Jeff Dalton) writes:
>(NB -- my statements about AT&T's case are based entriely on
>what I've read in this newsgroup. I could easily be wrong.)
>
>-- jd
I was going to suggest that people ftp the legalize from ftp.uu.net,
but to forstall the requests for mailed copies, I will append the documents
from the directory vendor/bsdi/usl. After all, compared to alt.binaries.*
this is only a minor waste of bandwidth :-)
Have a nice day...
or else.
David
::::::::::::::
/home/csgrads/bremner/920420.complaint
::::::::::::::
Michael D. Loprete (MDL1695)
CRUMMY, DEL DEO, DOLAN,
GRIFFINGER & VECCHIONE, P.C.
One Riverfront Plaza
Newark, New Jersey 07102
(201) 596-4500
George L. Graff
James W. Kennedy
Charles B. Ortner
MILGRIM THOMAJAN & LEE P.C.
New York, New York 10005-2815
(212) 858-5300
Sanford Tannebaum
Executive Vice President and General Counsel
UNIX System Laboratories, Inc.
190 River Road
Summit, New Jersey 07901-1444
(908) 522-6666
Attorneys for Plaintiff Unix System Laboratories, Inc.
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
UNIX SYSTEM LABORATORIES, INC.,
Plaintiff, Civil Action No.
92-1667 (DRD)
-against-
COMPLAINT
BERKELEY SOFTWARE DESIGN, INC.,
Defendant.
Plaintiff UNIX System Laboratories, Inc. ("USL"), for
its Complaint against defendant Berkeley Software Design, Inc.
("BSDI"), avers as follows:
The Nature of The Action
1. This is an action for trademark infringement, false
advertising and unfair competition under the federal Lanham
Trademark Act, 15 U.S.C. Section 1051, et seq., and under the
statutory and common law of New Jersey and of each State in
which BSDI has engaged in the conduct detailed below. USL
seeks injunctive relief and damages to redress BSDI's ongoing
unauthorized use of the UNIX(R) trademark in BSDI's toll-free
telephone number, 1-800-ITS UNIX, and its inclusion in its
advertising and promotional materials of materially false and
misleading statements in violation of the rights of USL.
Jurisdiction and Venue
2. This Court has subject matter jurisdiction over this
action pursuant to 15 U.S.C. Section 1121(a) and 28 U.S.C.
Sections 1331, 1338.
3. Venue is properly laid in this district pursuant to
28 U.S.C. Section1391(b).
The Parties
4. USL is a Delaware corporation with its principal place of
business located in Summit, New Jersey. USL is a subsidiary of
American Telephone and Telegraph Company ("AT&T")
engaged in the development, manufacture, licensing and sale of
computer software operating systems and related products and
servlces.
5. Defendant BSDI is a Delaware corporation engaged in the
manufacture and sale of computer software operating systems
and related services. BSDI's principal place of business is located
in Richmond Falls, Virginia.
Background
6. Beginning in the early 1970s, AT&T's Bell Laboratories
developed proprietary computer operating system software and
other computer related products which it identified with the
trademark "UNIX."
7. On May 6, 1986, AT&T's UNIX trademark was placed on
the Principal Register of the United States Patent and Trademark
Office for computer programs, under Registration No. 1,392,203. A
copy of the registration is annexed as Exhibit A. This registration is
valid, subsisting, in full force and effect, and is now incontestable
pursuant to 15 U.S.C. Section 1065.
8. AT&T has assigned all of its proprietary rights in the UNIX
trademark and the software sold and licensed thereunder to USL.
For more than fifteen years, AT&T and its successor, USL, have
widely used the trademark UNIX to identify their system software,
computers and related products and services, including educational
and training services, system manuals, and technical and consulting
services.
10. The trademark UNIX is widely known as identifying the
products of AT&T and its successor, USL.
11. Pursuant to agreement with AT&T, the Regents of the
University of California (the "Regents") have been authorized to
distribute to third parties certain works derived from UNIX system
software subject to various restrictions intended to protect and
preserve AT&T's proprietary rights thereto. Those restrictions
include a requirement limiting such distribution to persons who
have also acquired licenses from AT&T or USL. The derivative
works distributed by the Regents are generally known as "Berkeley
Software Distributions," and USL-authorized releases thereof have
been widely distributed by the Regents under the initials "BSD"
(e.g., "4.3BSD").
12. BSDI is not affiliated with the Regents, nor has it entered
into any license agreements with USL pertaining to UNIX brand
software, computers or related products.
13. BSDI is attempting to develop a computer operating system
software product that is directly competitive to products
sold or licensed by USL and/or its licensees, and to market that
product under the name "BSD/386". Exhibit B is a copy of a BSDI
promotional brochure for its "BSD/386" system software.
14. Substantial portions of BSDI's BSD/386 operating system
are copied from, based upon, or otherwise derived from, USL's
proprietary software products. Plaintiff reserves the right to seek
an amendment of this Complaint to add claims for relief with respect
to violations by BSDI of USL's proprietary rights upon the
development of additional facts.
15. BSDI has attempted to market its BSD/386 software
product to prospective licensees in New Jersey and elsewhere
throughout the United States and beyond.
First Claim for Relief
Federal Trademark Infringement
16. Some time prior to January 1992, BSDI acquired a toll-
free telephone number that would permit someone to contact BSDI
by dialing "1-800-ITS-UNIX".
17. BSDI has included the "ITS-UNIX" telephone number in its
advertising and promotional materials and has otherwise used the
UNIX trademark in connection with the sale, distribution or
advertising of its goods and/or services in commerce.
18. BSDI's use of the "ITS-UNIX" telephone number is intended
to and likely to cause confusion, or to cause mistake, or to deceive in
that BSD/386 is not a "UNIX" product nor is BSDI authorized or
licensed to use the UNIX trademark in connection with any of its
products or services.
19. USL acted promptly to protect its rights in its UNIX
trademark and to protest BSDI's conduct.
20. In response to USL's objections, BSDI, through its attorneys,
represented that "BSDI has taken steps to discontinue advertising
containing the mark, UNIX, as part of a telephone number." However,
BSDI has failed or refused to discontinue its use of the 1-800-ITS-
UNIX telephone number.
21. BSDI's unauthorized use of the UNIX trademark has caused,
and, unless enjoined, will continue to cause, irreparable injury to USL
for which there is no adequate remedy at law.
22. In addition, BSDI's unauthorized use of the UNIX trademark
has caused USL to sustain damage to its business, and to the value of
its trademark and the goodwill associated with that mark.
23. BSDI's conduct constitutes infringement of a registered
trademark in violation of Section 32 of the Lanham Act, 15 U.S.C.
Section 1114.
Second Claim for Relief
False Descriptions of Origin,
Source, Sponsorship or Authorization
24. As shown in Exhibit B, BSDI's promotional materials contain
the following representations concerning its "BSD/386" system:
BSD/386 is a "Berkeley UNIX" compatible operating system for
the 386 and 486 PC architectures. It is based on the most
recent release from the Computer Systems Research Group of
the University of California, Berkeley - the Networking Release
2. The NET2 tape contained no AT&T licensed code, but was not
a complete system. BSDI has completed the system and added
additional drivers. The resulting system does not require a
license from AT&T, and so is available in source form at a
fraction of AT&T's price.
25. This statement is materially false and misleading in that,
among other things, the "Networking Release 2" referred to therein
contains software code that was copied from, based upon, or derived
from, code licensed to the Regents by AT&T, such that any operating
system derived from "Networking Release 2" requires a license from
AT&T or its successor, USL.
26. In the License Agreement by which BSDI sells its BSD/386
software product to consumers, BSDI represents that "THE LICENSED
PROGRAM DOES NOT CONTAIN CODE FROM AT&T'S UNIX OPERATING
SYSTEM CURRENTLY LICENSED BY UNIX SYSTEMS [sic]
LABORATORIES." A copy of BSDI's form of License Agreement is
attached as Exhibit C.
27. This statement is likewise materially false and misleading
in that, to the extent the BSDI "LICENSED PROGRAM" is (as BSDI
claims) based upon Berkeley's Networking Release 2, it is in fact
based upon, copied from or derived from AT&T's code, such that
users of the BSDI program require a license from AT&T or its
successor, USL.
28. BSDI's conduct constitutes the use in commerce, in
connection with goods or services, of false or misleading descriptions
of fact or false or misleading representations of fact in commercial
advertising or promotion which misrepresent the nature,
characteristics or qualities of BSDI's goods, services or commercial
activities.
29. BSDI's false and misleading use of the UNIX trademark has
caused, and unless enjoined, will continue to cause irreparable injury
to USL for which there is no adequate remedy at law.
30. BSDI's false and misleading use of the UNIX trademark has
caused USL to sustain damage to its business, and to the value of its
trademark and the goodwill associated with that mark.
31. BSDI's conduct constitutes false advertising in violation of
Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125.
Third Claim for Relief
Dilution
32. Plaintiff repeats the foregoing allegations as if fully set
forth herein.
33. BSDI's conduct threatens to and does impair the distinctive
significance of the UNIX mark, in violation of USL's statutory and
common law rights.
Fourth Claim for Relief
Unfair Competition and Deceptive Trade
Practices under State Statutory and Common law
34. Plaintiff repeats the foregoing allegations as if fully set
forth herein.
35. BSDI's conduct constitutes unfair competition and
deceptive trade practices in violation of applicable statutory and
common law.
WHEREFORE, USL demands judgment as follows:
1. A temporary restraining order, and preliminary and
permanent injunctions:
(a) restraining BSDI, its officers, agents, employees, servants,
and all persons in active concert or participation with them, from
any and all use of a telephone number that can be expressed with
the letters "UNIX";
(b) directing BSDI to publish and distribute corrective
advertising and promotional matter;
(c) directing BSDI, its officers, agents, servants, employees,
and all persons in active concert with them, to surrender up for
destruction all advertising or other material that contains reference
to the telephone number "l-800-ITS-UNIX".
2. A preliminary and permanent injunction:
(a) restraining BSDI, its officers, agents, employees, servants,
and all persons in active concert or participation with them, from
stating or implying in any advertising or promotional materials of
any kind that (i) the BSD/386 system, or the "Networking Release 2"
upon which it is based, contains no AT&T or USL licensed code or
derivatives thereof and/or (ii) the BSD/386 system does not require
a license from AT&T or USL;
(b) directing BSDI to publish and distribute corrective
advertising and promotional matter;
(c) directing BSDI, its officers, agents, servants, employees,
and all persons in active concert with them, to surrender up for
destruction all advertising or other material that states or implies
that (i) the BSD/386 system, or the "Networking Release 2" upon
which it is based, contains no AT&T or USL licensed code or
derivatives thereof and/or (ii) the BSD/386 system does not
require a license from AT&T or USL.
3. An award of compensatory damages in an amount to be
determined at trial, and treble damages pursuant to 15 U.S.C.
Section 1117.
4. An award of punitive damages in an amount to be
determined at trial.
5. An accounting and disgorgement of BSDI's profits derived
as a result of its wrongful acts or such other amount as the court
shall find to be just according to the circumstances of the case.
6. An award of attorneys fees and expenses incurred by USL
herein, pursuant to 15 U.S.C. Section 1117.
7. Such other and further relief as this Court may deem just
and proper.
Dated: Newark, New Jersey
April 20, 1992
CRUMMY, DEL DEO, DOLAN,
GRIFFINGER & VECCHIONE, P.C.
By:
Michael D. Loprete (MDL1695)
One Riverfront Plaza
Newark, New Jersey 07102
(201) 596-4500
and
MILGRIM THOMAJAN & LEE P.C.
By:
George L. Graff
James W. Kennedy
Charles B. Ortner
53 Wall Street
New York, New York 10005-2815
(212) 858-5300
Attorneys for Plaintiff
Unix System Laboratories, Inc.
Of Counsel:
Sanford Tannenbaum
Executive Vice President and General Counsel
UNIX System Laboratories, Inc.
190 River Road
Summit, New Jersey 07901-1444
(908) 522-6666
::::::::::::::
/home/csgrads/bremner/920501.interrog
::::::::::::::
Michael D. Loprete (MDL1695)
CRUMMY, DEL DEO, DOLAN,
GRIFFINGER & VECCHIONE, P.C.
One Riverfront Plaza
Newark, New Jersey 07102
(201) 596-4500
George L. Graff
James W. Kennedy
Charles B. Ortner
MILGRIM THOMAJAN & LEE P.C.
New York, New York 10005-2815
(212) 858-5300
Sanford Tannebaum
Executive Vice President and General Counsel
UNIX System Laboratories, Inc.
190 River Road
Summit, New Jersey 07901-1444
(908) 522-6666
Attorneys for Plaintiff Unix System Laboratories, Inc.
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
UNIX SYSTEM LABORATORIES, INC.,
Plaintiff, Civil Action No.
92-1667 (DRD)
-against-
PLAINTIFF'S
BERKELEY SOFTWARE DESIGN, INC., FIRST SET OF
INTERROGATORIES
Defendant.
Plaintiff Unix System laboratories, Inc. ("USL"),
pursuant to Rule 33 of the Federal Rules of Civil Procedure and
Local Rule 16, demands that Defandant Berkeley System Design, Inc. ("BSDI")
serve answers to the following Interrogatories within thirty (30) days
from teh date on which they are served, in accordance with the
Definitions and Instructions set forth below.
Definitions
1. The term "BSDI 386 Source" means any and all forms
(e.g., source, alpha, beta, binary, or object code forms), in
whole or in part (including without limitation any component,
module or element thereof), of the operating system described in
the "BSD 386 Source" product brochure (copy annexed as Exhibit A)
as a "UNIX compatible operating system for 386 and 486 PC
architectures," and all versions, releases or derivatives
thereof, in whole or in part (including without limitation any
component, module or element thereof), whether or not marketed,
licensed or sold under the name "BSD 386 Source."
2. The terms "promotional materials" mean any and all
matter that promotes, advertises or otherwise describes BSDI or
its products and/or services, including but not limited to:
(1) Promotional brochures,
(2) Advertisements,
(3) Order forms, and
(4) Notices or other communications posted to
computer network bulletin boards.
3. The terms "Berkeley NET2 software" and "Berkeley
Networking Release 2" mean any and all forms (e.g., source,
alpha, beta, binary, or object code forms), in whole or in part
(including without limitation any component, module or element
thereof), of the software referred to in BSDI's "386 Source"
software product brochure (annexed as Exhibit A) as "the most
recent release from the Computer Systems Research Group of the
University of California, Berkeley - the Networking Release 2"
and as the "NET2 tape," and all versions, releases or derivatives
thereof, in whole or in part (including without limitation any
component, module or element thereof).
4. Reference to any software product includes without
limitation all versions, releases and derivatives thereof.
5. The term "communication" means any correspondence,
contact, discussion or exchange between or among any two or more
persons or entities. Without limiting the foregoing,
"communication" includes all documents, telephone conversations,
negotiations, meetings, and conferences.
6. The term "identify" or "identifying" means:
(a) when referring to a natural person, state his
full name, present or last known business and home addresses, his
present or last known business position, and, if different, his
occupation or business position at the time to which the
interrogatory or your response thereto has reference. When used
with reference to any particular person, the information other
than his full name need be given only once.
(b) when referring to a corporation or other
business enterprise or legal entity, state the full name and
address and a brief description of the primary business in which
such entity is engaged. With respect to any particular entity,
the information other than the full name need be given only once.
(c) when referring to communication or act:
(i) state its date and place of occurrence
(or, if a telephone call is involved, so state and provide the
location of all parties to such telephone call and identify the
person who initiated it) ; the identity of each person
participation therein, who each such person participation therein
represented or purported to represent, the nature and subject
matter or any circumstances surrounding it, and the substance of
what transpired or was said; and
(ii) identify all documents, summarizing,
recording, reflecting, reporting or containing a reference to it.
7. The term "concerning" includes referring to,
relating to, embodying, connected with, commenting on, responding
to, showing, describing, analyzing, reflecting or constituting.
8. The term "document" is used in the broadest sense
allowed under Fed. R. Civ. P. 34 and includes, without
limitation, any printed, written, recorded, taped, electronic,
magnetic, optical, graphic, computerized printout, computer
software, computer disc or other storage medium, or other
tangible matter from whatever source, however produced or
reproduced or stored, whether in draft or otherwise, whether sent
or received or neither, including the original or any non-
identical copy (whether different from the original because of
notes made on or attached to such copy or any other reason).
9. Reference to any entity includes its present and
former subsidiaries, affiliates, divisions, joint ventures,
partners, present and former officers, present and former
directors, present and former employees, present and former
advisors, and present and former trustees or administrators, both
individually and collectively, and any person acting or
purporting to act on their individual or collective behalf.
10. Subject to ythe foregoing, "USL" means UNIX System
Laboratories, Inc., "BSDI" means defendant Berkeley Software
Design, Inc., and "AT&T" means America Telephone and Telegraph
Company.
11. Reference to any individual includes such
individual, his or her employees, agents, and all persons acting
or purporting to act on behalf of or in concert with that
individual and all persons or entities under his or her control.
12. "And" as well as "or" shall be construed either
disjunctively or conjunctively as necessary to bring within the
scope of these interrogatories any response that might otherwise
be construed to be outside their scope.
13. The singular includes the plural and the plural
includes the singular; "any" shall mean "any and all" and "all"
shall mean "all" and "any."
14. The term "including" means "including without
limitation."
Instructions
1. These interrogatories are to be regarded as
continuing, and you are requested to provide, by way of
supplementary answers, such additional information as you, or any
other person in your behalf, may hereafter obtain, which will
augment or otherwise modify your answers now given to these
interrogatories. Such supplementary answers are to be filed and
served upon USL's counsel within 30 days after receipt of such
information, but not later than two (2) weeks preceding the date
of Trial.
2. In answering these interrogatories, even though
the question may be addressed to "you", you must include both
information of which you have personal knowledge or which is
available to you and information obtainable by reasonable
investigation. This includes information in the possession of or
available to any person acting on your behalf or under your
control, including your representatives.
3. If all the information furnished in answer to all
or any part of any interrogatory is not within your knowledge,
identify each person to whom all or any part of the information
furnished is a matter of personal knowledge, and each person who
communicated to the affiant any part of the information
furnished.
4. Where any of these interrogatories or any sub-part
thereof may be responsibly and fully answered by the reference to
a document, such interrogatory or sub-part may be answered by
attaching to your answer a copy of such document, by referring in
such answer to such document, and by identifying the paragraph,
portion, or provision of the document that fully answers the
interrogatory.
5. When referring to a document not being produced in
lieu of answering an interrogatory, state its title and date;
identify the auther or person who prepared it and any signatories
to it; give the type of document (e.g., letter, memorandum, note
agreement), its present location and custodian, a summary of its
contents, or principal terms or provisions; and the identity of
its addresses and all other persons receiving it or copies of it.
If the document so identified was but is no longer in your
possession, custody or control, state what disposition was made
of it.
6. Each interrogatory and subpart thereof is to be
accorded a seperate answer and interrogatories are not to be
combined for the purpose of supplying a common answer thereto.
7. If, after exercising due diligence, you can obtain
no information about the subject of a particular interrogatory,
or if for some reason you are unable to answer it, the
response to that interrogatory should specifically so state, and
no interrogatory should be without some response. If you have
some information responsive to an interrogaroty, but believe that
further information not now available to you would also be
responsive, you should provide the information you now have and
should specifically state when the balance of the information
will be provided; the fact that a full answer cannot be given is
not a basis for you to fail to provide such information as is
available to you at the time of your response to these
interrogatories.
8. If you assert that any interrogatory contains any
objectionable inquiries, state your objection with regard to the
particular inquiry or inquiries within any interrogatory which
you deem objectionable.
9. If you contend that the contents of any writings
described in your answers to these interrogatories are protected
from disclosure by reason of a claim of privilege, work product
or other ground of nonproduction a list is to be furnished, at
the time your Response to these interrogatories is served,
identifying specifically each such document by its nature (e.g.,
letter, memorandum, etc.), together with the following
information with respect to each such document; author(s);
recipient(s); sender(s); indicated or blind copies; date; subject
matter; basis on which the privilege is claimed; number of pages;
and each interrogatory to which such document relates.
INTERROGATORY NO. 1:
State whether BSDI has at any time adopted and/or
implemented a policy or practice with respect to the retention or
destruction of documents, and, if so, describe in detail the policy
or practice, identify all persons who were involved in discussing,
considering, adopting or implementing the policy or practice, and
state the date on which the policy or practice was first adopted or
implemented.
INTERROGATORY NO. 2:
State whether BSDI has at any time destroyed any
documents, or is aware of the destruction of documents by anyone,
that constitute, evidence, reflect or concern:
(a) the technical development of the "BSD 386 Source"
software product;
(b) the use of, possession of, or access to, any
computer related products developed and/or licensed
by USL or AT&T (including without limitation UNIX
brand computer software operating systems) occurring
at any time by any past or present BSDI personnel or
by any person or entity which has performed or is
now performing services for or on behalf of BSDI;
(c) any other document responsive to the Plaintiff's
First Request for Production of Documents.
If so, (a) identify each such document, including without
limitation all authors, addressees and recipients thereof, as well
as the subject matter of such document, (b) state the date of its
destruction, (c) describe the manner in which destroyed,
(d) identify all persons responsible for its destruction and all
persons with knowledge of its destruction, and (e) state the
reason(s) for its destruction.
INTERROGATORY NO. 3:
Identify all persons and entities involved in any way in
the technical development of the "BSD 386 Source" software product,
including without limitation employees of BSDI, consultants, or
outside contributors of software. In addition to the information
required by Instruction No. 2, for each such person or entity:
(a) describe the particular contribution made by such
person or entity to the technical development of
"BSD 386 Source";
(b) state the number of hours which such person or
entity devoted to each particular contribution made
to the technical development of "BSD 386 Source,"
and the dates in which such person or entity was
engaged in making that contribution;
(c) describe such person's or entity's educational
experience, technical expertise and training; and
(d) with respect to individuals, list such person's
employers, dates of employments, job titles, duties
and responsibilities over the last fifteen years.
INTERROGATORY NO. 4:
With respect to each person and entity identified in
response to the foregoing Interrogatory, state whether or not such
person or entity is a licensee of UNIX operating system software;
has performed or is performing services, as an employee, contractor
or otherwise, for or on behalf of a licensee of UNIX operating
system software; or has otherwise had access to UNIX operating
system software. With respect to licensees, set forth the date of
the License Agreement. Further, if such person or entity has had
access to UNIX operating system software, set forth the date(s) of
such access and a brief description of the circumstances in which
such access was granted.
INTERROGATORY NO. 5:
Identify all sources of software code or other technology
from which "BSD 386 Source" is or may be copied or derived, and
identify the specific portion of "BSD 386 Source" related thereto.
INTERROGATORY NO. 6:
Identify all license agreements under which BSDI has
obtained a past, current or prospective right of access to software
or other computer-related technology. As to each such agreement,
state whether BSDI has reviewed, referred to or relied upon any
technology disclosed under such agreement in connection with the
development of the "BSD 386 Source." If so, identify the specific
portion of the "BSD 386 Source" related to such technology.
INTERROGATORY NO. 7:
Identify all agreements, including without limitation
license agreements, between BSDI, or its past or current employees,
or its past or current consultants, or any person or entity which
at at(sic) the time of the agreement was performing services for or
on behalf of BSDI, and:
(a) the Regents of the University of California (the
"Regents"); or
(b) the Computer Systems Research Group of the
University of California, Berkeley ("CSRG"), or any
individuals affiliated therewith.
With respect to each such agreement, identify all communications
constituting, evidencing, reflecting or concerning negotiations
with respect to such agreement, and identify all persons with
knowledge of such communications and negotiations.
INTERROGATORY NO. 8:
Identify all communications involving BSDI, including
without limitation anyone acting on its behalf, concerning the
question of indemnity for infringement of intellectual property
rights arising out of the use, licensing or sale of "BSD 386
Source" or BSDI's other software products or services. With
respect to each such communication, state whether or not the
communication involved the question of infringing upon the
intellectual property, contractual or other legal rights of (a) the
Regents, (b) CSRG, (c) USL, or (d) AT&T.
INTERROGATORY NO. 9:
Identify all communications involving BSDI, including
without limitation anyone acting on its behalf, that concern the
question of any source from which it may have copied or derived its
"BSD 386 Source," or any portion thereof. With respect to each
such communication, state whether or not such communication
involved the question of whether the BSD 386 Source may have been
copied or derived from software developed or licensed by (a) the
Regents, (b) CSRG, (c) USL, or (d) AT&T, and if so, identify such
software by reference to its trade name.
INTERROGATORY NO. 10:
Identify all past and current shareholders of BSDI. With
respect to each shareholder, state the number of shares owned and
the dates of ownership.
INTERROGATORY NO. 11:
Identify all persons with knowledge of facts concerning
the statement in the "BSD 386 Source" product brochure (copy
annexed as Exhibit A) that: "It is based on the most recent release
from the Computer Systems Research Group of the University of
California, Berkeley-Networking Release 2."
INTERROGATORY NO. 12:
Identify all documents and other sources of information
consulted, reviewed or relied on in making the foregoing statement
that "It is based on the most recent release from the Computer
Systems Research Group of the University of California, Berkeley -
Networking Release 2."
INTERROGATORY NO. 13:
Identify all persons with knowledge of facts concerning
the statement in the "BSD 386 Source" product brochure (copy
annexed as Exhibit A) that: "the NET 2 tape contained no AT&T
licensed code, but was not a complete system."
INTERROGATORY NO. 14:
Identify all documents and other sources of information
consulted, reviewed or relied on in making the foregoing statement
that: "the NET 2 tape contained no AT&T licensed code, but was not
a complete system."
INTERROGATORY NO. 15:
Identify all persons with knowledge of facts concerning
the statement in the "BSD 386 Source" product brochure (copy
annexed as Exhibit A) that: "BSDI has completed the system and
added additional drivers."
INTERROGATORY NO. 16:
Identify all documents and other sources of information
consulted, reviewed or relied on in making the foregoing statement
that: "BSDI has completed the system and added additional drivers."
INTERROGATORY NO. 17:
Identify all persons with knowledge of facts concerning
the statement in the "BSD 386 Source" product brochure (copy
annexed as Exhibit A) that: "the resulting system does not require
a license from AT&T and so is available in source form at a
fraction of AT&T's price."
INTERROGATORY NO. 18:
Identify all documents and other sources of information
consulted, reviewed or relied on in making the foregoing statement
that: "the resulting system does not require a license from AT&T
and so is available in source form at a fraction of AT&T's price."
INTERROGATORY NO. 19:
Identify all persons with knowledge of facts concerning
the statement in the "BSD 386 Source" product brochure (copy
annexed as Exhibit A) that: "BSD/386 is a `Berkeley-UNIX'
compatible operating system for the 386 and 486 PC architectures."
INTERROGATORY NO. 20:
Identify all documents and other sources of information
consulted, reviewed or relied on in making the foregoing statement
that: "BSD/386 is a 'Berkeley-UNIX' compatible operating system for
the 386 and 486 PC architectures."
INTERROGATORY NO. 21:
Identify all persons with knowledge of facts concerning
the statement in the "BSD 386 Source" product brochure (copy
annexed as Exhibit A) that: "The production system is planned to
support SCO UNIX V3.3 binaries."
INTERROGATORY NO. 22:
Identify all documents and other sources of information
consulted, reviewed or relied on in making the foregoing statement
that: "The production system is planned to support SCO UNIX V3.3
binaries."
INTERROGATORY NO. 23:
Identify all persons with knowledge of facts concerning
the statement appearing in the attached Exhibit C that: "we have
been billed more than US $40,000 just for the legal services we
have used to ensure that our code will [sic] is technically and
legally free from AT&T/USL trade secrets."
INTERROGATORY NO. 24:
Identify all documents and other sources of information
consulted, reviewed or relied on in making the foregoing statement
that: "we have been billed more than US $40,000 just for the legal
services we have used to ensure that our code will [sic] is
technically and legally free from AT&T/USL trade secrets."
INTERROGATORY NO. 25:
Identify all persons with knowledge of facts concerning
the statement appearing in the attached Exhibit C that: "we have
seven people putting in more than 280 hours/week on getting the
release out. That's every week. We pay them for their efforts.
We'll certainly be hiring more[.]"
INTERROGATORY NO. 26:
Identify all documents and other sources of information
consulted, reviewed or relied on in making the foregoing statement
that: "we have seven people putting in more than 280 hours/week on
getting the release out. That's every week. We pay them for their
efforts. We'll certainly be hiring more[.]"
INTERROGATORY NO. 27:
Identify all persons involved in the drafting and/or
review, prior to its release, of the "BSD 386 Source" product
brochure (annexed as Exhibit A hereto).
INTERROGATORY NO. 28:
Identify all persons involved in the drafting and/or
review, prior to its release, of the BSDI License Agreement
(annexed as Exhibit B hereto).
INTERROGATORY NO. 29:
To the extent not identified above, identify all
employees of BSDI. In addition to the information required by
Instruction No. 2, for each such person,
(a) describe each such person's title, duties and
responsibilities at BSDI;
(b) describe such person's educational experience,
technical expertise, and training; and
(c) list such person's employers, dates of employment,
job titles, duties and responsibilities over the
last fifteen years.
INTERROGATORY NO. 30:
With respect to each person identified in response to the
foregoing Interrogatory, state whether or not such person is a
licensee of UNIX operating system software; has performed or is
performing services, as an employee, contractor or otherwise, for
or on behalf of a licensee of UNIX operating system software; or
has otherwise had access to UNIX operating system software. With
respect to licensees, set forth the date of the License Agreement.
Further, if such person has had access to UNIX operating system
software, set forth the date(s) of such access and a brief
description of the circumstances in which such access was granted.
INTERROGATORY NO. 31:
Identify all licensees or purchasers of the "BSD 386
Source" software product, and set forth the date of each license
agreement or purchase.
INTERROGATORY NO. 32:
Identify all alpha and beta sites licensed to use, test
or experiment with the "BSD 386 Source" software product.
INTERROGATORY NO. 33:
Separately identify all persons responsible for the
marketing of "BSD 386 Source" within and without the United States
and specifically describe each such person's responsibilities in
that regard.
INTERROGATORY NO. 34:
Separately identify all persons involved in the
distribution of "BSD 386 Source" including without limitation any
outside distributors, and describe all planned methods of
distribution.
INTERROGATORY NO. 35:
Separately identify all agreements relating to (a) the
distribution of "BSD 386 Source" and (b) BSDI's other software
products.
INTERROGATORY NO. 36:
Separately state the date(s) on which BSDI expects to
make the production release of "BSD 386 Source" in binary and
object code forms, and any intermediate versions thereof.
INTERROGATORY NO. 37:
Separately state the date(s) on which BSDI first released
its BSD 386 Source in alpha and beta forms as well as the dates of
any past or anticipated intermediate releases thereof.
INTERROGATORY NO. 38:
In addition to "BSD 386 Source", identify all other
products and services, including but not limited to software
products and services, which are (a) being offered for licensing or
sale by BSDI or (b) under development at or on behalf of BSDI.
State the trade name of such product(s) or services and briefly
describe the type and function of such product(s) or services.
INTERROGATORY NO. 39:
With respect to each product identified in response to
the foregoing interrogatory, state whether or not BSDI believes
that such product is, or in its final form is intended to be,
compatible with (a) UNIX operating system software or (b) any other
product licensed or sold by USL and/or AT&T.
INTERROGATORY NO. 40:
With respect to each product identified in response to
Interrogatory No. 38, identify all persons or entities involved in
the development of such product, whether or not employed by BSDI.
In addition to the information required by Instruction No. 2,
describe the contribution made or being made by each such person in
the technical development of each such product.
INTERROGATORY NO. 41:
Identify all phone calls made to the telephone number
1-800 ITS UNIX.
INTERROGATORY NO. 42:
Identify all persons or entities with knowledge of facts
concerning phone calls made to the telephone number 1-800-ITS UNIX,
including without limitation all persons involved in answering such
calls for or on behalf of BSDI.
INTERROGATORY NO. 43:
Describe in detail the operation of BSDI's toll-free
telephone service which used the number 1-800 ITS UNIX, including
the name and business address of the telephone company providing
such service, and the location(s) to which calls made to the number
1-800 ITS UNIX were routed.
Dated: Newark, New Jersey
May 1, 1992
Unix System Laboratratories, Inc.
By:
Michael D. Loprete (MDL1695)
CRUMMY, DEL DEO, DOLAN
GRIFFINGER & VECCHIONE, P.C.
One Riverfront Plaza
Newark, New Jersey 07102
(201) 596-4500
and
By:
George L. Graff
James W. Kennedy
Charles B. Ortner
MILGRIM THOMAJAN & LEE P.C.
53 Wall Street
New York, New York 10005-2815
(212) 858-5300
Attorneys for Plaintiff
Of Counsel:
Sanford Tannenbaum
Executive Vice President and General Counsel
UNIX System Laboratories, Inc.
190 River Road
Summit, New Jersey 07901-1444
(908) 522-6666
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JAMES H. FORTE (JF 2248)
SAIBER, SCHLESINGER, SATZ & GOLDSTEIN
1 Gateway Center
Newark, New Jersey 07102-5311
(201) 622-3333
ROBERT T. HASLAM
VANESSA WELLS
LESLIE A. FITHIAN
MICHAEL A. BUCCI
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
) Civil Action No. 92-1667 (DRD)
)
UNIX SYSTEM LABORATORIES, INC., ) DEFENDANT'S MEMORANDUM OF LAW
) IN SUPPORT OF ITS MOTION TO
Plaintiff, ) DISMISS PLAINTIFF'S SECOND
) THROUGH FOURTH CLAIMS UNDER
v. ) RULE 12(b)(6)
)
BERKELEY SOFTWARE DESIGN, INC., ) Date: July 13, 1992
) Time: 10 a.m.
Defendant. ) Hon. Dickinson R. Debevoise
________________________________)
I. INTRODUCTION
In its Complaint, plaintiff UNIX System Laboratories,
Inc. ("USL") has asserted four claims, three of which purport to
set out claims for false advertising, dilution and unfair
competition against Berkeley Software Design, Inc. ("BSDI"). All
of these claims are based upon BSDI's advertising that certain of
its software -- which is copyrighted by the Regents of the
University of California (the "Regents") -- is free of AT&T code
and does not require a license from USL.
Notably absent from USL's complaint is any allegation
that USL's proprietary rights have been violated by BSDI, or any
allegation describing or defining USL's claimed proprietary rights,
issues at the very heart of USL's false advertising claim.
Apparently, USL believes it can avoid these core issues by dressing
its claim for copyright or trade secret infringement in Lanham Act
clothing. However, USL's failure to allege such a violation makes
it impossible for its second claim for relief -- for false
advertising under Section 43(a) of the Lanham Act -- to withstand a
motion to dismiss.
Moreover, USL's conclusory allegations based upon
dilution, and upon unidentified "unfair competition" and "deceptive
trade practices," fail to state any claim upon which relief could
be granted. Instead of alleging any facts that could support its
claim, or citing any particular statute or body of law under which
it claims rights, USL recites mere legal conclusions, making it
impossible for BSDI to adequately respond. Accordingly, BSDI
moves, under Rule 12(b)(6) of the Federal Rules of Civil Procedure,
to dismiss USL's second through fourth claims for relief.
II. BACKGROUND
In mid-1991, BSDI obtained the Regents' copyrighted
software -- the BSD Networking Release 2 -- from UUNET
Technologies, Inc. -- a well-known public archives site. UUNET
Technologies licensed the software from the Regents. After
obtaining the software, BSDI devoted considerable time and effort
developing and improving the Networking Release 2 program. These
efforts culminated last year in the completion of the BSD/386
operating system.
As part of its marketing of the BSD/386 system, BSDI
produced and distributed promotional brochures describing its
BSD/386 system. One brochure states:
BSD/386 is a "Berkeley UNIX" compatible
operating system for the 386 and 486 PC
architectures. It is based on the most recent
release from the Computer Systems Research
Group of the University of California, Berkeley
-- the Networking Release 2. The NET2 tape
contained no AT&T licensed code, but was not a
complete system. BSDI has completed the system
and added additional drivers. The resulting
system does not require a license from AT&T,
and so is available in source form at a
fraction of AT&T's price.
Complaint at 24.
As stated in the advertisement, BSDI's improvements to
the Networking Release 2 system have provided consumers with a
lower-cost alternative to the system marketed by AT&T. Now,
without any legal or factual support, USL claims that the software
licensed from the Regents does contain AT&T code and that BSDI's
advertising violates not only federal law, but also unidentified
and unknown state statutory and/or common law. However, USL fails
to assert any action alleging infringement of its proprietary
rights.
III. ARGUMENT
A. USL'S Second Through Fourth Claims For Relief
Must Be Dismissed Under Rule 12(b)(6).
In order to avoid a motion to dismiss under Rule 12(b)(6)
of the Federal Rules of Civil Procedure, USL must set forth "`a
short and plain statement of the claim' that will give the
defendant fair notice of what the plaintiff's claim is and the
grounds upon which it rests." Conley v. Gibson, 355 U.S. 41, 47
(1957). At a minimum, "the pleader is required `to disclose
adequate information as to the basis of his claim for relief.'"
Universe Tankships, Inc v. United States, 528 F.2d 73, 75 (3d Cir.
1975) (citation omitted). Because USL's second through fourth
claims fail to satisfy even this liberal pleading standard, these
claims must be dismissed. See Conley, 355 U.S. at 48.
B. USL's Second Claim -- For False Advertising
Under Section 43(a) Of The Lanham Act -- Fails
To Adequately Allege Falsity.
USL's claim under Section 43(a) of the Lanham Act fails
to adequately allege the most essential element of a false
advertising claim -- falsity. See Skil Corp. v. Rockwell Int'l
Corp., 375 F. Supp. 777, 782-83 (N.D. Ill. 1974) (plaintiff must
allege that defendant made false statements of fact in order to
state a claim under Section 43(a)). USL does cite the published
materials upon which it bases its claim. Complaint at 24, 26.
Beyond this, however, USL offers only the conclusory assertion that
BSDI's published statements are
materially false and misleading in that, among
other things, the `Networking Release 2'
referred to therein contains software code that
was copied from, based upon, or derived from,
code licensed to the Regents by AT&T, such that
any operating system derived from `Networking
Release 2' requires a license from AT&T or its
successor, USL.
Complaint at 25; see also, Complaint at 27 (setting forth
similar allegations regarding a statement in BSDI's License
Agreement).
In so alleging, USL merely lumps legal conclusion upon
legal conclusion, conveniently ignoring an essential component of
its false advertising claim -- unlawful copying. See Xerox Corp.
v. Apple Computer, Inc., 734 F. Supp. 1542, 1543 (N.D. Cal 1990)
(where plaintiff failed to assert copyright infringement, it could
not adequately state a Lanham Act claim which itself depended upon
unlawful copying).
USL's omission cannot be permitted. To maintain its
falsity claim, USL must allege and eventually prove that the
BSD/386 operating system infringes USL's proprietary rights. If
BSDI's operating system does not infringe USL's proprietary rights,
then the BSD/386 requires no license from AT&T, and there can be
nothing false about BSDI's statements.
Astoundingly, though, USL has not even asserted a claim
alleging infringement of its proprietary rights. Rather, USL has
"reserved its right" to later bring a claim for infringement of
proprietary rights, apparently conceding that it does not have a
good faith basis for such a claim at this time. Complaint at 14.
However, if plaintiff's false advertising claim is based, as it
appears, on copyright infringement, it necessarily must include
allegations of copyright infringement on the part of BSDI. See
Klinger v. Weekly World News, Inc., 747 F. Supp. 1477 (S.D. Fla.
1990); Gee v. CBS, Inc., 471 F. Supp. 600, 643 (1979), aff'd,
612 F.2d 572 (3rd Cir. 1979). Because a Lanham Act false
advertising claim requires the plaintiff to plead and prove
falsity, USL cannot evade the requirements of a copyright
infringement claim by couching it as a claim under Section 43(a).
At least one other court has rejected a similar attempt
to use the Lanham Act as a way of circumventing the Copyright Act.
In Xerox Corp. v. Apple Computer, Inc., 734 F. Supp. at 1543, Xerox
sought damages for claimed violations of Section 43(a), premised on
an assertion that Apple unlawfully copied portions of Xerox'
copyrighted work. Id. at 1551-53. Similar to USL's claim in this
case, Xerox' Lanham Act claim was based on the contention that
Apple's copyright notice and claim were a "false designation of
origin" because Apple's work allegedly was based on Xerox'
proprietary technology, and thus violated Section 43(a). Id. at
1551-52. However, Xerox did not even assert a claim for copyright
infringement. Id. at 1545.
The court granted judgment on the pleadings as to the
Section 43(a) claim. As the court stated, Xerox failed to allege
that Apple's Lisa or Macintosh Finder copyright registrations were
false, or that Apple engaged in false advertising: Id. at 1552:
At most, by reading between the lines of the
complaint, it appears that Xerox' position is
that because Apple's copyrights ought to be
invalidated, any use by Apple of such
copyrights constitutes a violation of 43(a)
of the Lanham Act. . . . Xerox is putting the
cart before the horse. The invalidity of
Apple's copyrights needs to be proven before
their use can be deemed false and misleading.
What Xerox would like, to paraphrase the Red
Queen, is its `Verdict first, proof
afterward!.'
Id. at 1552.
In making its ruling, the court specifically noted
Xerox's failure to assert a claim for copyright infringement. Id.
at 1545, 1552-53. Indeed, it acknowledged that
[i]f Apple were found to infringe Xerox'
copyright, there might be some basis for Xerox
to claim that advertising statements by Apple
to the effect that Apple was the originator of
the infringed ideas are actionable under the
Lanham Act.
Xerox, 734 F. Supp. at 1552 n.18. However, without alleging
copyright infringement, Xerox was in no position to raise a false
advertising claim that itself required a showing of unlawful
copying. Id. at 1552-53. As the court concluded, "[i]f Apple
copied material that Xerox created, Xerox should bring a copyright
infringement action." Id. at 1553 (emphasis added); see also,
Hartman v. Hallmark Cards, Inc., 639 F. Supp. 816, 824 (W.D. Mo.
1986), aff'd, 833 F.2d 117 (8th Cir. 1987) (defendant who
advertised that it was "`sole and exclusive'" owner of allegedly
infringing property could not be found liable where plaintiff
failed to prove infringement).
Likewise, if BSDI copied material for which USL owns a
copyright, USL should bring a copyright infringement action. What
it should not -- and cannot -- do is to attempt to evade its burden
of proving infringement by disguising its infringement claim in
Lanham Act clothing. Because USL has failed to allege copyright
infringement -- or any other violation of its proprietary rights --
it has not adequately alleged falsity and cannot state a claim for
false advertising.
C. USL'S Third and Fourth Claims For Relief Are
Hopelessly Vague, And Therefore Fail To State A
Claim Upon Which Relief Could be Granted.
In its third and fourth claims for relief, USL has thrown
in a series of conclusory and cryptic allegations asserting a
violation of completely unidentified statutes. Complaint at 32-
35. Even under the liberal pleading requirements of Rule 8 of the
Federal Rules of Civil Procedure, a complaint must set forth "a
short and plain statement of the claim showing that the pleader is
entitled to relief." Fed. R. Civ. P. 8(a)(2). As one court has
stated:
The purpose of the Rule 8(a) requirement of a
plain and simple statement of the claim is to
give the defendant fair notice of the charges
so that a meaningful response to the pleading
may be filed.
U.S. ex. rel. Dattola v. National Treasury Employees Union, 86
F.R.D. 496, 499 (W.D. Pa. 1980); see also, U.S. E.E.O.C. v. City
Colleges of Chicago, 740 F. Supp. 508 (N.D. Ill. 1990), aff'd, 944
F.2d 339 (7th Cir. 1991) (plaintiff "must allege sufficient facts
to outline the cause of action"). However, in its Complaint, USL
speaks in such broad-based and vague language that BSDI could not
possibly file a meaningful response.
USL's fourth claim for relief is especially puzzling. In
that claim, USL alleges that "BSDI's conduct constitutes unfair
competition and deceptive trade practices in violation of
applicable statutory and common law." Complaint at 35. Beyond
these bald legal conclusions, USL alleges nothing that would
indicate any actual claim for relief. USL does not even tell us
what statute or statutes and what state's law it believes is
"applicable." Nor does USL supply the particular facts upon which
it purports to base its claim. This is significant because under
New Jersey law, "unfair competition" is not a cause of action. It
is merely a general term encompassing a wide range of possible
causes of action. C.R. Bard, Inc. v. Wordtronics Corp., 235 N.J.
Super. 168, 172, 561 A.2d 694, 696 (1989).
Consequently, BSDI cannot even begin to evaluate -- never
mind respond to -- these vague assertions. Instead of providing
"fair notice," see Conley, 355 U.S. at 41, USL's fourth claim for
relief merely hints at some unidentified unfair competition claim
based upon statutory or common law from one or more of the 50
states. Plainly, these conclusory allegations fail to state any
claim upon which relief could be granted. Therefore, the fourth
claim must be dismissed under Rule 12(b)(6). See Duncan v. AT&T
Communications, Inc., 668 F. Supp. 232, 234 (S.D.N.Y. 1987)
(conclusory allegations which fail to give notice of the basic
events and circumstances of which plaintiff claims injury fail to
state a claim under Rule 8).
USL's third claim for relief at least asserts a
distinguishable cause of action -- for dilution. Yet, it too fails
to state any specific facts indicating that USL is entitled to
relief. Nor does it declare what state's law it claims applies to
this case. Not all states recognize a claim for dilution. Indeed,
New Jersey has no anti-dilution statute, and no New Jersey cases
have expressly recognized the cause of action. Without knowing
what law USL claims applies, it is impossible to evaluate whether a
dilution claim even exists, or if it does, what the elements of the
claim are and whether they are met.
Thus, USL's conclusory allegations that "BSDI's conduct
threatens to and does impair the distinctive significance of the
UNIX mark, in violation of USL's statutory and common law rights"
is insufficient notice of USL's claim. Complaint at 33. Because
it would not be possible to respond to this claim, USL's third
claim for relief must be dismissed.
IV. CONCLUSION
For all of the foregoing reasons, BSDI respectfully
requests that this Court grant its motion dismissing USL's second
through fourth claims for relief pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure.
Dated: May 26, 1992
SAIBER, SCHLESINGER, SATZ & GOLDSTEIN
By: ________________________________
James H. Forte (2248)
1 Gateway Center
Newark, New Jersey 07102-5311
(201) 622-3333
Attorneys for Defendant
Berkeley Software Design, Inc.
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..ps 12
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June 10, 1992 Press Contact:
Donnalyn Frey (703) 764 9342
..sp 2
..fi
USL has filed a complaint against BSDI in federal court in New
Jersey alleging false advertising in violation of Section 43(a)
of the Lanham Act and unfair competition in violation of state
laws. The basis for the complaint is stated to be that BSDI's
promotional materials are allegedly false and misleading in
stating that no license from AT&T is required for the BSD/386
product or indeed for any product derived from the Networking
Release 2 from the University of California.
The parties are now engaged in the process of requesting
information from one another and responding to the other's
request.
BSDI has also filed a motion to dismiss USL's claims of false
advertising and unfair competition. This motion is based upon
USL's failure to allege any basis for its allegation that the
statements made by BSDI are false. USL has not included any
claim, for example, for violation of any proprietary rights (such
as patent rights, trade secrets, or copyrights) based upon
distributing the BSD/386 product without a license from AT&T.
BSDI contends that the reason USL has not done so is that it has
no proprietary rights to violate with respect to the Networking
Release 2 and products derived from it. BSDI argues that absent
an infringement of USL's proprietary rights, the statements made
by BSDI could not be false or misleading. Thus, USL's complaint
is defective in that it has failed to give BSDI fair notice of
its claims and the grounds upon which they rest.
The complaint also requests a temporary restraining order and
preliminary and permanent injunctions in connection with an
allegation that BSDI has infringed USL's trademark rights in the
word, UNIX. The demand for a temporary restraining order has
been withdrawn as the result of a partial settlement of the
trademark issues.
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July 14, 1992 Press Contact:
Donnalyn Frey (703) 764 9342
..sp 2
..vs 20
..fi
In a move with chilling overtones for the computer software
industry, AT&T, through its subsidiary UNIX System Laboratories
(USL), has filed suit in federal court in New Jersey against a
small software developer, Berkeley Software Design, Inc. (BSDI).
The principal issue in the case is USL's contention that the
University of California, Berkeley is distributing software in
violation of its license with AT&T. However, USL has not sued
the University, nor have they stopped the University from
distributing the software in question. Instead, the suit was
filed against BSDI, a distributor of the University's software
and a potential competitor.
At issue in USL's lawsuit is the University's Networking 2
Release software. That software has been licensed to third
parties, including BSDI, as "AT&T-free" and with the statement
that no source code license from AT&T is required. USL has sued
BSDI for falsely advertising that its own licensees need no
source code license from AT&T, a contention that merely mirrors
the University's statements to BSDI.
The basis for the false advertising claim appears to be that
distribution of the University's software without a license from
AT&T violates USL's proprietary rights. However, USL has refused
to state what proprietary rights it thinks are violated or to sue
directly for copyright, patent or trade secret infringement.
..bp
..sp 4
Because USL's complaint is so vague and inconsistent, it fails to
provide even the minimum notice required to properly inform BSDI
of the legal basis for the suit. BSDI has therefore requested
that the court dismiss the suit under Section 12(b)6 of the
Federal Rules of Civil Procedure. Section 12(b)6 states that a
complaint must be adequately formed so that the defendant
understands what it has allegedly done.
Although USL has not sued the University of California, we expect that
USL (or its parent, ATT) will threaten to review or withdraw research
grants made to any university or research institution using or
distributing software based on NET2, even though no violation has yet
been proven.
The nature of the suit against BSDI shows that AT&T's real
motivation is to harass and to attempt to intimidate a potential
competitor. It does not involve any legitimate dispute. AT&T
has now signaled their intent to maintain a monopoly on the Unix
System market by suing anyone who refuses to tithe to them. The
result could be a significant chilling effect on the efforts of
many companies to develop Unix-compatible software products.
While we are flattered that AT&T considers BSDI's product to be
such a significant competitive threat that they feel the need to
file harassing and frivolous suits, we feel obligated to disclose
their actions to the general public. We are therefore providing
a copy of the actual complaint filed, the first set of
interrogatories from USL and BSDI's motion to dismiss.
..sp 2
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# # #
--
bremner@cs.sfu.ca ubc-cs!fornax!bremner