Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA402783
`ESTTA Tracking number:
`04/08/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91122524
`Defendant
`Wayne R. Gray
`DAVID L. PARTLOW
`DAVID L. PARTLOW P.A.
`P.O. BOX 82963
`TAMPA, FL 33682-2963
`UNITED STATES
`Motion to Reopen
`David L. Partlow
`DLPPA@MINDSPRING.COM
`/David L. Partlow/
`04/08/2011
`MOT TO RESUME Exhibit No. 13.pdf ( 7 pages )(258170 bytes )
`MOT TO RESUME Exhibit No. 14.pdf ( 7 pages )(185950 bytes )
`MOT TO RESUME Exhibit No. 15.pdf ( 13 pages )(60784 bytes )
`MOT TO RESUME Exhibit No. 17.pdf ( 2 pages )(27705 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`
`
`EXHIBIT No. 13
`
`
`
`

`
`MORRISON & FOERSTER LLP
`Michael A. Jacobs (pro hac vice)
`Kenneth W. Brakebill (pro hac vice)
`425 Market Street
`San Francisco, CA 94105-2482
`Telephone: (415) 268-7000
`Facsimile: (415)268-7522
`
`ANDERSON & KARRENBERG
`Thomas R. Karrenberg, #3726
`John P. Mullen, #4097
`Heather M. Sneddon, #9520
`700 Bank One Tower
`
`50 West Broadway
`Salt Lake City, UT 84101
`Telephone: (801) 534-1700
`Facsimile: (801) 364-7697
`
`Attorneys for Defendant Counterclaim-Plaintiff Novell, Inc.
`
`IN THE UNITED STATES DISTRICT COURT
`
`DISTRICT OF UTAH, CENTRAL DIVISION
`
`
`
`
`DECLARATION OF DAVID
`BRADFORD
`
`Case No. 2:04CV00139
`
`Judge Dale A. Kimball
`
`THE SCO GROUP, INC., a Delaware
`corporation,
`
`_
`
`Plaintiff,
`
`VS.
`
`NOVELL, INC., a Delaware corporation,
`
`Defendant.
`
`

`
`I, David Bradford, declare as follows:
`
`1.
`
`The statements made in this Declaration are based on my personal knowledge. In
`
`connection with this Declaration, I have also reviewed documents I authored or received
`
`contemporaneous to the transaction discussed herein. I have attached several of these documents
`
`as Exhibits to this Declaration.
`
`2.
`
`I am an attorney duly licensed to practice law in the state of California. I have an
`
`undergraduate degree and JD degree from Brigham Young University. I also have an MBA from
`
`Pepperdine University.
`
`3.
`
`I was employed by Novell, Inc. from 1985 to 2000 in various legal and business
`
`capacities. From 1987 to 2000, I was Senior Vice-President, General Counsel and Corporate
`
`Secretary. My responsibilities included overseeing legal, security, government relations and,
`
`from time to time, corporate development functions at Novell. During this period of time, I also
`
`was part of a group of executives that comprised the Executive Staff, which advised Nove1l’s
`
`President and Chief Executive Officer regarding business decisions for the company. In _
`
`addition, I was a Secretary to the Novell Board of Directors.
`
`I participated in strategic
`
`management decisions. I led Novell through a number of complex transactions, including
`
`acquisitions, asset sales and public offerings.
`
`4.
`
`In 1995, Novell decided to sell certain UNIX-related assets that it had acquired in
`
`1993 from AT&T’s UNIX System Laboratories subsidiary. A company called Santa Cruz
`Operation, Inc. (“Santa Cruz”) surfaced as a prospective buyer. After a series ofexecutive-level
`
`discussions during the summer of 1995, I was tasked, in my role as Senior Vice-President and
`
`General Counsel, with overseeing the negotiation and drafting of a contract between Novell and
`
`Santa Cruz that would protect Novell’s interests.
`
`5.
`
`I retained the law fmn of Wilson, Sonsini, Goodrich & Rosati, then Nove11’s regular
`
`outside counsel, to negotiate and draft the agreement between Novell and Santa Cruz. The
`
`Wilson team was led by Tor Braham, an experienced partner in that firm who was already
`
`

`
`familiar with Novell’ s business. In fact, Tor had negotiated Novell’s purchase of UNIX assets
`
`from USL in 1993.
`
`6.
`
`I charged Tor Braham with the responsibility of putting together the necessary
`
`agreements to protect Novell’s interests. He was the principal drafter of what became the Asset
`
`Purchase Agreement executed on September 19, 1995. Tor Braham communicated directly with
`
`me during the drafting and negotiation process, including sending me drafts of the Asset
`
`Purchase Agreement.
`
`7.
`
`The Novell-Santa Cruz transaction took on a more complex form due to various
`
`concerns that arose during the course of the negotiations. For example, at the outset, Novell had
`
`been hopeful that the transaction would be a cash deal. It became apparent, however, that Santa
`
`Cruz would not be able to come up with the requisite cash to buy all of the UNIX assets that
`
`Novell had purchased from USL in 1993, as well as Novell’s UnixWare business. Among other
`
`things, this resulted in an agency relationship, under which Santa Cruz would collect and pass
`
`through a revenue stream for SVRX contracts and Novell would retain control over the SVRX
`
`licensing arrangements.
`
`8.
`
`There also arose serious concerns about Santa Cruz’s viability as a company. Santa
`
`Cruz was not the most financially stable company. We thus became focused on building in
`
`protections for Novell in the event that Santa Cruz went bankrupt.
`
`.
`
`9. Because of these concerns, during the negotiations I discussed with Tor Braham the
`
`need to increase Novell’s protections in the transaction, including but not limited to the need to
`
`retain Novel1’s intellectual property rights in UNIX and UnixWare. This retention of intellectual
`
`property rights was implemented with an eye to protecting Novell’s interest in the significant
`
`revenue stream that Novell would be retaining from SVRX source code. Nove11’s copyright
`
`ownership would permit Novell to continue to have rights to this revenue, should Santa Cruz go
`
`bankrupt.
`
`

`
`10.
`
`The Wilson team drafted a schedule of assets to be included in the asset transfer
`
`and a schedule of assets to be excluded from the transfer. These schedules specifically addressed
`
`how intellectual property rights in UNIX and UnixWare would be treated in the deal. Copyrights
`were not included as an asset; instead copyrights were specifically excluded. It is my
`
`understanding that the Wilson team exchanged these schedules with representatives of Santa
`
`Cruz prior to the execution of the Asset Purchase Agreement.
`
`11.
`
`In its final form, the Asset Purchase Agreement executed on September 19, 1995
`
`included a Schedule l.l(a). Schedule l.l(a) specifically identified the “Intellectual Property”
`
`included in the assets to be transferred; it only identified certain UNIX and UnixWare
`
`trademarks. The Asset Purchase Agreement also contained an “Excluded Assets” list in
`
`Schedule l.1(b); this list provided that certain “Intellectual Property” was excluded from the
`
`asset transfer, including “[a]ll copyrights and trademarks, except for the trademarks UNIX and
`
`UnixWare.” It also excluded “[a]ll patents.”
`
`12.
`
`The Asset Purchase Agreement means what it says: copyrights were not included
`
`as an asset; copyrights were specifically excluded from the asset transfer. The exclusion was
`intentional. Should any persons suggest otherwise, they are mistaken.
`
`13.
`
`I attended the Novell Board of Directors meeting held on September 18, 1995, or
`
`the day immediately prior to the execution ofthe Asset Purchase Agreement. The Novell-Santa
`
`Cruz transaction was the subject of that Board meeting. As Senior Vice-President and General
`
`Counsel of Novell and as the Novell executive responsible for implementing the Novell-Santa
`
`Cruz transaction into a binding, legal contract, I participated in the discussion.
`
`I even reviewed
`
`the terms of the Asset Purchase Agreement with the Board. As Secretary to the Board of
`
`Directors, I mernorialized the meeting in Board Minutes, a true and correct copy of which I
`
`attach to this Declaration as Exhibit 1. As I recorded in those Minutes that I sent to the Board of
`
`Directors, in the meeting the Board: _
`
`RESOLVED:
`
`

`
`Novell will retain all of its patents, copyrights and trademarks
`(except for the trademarks UNIX and UnixWare)
`
`(See Exhibit 1 at 2.)
`14.
`The Board meeting minutes are accurate in their description of the intellectual
`
`property assets Novell retained.
`
`15. Under the Asset Purchase Agreement, Novell retained the right to receive 95% of
`
`the revenue from licenses of SVRX software.
`
`I confirmed our retention of SVRX licensing
`
`revenue to the Board of Directors in a memorandum on September 15, 1995, a true and correct
`
`copy of which I attach as Exhibit 2. I told the Board: “For example, we will bemg our
`
`traditional royalty stream from UNIX SVRX source code which was approximately $50 million
`
`for FY 1995.” (Exhibit 2 at 1.
`
`I underscored “retaining” in my original memo.) Again, at the
`
`September 18, 1995 Board of Directors meeting, I informed the Board of this retained revenue
`
`stream, which was referred to as SVRX Royalties in the contract. (Exhibit 1 at 2.) Theterm
`
`SVRX Royalties was drafted so as to be broadly applicable to “all royalties, fees and other
`
`amounts” from SVRX agreements, and was not limited to monies paid under binary licenses;
`
`Novell retained 95% of all monies from SVRX agreements, source and binary included.
`
`16. Under the Asset Purchase Agreement, Novell also retained control over the
`
`licensing arrangements with SVRX customers. As indicated in the Asset Purchase Agreement,
`
`this right applies to all SVRX Licenses; it was not restricted to binary licenses of SVRX. In
`
`particular, Novell intended to use its control over the SVRX license agreements to do “buyouts”
`
`of SVRX agreements or, if necessary, to provide source rights to Hewlett Packard in its
`
`development of a 64-bit UNIX technology -— a development effort that I rnemorialized in the
`
`September 18, 1995 Board Minutes.
`
`(Exhibit 1 at 1, 3.)
`
`17.
`
`I was presented the final Asset Purchase Agreement between Novell and Santa
`
`Cruz on the day it was to be executed.
`
`I was to review it and approve it for final signature by
`
`Bob Frankenberg, Novell’s CEO at the time. I reviewed the contract and considered it to reflect
`
`4
`
`

`
`the intent that I have described above in this Declaration. Indeed, I wrote a rnernorandum (a true
`
`and correct copy ofwhich lhave axtached as Exhibit 3), reflecting my approval oftire Asset
`
`Purchase Agreement for signature by Mr. I-‘rankenberg. I still age: with what I said nearly
`
`twelve years ago:
`
`The purpose ofthis memorandum is to let you lcnow thatl have
`reviewed the final document and find the same to be an accurate
`reflection of the business and legal terms and condiiions negotiated
`between the parties...
`
`18. Novell has retained intellectual property rights in other tarrsacfions involving fine
`
`sale of part of its business. In late 1995 and early 1996, I was part of a Novel] business team
`
`evaluating the future ownership direction ofNovell’s TUXEDO software business, which we
`
`also had acquired from AT&T. On January 24, 1996, Novel! entered into an agreement with
`
`BEA Systems, Inc., in which Novell transferred certain assets relating to its TUXEDO sofiware
`
`product. In that transaction, Novel] specifically retained the copyrights in the TUXEDO
`
`software.
`
`I declare under penalty of perjury of the laws of the United States that the foregoing is
`
`1/k
`true andccxrrect.
`Executed on thisLi day ofApril, zoo? in 1
`
`arr
`
`
`
`

`
`
`
`EXHIBIT No. 14
`
`
`
`

`
`
`
`MORRISON & FOERSTER LLP
`
`Michael A. Jacobs (pro hac vice)
`David E. Melaugh (pro hac vice)
`Maame A.F. Ewusi-Mensah (pro hac vice)
`425 Market Street
`
`San Francisco, CA 94105-2482
`Telephone: (415) 268-7000
`Facsimile: (415) 268-7522
`
`ANDERSON & KARRENBERG
`
`Thomas R. Karrenberg, #3726
`John P. Mullen, #4097
`Heather M. Sneddon, #9520
`700 Bank One Tower
`
`50 West Broadway
`Salt Lake City, UT 84101
`Telephone: (801) 534-1700
`Facsimile: (801) 364-7697
`
`Attorneys for Defendant Novell, Inc.
`
`IN THE UNITED STATES DISTRICT COURT
`
`DISTRICT OF UTAH, CENTRAL DIVISION
`
`THE SCO GROUP, INC., a Delaware
`corporation,
`
`Plaintiff,
`
`VS.
`
`NOVELL, INC., a Delaware corporation,
`
`Defendant.
`
`
`
`DECLARATION OF KELLIE
`CARLTON IN SUPPORT OF
`
`NOVELL, INC.’S MOTION TO
`DISMISS
`
`Case No. 2:04CV00139
`
`Judge Dale A. Kimball
`
`sf-l81274l
`
`:
`
`;
`
`1
`
`

`
`NOV-05-2004 FR! 04:06 PM NOVELL LEGAL PROVO
`
`FAX N0. 801 861 6904
`
`P.
`
`01
`
`Kellie Carlton, under penalty of perjury, declares the followitig:
`
`1.
`
`lam responsible for maintaining the records of the meeting minutes of NovelI‘s
`
`Hoard of Directors.
`
`i submit this declaration in support ot‘Novell‘s Motion to Dismiss. The
`
`statentcnts made herein are based on my personal knowledge and investigation.
`
`2. Attached as Exhibit A is it true and correct copy of the September 18, 1995 Minutes
`
`of the Meeting of the Board oflbircctors of Novcll. Inc. A blue box has been added on page 2 to
`
`identify the text referenced in NovclI's motion papers.
`
`I cleelnre under penalty of perjury under the laws ofthe United States that the foregoing is
`
`true and correct.
`
`Exectttcd on this __.‘',_7: day ot’Novcmbcr, 2004 in __[;:"[_4_?_“y‘«_-’j,_l__ti'~*--"L.
`
`
`:3/ .E {[2/(.
`
`.
`
`Kellie Carlton
`
`sl'-It€I274t
`
`;
`
`

`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that on this
`
`day of November, 2004, I caused a true and
`
`correct copy of the foregoing DECLARATION OF KELLIE CARLTON IN SUPPORT OF
`
`NOVELL, INC.’S MOTION TO DISMISS to be served via first class mail, postage prepaid, to
`
`the following:
`
`Brent 0. Hatch
`Mark F. James
`Mark R. Clements
`
`HATCH JAMES & DODGE, P.C.
`10 West Broadway, Suite 400
`Salt Lake City, Utah 84101
`
`Stephen N. Zack
`Mark J. Heise
`
`BOIES, SCHILLER & FLEXNER LLP
`100 Southeast Second Street, Suite 2800
`Miami, Florida 33131
`
`Robert Silver
`BOIES, SCHILLER & FLEXNER LLP
`333 Main Street
`
`Armonk, New York 10504
`
`mm. gfi,
`
`sf-1812741
`
`2
`
`

`
`MINUTES OF THE IVIEETING
`OF THE BOARD OF DIRECTORS
`OF NOVELL, INC.
`MONDAY, SEPTEMBER 18, 1995
`
`A meeting of the Novell, Inc. Board of Directors was held on Monday, September 18, 1995
`cnnnnfllcing at noon Mountain Time. The meeting was held pursuant to a telephone conference call.
`Seven ofthe eight Directors were present for the meeting namely: Bob Frankenberg, Jack Messrnnn,
`Elaine Bond, Lany Sensini, Alan Ashton, Inn Wilson, and John Young. Also presmt by invitation
`were David Bradford, Ty Mettiugly, Ind Jefi"l‘urner ofNnvell.
`
`Mr. Fnnkenberg chaired the meeting and David iirsdford served as secretary for themeeting.
`
`PROPOSED SALE OF UNIXVVARE BUSINESS
`
`AND EQUITY INVESTMENT IN SCO
`
`Mr. Bradford sndMr. Frmhenbergfirstconfltmedt.hattheDirectorspresent on lirecsllhndreccivcd
`the materials regarding several proposed trsrossctions.
`'
`
`Mr. Frsnkenberg then provided an overview of several business transactions the Company was
`negotiating with Santa Cruz Operation, Inc. (S00) and Hewlett-Packard for the purpose of
`strerrgtheningUNIXontbeIntciPlnItbrm. Hedescribedcne ofthekey stepsiothisprocess asthe
`sale of: portion ot'Novell's UNIXWsre business to 800. He then described a proposed structure
`nnderwhich I-Iewlett-Packard would take I leadership position in the development of 6+-bit UNIX
`technology endnmder which, I-Iewlett-Psoknrd would license Nevell networking services as a core
`component of fitture 64-bit UNIX.
`-
`
`Mr. Ftsnkenherg next described changes in the current competitive landscape which-prompted these
`transactions.
`'I’yMsttinglynext ontlinedthefinsncislinqasct ofNovell’s sale ofits UND(Ware binary
`business to SCO. He discussed the impact on employees ofNovell’s Florhan1Pnrk facility and the
`plans to transition s portion ofthis headcount to S00 and Hewlett-_Pacltsrtl. He then described the
`shares ofSCO stock Novellwould be getting in exchange for‘ its UNDCWare business and the fixture
`royalty arrnngemmts.
`
`Various questions were then posed by the Directors concerning: possible analyst reactions; impact
`on employees; impact on Novell‘s relationship with Microsofi; the ongoing visbility of SCO; the
`impact on Noveil’s operating expenses; service on the SCO Board; and duediligence that had been
`conducted to date. Mr. Fnnlcenberg, Mr. Mattingly, and Mr. Bradford responded to the questions
`and a discussion ensued.
`
`—“
`Se-I-I-I»-rll. I995Bo-I-IM-fins
`regal
`Gu:.(idurl.iei
`
`

`
`The Directors next discussed various competitive alternatives and concluded that the transaction as
`structured was justifiable both fiont I aratcgic perspective aswell s fiotn a financial one.
`Mr. Bradford and Mr. Sonsini then reviewed the terms ofthe Asset Purchase Agreement between
`SCO and Novell. Both the financial terms of the transaction were reviewed as well as the non-
`finnnoilltcrmsinoluding issues ofstandstill, Registration fights, Board seats, Rights ofFirst Rcfitsal,
`employee severance, andwhat happens in the event ofa change of control ofeither SCO or Novel.
`The D'n:ectors asked avariety ofquesions concerning the contract terms and suggestions were made
`to improve the terms ofroyalty collection flom SCD.
`.
`
`Then. upon motion duly made, seconded, and unanimously carried, the following recitations, and
`resolutions were adopted:
`'
`
` : That the Board ofDirectors ofthis corporation (Novel!) hereby determines that it is
`in the best interests of this corporation and its shareholders to enter into an Asset Purchase
`Agreement with The Santa Cruz Operation, Inc. (SCO).
`
`Pursuant to the Asset Purchase Agreement, Novcllwilltrnnsfcrto SCO its UNIX Ind Unix‘WtIIc
`technology assets, 1 portion of the employee base in New Jersey (approximately 100 of 400
`employees), cquipmtattnsedinuniafware business, and certain assumed liabilitlesthereto. Pursuant
`totheAssetPnrchaseAgreeanent, soowmnsueet million new shares ofconunon stoclcto Novel].
`SCO will also collect and pass through to Novell 95% ofthe SVRX Royalties. Further, SCO will
`pay toNovell ongoing royalties associated with their fixture sale of the UNIXWARE technology as
`more fully set forth in the Asset Purchase Agreement.
`-
`
`
`
`Novellwill retain all ofits putts, copyrights and trademarks (except for the trademarks umx and
`Uniaiware), aroyalty-fl-ee,petpetual,woridwidelicamebeclttoUND( and Unixware forinternslnse
`and resale in bundled products, Tuxedo and other miscellaneous, unrelated technology.
`
` : That the following additionaltermswillbe part oftheAsset Purchase
`Agreement betweenNovell and S00. Novel! will select Ill intlivitlunlto bcuominltcd for election
`to the Board ofDirectors of-ECO. Novel! wm have the right to maintain its percentage ownerdtip
`in SCOifSCOissucsor scllsncwshares. Novellwlllnlso have a right offirst refilsal onthe sale of
`SCO to any one of the following companies, or their amliates, which are: Sun Microsystcrns;
`Microsoft. Hcwlett—Peckml; IBM; Digital; and Fujitsu. Novel! will have demand registration rights
`on SCO shares purchased.
`
`However, Novel] will bear the costs ofemployee severance and will contribute 50% ofdirect Eiger
`development cost until such contribution reaches an aggregate of$2.5 million. SCO is committed
`to shipping the new mergedproduct in 1997, and SCO will support Hewlett-Packard’: white bars
`version of UNIX.
`‘
`
` That the terms and conditions ofthe Asset Purchase Agocement as set
`forth therein are hereby approved, subject to such changes and modifications ofa non-material nature
`as the proper oflicers ofNovel! may consider appropriate or necessary.
`
`
`
`Sqllanhc II, I995 Bond Mali;
`
`P39:
`
`confidential
`
`

`
` i That the Board ofDirectors ofthis corporation (Novel!) hereby determines that it is
`in the best interests of this corporation and its shareholders to enter into a Memorandum of
`Understanding (MOU) with Hewlett-Packard Company (HP). The purpose ofthe MOU is to set
`forth the current mutual intent of Novel! and HP regarding the following: HP lundling_1he
`development of the 64-bit UNIX and giving the source code to SCO in two years for a shm1k-
`wrappedvcasion; nndI-iI’receivinglioensefiees£or1he64-bit UNIX.’ oneeNovel1’s Systemv licenses
`its Netware Directory Se-wines (NDS) and Middleware to HP and SCO.
`
`AMERICA ON LINE BOARD MEMBERSHIP
`
`Mr. Frankenberg then outlined a proposal he received from Steve Case and Alexander I-Iaig fiom
`America on Line to join their Board ofDirectors. Mr. Fnnkenberg reviewed the prosand cons of
`such service with the members of the Board. A discussion ensued.
`It was concluded that Mr.
`Fr:tnk.enbct‘g’s service on the America On Line Board would have n net positive nlfcct on Novell.
`
`STOCK OPTION GRANT
`
`The Board then considered the grant ofstook options to various Novel! employees. Then, upon
`motion duly made, seconded, and unanimously carried, the following rmhfions were adopted:
`
`RESOLVED: That Novell, Inc. grant to the employees listed on Exhibit "A"non-qualified
`stock options of '_-I] Q, “)1 )
`shares vesting 25 percent utter one year and venting quarterly
`thereafler at the rate ot'6.2S percent per quarter at an option price of$19.00 per share representing
`the closing price ofthe stock as ofthe last trading date (September 15, 1995) before the date efthe
`Board Meeting; the term of said option is to be 10 years With all ofsnid options to be issued in
`accordance with the Novel], Inc. 1991 Stock Plan as amended.
`
`Anaonmwmnnr
`
`
`
`
`
`flqluuluar III. 1995 Bnnrllule-din],
`
`p..¢.._1
`
`mnnnanhtbnn
`
`

`
`
`
`EXHIBIT No. 15
`
`
`
`

`
`Case 2:04-cv-00139-DAK-BCW Document 292 Filed 05/14/2007 Page 1 of 65
`
`MORRISON & FOERSTER LLP
`Michael A. Jacobs (pro hac vice)
`Kenneth W. Brakebill (pro hac vice)
`Grant L. Kim (pro hac vice)
`425 Market Street
`San Francisco, CA 94105-2482
`Telephone: (415) 268-7000
`Facsimile: (415) 268-7522
`
`ANDERSON & KARRENBERG
`Thomas R. Karrenberg, #3726
`John P. Mullen, #4097
`Heather M. Sneddon, #9520
`700 Chase Tower
`50 West Broadway
`Salt Lake City, UT 84101
`Telephone: (801) 534-1700
`Facsimile: (801) 364-7697
`
`Attorneys for Defendant and Counterclaim-Plaintiff Novell, Inc.
`
`IN THE UNITED STATES DISTRICT COURT
`
`DISTRICT OF UTAH, CENTRAL DIVISION
`
`THE SCO GROUP, INC., a Delaware
`corporation,
`
`Plaintiff and Counterclaim-
`Defendant,
`
`vs.
`
`NOVELL, INC., a Delaware corporation,
`
`MEMORANDUM IN SUPPORT OF
`NOVELL’S OPPOSITION TO SCO’S
`MOTION FOR PARTIAL SUMMARY
`JUDGMENT ON SCO’S FIRST,
`SECOND, AND FIFTH CAUSES OF
`ACTION AND FOR SUMMARY
`JUDGMENT ON NOVELL’S FIRST
`COUNTERCLAIM (COPYRIGHT
`OWNERSHIP)
`
`Defendant and Counterclaim-
`Plaintiff.
`
`[REDACTED pursuant to the August 2,
`2006 Stipulated Protective Order]
`
`Case No. 2:04CV00139
`
`Judge Dale A. Kimball
`
`

`
`Case 2:04-cv-00139-DAK-BCW Document 292 Filed 05/14/2007 Page 2 of 65
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ...........................................................................................................v
`
`I.
`
`II.
`
`STATEMENT OF ISSUES .................................................................................................1
`
`INTRODUCTION ...............................................................................................................2
`
`III.
`
`STATEMENT OF FACTS ..................................................................................................5
`
`A.
`
`Santa Cruz’s Conduct Following the Execution of the APA and
`Amendment No. 2 Demonstrates Its Understanding that No
`Copyrights Were Transferred. .................................................................................6
`
`1.
`
`2.
`
`3.
`
`In 2001, Santa Cruz and SCO Acknowledged a Problem
`with the “Chain of Title from Novell.”........................................................6
`
`In Early 2003, SCO Repeatedly Requested that Novell
`Transfer the UNIX Copyrights to SCO. ......................................................9
`
`After the Execution of the APA, Santa Cruz and SCO
`Distributed Copies of UNIX Code Bearing Joint SCO-
`Novell Copyright Notices. .........................................................................11
`
`B.
`
`Novell’s Conduct After Signing the APA Is Consistent with Its
`Understanding that the APA Did Not Transfer the UNIX
`Copyrights..............................................................................................................12
`
`1.
`
`2.
`
`3.
`
`Novell Took No Action to Send Santa Cruz the Physical
`Copyright Registrations. ............................................................................12
`
`Novell Had No Knowledge that SCO Licenses Contained
`Any Incorrect Representations and Warranties that SCO
`Owned UNIX Copyrights. .........................................................................13
`
`The Technology License Agreement Is Consistent With
`the Fact that the APA Did Not Transfer the Copyrights............................14
`
`C.
`
`SCO’s “Testimonial Evidence” Does Not Demonstrate an Intent
`to Transfer Copyrights. ..........................................................................................16
`
`1.
`
`None of SCO’s Witnesses Was Involved in the
`Negotiation or Drafting the Intellectual Property
`Provisions of the APA. ..............................................................................16
`
`ii
`
`

`
`Case 2:04-cv-00139-DAK-BCW Document 292 Filed 05/14/2007 Page 3 of 65
`
`2.
`
`Those Directly Involved in the Drafting of the APA’s
`Intellectual Property Provisions Confirm that Novell
`Deliberately Excluded Copyrights From the Transfer of
`Assets. ........................................................................................................25
`
`D.
`
`Amendment No. 2 Did Not Transfer the Copyrights Either..................................27
`
`1.
`
`2.
`
`3.
`
`4.
`
`Amendment No. 2 Was Not Intended to Transfer All
`Copyrights Pertaining to UNIX to Santa Cruz. .........................................27
`
`SCO’s Only Evidence Concerning the Intent of
`Amendment No. 2 Comes From Witnesses Who Had No
`Involvement in or Memory of Drafting or Negotiating that
`Amendment................................................................................................29
`
`SCO Has Presented No Evidence that Any Copyrights
`Were “Required for” the Operation of the UNIX-Related
`Business Contemplated by the APA. .........................................................30
`
`Novell’s Statements Concerning Amendment No. 2 Are
`Entirely Consistent With Its Understanding that the
`Amendment Did Not Transfer Copyrights. ...............................................33
`
`IV.
`
`ARGUMENT.....................................................................................................................34
`
`A.
`
`The Plain Language of the APA Excluded Copyrights from the
`Assets to Be Transferred by Novell to Santa Cruz. ...............................................34
`
`1.
`
`2.
`
`Schedule 1.1(b) Expressly Excluded “All Copyrights”
`From the Transfer of Assets.......................................................................34
`
`SCO Cannot Use Extrinsic Evidence About the Supposed
`Intent of the Parties to Rewrite the Plain Language of the
`APA............................................................................................................36
`
`B.
`
`In Any Event, Extrinsic Evidence Would Simply Reinforce the
`Conclusion that the APA Intentionally Excluded Copyrights. ..............................38
`
`1.
`
`2.
`
`The Drafters of the APA’s Intellectual Property Provisions
`Agree that the Exclusion of Copyrights Was Deliberate. ..........................38
`
`SCO Presents No Evidence to the Contrary from Anyone
`Involved in the Negotiation of the Intellectual Property
`Provisions of the APA. ..............................................................................40
`
`C.
`
`Amendment No. 2 Did Not Transfer the UNIX and UnixWare
`Copyrights to Santa Cruz. ......................................................................................42
`
`iii
`
`

`
`Case 2:04-cv-00139-DAK-BCW Document 292 Filed 05/14/2007 Page 4 of 65
`
`1.
`
`2.
`
`3.
`
`Amendment No. 2 Is Not a Signed Instrument of
`Conveyance, and Hence Cannot Transfer Copyright
`Ownership Under the Copyright Act. ........................................................43
`
`In Any Event, Amendment No. 2 Was Never Intended to
`Transfer All Copyrights Pertaining to UNIX and
`UnixWare...................................................................................................44
`
`No Copyrights Are “Required” for Santa Cruz to Run the
`UNIX-Related Business Contemplated by the APA. ................................46
`
`D.
`
`Subsequent Conduct by the Parties Confirms that All Parties
`Understood Neither the APA Nor Amendment No. 2 Transferred
`the Copyrights........................................................................................................48
`
`1.
`
`2.
`
`Santa Cruz’s and SCO’s Actions Indicate a Recognition
`that No Transfer of Copyrights Occurred. .................................................48
`
`Novell’s Conduct Was Consistent with Its Understanding
`that It Still Owned the Copyrights. ............................................................52
`
`V.
`
`CONCLUSION..................................................................................................................56
`
`iv
`
`

`
`Case 2:04-cv-00139-DAK-BCW Document 292 Filed 05/14/2007 Page 5 of 65
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994) ..................................... 46
`
`Bank of the West v. Resolution Trust Corp., No. C 95-4708 FMS, 1997 U.S. Dist. LEXIS 1581
`(N.D. Cal. Feb. 13, 1997).......................................................................................................... 36
`
`EPA Real Estate P’ship v. Kang, 12 Cal. App. 4th 171 (1992).................................................... 38
`
`Gerdlund v. Electronic Dispensers Int’l, 190 Cal. App. 3d 263 (1987) ................................. 37, 38
`
`GM Corp. v. Superior Court, 12 Cal. App. 4th 435 (1993).......................................................... 45
`
`Kingsrow Enterprises, Inc. v. Metromedia, Inc., 397 F. Supp. 879 (S.D.N.Y. 1975) .................. 53
`
`Konigsberg Int’l, Inc. v. Rice, 16 F.3d 355 (9th Cir. 1994).......................................................... 43
`
`La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005) ......... 53
`
`Lyrick Studios, Inc. v. Big Idea Prods., Inc., 420 F.3d 388 (5th Cir. 2005) ................................. 44
`
`Pamiloff v. Giant Records, Inc., 794 F. Supp. 933 (N.D. Cal. 1992) ........................................... 44
`
`Relational Design & Tech., Inc. v. Brock, No. 91-2452-EEO, 1993 WL 191323, at *6 (D. Kan.
`May 25, 1993)........................................................................................................................... 35
`
`S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081 (9th Cir. 1989) ......................................................... 35
`
`Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410 (7th Cir. 1992) .................................. 35
`
`Shugrue v. Continental Airlines, 977 F. Supp. 280 (S.D.N.Y. 1997)........................................... 35
`
`Statutes
`
`17 U.S.C. § 204(a) .................................................................................................................... 3, 43
`
`17 U.S.C. § 401(b)(3) ................................................................................................................... 52
`
`17 U.S.C. § 406(a) ........................................................................................................................ 52
`
`v
`
`

`
`Case 2:04-cv-00139-DAK-BCW Document 292 Filed 05/14/2007 Page 6 of 65
`
`Other Authorities
`
`Berne Convention for the Protection of Literary and Artistic Works, Article 15, § 1.................. 52
`
`Treatises
`
`2-7 Nimmer on Copyright § 7.12[C][1]........................................................................................ 52
`
`vi
`
`

`
`Case 2:04-cv-00139-DAK-BCW Document 292 Filed 05/14/2007 Page 40 of 65
`
`(Supp. Brakebill Decl., Ex. 50.) Novell later published that June 26, 2003 letter on its website.
`
`(Supp. Brakebill Decl., Ex. 51, ¶ 6.)
`
`96.
`
`Novell addressed its position in a subsequent letter, dated August 4, 2003, that
`
`“under the Asset Purchase Agreement and Amendment No. 2, copyrights were not transferred to
`
`Santa Cruz Operation unless SCO could demonstrate that such a right was ‘required for [Santa
`
`Cruz Operation]’ to exercise the rights granted to it in the APA. Santa Cruz Operation has never
`
`made such a demonstration . . . .” (Supp. Brakebill Decl., Ex. 52 (emphasis added).) Novell
`
`later published that August 4, 2003 letter on its website. (Supp. Brakebill Decl., Ex. 51, ¶ 7.)
`
`IV.
`
`ARGUMENT
`
`A.
`
`The Plain Language of the APA Excluded Copyrights from the Assets
`to Be Transferred by Novell to Santa Cruz.
`
`1.
`
`Schedule 1.1(b) Expressly Excluded “All Copyrights” From
`the Transfer of Assets.
`
`As this Court noted in its June 9, 2004 Order, “the APA specifically excluded all
`
`copyrights from the assets transferred from Novell to SCO’s pre