Judge: Novell, Not SCO, Owns UNIX Copyrights

As the technology law blog Groklaw broke late this afternoon, Utah District Court Judge Dale Kimball has handed Novell a partial, but still sizable, chunk of victory in its very, very long-running dispute brought on by SCO Group: Even after an asset purchase agreement between Novell and the Santa Cruz Operation (SCO's predecessor company), it is Novell that owns the copyrights to the UNIX operating system and to UnixWare.

The ruling effectively dismisses two of SCO's claims against Novell in full, along with substantive parts of two other claims, leaving its remaining premises for its multitude of complaints hanging by a tangle of questionable procedural threads, which may not hold up for very long.

The foundation of SCO's original case against Novell (which, like an outdoor monument buried over the years by a mountain of weeds, has often been forgotten) was that Novell committed "slander of title" when it claimed it still owned copyright to UNIX and UnixWare, after SCO acquired the assets that the Santa Cruz Operation purchased from it in 1995.

On its face - setting aside years of name-calling and procedural maneuvering - SCO would seem to have had a case. The provisional agreement between its predecessor and Novell did appear to exclude from sale a number of Novell's copyrights except for UNIX and UnixWare - meaning they were excluded from being excluded.

But the asset purchase agreement (APA) between the two original companies in the deal stipulated that Santa Cruz (the earlier version) was to cooperate with Novell in the production of an Intel-based operating system that would merge UnixWare with Netware, and that would eventually compete with Microsoft Windows.

What's more, the two companies' technology license agreement (TLA) stated that for a two-year period after the deal commenced, should Santa Cruz become acquired, Novell "shall automatically have unlimited, royalty-free, perpetual rights to the Licensed Technology."

That acquisition did take place, but further out than two years' time: actually in 2001, when Santa Cruz was acquired by Caldera, the company that had purchased DR DOS from Digital Research, that itself had mounted a monumental challenge to Microsoft (that eventually went nowhere), and that later changed its name to SCO Group.

But evidence submitted by Novell suggests that, between 1995 and 2001, Santa Cruz and Novell had differing opinions about the extent to which intellectual property was transferred in the sale from the latter to the former. For instance, just following the sale, Santa Cruz issued what it called a "joint press release" acknowledging that it had acquired trademarks and other IP from Novell.

It wasn't really "joint," apparently, as Novell issued a press release with more limited terms. Since all sides agree Santa Cruz never acquired any patents from Novell, Judge Kimball ruled today that the press releases in question had a loose definition of "intellectual property," so they may not be legally indicative of the state of the actual sale agreement.

Later in the ruling, Kimball questions why few witnesses recall any discussion of copyrights changing hands or plans to have them change hands (or not), despite the fact that witnesses have relatively crystal clear memories of other details.

"There is extrinsic evidence from several individuals who were involved at different stages of the negotiations of the APA and from business people involved in the transition of the business to Santa Cruz," Kimball wrote. "Interestingly, many of the witnesses who were on the Novell side of the APA transaction went to work for Santa Cruz as a result of the deal. The relevance of much of the testimony is questionable because few have a recollection of actual discussions regarding the transfer or retention of copyrights. Many witnesses give an opinion as to whether they think the copyrights should have transferred, but they fail to establish an adequate foundation to support their opinion. Given the volume of the testimony presented to the court and the number of attorneys and business people involved in the transaction, it is surprising that there is not more testimony on the drafting and negotiation of the intellectual property provisions from both sides of the deal."

From there, Judge Kimball spent literally dozens of pages in his ruling, introducing the multitude of legal tangles that arose from Novell's wishes to limit the terms of the deal prior to its being struck, particularly in anticipation of Santa Cruz' possible bankruptcy. Despite what initial agreement papers stated, late in the negotiation process, Novell wanted to rescind the part where it transferred its UNIX and UnixWare copyrights to Santa Cruz.

Nonetheless, a proposed amendment to the deal, called "Amendment No. 2," spelled out the exclusion to the exclusion thus: "All copyrights and trademarks, except for the copyrights and trademarks owned by Novell as of the date of the Agreement required for SCO [Santa Cruz] to exercise its rights with respect to the acquisition of UNIX and UnixWare technologies." Meaning, Santa Cruz would get no more trademarks from Novell except for those it needed to be able to maintain and sell the operating system. That amendment, SCO said, made it clear that Novell really did intend to transfer its copyrights after all.

Here is where those dozens of pages of tangles and troubles suddenly gets really, really simple:

"The Copyright Act requires a signed written instrument to transfer ownership of copyrights," Judge Kimball wrote. "Section 204(a) states: 'A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent'... This requirement is meant to 'enhance predictability and certainty of copyright ownership."'

Guess what's missing from this deal.

"A transfer of copyright is simply 'not valid' without the required written instrument," Kimball went on. An exclusion to an exclusion doesn't count. "In this case, the extrinsic evidence surrounding Amendment No. 2 strongly favors Novell's position that Amendment No. 2 was merely affirming Santa Cruz's implied license to use the UNIX and UnixWare copyrights."

It is not over. There are multiple truckloads of legal matters left to settle, like finally getting those weeds off the old monument. But a bell tolls tonight, and it's starting to sound like finality.

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