ftp.ee.pdx.edu/2014.02.ftp.ee.pdx.edu.tar/ftp.ee.pdx.edu/pub/lpf/att-bsdi/920420.complaint

Text File | 1992-11-03 | 13KB | 365 lines

Michael D. Loprete (MDL1695)
CRUMMY, DEL DEO, DOLAN,
  GRIFFINGER & VECCHIONE, P.C.
One Riverfront Plaza
Newark, New Jersey 07102
[phone]

George L. Graff
James W. Kennedy
Charles B. Ortner
MILGRIM THOMAJAN & LEE P.C.
New York, New York 10005-2815
[phone]

Sanford Tannebaum
Executive Vice President and General Counsel
UNIX System Laboratories, Inc.
190 River Road
Summit, New Jersey  07901-1444
[phone]

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
            [phone]

                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
            [phone]

            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
[phone]