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920724.complaint
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1992-11-03
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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
VARET MARCUS & FINC P.C.
(Formerly MILGRIM THOMAJAN & LEE P.C.)
53 Wall Street
New York, New York 10005-2815
(212) 858-5300
Sanford Tannenbaum
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-
BERKELEY SOFTWARE DESIGN, INC.,
and the Following Individuals in their
Collective Capacity as THE FIRST AMENDED
REGENTS OF THE UNIVERSITY OF CALIFORNIA: COMPLAINT
PETE WILSON, LEO T. MCCARTHY,
WILLIE L. BROWN, JR., BILL HONIG,
DAVID P. GARDENER, RALPH M. OCHOA,
GAIL G. ANDERSON, WILLIAM T. BAGLEY,
ROY T. BROPHY, CLAIR W. BURGENER,
YVONNE BRATHWAITE BURKE, GLENN CAMPBELL,
FRANK W. CLARK, JR., DIANA DARNELL,
TIRSO DEL JUNCO, ALICE J. GONZALES,
JEREMIAH F. HALLISEY, S. SUE JOHNSON,
MEREDITH J. KHACHIGIAN, LEO S. KOLLIGIAN,
HOWARD H. LEACH, S. STEPHEN NAKASHIMA,
YORI WADA, DEAN A. WATKINS,
HAROLD M. WILLIAMS, JACQUES S. YEAGER,
CARL J. STONEY, JR., PAUL HALL,
MARTIN A. TROW and W. ELLIOT BROWNIEE,
Defendants.
Plaintiff UNIX System Laboratories, Inc. ("USL"), for
its First Amended Complaint against Defendant Berkeley Software
Design, Inc. ("BSDI") and Defendants Pete Wilson, Leo T.
McCarthy, Willie L. Brown, Jr., Bill Honig, David P. Gardner,
Ralph M. Ochoa, Gail G. Anderson, William T. Bagley, Roy T.
Brophy, Clair W. Burgener, Yvonne Brathwaite Burke, Glenn
Campbell, Frank W. Clark, Jr., Diana Darnell, Tirso del Junco,
Alice J. Gonzales, Jeremiah F. Hallisey, S. Sue Johnson, Meredith
J. Khachigian, Leo S. Kolligian, Howard H. Leach, S. Stephen
Nakashima, Yori Wada, Dean A. Watkins, Harold M. Williams,
Jacques S. Yeager, Carl J. Stoney, Jr., Paul Hall, Martin A.
Trow, and W. Elliot Browniee (collectively, the "Regents"), avers
as follows:
Nature of The Action
1. This is an action for injunctive relief and
damages to redress violations of USL's federal statutory and
common law intellectual property and contractual rights in its
renowned UNIX computer operating system software and related
documentation, such as programmer's manuals distributed to
licensees of USL. All references in this First Amended Complaint
to UNIX(R) operating system software or source code includes such
related documentation.
2.. USL seeks, among other things, to preliminarily
and permanently enjoin the Regents and BSDI, a commercial
enterprise founded by, among others, current and former
University of California personnel, from developing, promoting,
reproducing, and distributing computer software products which
are based upon, copied from, or derived from USL's proprietary
and copyrighted UNIX operating system software, except as
authorized by agreements between the Regents and USL or its
predecessor, the American Telephone and Telegraph Company
("AT&T") (sometimes, collectively, "USL").
3.. The computer operating system software involved in
this action is written in a human readable form known as source
code. Over the past two decades, USL has disclosed in confidence
to the Regents of the University of California various editions
of its proprietary and original UNIX(R) operating system source
code pursuant to licenses that restrict the Regents to
educational and administrative use of such software and which
limit distribution of derivative works prepared by the Regents to
authorized licensees of UNIX(R) system source code.
4.. In contravention of these license agreements, the
Regents have permitted the Computer Sciences Research Group of
the University of California ("CSRG"), a group established by the
Regents ostensibly to engage in research, to widely distribute to
persons who are not authorized licensees of USL, computer
operating system software known as "Networking Release 2" which
was substantially copied, based upon or derived from the UNIX(R)
system source code.
5.. BSDI, in turn, has used the Networking Release 2
software as a primary source for the development of a commercial
computer operating system, known as "BSD/386 Source," which it
has been publicly distributing in a preliminary "beta" version
and is preparing to release in a production "gamma" version.
6.. Substantial portions of the source code embodied
in the Networking Release 2 software and its BSDI derivative,
BSD/386 Source, are based upon, substantially copied from or
derived from original UNIX(R) system source code disclosed in
confidence to the Regents under restrictive license agreements.
7.. The development and distribution of Networkinq
Release 2 software and its commercial BSD/386 Source derivative
is the direct result of an illicit scheme on the part of the
founding shareholders of BSDI to achieve financial gain by
exploiting their access to CSRG's resources -- including CSRG's
limited right to use proprietary UNIX operating system software
for educational and administrative purposes -- to develop
computer operating system software for commercial sale and
distribution by BSDI, in violation of USL's proprietary rights in
the UNIX(R) operating system.
8.. By reason of CSRG's development and distribution
of the Networking Release 2 software the Regents have breached
their obligations under their UNIX(R) software license agreements
with USL and have engaged in federal copyright infringement and
misappropriation of trade secrets. The Regents have also engaged
in false advertising and unfair competition in violation of the
federal Lanham Trademark Act, 15 U.S.C. 1051, et seq., and
applicable State laws by permitting CSRG to distribute
promotional materials which falsely represent that its Networking
Release 2 software is "free" of UNIX(R) software code.
9.. BSDI has unlawfully interfered with USL's
contractual relations with the Regents by inducing CSRG to breach
the Regents' contractual obligations to USL. Moreover, BSDI's
development and distribution of its BSD/386 Source product
constitutes federal copyright infringement and misappropriation
of trade secrets on the part of BSDI. In addition, BSDI has
violated the federal Lanham Trademark Act and engaged in unfair
competition by distributing brochures and other promotional
materials which falsely represent that the BSD/386 Source product
does not contain any UNIX(R) operating system source code and that
purchasers of the BSD/386 Source product are not required to
secure a license from USL. BSDI has repeated these false
statements in press release [sic] which also disparage USL.
10. In its original Complaint, USL also sought
injunctive relief and damages to redress BSDI's unauthorized use
of the UNIX(R) trademark in BSDI's toll-free telephone number,
1-800-ITS UNIX. Although the claim for injunctive relief was
resolved by the entry, on April 29, 1992, of a Stipulated Order
permanently enjoining BSDI's use of the UNIX(R) mark to identify
its telephone number, USL is still seeking damages as a result of
BSDI's said unauthorized use of the UNIX mark.
Jurisdiction and Venue
11. This Court has subject matter jurisdiction over
this action pursuant to 15 U.S.C. 1121(a), 28 U.S.C. 1331 and
1338, 28 U.S.C. 1332, and principles of supplemental
jurisdiction. The amount in controversy exceeds $50,000
exclusive of interest and costs.
12. Venue is proper in this district pursuant to 28
U.S.C. 1391(b).
The Parties
13. Plaintiff USL is a Delaware corporation with its
principal place of business located in Summit, New Jersey. USL
is a majority-owned subsidiary of AT&T engaged in the
development, manufacture, licensing and sale of computer software
operating systems and related products and services.
14. 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.
15. BSDI has attempted to market and has distributed
its BSD/386 Source product and promotional materials relating
thereto in New Jersey and elsewhere throughout the world.
16. Each of the individual defendants is a California
resident serving as a member of the Board of Regents of the
University of California. The Board of Regents, a licensee of
UNIX(R) operating system software, is responsible for governing
the affairs of the University and each of its members is legally
responsible for the conduct of the University and CSRG.
17. The Regents, through CSRG, have distributed
Networking Release 2 software and promotional material relating
thereto to persons in New Jersey and elsewhere throughout the
world.
USL's Proprietary Rights in the UNIX Operating System
18. Beginning in the early 1970s, AT&T's Bell
Laboratories developed original proprietary computer operating
system software and other computer related products which it
identified with the trademark "UNIX."
19. A computer operating system is a software program
that controls computer processing; allocates internal and
external resources; communicates with external devices such as
disk drives, keyboards and printers; and provides the interface
to and controls the processing of programs designed to perform
specific tasks (called "application programs"). In addition to
these basic functions, the UNIX operating system contains a host
of utilities to assist users, administrators and programmers of
UNIX(R) operating system installations. In addition to these basic
functions [sic], the UNIX(R) operating system is a highly sophisticated
multi-user system (i.e., it allocates the computer's resources
among multiple users at the same time) and multi-tasking system
(i.e., it can perform more than one task at a time for each
user).
20. The UNIX(R) system has been described as "the only
major operating system available today that covers almost the
entire spectrum of computer classes . . . including
microcomputers, minicomputers, mainframes, RISC systems, fault-
tolerant computers, and parallel processors."
21. On May 3, 1990, AT&T assigned to USL all of its
rights in the UNIX(R) operating system, including the UNIX
trademark, its accompanying goodwill and its copyrights and other
intellectual property rights in the software and related
documentation sold and licensed thereunder.
Copyright
22. The source code and object code for the UNIX(R)
operating system software and all versions and releases thereof
are original unpublished works of authorship created by USL and
constitute copyrightable matter under the Copyright Law of the
United States, 17 U.S.C. 101 et seq. (the "Copyright Act").
23. USL has duly complied with all of the provisions
of the Copyright Act and has received from the Register of
Copyrights Certificates of Registration for, inter alia, the
following versions of UNIX(R) operating system software and related
documentation (collectively, the "Works"):
Works Registration No.
Fifth edition TXU 510 028
Sixth edition TXU 511 236
Seventh edition TXU 516 705
32V TXU 516 704
Copies of these Certificates are attached as Exhibits A through
D. These registrations constitute prima facie evidence of the
validity of these copyrights and of the facts stated in the
Certificates.
Trademark
24. On May 6, 1986, AT&T's UNIX trademark was duly
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 E.
This registration is valid, subsisting, in full force and effect,
and is now incontestable pursuant to 15 U.S.C. 1065.
25. 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.
26. The trademark UNIX is widely known as identifying
AT&T and USL as the source of UNIX(R) operating system software
and authorized derivatives thereof and of related products.
Trade Secrets and Confidential Information
27. Significant elements of the UNIX(R) operating system
source code, including the methods and concepts utilized therein,
constitute matter that derives independent economic value, actual
or potential, from not being generally known to, and not being
readily ascertainable by proper means by, other persons who can
obtain economic value from its disclosure or use.
28. In order to protect and preserve its value, USL
has treated the UNIX operating system software and the methods
and concepts used therein as trade secrets and has taken measures
that are reasonable under the circumstances to maintain such
secrecy.
Disclosure of the UNIX(R) Operating System Software
To the Regents in COnfidence
29. AT&T initially developed the UNIX(R) operating
system for its own internal use. In 1973, AT&T began to license
UNIX operating system source code to universities and
institutions of higher education, including the Regents, under
license agreements that limit the use of such software solely for
authorized administrative and educational purposes.
30. As part of the measures employed by AT&T and USL
to preserve USL's trade secrets, these license agreements require
the licensee to maintain the UNIX(R) System source code in
confidence, restrict the licensee from disclosing such source
code and the methods and concepts therein, and contain other
restrictions intended to protect and preserve USL's proprietary
rights in the UNIX operating system. A copy of one such agreement
between AT&T's subsidiary, Western Electric Company, Inc.
(hereafter, "USL"), and the Regents, dated April 1, 1979,
pertaining to software for the UNIX/32V Time-Sharing System,
Version 1.0 (the "32V Software Agreement"), is annexed as Exhibit
F.
31. Under the 32V Software Agreement and similar
license agreements, the Regents have been authorized to
distribute to third parties works that are derived from UNIX(R)
system software. However, the agreements permit distribution of
such derivative work only to persons who have acquired a UNIX(R)
system source code license from AT&T or USL.
32. Pursuant to these provisions, the Regents, through
CSRG, have developed and distributed derivative works, which are
generally known as "Berkeley Software Distributions," to
licensees of AT&T and USL. These works have been generally known
by a version number followed by the initials "BSD" (e.g.,
"4.3BSD").
33. All versions of the BSD software released for
distribution by the Regents prior to June 1991, up to and
including 4.3BSD, were admittedly derived from UNIX(R) system
software. Upon information and belief, the Regents limited
distribution of such software to licensees of AT&T and USL.
The Infringement of USL's Proprietary Right
34. BSDI is a closely held company formed May 21,
1991, by several persons including employees at CSRG who were and
continue to be involved in the development of past, current and
future editions of CSRG's "BSD" software. BSDI's shareholders
and directors had access to unpublished original proprietary
UNIX(R) system source code disclosed in confidence to the Regents
under restrictive license agreements and the various "BSD"
releases which were substantially copied and derived therefrom,
and they also had knowledge of the restrictions contained in those
licenses.
35. Some time in 1990, the individuals who eventually
formed BSDI formed the collective intention to use the resources
of CSRG, including its confidential access to unpublished
original proprietary UNIX(R) software and the BSD releases
derived therefrom, to develop a commercial computer operating
system in direct competition with USL.
36. As part of that plan, the involved CSRG employees
induced the Regents to publicly distribute a substantial portion
of the software which had previously been released only to AT&T
licensees.
37. On or about June 28, 1991, the Regents -- at the
behest of BSDI's founders -- commenced the distribution by CSRG
of the Networking Release 2 software. In a June 28, 1991
statement announcing the release of its Networking Release 2
software (an excerpt of which is annexed as Exhibit G), CSRG
stated that "[t]his software is copyrighted by the University of
California and others, but may be freely distributed. It is
available to anyone and requires no previous license, either from
AT&T or The Regents of the University of California."
38. Substantial portions of the Networking Release 2
software are based upon, substantially copied from, or derived
from proprietary UNIX(R) system software, including UNIX/32V
software, disclosed to the Regents under restrictive licensee
agreements.
39. 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. Accordingly,
BSDI is not authorized to receive, use, reproduce, disclose or
distribute software containing UNIX(R) system source code or
works derived therefrom. Nor is BSDI authorized to use the
UNIX(R) mark to identify its products or services.
40. BSDI is attempting to develop its BSD/386 Source
software as a computer operating system software product that is
directly competitive to products sold or licensed by USL and/or
its licensees. Exhibit H is a copy of a BSDI promotional
brochure for its BSD/386 Source product.
41. BSDI's BSD/386 Source product is admittedly
derived from the Networking Release 2 software. As such, the
BSD/386 Source product is based upon, substantially copied from
or derived from UNIX(R) system software or derivative works
therefrom. Wholly apart from its reliance on the Networking
Release 2 software, BSDI has added to its BSD/386 Source product
source code that is based upon, substantially copied from or
derived from UNIX(R) system software or derivative works
therefrom.
First Claim for Relief
Breach of Contract
(Against the Regents)
42. Plaintiff incorporates the foregoing allegations
of the Complaint.
43. Under the 32V Software Agreement and similar
licenses, USL granted the Regents a royalty-free, personal,
nontransferable and nonexclusive right to use the Licensed
Software "solely for 'academic, educational and administrative
purposes'", solely on designated central processing units, or
"CPUs". The agreement further provides that:
Uses for "academic and educational purposes"
means uses directly related to teaching and
degree-granting programs. Such uses exclude,
without limitation, administrative uses,
commercial uses such as the development of
software for sale or license, or uses in
research if any third person is granted
rights or preferential access to the fruits
of such research.
Other agreements extended to the Regents the right to use the
licensed software for the internal administration and operation
of the University.
44. Under all of its agreements with AT&T relating to
the UNIX(R) software, the Regents agreed, among other things, "to
hold the LICENSED SOFTWARE in confidence" and "not [to] make any
disclosure of the LICENSED SOFTWARE or any portion thereof
(including methods or concepts utilized therein) to anyone,
except to employees or students" in accordance with the terms of
the agreement.
45. Under all of its agreements with AT&T relating to
the UNIX(R) software, the Regents further agreed, among other
things, that "it will not use the LICENSED SOFTWARE except as
authorized herein, that it will not make or have made, or permit
to be made, any copies of the LICENSED SOFTWARE, except those
copies which are necessary to the use, by [the Regents], for
which rights are granted hereunder . . . ."
46. Certain agreements between AT&T and the Regents
expressly authorized the Regents to distribute its own version of
the UNIX(R) software "to other licensees of [AT&T] for UNIX(R)
System V, provided that [the Regents] first verifies the status
of any such other license in accordance with specific
instructions issued by AT&T."
47. The Regents have breached the 32V Software
Agreement and other license agreements by, among other things,
(a) disclosing portions of the UNIX(R) operating
system source code, and the methods or concepts used therein, to
persons and for purposes other then those authorized in its
license agreements with AT&T;
(b) distributing its version of the UNIX(R)
software to persons who were not licensed by AT&T or USL and
without verifying the status of such persons in accordance with
AT&T or USL's instructions; and
(c) using UNIX(R) system source code for purposes
not authorized under the agreements.
48. The agreements between AT&T and the Regents each
provide that "[i]f the [Regents] shall fail to fulfill one or
more of its obligations under this agreement, [AT&T] may, upon
its election and in addition to any other remedies it may have,
at any time terminate all the rights granted by it hereunder by
not less than two (2) months' written notice to the [Regents]
specifying any such breach, unless within the period of such
notice all such breaches specified therein shall have been
remedied; upon such termination [the Regents] shall within thirty
(30) days deliver to [USL] all documentation containing the
LICENSED SOFTWARE, and shall render unusable all LICENSED
SOFTWARE placed in any storage apparatus."
49. The Regents have "failed to fulfill one or more of
its obligations" as contemplated by the Termination provisions of
the 32 [sic] Software Agreement and the other license agreements.
50. By reason of their breach of contract, the Regents
have caused, and unless enjoined, will continue to cause
irreparable injury to USL for which there is no adequate remedy
at law.
51. The Regents have caused damage to USL's business
in an amount to be determined at trial.
Second Claim for Relief
Inducing Breach of Contract
(Against BSDI)
52. Plaintiff incorporates the foregoing allegation of
the Complaint.
53. At all relevant times, BSDI knew that USL had
disclosed its UNIX(R) operating system software to the Regents
pursuant to license agreements that limited the use of such
software or derivatives thereof to administrative and educational
purposes, limited disclosure of such software and the methods or
concepts utilized therein and limited distribution of the
Regent's [sic] version of such software to persons holding a
UNIX(R) system source code license from USL or AT&T.
54. At all relevant times, BSDI knew that Networking
Release 2, from which the BSD/386 Source software product is
admittedly derived, was substantially copied from, derived from
and based upon proprietary UNIX(R) operating system software and
the methods and concepts utilized therein, and that the Regents
had a duty not to disclose Networking Release 2 to persons who
were not licensees of USL or AT&T.
55. BSDI intentionally and unjustifiably induced the
Regents, through CSRG, to breach the 32V Software Agreement and
similar license agreements by, among other things, (a)
distributing Networking Release 2 to persons who are not
authorized to receive UNIX(R) system software or works derived
therefrom, (b) making copies of Networking Release 2 and
permitting copies of such software to be made and distributed by
persons who are not authorized to receive UNIX(R) system software
or works derived therefrom, and (c) using the licensed software
for purposes not authorized under the agreement.
56. By reason of the foregoing, BSDI has damaged USL's
rights in the UNIX(R) operating system software in an amount to
be determined at trial.
Third Claim for Relief
Federal Copyright Infringement
(Against BSDI and the Regents, Severally)
57. Plaintiff incorporates the foregoing allegations
of the Complaint.
58. BSDI and the Regents have without the permission
of AT&T or USL, reproduced, prepared derivative works based upon,
and distributed copies of copyrighted UNIX(R) operating system
source code, including UNIX(R) operating system 32V, and works
derived therefrom.
59. BSDI and the Regents have engaged in copyright
infringement in violation of the Copyright Act.
60. BSDI's and the Regents' infringement of USL's
copyrights has caused, and unless enjoined, will continue to
cause irreparable injury to USL for which there is no adequate
remedy at law.
61. BSDI and the Regents have caused damage to USL's
business in an amount to be determined at trial.
Fourth Claim for Relief
Misappropriation of Trade Secrets and Confidential Information
(Against BSDI and the Regents, Severally)
62. Plaintiff incorporates the foregoing allegations
of the Complaint.
63. Substantial portions of the source code embodied
in or constituting the Networking Release 2 software and the
BSD/386 Source product are based upon or derived from proprietary
UNIX(R) operating system software and the methods and concepts
utilized therein.
64. At all relevant times, BSDI knew or reasonably
should have known that Networking Release 2, from which the
BSD/386 Source software product is admittedly derived, was
derived from and based upon proprietary UNIX(R) operating system
software and the methods and concepts utilized therein and that
the Regents had a duty not to disclose Networking Release 2 to
persons who were not licensees of USL or AT&T.
65. The conduct of BSDI and the Regents constitutes
misappropriation of USL's trade secrets and confidential
information, in violation of applicable State law.
66. BSDI and the Regents have caused, and unless
enjoined, will continue to cause irreparable injury to USL for
which there is no adequate remedy at law.
67. BSDI and the Regents have caused damage to USL's
business in an amount to be determined at trial.
Fifth Claim for Relief
False or Misleading Representations of Fact
in violation of the Lanham Trademark Act
(Against BSDI)
68. Plaintiff incorporates the foregoing allegations
of the Complaint.
69. As shown in Exhibit H, 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.
70. This statement is materially false and misleading
in that, among other things:
(a) the "Networking Release 2 software referred to
therein contains source code that was substantially copied from,
based upon, or derived from, UNIX(R) operating system source code
licensed to the Regents by AT&T,
(b) the "Networking Release 2" software and any
works derived therefrom may only be lawfully distributed to UNIX
operating system "source code" licensees of AT&T or USL,
(c) the BSD/386 Source software contains
additional source code, not included in the Networking Release 2
software, which is substantially copied from, based upon, or
derived from, UNIX operating system source code; and
(d) the BSD/386 Source source code may only be
lawfully distributed to UNIX(R) operating system "source code"
licensees of USL or AT&T.
71. 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
I.
72. This statement is likewise materially false and
misleading in that, among other things, the BSDI "LICENSED
PROGRAM" contains software source code that was copied from,
based upon, or derived from, UNIX(R) operating system source code
licensed to the Regents by AT&T and may only be lawfully
distributed to UNIX operating system "source code" licensees of
AT&T or USL.
73. BSDI has repeated these false and misleading
statements in press releases that disparage USL, its business and
the UNIX trademark. Copies of two press releases printed on BSDI
letterhead are attached as Exhibit J.
74. 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.
75. BSDI has caused, and unless enjoined, will
continue to cause irreparable injury to USL for which there is no
adequate remedy at law.
76. BSDI has caused USL to sustain damage to its
business, and to the value of its trademark and the goodwill
associated with that mark.
77. BSDI's conduct constitutes false or misleading
representations of fact in violation of Section 43(a) of the
Lanham Trademark Act, 15 U.S.C. [section] 1125.
Sixth Claim for Relief
False or Misleading Representations of Fact
in Violation of the Lanham Trademark Act
(Against the Regents)
78. Plaintiff incorporates the foregoing allegations
of the Complaint.
79. The Regents's June 28, 1991 announcement that its
Networking Release 2 software is "available to anyone and
requires no previous license, either from AT&T or The Regents of
the University of California" is materially false and misleading
in that, among other things, the "Networking Release 2" referred
to therein contains software code that was substantially copied
from, based upon, or derived from, code licensed to the Regents
by AT&T and that "Networking Release 2" and any works derived
therefrom may only be lawfully distributed to licensees of AT&T
or USL.
80. The Regents' 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.
81. The Regents have caused, and unless enjoined, will
continue to cause irreparable injury to USL for which there is no
adequate remedy at law.
82. The Regents have caused USL to sustain damage to
its business.
83. The Regents' conduct constitutes false or
misleading representations of fact in violation of Section 43(a)
of the Lanham Trademark Act, 15 U.S.C. [section] 1125.
Seventh Claim for Relief
False Descriptions of Origin
in Violation of the Lanham Trademark Act
(Against BSDI)
84. Plaintiff incorporates the foregoing allegations
of the Complaint.
85. Statements contained in BSDI's product brochures,
promotional materials, licenses and press releases falsely
represent or imply that the source code embodied in BSD/386
Source product originates with BSDI and the Regents, and not with
AT&T or USL.
86. Likewise, the copyright notice affixed by BSDI to
its BSD/386 Source product falsely represents or implies that the
source code embodied in that product originates with BSDI and the
Regents, and not with AT&T or USL.
87. BSDI's conduct constitutes the use in commerce, in
connection with goods or services, of a false designation of
origin which is likely to cause confusion, or to cause mistake,
or to deceive as to the origin of the source code embodied in the
BSD/386 Source product.
88. BSDI has caused, and unless enjoined, will
continue to cause irreparable injury to USL for which there is no
adequate remedy at law.
89. BSDI has caused USL to sustain damage to its
business.
90. BSDI's conduct constitutes false designations of
origin in violation of Section 43(a) of the Lanham Trademark Act,
15 U.S.C. 1125.
Eighth CLaim for Relief
False Description of Origin
in Violation of the Lanham Trademark Act
(Against the Regents)
91. Plaintiff incorporates the foregoing allegations
of the Complaint.
92. Statements made by the Regents in promotional
materials, and the copyright notice affixed by the Regents to its
Networking Release 2 software, falsely represent or imply that
the source code embodied in the Networking Release 2 software
originates with CSRG, and not with AT&T or USL.
93. The Regents' conduct constitutes the use in
commerce, in connection with goods or services, of a false
designation of origin which is likely to cause confusion, or to
cause mistake, or to deceive as to the origin of the source code
embodied in the Networking Release 2 software.
94. The Regents have caused, and unless enjoined, will
continue to cause irreparable injury to USL for which there is no
adequate remedy at law.
95. The Regents have caused USL to sustain damage to
its business.
96. The Regents' conduct constitutes false
designations of origin in violation of Section 43(a) of the
Lanham Trademark Act, 15 U.S.C. 1125.
Ninth Claim for Relief
Federal Trademark Infringement
(Against BSDI)
97. 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".
98. BSDI 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.
99. 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.
100. On April 29, 1992, this Court entered a Stipulated
Order, dated April 28, 1992, that permanently enjoins BSDI's use
of the UNIX mark in connection with its telephone number.
However, such Order is without prejudice to USL's right to seek
damages based upon BSDI's use of the UNIX trademark.
101. 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.
102. BSDI's conduct constitutes infringement of a
registered trademark in violation of Section 32 of the Lanham
Trademark Act, 15 U.S.C. 1114.
Tenth Claim for Relief
Dilution
(Against BSDI)
103. Plaintiff incorporates the foregoing allegations
of this Complaint.
104. BSDI's conduct threatens to and does impair the
distinctive significance of the UNIX mark, in violation of USL's
rights under the common law of New Jersey and under the law of
each State in which BSDI has engaged, is engaging or threatens to
engage in the aforesaid conduct.
Eleventh Claim for Relief
Unfair Competition and Deceptive Trade
Practices under State Statutory and Common Law
(Against BSDI)
105. Plaintiff repeats the foregoing allegations as if
fully set forth herein.
106. 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 preliminary and permanent injunction:
(a) restraining BSDI, its officers, agents, employees,
servants, and all persons in active concert or participation with
them, from developing, manufacturing, offering for license or
sale, licensing, selling, displaying, distributing, promoting,
disclosing or using, (1) its BSD/386 Source product or any
derivatives thereof and (2) any other software product which, in
whole or in part, is copied from, based upon, or derived from
UNIX(R) operating system software, version 32V or from any other
UNIX(R) operating system software.
(b) directing BSDI, its officers, agents, employees,
servants, and all persons in active concert or participation with
them, (1) to collect and surrender up to counsel for USL all
copies, including copies stored on hard disc, tape drives or in
any other storage medium, of matter copied from, based upon, or
derived from any portion of the UNIX(R) operating system software
source code in its possession, custody or control and (2) in the
presence of representatives of USL and under the supervision of
the Court, to render unusable all matter containing, copied from,
based upon or derived from, in whole or in part, any portion of
the UNIX operating system software source code in all storage
apparatuses in their possession, custody of [sic] control.
(c) restraining BSDI, its officers, agents, employees,
servants, and all persons in active concert or participation with
them, from referring to, consulting, copying, duplicating, or
relying on or otherwise using UNIX(R) operating system software or
any works, notes, memoranda, or other records, copied from, based
upon, or derived from such software, in connection with the
development of any computer operating system.
(d) restraining BSDI, its officers, agents, employees,
servants, and all persons in active concert or participation with
them, from employing, authorizing or otherwise allowing any
person who has had access to UNIX(R) operating system source code
or any works, notes, memoranda, or other records, copied from,
based upon, or derived from such software, disclosed to such
person or his employer in confidence, to participate on behalf of
BSDI in the development of source code for a multiuser computer
operating system.
(e) restraining BSDI, its officers, agents, employees,
servants, and all persons in active concert or participation with
them, from authorizing or purporting to authorize any person to
engage in any of the foregoing actions.
(f) directing BSDI, its officers, agents, employees,
servants, and all persons in active concert or participation with
them, to recall all copies of the BSD/386 Source software that
were previously distributed and to notify actual and possible
recipients of such software of this Court's order and the finding
on which it is based.
2. A preliminary and permanent injunction:
(a) restraining the Regents, and each of them, and all
officers, agents, employees and servants of the University of
California, and all persons in active concert or participation
with them, from using, developing, manufacturing, offering for
license or sale, licensing, selling, displaying, disclosing,
distributing or promoting (1) the Networking Release 2 software,
(2) the BSD software releases, (3) the UNIX operating system
software and (4) any other software which, in whole or in part,
is copied from, based upon, or derived from UNIX(R) operating system
software, version 32V or from any other UNIX(R) operating system
software, except as authorized by the agreements between the
Regents and USL or AT&T.
(b) restraining the Regents, and each of them, and all
officers, agents, employees and servants of the University of
California, and all persons in active concert or participation
with them, from authorizing or purporting to authorize any person
to engage in any of the foregoing actions.
(c) directing the Regents and each of them, and all
officers, agents, employees and servants of the University of
California, and all persons in active concert or participation
with them, to recall all copies of the Networking Release 2
software that were previously distributed and to notify actual
and possible recipients of such software of this Court's order
and the findings on which it is based.
3. An award against BSDI and the Regents and each of
them of all forms of monetary relief authorized by Section 504 of
the Copyright Act including but not limited to USL's actual
damages and/or the profits of BSDI which are attributable to the
infringement in an amount to be determined at trial.
4. An award of compensatory damages against BSDI and
the Regents and each of them.
5. An award of punitive damages against BSDI in an
amount to be determined at trial.
6. 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.
7. An award against BSDI, the Regents and each of
them, of attorneys fees and expenses incurred by USL, to the full
extent permitted by law.
8. Such other and further relief as this Court may
deem just and proper.
Dated: Newark, New Jersey
July 24, 1992
CRUMMY, DEL DEO, DOLAN,
GRIFFINGER & VECCHIONE, P.C.
By: (signed Mich Mxtx)
Michael D. Loprete (MDL1695)
One Riverfront Plaza
Newark, New Jersey 07102
(201) 596-4500
and
VARET MARCUS & FINK P.C.
(Formerly MILGRIM THOMAJAN &
LEE P.C.)
By: (signed James W. Kennedy)
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
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