In their Memorandum of Law, AutoZone, in effect, asks, Why are we being hauled into court in Nevada? "This case has almost no relevant connection with the District of Nevada," they state. Although they are incorporated in Nevada, their headquarters are in Memphis, Tennessee, and that means virtually all of their witnesses are there, and they would have to travel inconvenient distances to get to a trial in Nevada. It might make sense if SCO was in Nevada, but they are in Utah, so here both parties will be forced to travel for a trial in a state neither has any real connection to. Does that make sense?

If your reaction to that is that incorporation is a connection, you'd be right, but notice that SCO sued Novell in Utah, where they are not incorporated but have offices. Novell is incorporated in Delaware and their headquarters are in Massachusetts. And SCO sued IBM in Utah, although IBM is incorporated in New York. For that matter, SCO is incorporated in Delaware. Why then did they choose to sue AutoZone in Nevada, where they are incorporated, and not in Tennessee, where they are headquartered, or in Utah, as is SCO's wont? We may deduce, I think, that there is more to this debate than who gets stuck with the frequent flyer miles.

Now, no one has told me their thinking, so this is just an educated guess, with some references for you to weigh to see if it makes sense to you or not. I start with the assumption that both sides want to pick the place where they feel their position will be accepted best. SCO likely feels they will do better in Nevada than Tennessee, and AutoZone may agree. A case just recently decided in the 6th Circuit gives me a hint as to why Tennessee is not where SCO wants to go and why they want this case heard in Nevada. This may even be why AutoZone, poor thing, got anointed as the sacrificial lamb, carrying the alleged "sins" of all users of Linux.

As you can see, on this list of federal district courts, Utah is in the 10th Circuit, Nevada is in the 9th, and Tennessee is in the 6th. Or if you prefer visuals, here's a map. As you may recall from my interview with PubPat's Dan Ravicher, there are differences in how various circuits decide what constitutes a derivative. Here's a bit of what Dan said:

"Although district court judges are supposed to give deference to one another's opinions, they often do not. As such, above those 94 district courts, there are 13 circuit courts of appeals, which each attempt to unify the law as between all the district courts within their jurisdiction. Here's a map showing which districts fall into which circuits. Again, like the district court judges, the circuit court judges are supposed to give deference to one another's opinions, but they often do not. So, above the 13 circuits, is the Supreme Court, which is supposed to unify law amongst the circuits.

"Every case has a right to appeal to the Circuit Court, but appeal to the Supreme Court is only by discretion. As of yet, despite the difference in opinions between the circuits regarding the question of what constitutes a derivative work of software, the Supreme Court has not taken any such case. One can speculate why this is so, including that many of the circuits, including two of the most influential to the conservative Supreme Court, the 7th and the 4th, have yet to take an opinion on the issue. Further, the 9th and 2nd Circuits, routinely the most important for copyright law (because NY and CA are home to media companies and Hollywood), are pretty much in agreement on the issue, and several circuits have followed their lead. . . .

"The intuition that there is no bright line answer regarding modules is correct. The test of derivative work is a very fact-specific one; meaning that minor differences can substantially impact the result. In practice, highly factual issues are typically resolved by both sides in litigation having representative experts testify that the facts lead to one conclusion or the other."

Utah has adopted the Abstraction, Filtration Comparison test (AFC). The Ninth Circuit uses a different method. First, quoting from Dan Ravicher's paper, "Software Derivative Work: A Circuit Dependent Determination", here is how AFC works:

"Under the AFC test, a court first abstracts from the original program its constituent structural parts. Then, the court filters from those structural parts all unprotectable portions, including incorporated ideas, expression that is necessarily incidental to those ideas, and elements that are taken from the public domain. Finally, the court compares any and all remaining kernels of creative expression to the structure of the second program to determine whether the software programs at issue are substantially similar so as to warrant a finding that one is the derivative work of the other."

Nevada's Ninth Circuit uses instead of AFC the Analytic Dissection Test:

"The Ninth Circuit has adopted the analytic dissection test to determine whether one program is a derivative work of another. The analytic dissention test first considers whether there are substantial similarities in both the ideas and expressions of the two works at issue. Once the similar features are identified, analytic dissection is used to determine whether any of those similar features are protected by copyright. This step is the same as the filtration step in the AFC test. After identifying the copyrightable similar features of the works, the court then decides whether those features are entitled to 'broad' or 'thin' protection. 'Thin' protection is given to non-copyrightable facts or ideas that are combined in a way that affords copyright protection only from their alignment and presentation, while 'broad' protection is given to copyrightable expression itself. Depending on the degree of protection afforded, the court then sets the appropriate standard for a subjective comparison of the works to determine whether, as a whole, they are sufficiently similar to support a finding that one is a derivative work of the other. 'Thin' protection requires the second work be virtually identical in order to be held a derivative work of an original, while 'broad' protection requires only a 'substantial similarity.'"

Catch that about ideas and expressions? Sound like SCO to you? And substantial similarity probably sounds inviting to them too. And thin protection probably sounds better than none.

What about Tennessee's 6th Circuit? If you are SCO, you probably don't want to go there. Here is a recent case from the 6th Circuit, which until recently didn't really have a standard that it used to decide such issues. This case, Murray Hill Publications, Inc., v. Twentieth Century Fox Film Corporation, elaborates on how the 6th Circuit, as opposed to the 9th (Nevada's), sees derivative code. In brief, you could say that in Tennessee, SCO's stretched-out ideas on what derivative code is probably will not fly. For one thing, that circuit has rejected the Nevada approach, and they clearly say you can't copyright ideas, only the expression of them:

The Second Circuit has adopted a test that distinguishes between two essential elements in a substantial similarity suit–“(a) that defendant copied from plaintiff’s copyrighted work and (b) that the copying (assuming it to be proved) went so far as to constitute improper appropriation.” Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). Expert testimony is appropriate under the first part, but not under the second because “the determination of improper copying is to be made from the viewpoint of the ordinary observer.” Kohus, 328 F.3d at 854 (citing Arnstein). The Ninth Circuit, the court of appeals with the largest case load and experience in the area of movie industry copyright infringement, has adopted an alternative two-part test. This test consists of an “‘extrinsic test,’ in which expert testimony and analytic dissection may be employed to help the jury ‘determine whether there has been copying of the expression of an idea rather than just the idea itself’ . . . and the ‘intrinsic test,’ in which expert testimony is not appropriate because the trier of fact must determine substantial similarity from the viewpoint of the ordinary reasonable person.” Kohus, 328 F.3d at 854 (summarizing Krofft, 562 F.2d at 1163-64). While these names for the parts have remained, “[b]ecause the criteria incorporated into the extrinsic test encompass all objective manifestations of creativity, the two tests are more sensibly described as objective and subjective analyses of expression, having strayed from Krofft’s division between expression and ideas.” Shaw v. Lindheim, 919 F.2d 1353, 1357 (9th Cir. 1990) (citations omitted). The extrinsic test focuses on articulable similarities between plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in the two works. Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1046 (9th Cir. 1994). “[S]atisfaction of the extrinsic test creates a triable issue of fact in a copyright action involving a literary work.” Shaw, 919 F.2d at 1359.

This court, however, had until recently not adopted any of the refined versions of the substantial similarity test. Ellis, 177 F.3d at 506 n.2. Lacking guidance, the district court in the present case adopted the Ninth Circuit test. However, while this appeal was pending, we, in Kohus, adopted the District of Columbia Circuit’s test. In this test “the first step ‘requires identifying which aspects of the artist’s work, if any, are protectible by copyright,’ the second ‘involves determining whether the allegedly infringing work is ‘substantially similar’ to protectible elements of the artist’s work.’” Kohus, 328 F.3d at 855 (quoting Sturdza v. United Arab Emirates, 281 F.3d 1287, 1295, 1296 (D.C. Cir. 2002)). This test is more similar to the Ninth Circuit test than it is to the Second Circuit test. See Kohus, 328 F.3d at 855 n.1 (tracing history of the Sturdza test). The second part of our test, and the Ninth Circuit’s intrinsic test, both address the question of whether the two works are, taken as a whole, substantially similar in look and feel to a jury. The first part of our test, and the Ninth Circuit’s extrinsic test, both require a determination of what elements of the copyrighted work are protected by the law and an exclusion of consideration of all elements that are not.

However, significant differences remain in both parts. In particular, we apply a more stringent standard regarding when to allow expert testimony on the first part of the test. Also, not having adopted the eight Kouf factors, the first part of our test remains more free in form than the Ninth Circuit’s extrinsic test. “The essence of the first step is to filter out the unoriginal, unprotectible elements . . . through a variety of analyses.” Kohus, 328 F.3d at 855 (citing Feist, 499 U.S. at 345).

This brings us to the most complex part of the substantial similarity inquiry: the determination of which parts of the original work are protectible and which are not. It is “impossible to articulate a definitive demarcation that measures when the similarity between works involves copying of protected expression; decisions must inevitably be ad hoc.” Shaw, 919 F.2d at 1356 (citing Krofft, 562 F.2d at 1164). Nevertheless, certain categorical judgments and guideposts have been established. Unoriginal work enjoys no copyright protection. “The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author.” Feist, 499 U.S. at 345. “[I]t is a constitutional requirement that a plaintiff bringing an infringement claim must prove ‘copying of constituent elements of the work that are original.’” Kohus, 328 F.3d at 853 (emphasis added in Kohus) (quoting Feist, 499 U.S. at 361). However, “the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, ‘no matter how crude, humble or obvious’ it might be.” Feist, 499 U.S. at 345 (quoting 1 Nimmer, § 1.08[C][1]).

In the general run of cases, where minimal creativity can be shown, the vital distinction is between ideas and their expressions. Copyright does not protect ideas, but only the expression of ideas. Kohus, 328 F.3d at 855.(2) “The real task in a copyright infringement action, then, is to determine whether there has been copying of the expression of an idea rather than just the idea itself.” Krofft, 562 F.2d at 1163. “[N]o one infringes, unless he descends so far into what is concrete [in a work] as to invade . . . [its] expression.” Nat’l Comics Publ’ns v. Fawcett Publ’ns, 191 F.2d 594, 600 (2d Cir. 1951). To draw the distinction between ideas and their expressions, courts use the abstraction test first described by Judge Learned Hand with respect to a theatrical play. Kohus, 328 F.3d at 855.

Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘ideas,’ to which, apart from their expression, his property is never extended.

Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930). This test will only place a work’s elements on a spectrum from more expression-like to more idea-like. It does not pick the point on the spectrum at which elements cease to be unprotected ideas and become protectible expressions. Nevertheless, it serves as a useful, if not dispositive, analytical tool in drawing these distinctions. See Peter Pan Fabrics v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (noting that “no principle can be stated as to when an imitator has gone beyond copying the ‘idea,’ and has borrowed its ‘expression’” and that such decisions hence must “inevitably be ad hoc”).

Within the realm of works of fiction, literary or cinematographic, expressions not protectible because they follow directly from unprotectible ideas are known as scènes à faire, “those elements that follow naturally from the work’s theme, rather than from the author’s creativity.” Kohus, 328 F.3d at 856 (quoting Nimmer § 13.03[F][3]). Scènes à faire are those “incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.” Sturdza, 281 F.3d at 1295. A few examples provide concreteness to this definition:

If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare’s ‘ideas’ in the play, as little capable of monopoly as Einstein’s Doctrine of Relativity, or Darwin’s theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.

Nichols, 45 F.2d at 121. Other genres provide additional examples of scènes à faire. “Elements such as drunks, prostitutes, vermin and derelict cars would appear in any realistic work about . . . policemen in the South Bronx” and are therefore not protectible. Walker v. Time Life Films, 784 F.2d 44, 50 (2d Cir. 1986). Similarly, “[f]oot chases and the morale problems of policemen, not to mention the familiar figure of the Irish cop, are venerable and often-recurring themes of police fiction,” and hence not protectable. Ibid. “While both the Dinosaur World books and the Jurassic Park works share a setting of a dinosaur zoo or adventure park, with electrified fences, automated tours, dinosaur nurseries, and uniformed workers, these settings are classic scenes a faire that flow from the uncopyrightable concept of a dinosaur zoo. Thus, though perhaps substantially similar, the settings are not protectible.” Williams v. Crichton, 84 F.3d 581, 589 (2d Cir. 1996). “The common use of such stock . . . merely reminds us that in Hollywood, as in the life of men generally, there is only rarely anything new under the sun.” Id. at 588 (quoting Berkic v. Crichton, 761 F.2d 1289, 1294 (9th Cir. 1985)).

Another question of degree in the evaluation of substantial similarity is the amount of copying necessary to establish infringement. At the extremes, the rules of law are again clear. “Duplication or near identity is not necessary to establish infringement. ” Krofft, 562 F.2d at 1167 (citing Runge v. Lee, 441 F.2d 579, 582 (9th Cir. 1971), and Williams v. Kaag Mfrs., 338 F.2d 949, 951 (9th Cir. 1964)). “A story has a linear dimension: it begins, continues, and ends. If a defendant copies substantial portions of a plaintiff’s sequence of events, he does not escape infringement by adding original episodes somewhere along the line.” Warner Bros. v. ABC, 720 F.2d 231, 241 (2d Cir. 1983). “The misappropriation of even a small portion of a copyrighted work . . . may constitute an infringement under certain circumstances.” Murray Hill Publ’ns v. ABC Comm., 264 F.3d 622, 633 (6th Cir. 2001) (citing Universal Pictures Co. v. Harold Lloyd Corp., 162 F.2d 354, 361 (9th Cir. 1947)). “Even if a copied portion be relatively small in proportion to the entire work, if qualitatively important, the finder of fact may properly find substantial similarity.” Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th Cir. 1987). “No plagiarist can excuse the wrong by showing how much of his work he did not pirate.” Shaw, 919 F.2d at 1362 (quoting Nimmer, § 13.03[B][1][a]). However, “individual lines of dialogue [in a movie] are not automatically entitled to copyright protection.” ABC, 264 F.3d at 632. “[W]hen a single line of a larger copyrighted work is appropriated by an alleged infringer, the test is whether ‘the work is recognizable by an ordinary observer as having been taken from the copyrighted source.’” Id. at 633 (quoting Harold Lloyd, 162 F.2d at 361). “[I]t is the combination of many different elements which may command copyright protection because of its particular subjective quality.” Krofft, 562 F.2d at 1169 (citing Reyher v. Children’s Television Workshop, 533 F.2d 87, 91-92 (2d Cir. 1976), and Ideal Toy Corp. v. Sayco Doll Corp., 302 F.2d 623, 624 (2d Cir. 1962)). “While any one similarity taken by itself seems trivial, . . . it would [not] be improper for a jury to find that the over-all impact and effect indicate substantial appropriation.” Krofft, 562 F.2d at 1169 (quoting Malkin v. Dubinsky, 146 F. Supp. 111, 114 (S.D.N.Y. 1956)). However, “random similarities scattered throughout the works” can be discounted. Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir. 1984). “Such a scattershot approach cannot support a finding of substantial similarity because it fails to address the underlying issue: whether a lay observer would consider the works as a whole substantially similar to one another.” Williams, 84 F.3d at 590 (citing Walker, 784 F.2d at 50, and Burroughs v. Metro-Goldwyn-Mayer, 683 F.2d 610, 624 (2d Cir. 1982)).

Likely you noticed frequent references to the Kohus case. Here are some segments from that ruling:

Not all "copying" is actionable, however: it is a constitutional requirement that a plaintiff bringing an infringement claim must prove "copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (emphasis added); see also id. at 348 ("Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author."); id. at 345 ("Original . . . means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity."). Consequently, before comparing similarities between two works a court should first identify and eliminate those elements that are unoriginal and therefore unprotected. This was the method used by the Court in Feist, in which a telephone company sued a publishing company that had reprinted some of its directory listings. The Court noted that where factual compilations such as telephone books are involved, the only original elements are in selection and arrangement, id. at 349, and concluded that because the copied listings were taken from "a garden-variety white pages directory, devoid of even the slightest trace of creativity," they were not original and were not entitled to copyright protection. Id. at 362-63. In sum, the Court filtered out the unoriginal, unprotected elements, and then determined that there was nothing original to be protected.

In Feist it was a given that the defendant had copied the plaintiff's work. For cases like the one before us here, where there is no direct evidence of copying, a plaintiff may establish "an inference of copying by showing (1) access to the allegedly-infringed work by the defendant(s) and (2) a substantial similarity between the two works at issue." Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir. 1999). In this case access has been established, and only substantial similarity is at issue.

Courts have established various tests for the substantial similarity finding. The traditional approach is the "ordinary observer" or "audience" test, which "requires the trier of fact to gauge the similarities of the two works solely on the basis of his 'net impression' and without relying on expert analysis or dissection." Id. at 506 n.2 (citation omitted); see also 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[E][1] (1991) (hereinafter "Nimmer"). There are a number of difficulties with this approach, see 4 Nimmer § 13.03[E][2], and courts have undertaken various modifications--typically, by adding a prior step that does allow expert testimony and analytic dissection. See Arnstein, 154 F.2d at 468 (distinguishing two essential elements in a substantial similarity suit--"(a) that defendant copied from plaintiff's copyrighted work and (b) that the copying (assuming it to be proved) went so far as to constitute improper appropriation"--and holding that expert testimony is appropriate under the first prong, but not under the second because the determination is to be made from the viewpoint of the ordinary observer); Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1163-64 (9th Cir. 1977) (creating an alternate two-part test: the "extrinsic test," in which expert testimony and analytic dissection may be employed to help the jury "determine whether there has been copying of the expression of an idea rather than just the idea itself"; and the "intrinsic test," in which expert testimony is not appropriate because the trier of fact must determine substantial similarity from the viewpoint of the ordinary reasonable person.) . . .

A two-step approach that reconciles Feist and Monogram Models is found in Sturdza v. United Arab Emirates, 281 F.3d 1287 (D.C. Cir. 2002)(1): the first step "requires identifying which aspects of the artist's work, if any, are protectible by copyright," id. at 1295; the second "involves determining whether the allegedly infringing work is 'substantially similar' to protectible elements of the artist's work," id. at 1296. We approve this method, and adopt it.

The essence of the first step is to filter out the unoriginal, unprotectible elements--elements that were not independently created by the inventor, and that possess no minimal degree of creativity, see Feist, 499 U.S. at 345--through a variety of analyses. It is axiomatic, to begin with, that mere abstract ideas are not protectible, but the expression of an idea is. See Mazer v. Stein, 347 U.S. 201, 217 (1954) ("Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea--not the idea itself."); 17 U.S.C. § 102(b) ("In no case does copyright protection for an original work of authorship extend to any idea[.]"). . . .

Next, in cases like this one, that involve a functional object rather than a creative work, it is necessary to eliminate those elements dictated by efficiency. See Baker v. Selden, 101 U.S. 99, 103 (1879) ("[W]here the art [that a science book] teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art[.]") (emphasis added). To this end, the merger doctrine establishes that "[w]hen there is essentially only one way to express an idea, the idea and its expression are inseparable [i.e., they merge,] and copyright is no bar to copying that expression." Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606 (1st Cir. 1988). In the present case expert testimony will likely be required to establish what elements, if any, are necessary to the function of any latch designed for the upper arm of a collapsible playyard.

It is also important to filter out scenes a faire: "those elements that follow naturally from the work's theme, rather than from the author's creativity," 4 Nimmer § 13.03[F][3], or elements that are "dictated by external factors such as particular business practices," Computer Mgmt. Assistance Co. v. Robert F. DeCastro, Inc., 220 F.3d 396, 401 (5th Cir. 2000). In the present case, possible external considerations could include standard industry practices for constructing latches, or safety standards established by organizations like the American Society for Testing Materials and the Juvenile Products Manufacturer's Association.

Once the unprotectible elements have been filtered out, the second step is to determine whether the allegedly infringing work is substantially similar to the protectible elements of the original. We noted above that our Monogram Models case establishes that this determination should be based on the judgment of the ordinary reasonable person (i.e., the ordinary lay observer). See 492 F.2d at 1286. This standard, however, is in need of modification.

The ordinary observer test is based on the economic incentive view of copyright law, that the "purpose of the copyright laws [is to] provid[e] creators with a financial incentive to create for the ultimate benefit of the public."Dawson v. Hinshaw Music, Inc., 905 F.2d 731, 733 (4th Cir. 1990); see also Mazer, 347 U.S. at 219 ("The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in 'Science and useful Arts.'"). The test was designed for cases where the lay audience purchases the product at issue, and where the lay audience's untutored judgment determines whether the product will sell. See Arnstein, 154 F.2d at 473 ("The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff."); Dawson, 905 F.2d at 734 (noting that in Arnstein "[t]he lay listener's reaction is relevant because it gauges the effect of the defendant's work on the plaintiff's market.").

In cases where the target audience possesses specialized expertise, however, the specialist's perception of similarity may be much different from the lay observer's, and it is appropriate in such cases to consider similarity from the specialist's perspective. The larger principle here is that the inquiry in the second prong of the substantial similarity test should focus on the intended audience. This will ordinarily be the lay public, in which case the finder of fact's judgment should be from the perspective of the lay observer or, as Monogram Models put it, the ordinary reasonable person. But in cases where the audience for the work possesses specialized expertise that is relevant to the purchasing decision and lacking in the lay observer, the trier of fact should make the substantial similarity determination from the perspective of the intended audience. Expert testimony will usually be necessary to educate the trier of fact in those elements for which the specialist will look. See Dawson, 905 F.2d at 736 ("Such an inquiry [into the viewpoint of an observer with specialized expertise] may include, and no doubt in many cases will require, admission of testimony from members of the intended audience or, possibly, from those who possess expertise with reference to the tastes and perceptions of the intended audience."); see also Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 713 (2d Cir. 1992) ("In making its finding on substantial similarity with respect to computer programs, we believe that the trier of fact need not be limited by the strictures of its own lay perspective. Rather, we leave it to the discretion of the district court to decide to what extent, if any, expert opinion, regarding the highly technical nature of computer programs, is warranted in a given case.") (citations omitted). . . .

The district court was correct in determining that Kohus cannot succeed on his derivative claim if the Defendants' drawings are not substantially similar to his. See 1 Nimmer § 3.01 ("[A] work will be considered a derivative work only if it would be considered an infringing work if the material that it has derived from a pre-existing work had been taken without the consent of a copyright proprietor of such pre-existing work."); Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir. 1984) ("The little available authority suggests that a work is not derivative unless it has been substantially copied from the prior work."). . . .

1The Sturdza case followed the "abstraction-filtration-comparison" approach taken in Country Kids 'N City Slicks, Inc. v. Sheen, 77 F.3d 1280 (10th Cir. 1996), which itself adopted for ordinary purposes the specialized computer-software copyright infringement test set forth in Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992). See Country Kids, 77 F.3d at 1284 n.5. The Altai case, in turn, borrowed its formulation of this method from Professor Nimmer. See Computer Assocs. Int'l., 982 F.2d at 707 ("Professor Nimmer suggests, and we endorse, a 'successive filtering method' for separating protectable expression from non-protectable material."); 4 Nimmer § 13.03[F] (describing the test); David Nimmer et al., A Structured Approach to Analyzing the Substantial Similarity of Computer Software in Copyright Infringement Cases, 20 Ariz. St. L.J. 625 (1988); see also 4 Nimmer § 13.03[E][1][b] (suggesting that courts apply the test in all substantial similarity cases, and not merely in computer software cases).

All of this, if applied to SCO's position, would be fatal. Imagine trying to prove originality of ABI files. And if you strip out of the case everything the alleged infringer never had access to, what in the world would be left? And as for identical code or striking similarity, so far SCO has failed to dive into Linux or AIX and come up with anything but seaweed, so I think they would likely strike out in the 6th Circuit. Their whole theory depends on trying to expand the concept of derivative code to include ideas, concepts, methods, and the like. They have more room to do that anywhere but Tennessee, judging by these cases. Remember "Why SCO Thinks It Can Win?", where Chris Sontag and Darl McBride spoke about the Harry Potter case and Vanilla Ice riffs?

McBride: A lot of code that you'll be seeing coming on in these copyright cases is not going to be line-by-line code. It will be more along the lines of nonliteral copying, which has more to do with infringement. This has more to do with sequence, organization, which is copyright-protectable. It's interesting when you go down this path that everyone wants to go to the exact lines of code, but most copyright cases…

Sontag: 90 to 95 percent

McBride: …are not line-by-line, exact copies. It's too obvious. Most copyright infringement cases come from these nonliteral implementations of the same code or literary work.

Sontag: My favorite example is the Russian author [Dmitry Yemets], who lost in a copyright case [after being sued by] J.K. Rowling, author of the 'Harry Potter' books, in a Dutch court. He had written a book: It was a girl, not a boy, with magical powers who rides a magical fiddle and not a broom, goes to a boarding school to learn witchcraft and wizardry, plays a game of throwing balls through hoops. All these things were very similar to Harry Potter. Could someone else ever write a book about wizards and witches? Sure. But when the structure and sequence is the same…maybe the words, the code, isn't exactly the same, but Linux is trying to be just like Unix System V. The question is whether Linux was trying to be like Unix System V by doing it in ways that were illegal.

McBride: Before all of this is said and done, you'll see people saying that SCO already published a lot of this stuff in books but that these books contained copyright-protected materials.

What book are you talking about? Lions' book?

Editor's Note: "Lions' Commentary on UNIX 6th Edition with Source Code" by Tom Lions is a book for Unix developers that, decades after it was published, is still regarded as one of the best guides on a Unix-style operating system.

McBride: No, that's ancient stuff. We're talking about recent stuff posted as a result of the BSD [Berkeley Software Design Inc.] settlement. There are things out there that help people understand how to program to System V application binary interfaces [ABIs], to help them hook up to the OS. It was out there to help people write applications. It wasn't published to help someone knock off the OS and create a free version of System V.

Sontag: If I can get my hands on it, it's mine.

McBride: I saw it, it was published, so the cows are out of the barn. The analogy I like to use is Vanilla Ice's "Ice Ice Baby" versus David Bowie and Queen's "Under Pressure." If you just look at the words, I don't see a copyright violation, but if you listen to the riffs, you can hear where they're the same.

Editor's Note: Vanilla Ice settled out of court presumably because his song included riffs that had been taken from Bowie and Queen's work. See Copyright Website LLC for more on the issue.

McBride: When everything is said and done, when everything is on the table in the court case, there will be an argument when the Linux guys come in and say, 'Guys, the words are entirely different, how can you say that's a copyright violation?'

But there are two parts to this. There are the words that are in the source code, and there's the music underneath. The actual code that drives these ABI files is structurally and sequentially the same.

What about the argument that, given the nature of the language and the design goals, that of course you'd end up with similar structures. I mean, how many efficient ways are there to write 'hello world' [the canonical beginner's program]?

McBride: We'll give them 'hello world.'

Sontag: Sure, there may be some of that, but look at dynamic shared libraries; different operating systems implement these very differently. But in Linux and System V, they're implemented in exactly the same way. They could have been done very differently and still accomplish the same thing.

McBride: That's the kind of stuff that we think that, when everything is on the table, will win for us.

Clearly, not likely in Tennessee, however. Now, I'm just guessing this is why both sides are so interested in venue, and while I'm pretty sure that convenience is a factor, it's not the only factor. On the other hand, SCO has made so many mistakes in so many court cases, I can't rule out that they filed in Nevada because they didn't know about AutoZone being located in Tennessee. After all, they didn't know DaimlerChrysler stopped using their code almost a decade ago. They could easily have figured that out, one would think, prior to filing, but they somehow just didn't. So who really knows what propels their thinking? However, normally you do try to find the best venue you have available to you, so if we give them the benefit of all doubt as to competence, I think my guess as to their motive is probably at least in the ballpark.

I think, after reading these cases, and pondering possible motives, that it is more likely that SCO, as puppet, is trying to expand, maybe even rewrite, copyright law by choosing a venue most likely to go their way. Even if they lose, they can appeal and if they lose again, they probably hope the Supreme Court will eventually hear the matter and rule in their favor, thus making their expanded concept of what constitutes derivative code the law of the land. I think it is just that large, their plan. The AdTI book fits right in with this strategy, does it not? Right now, they must FUD to call the community thieves, because it's not true. But if they alter the law, they hope to make it so, by defining free and open source software as it exists today as illegal. The DMCA isn't enough for them. They want to own ideas now, too, functionality, methods, everything, and under copyright protection, because that lasts longer than you can live, whereas patents only last a relatively short term. Between that and patents and coopting standards bodies, why, there'd be nobody left to "innovate" but Microsoft and whoever they allowed to remain standing in their shadow. We have long puzzled over why SCO was doing this, and I think that this is why.

If I'm right, the forces that wish to ruin GNU/Linux and destroy the GPL will probably do what they can to keep this anemic case alive as long as there is any hope for it at all, which means it is vital that the community continue to creatively think and act, using both brains and heart, to defeat an ugly dream no decent person would dream in the first place.

So, with that under your belt, you should have the context to understand AutoZone's Motion to Transfer Venue and SCO's opposition to it.

********************************

James J. Pisanelli, Esq.
Nevada Bar No. 4027
Nikki L. Wilmer, Esq.
Nevada Bar No. 6562
SCHRECK BRIGNONE
[address, hone]

Michael P. Kenny, Esq.
James A. Harvey, Esq.
Christopher A. Riley, Esq.
Douglas I. Bridges, Esq.
ALSTON & BIRD, LLP
[address, phone]

Attorneys for Defendant AutoZone, Inc.

____________________________________

UNITED STATES DISTRICT COURT
DISTRICT OF NEVADA

__________________________________

____________________________________

DEFENDANT AUTOZONE, INC.'S MOTION TO TRANSFER VENUE

Defendant AutoZone, Inc. ("AutoZone") moves this Court, pursuant to 28 U.S.C. § 1404(a), for an Order transferring venue to the United States District Court for the Western District of Tennessee. The grounds in support of AutoZone's Motion are set forth in detail in the attached Memorandum of Law.1

DATED this 23th day of April, 2004.

SCHRECK BRIGNONE

By: [signature]
James J. Pisanelli Esq., # 4027
Nikki L. Wilmer, Esq., #6562

and

Michael P. Kenny, Esq.
James A. Harvey, Esq.
David J. Stewart, Esq.
Christopher A. Riley, Esq.
Douglas L. Bridges, Esq.
ALTSON & BIRD LLP

Attorneys for Defendant AutoZone, Inc.

1. As the record in this matter reflects, AutoZone has filed, concurrently with this Motion, a Motion to Stay or in the Alternative, For a More Definite Statement. AutoZone respectfully requests the Court to consider the present Motion initially, and then, if the Court deems it appropriate, to consider the Motion to Stay. In the event the Court grants the present Motion to Transfer Venue, the Court may defer the Motion to Stay to the United States District Court for the Western District of Tennessee.

Defendant AutoZone, Inc. ("AutoZone") moves the Court, pursuant to 28 U.S.C. § 1404(a), for an Order transferring venue to the United States District Court for the Western District of Tennessee.

INTRODUCTION

This case has almost no relevant connection with the District of Nevada. Although AutoZone is incorporated in Nevada, virtually all of AutoZone's relevant witnesses and documents are located in Memphis, Tennessee, where AutoZone is headquartered. Plaintiff The SCO Group, Inc. ("SCO") is headquartered in Salt Lake City, Utah, and, to AutoZone's knowledge, none of SCO's relevant witnesses or documents are located in this district. Accordingly, it will be just as easy for SCO to try this case in Memphis as in Las Vegas.

Venue is proper in the Western District of Tennessee because of AutoZone's residence in that district, and the Western District of Tennessee's caseload is lighter than the caseload of this district. This case will therefore likely get to trial more quickly in Memphis than in this district. As plaintiff, SCO certainly will have no objection to the prospect of getting to trial more quickly on its claims.

In short, trial of this case would be easier, more expeditious, and less expensive in the Western District of Tennessee, yet the interests of justice will be equally well served. AutoZone therefore respectfully requests that this Court transfer venue of this case to the Western District of Tennessee.

STATEMENT OF FACTS

On March 3, 2004, SCO, a Delaware corporation with its principal place of business in Utah County, Utah, filed and served its Complaint on AutoZone, a Nevada corporation with its principal place of business in Memphis, Tennessee. Complaint ¶¶ 2 - 3. SCO's Complaint alleges that AutoZone has infringed on unspecified copyrights SCO purports to own in the UNIX computer operating system through AutoZone's internal distribution and copying of the Linux computer operating system. Id ¶¶ 20-21.2

AutoZone is a corporation formed under the laws of the State of Nevada, but its principal place of business and headquarters are located in Memphis, Tennessee: Declaration of Jon Bascom (hereinafter "Bascom Decl.") (attached hereto as Ex. A) ¶ 2. The AutoZone computers that use the Linux operating system are configured and managed by AutoZone's information technology staff located in Memphis, Tennessee. Id ¶ 3. In addition, the computers running Linux that help manage and operate the AutoZone computer network throughout the country are located in Memphis, Tennessee. Id. The witnesses with relevant knowledge of AutoZone's installation and use of Linux, including all of AutoZone's information technology staff, are located in Memphis. Id. ¶ 4. AutoZone is unaware at this time of any witnesses with knowledge of the operative facts that are located in Nevada. Id.

Virtually all documents in AutoZone's possession that relate to AutoZone's adoption and us of Linux are located in Memphis. Id. ¶ 5. Few - if any - are located in Nevada. Id.

SCO maintains offices in the United States in Utah, California and New Jersey, but not Nevada. SCO Corporate Contact Information, at http:/www.thescogroup.com/worldwide/us.html. Therefore, SCO likely has no relevant employees or documents located in this district.

ARGUMENT AND CITATION OF AUTHORITY

A. This Court Should Transfer this Action to the United States District Court for the Western District of Tennessee Pursuant to 28 U.S.C. § 1404(a).

Pursuant to 28 U.S.C. § 1404(a), this Court has authority to transfer any civil action "[f]or the convenience of parties and witnesses, in the interest of justice . . . to any other district or division where it might have been brought." 28 U.S.C. § 1404(a); see also Miracle Blade, LLC v. Ebrands Commerce Group, LLC, 207 F. Supp. 2d 1136, 1155 (D. Nev. 2002). By enacting this statute, Congress "intended to place discretion in the district court to adjudicate motions for transfer according to an 'individualized, case-by-case consideration of convenience and fairness.'" Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22,29 (1988). Transfer of venue is appropriate if venue is proper in the transferee district and transfer will serve the convenience of parties and witnesses and the interests of justice. In this case, these requirements are fully satisfied and transfer of this action to the United States District Court for the Western District of Tennessee is warranted.

1. Venue is Proper in the Western District of Tennessee.

SCO could have filed this case in the Western District of Tennessee because venue is proper there pursuant to 28 U.S.C. § 1391(a) and 28 U.S.C. § 1400(a). Under both 28 U.S.C. § 1391(a), the general venue statute, and 28 U.S.C. § 1400(a), the copyright venue statute, venue is proper in a judicial district where the defendant resides. See 28 U.S.C. § 1391(a) ("A civil action wherein jurisdiction is founded only on diversity of citizenship may . . . be brought only in (1) a judicial district where any defendant resides, if all defendants reside in the same State . . . ."); 28 U.S.C. § 1400(a) ("Civil actions . . . arising under any Act of Congress relating to copyrights . . . may be instituted in the district in which the defendant or his agent resides or may be found.").

AutoZone resides in the Western District of Tennessee for purposes of venue because it is subject to personal jurisdiction in that district. 28 U.S.C. § 1391(c) ("For purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced."). Venue is therefore proper in the Western District of Tennessee, meaning that this suit may be properly transferred there.

2. Transfer of Venue to the Western District of Tennessee Will Serve the Convenience of the Parties and Witnesses and the Interests of Justice.

The following factors should be considered in evaluating a transfer motion: (1) the convenience of the parties, (2) the convenience of the witnesses, and (3) the interests of justice. Miracle Blade, 207 F. Supp. 2d at 1155-56 (citing Los Angeles Mem'l Coliseum Comm'n v. Nat'l Football League, 89 F.R.D. 497, 499 (C.D. Cal. 1981)). These criteria involve the following straightforward relevant considerations: convenience of the witnesses, convenience of the parties, relative ease of access to proof, judicial economy, and availability of compulsory process." Miracle Blade, 207 F. Supp. 2d at 1156. Based on these criteria, this case should be transferred to the Western District of Tennessee.

a. Convenience of the Witnesses and Parties.

The convenience of the witnesses and parties weighs heavily in favor of transfer. As set forth above, virtually all of the individuals with relevant knowledge of AutoZone's adoption and use of Linux, including all of AutoZone's information technology staff, are located in Memphis, Tennessee. Bascom Decl. ¶ 4. As such, it would be burdensome for these witnesses to travel to Nevada for trial of this case. Id. There are likely no AutoZone witnesses with relevant knowledge located in Nevada. Id. Moreover, there are likely no SCO witnesses with relevant knowledge located in Nevada because SCO's United States offices are located in Utah, California, and New Jersey. This factor therefore weighs heavily in favor of transfer.

b. Access to Proof.

The access to proof factor also weighs heavily in favor of transfer. Almost all of the relevant documents related to AutoZone's adoption and use of Linux are located in Memphis. Id. ¶ 5. By contrast, there are likely few, if any, relevant AutoZone documents located in Nevada. Id. Based upon the facts as AutoZone knows them, it is highly unlikely that any relevant SCO documents are located in Nevada because SCO has no offices in the state. This factor therefore favors transfer.

c. Judicial Economy and Interests of Justice.

"In its determination of whether to transfer a case pursuant to 28 U.S.C. § 1404(a), a district court may consider which forum will provide a 'speedier trial.'" Miracle Blade, 207 F. Supp. 2d at 1157. This Court recognized in Miracle Blade that the location of documents in the proposed transferee district "would make trial of this case easier, more expeditious, and less expensive." Id. Transfer to Memphis would thus make trial of this case easier, more expeditious, and less expensive.

The Western District of Tennessee also had approximately 20% fewer pending cases per judge than the District of Nevada for the twelve month period ending September 30, 2003 (361 cases per judge versus 439 cases per judge). U.S. District Court - Judicial Caseload Profile at http://www.uscourts.gov/cgi-bin/cmsd2003.pl (attached hereto as Ex. B). Cases also proceeded to trial in the Western District of Tennessee approximately 45% faster than cases pending in the District of Nevada during this same time period (18 months from filing versus 32 months). Id. Accordingly, the interests ofjustice would be served by the transfer of this case to the Western District of Tennessee because that forum could provide the parties with a "speedier trial."

Finally. Tennessee has at least as strong, if not stronger, interest than Nevada in "protecting the interests of persons and businesses that reside and conduct business" in Tennessee, such as AutoZone. Miracle Blade, 207 F. Supp. 2d at 1157. Nevada's only connection to this case is based on AutoZone's incorporation in Nevada. Therefore, the interests of the relevant forums strongly favor transfer to the Western District of Tennessee.

B. The Substantial Contacts with the Western District of Tennessee and the Lack of Relationship with the District of Nevada Weigh in Favor of Transfer of this Action Despite Plaintiff's Choice of Forum.

A district court should "balance the preference accorded plaintiff's choice of forum with the burden of litigating in an inconvenient forum." Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986). However, a plaintiffs choice of forum is less significant if the plaintiff does not reside in the chosen forum.

A plaintiff's choice of forum is normally only given substantial deference if the plaintiff is a resident of the district in which the action is brought. Otherwise, this bears little significance on determining whether to grant a discretionary transfer.

Miracle Blade, 207 F. Supp. 2d at 1 155

Similarly, a plaintiff's choice of forum is less significant when the factual allegations in dispute have no relationship to the forum.

In judging the weight to be accorded [plaintiff's] choice of forum, consideration must be given to the extent of both [plaintiff's] and [defendant's] contacts with the forum, including those relating to [plaintiff's] cause of action. If the operative facts have not occurred within the forum and the forum has no interest in the parties or subject matter, [plaintiff's] choice is entitled to only minimal consideration.

Lou v. Belzberg, 834 F.2d 730, 739 (9th Cir. 1987) (internal citations omitted); see also Paul v. Lands' End, Inc., 742 F. Supp. 512, 514-15 (N.D. III. 1990) ("The plaintiffs choice of forum is given less deference when, as in this case, there is relatively little connection between the forum and the plaintiffs cause of action.").

In the present case, SCO's choice of forum should be afforded "little significance" and given only "minimal consideration" because SCO does not reside in Nevada and this case has only nominal relationship to Nevada. Miracle Blade, 207 F. Supp. 2d at 1155; Lou, 834 F.2d at 739. The Court should therefore give little deference to SCO's choice of forum in this case.

CONCLUSION

All of the relevant factors strongly favor transfer of this case to the Western District of Tennessee. AutoZone therefore respectfully requests that this Motion be granted.

This 23rd day of April, 2004.

SCHRECK BRIGNONE

By: [signature]
James J. Pisanelli Esq., #4027
Nikki L. Wilmer, Esq., #6562
[address]

and

Michael P. Kenny, Esq.
James A. Harvey, Esq.
David J. Stewart, Esq.
Christopher A. Riley, Esq.
Douglas L. Bridges, Esq.
ALSTON & BIRD LLP
[address]

Attorneys for Defendant AutoZone, Inc.

1. Additional detail regarding the UNIX and Linux operating systems, SCO's claimed copyrights in UNIX, and AutoZone's use of Linux are set forth in AutoZone's Memorandum of Law in Support of Its Motion to Stay or, in the Alternative, for a More Definite Statement, filed concurrently herewith.