So much happening at once! Today was the day for SCO to file its response to Novell's request for a rehearing en banc in the appeal, and here it is:
10/01/2009 - Open Document - [9698273] Response filed by SCO Group to Appellee Novell, Inc.'s Petition for Rehearing and Rehearing En Banc. Served on 10/01/2009. Manner of Service: email, clerk.
Note the header: "By and through Edward N. Cahn as Chapter 11 Trustee." I'm really surprised he'd let his name be put on this document. SCO is continuing to argue that it got UNIX lock, stock and barrel. But we know that they never got the patents, or all the trademarks.
Here's the argument:
The APA conveys "all rights and ownership" in the list of UNIX
software programs identified on the attached Schedule 1.1(a). When a
party acquires "all rights and ownership" in a set of works, courts
have repeatedly found such language to satisfy Section 204(a),
particularly where the asset is computer software.
If you know patents are excluded, then in this instance I think it has to mean something else. Duh. Here is the APA [PDF], and the schedule SCO references begins on page 58, if you'd like to focus in. Schedule 1.1(a) is indeed a list of UNIX software, and the header for that Schedule is "Assets". However, please turn to page 62, the very next schedule, 1.1(b), and it is called "Excluded Assets", and lo and behold, it clearly excludes, on page 63, "A. All copyrights and trademarks except for the trademarks UNIX and UnixWare" and "B. All Patents." See what I mean? It kind of turns my stomach.
*****************************
No. 08-4217
IN THE UNITED STATES COURT OF APPEALS
FOR THE TENTH CIRCUIT
THE SCO GROUP, INC.,
by and through Edward N. Cahn as Chapter 11 Trustee,
Plaintiff-Appellant,
v.
NOVELL, INC.,
Defendant-Appellee.
____________________________
On Appeal from the United States District Court for the District of Utah
Hon. Dale A. Kimball, Presiding
No. 2:04-CV-00139-DAK
_______________________________
RESPONSE OF APPELLANT, THE SCO GROUP, INC.,
TO PETITION FOR REHEARING AND REHEARING
EN BANC OF APPELLEE, NOVELL, INC.
David Boies Brent O. Hatch (5715)
Robert Silver HATCH, JAMES & DODGE,
Edward Normand
BOIES, SCHILLER & FLEXNER LLP
[address, phone]
Brent O. Hatch (5715)
HATCH, JAMES & DODGE, PC
[address, phone]
Stuart Singer
BOIES, SCHILLER & FLEXNER LLP
[address, phone]
Devan V. Padmanabhan
DORSEY & WHITNEY LLP
[address, phone]
APPELLANT'S AMENDED CORPORATE DISCLOSURE STATEMENT
On August 25, 2009, the United States Bankruptcy Court for the District of
Delaware appointed Edward N. Cahn, of the law firm of Blank Rome LLP, as
Chapter 11 Trustee for Debtor The SCO Group, Inc. ("SCO"). Pursuant to Federal
Rule of Bankruptcy Procedure 2012(a), upon his appointment, the Trustee was
automatically substituted for the debtor-in-possession as the party-in-interest in this
matter. SCO is not owned by a parent corporation. No publicly held corporation
owns 10% or more of SCO's stock.
i
TABLE OF CONTENTS
TABLE OF AUTHORITIES ..................................................................... iii
INTRODUCTION ..........................................................................1
BACKGROUND ............................................................................2
LEGAL STANDARD.....................................................................5
ARGUMENT ...................................................................................5
I. THE PANEL'S DECISION DOES NOT INVOLVE A QUESTION OF
EXCEPTIONAL IMPORTANCE, WHERE IT DOES NOT CHANGE
EXISTING COPYRIGHT LAW AND IS NOT IN CONFLICT WITH
ANY DECISION OF ANY COURT OF APPEALS......................................5
A. The Panel's Decision Applies Existing Copyright Law to the
Unique Structure of the Amended APA...............................................5
B. The Panel's Decision Is Consistent with the
Well-Established Precedent in This Court. ..........................................8
C. The Panel's Decision Is Not in Conflict with
Any Decision of Any Court of Appeals. ..............................................9
II. THE PANEL'S DECISION DOES NOT UNDERMINE
THE POLICY OF THE COPYRIGHT ACT. ...............................................13
III. THE PANEL'S DECISION PROPERLY REJECTS NOVELL'S
RELIANCE ON THE BILL OF SALE.........................................................14
CONCLUSION............................................................15
ii
TABLE OF AUTHORITIES
Cases
Am. Plastic Equip., Inc. v. Toytrackerz, LLC,
Civil Action No. 07-2253-DJW, 2009 U.S. Dist. LEXIS 27787
(D. Kan. Mar. 31, 2009) ........................................................................12
Chugrue v. Cont'l Airlines, Inc.,
977 F. Supp. 280 (S.D.N.Y. 1997) ..................................................................6
Dick Corp. v. SNC-Lavalin Constructors, Inc.,
No. 04 C 1043, 2004 WL 2967556 (N.D. Ill. Nov. 24, 2004) ........................9
Foraste v. Brown Univ.,
290 F. Supp. 2d 234 (D.R.I. 2003) ................................................................12
ITOFCA, Inc. v. MegaTrans Logistics, Inc.,
322 F.3d 928 (7th Cir. 2003) ...........................................................................6
Konigsberg Int'l, Inc. v. Rice,
16 F.3d 355 (9th Cir. 1994) ...........................................................................11
La Resolana Architects, PA v. Clay Realtors Angel Fire,
416 F.3d 1195 (10th Cir. 2005) .......................................................................8
Liu v. Price Waterhouse,
302 F.3d 749 (7th Cir. 2002) ...........................................................................9
Lyrick Studios, Inc. v. Big Ideas Prods., Inc.,
420 F.3d 388 (5th Cir. 2005) .........................................................................11
Morgan v. Hawthorne Homes, Inc.,
2009 U.S. Dist. LEXIS 31456 (W.D. Pa. Apr. 14, 2009) .............................11
Pamfiloff v. Giant Records, Inc.,
794 F. Supp. 933 (N.D. Cal. 1992)......................................................... 11, 12
iii
Radio Television Espanola S.A. v. New World Entm't, Ltd.,
183 F.3d 922 (9th Cir. 1999) .........................................................................11
Relational Design & Tech., Inc. v. Brock,
No. 91-2452-EEO, 1993 WL 191323 (D. Kan. May 25, 1993)......................6
Rico Records Distribs., Inc. v. Ithier,
No. 04 Civ. 9782 (JSR), 2006 WL 846488 (S.D.N.Y. Mar. 30, 2006)...........9
Schiller v. Schmidt, Inc.,
969 F.2d 410 (7th Cir. 1992) ...........................................................................9
SCO Group, Inc. v. Novell, Inc.,
No. 08-4217, 2009 WL 2581735 (10th Cir. Aug. 24, 2009)................ passim
Spectrum Creations, L.P. v. Carolyn Kinder Int'l, LLC,
No. SA-05-CV-750-XR, 2008 WL 416264 (W.D. Tex. Feb. 13, 2008).........9
Statutes and Rules
Fed. R. App. P. 35(a) ...........................................................................5
Fed. R. App. P. 40(a) ...........................................................................5
Tenth Cir. R. App. P. 35.1(A).....................................................................5
iv
INTRODUCTION
Novell's arguments regarding the Panel's decision of August 24, 2009, do
not remotely satisfy the standards for rehearing or rehearing en banc. Novell
concedes that the Panel's decision does not conflict with any decision of this Court
or the Supreme Court, and the decision does not involve a question of exceptional
importance, where it does not change existing copyright law and does not conflict
with any decision of any other Court of Appeals.
What the Panel decision does is modest: it holds that in the sale of the
UNIX business from Novell to SCO's predecessor-in-interest, the amended Asset
Purchase Agreement ("APA") did not as a matter of law exclude the transfer of
UNIX copyrights; a trial was required on those issues; and the entry of summary
judgment was improper. In the course of that decision, the Panel correctly held the
amended APA satisfied the requirements of Section 204(a) of the Copyright Act
because the amended APA is a written instrument transferring copyrights.
The amended APA identified the assets sold as "all rights and ownership of
UNIX, UnixWare and Auxiliary Products," including but not limited to programs
listed in detail in Schedule 1.1(a) of the Agreement. While the original APA
excluded "all copyrights and trademarks" from the sale, Amendment No. 2
removed that exclusion so that the copyrights required for SCO "to exercise its
rights with respect to the acquisition of UNIX and UnixWare technologies" were
not excluded. This Amendment thus brought the APA into conformity with the
intent of the parties as reflected in testimony from both Novell and Santa Cruz
executives that the copyrights were intended to transfer. The Panel's decision
that a new Bill of Sale was not required to accompany this Amendment so as to
comply with Section 204(a) is perfectly sensible, and does not conflict with any
authority.
The courts applying Section 204(a) have repeatedly considered extrinsic
evidence to determine the parties' intent which the leading authorities on
copyright law agree is the paramount goal in interpreting the transfer document.
Novell cannot cite a single case holding either that a court should disregard
extrinsic evidence of the parties' intent in determining whether a writing satisfies
Section 204(a) or that an agreement specifically identifying copyrights (like the
amended APA) cannot satisfy Section 204(a). Instead, Novell proposes a standard
under which a reasonable dispute between parties regarding their intent to transfer
particular copyrights could not be resolved like any other contract dispute. As the
Panel concluded, neither the language nor the legislative history of Section 204(a)
supports "such an onerous restraint on the alienability of copyrights."
BACKGROUND
This litigation arose from the well-publicized statements Novell made in
2003 claiming ownership of the copyrights to the UNIX operating system that it
2
had sold to SCO's predecessor-in-interest under the APA more than seven years
earlier. In March 2003, SCO brought a lawsuit in the district court alleging that
IBM, a UNIX licensee, had breached SCO's contract and intellectual property
rights by contributing UNIX-derived source code to Linux in a strategic effort to
transform Linux from an upstart program into a UNIX competitor. By this time,
Novell had itself made a strategic shift to Linux and would shortly, with a $50
million investment by IBM, purchase global Linux distributor SuSE Linux. On
May 28, 2003, Novell publicly claimed that it had the right under the APA to
waive SCO's claims against IBM, and that Novell and not SCO owned the
UNIX copyrights because the APA had failed to transfer them. Yet a few days
later, immediately after SCO had located and sent Novell a copy of Amendment
No. 2, Novell publicly admitted that "the amendment appears to support SCO's
claims that ownership of certain copyrights for UNIX did transfer to SCO in
1996." Novell later retracted its retraction and continued to assert ownership of the
UNIX copyrights.
Before the district court and on appeal, SCO presented overwhelming
evidence that the parties intended to transfer ownership of the UNIX copyrights
under the APA. Such evidence included the unequivocal testimony of ten
witnesses from both sides of the transaction who negotiated the deal, including
Novell's own President, chief negotiator, and officers overseeing the transaction.
3
The evidence also included Novell's transfer of UNIX copyright registrations to
SCO and Novell's contemporaneous admissions that its engineers had modified the
copyright notices on existing UNIX code to reflect the change in ownership from
Novell to SCO. Shortly after the transaction closed, Novell executives also sent
many letters to Novell's key customers explaining that "Novell transferred to The
Santa Cruz Operations, Inc., ('SCO') its existing ownership interest in UNIX
System-based offerings and related products as listed in Attachment A."
(Emphasis added.) The products listed on Attachment A included "All Releases of
UNIX System V and prior Releases of the UNIX system" language that covers
the listing of assets in Schedule 1.1(a) of the APA.
The Panel correctly ruled that the district court had erred (among other
ways) in ruling as a matter of law that Novell had retained the copyrights and
rights to waive SCO's claims against IBM and others. As to copyright ownership,
the Panel rejected Novell's position that the APA and Amendment No. 2 must be
read separately, and concluded that the amended APA plainly transferred copyright
ownership under contract and copyright law. In its petition, Novell does not
challenge any of the Panel's rulings, except its conclusion that the APA satisfies
the writing requirements of the Copyright Act, and that a second bill of sale after
Amendment No. 2 was not required to effectuate the transfer.
4
LEGAL STANDARD
The general rule is that an "en banc hearing or rehearing is not favored and
ordinarily will not be ordered." Fed. R. App. P. 35(a); see also Tenth Cir. R. App.
P. 35.1(A) ("En banc review is an extraordinary procedure" that is "disfavored").
The exceptions are when such consideration is "necessary to secure or maintain
uniformity of the court's decisions," or "the proceeding involves a question of
exceptional importance." Id. Novell argues for rehearing en banc under only the
second exception, conceding that the Panel's decision does not conflict with any
decision of the Supreme Court or of this Court.1
ARGUMENT
I. THE PANEL'S DECISION DOES NOT INVOLVE A QUESTION OF
EXCEPTIONAL IMPORTANCE, WHERE IT DOES NOT CHANGE
EXISTING COPYRIGHT LAW AND IS NOT IN CONFLICT WITH
ANY DECISION OF ANY COURT OF APPEALS.
A. The Panel's Decision Applies Existing Copyright Law to the
Unique Structure of the Amended APA.
Section 204(a) of the Copyright Act requires that a "transfer of copyright
ownership" include "an instrument of conveyance, or a note or memorandum of
the transfer." Considering that language, as the Panel observes, the cases applying
5
Section 204(a) ask whether the writing at issue evidences the parties' intent to
engage in a transfer of "copyright ownership" as opposed to other categories of
ownership rights. SCO Group, Inc. v. Novell, Inc., No. 08-4217, 2009 WL
2581735, at *9-10 (10th Cir. Aug. 24, 2009).
The amended APA, as the Panel explains in detail, id. at *6-11, meets the
foregoing standard. Without revisiting the full breadth of the Panel's reasoning,
the Panel's decision makes the following critical points:
- The APA conveys "all rights and ownership" in the list of UNIX
software programs identified on the attached Schedule 1.1(a). When a
party acquires "all rights and ownership" in a set of works, courts
have repeatedly found such language to satisfy Section 204(a),
particularly where the asset is computer software.2
- While the original APA excluded "all copyrights" from transfer,
Amendment No. 2 expressly clarified the parties' intent by narrowing
the exclusion only to those copyrights not required for SCO to
6
exercise its rights with respect to the acquisition of UNIX and
UnixWare technologies.
- Because the amended APA specifically excised the "all copyrights"
language from the Excluded Assets in Schedule 1.1(b), the amended
APA clearly is an instrument of the conveyance of copyrights
identified among the Assets in Schedule 1.1(a) and not excluded by
Schedule 1.1(b). As the Panel explained, to hold otherwise would
mean that the amendment was a nullity. SCO, 2009 WL 2581735, at
*14-15.
- Novell's argument that a second bill of sale must accompany
Amendment No. 2 is misplaced for two independent reasons: (1) it is
not necessary for the Bill of Sale to have been executed at the same
time as Amendment No. 2, and (2) Section 204(a) requires only a
"note or memorandum of transfer," and thus Amendment No. 2 (and
the amended APA) satisfy that requirement by "evincing a clear intent
to revise or clarify the formal schedule of copyrights transferred by
Novell to Santa Cruz."
The Panel's decision and reasoning thus break no new ground in the
interpretation and application of Section 204(a), but rather turn on the Panel's
7
detailed assessment of the particular provisions of the APA and Amendment No. 2
consistent with the statute and relevant precedent.
B. The Panel's Decision Is Consistent with the
Well-Established Precedent in This Court.
The Panel's decision and reasoning is entirely consistent with the rules of
statutory interpretation that the Supreme Court and this Court have established and
follow. Under these rules, the analysis of Section 204(a) must "start with the
language of the statute." La Resolana Architects, PA v. Clay Realtors Angel Fire,
416 F.3d 1195, 1200 (10th Cir. 2005). As the Panel observes, Section 204(a) does
not impose any heightened burden of clarity or particularity. SCO, 2009 WL
2581735, at *8-9.
No case has interpreted Section 204(a) to mean that the scope of assets
properly transferred under a sufficient writing cannot be determined by recourse to
extrinsic evidence that an entire category of otherwise admissible evidence of the
parties' intent should be deemed irrelevant and excluded if the writing contains an
ambiguity on the scope of copyrights transferred. Nothing in the language of
Section 204(a) or even its legislative history suggests that Congress intended to
revise the rules of contract interpretation in such blunderbuss fashion. Novell thus
proposes a new rule that no court has previously followed, that would conflict with
the well-established precedent interpreting Section 204(a), and that would subvert
longstanding rules of statutory interpretation.
8
C. The Panel's Decision Is Not in Conflict with
Any Decision of Any Court of Appeals.
The Panel's decision not only is entirely consistent with this Court's
precedent, but also is not in conflict with any decision of any Court of Appeals.
Novell acknowledges that courts that have specifically addressed the issue in
contrast to the cases Novell cites have considered extrinsic evidence of the
parties' intent in applying Section 204(a).3 These cases have not found such
consideration to undermine the purposes of the Copyright Act. SCO cited several
such opinions, and Novell makes no effort to distinguish or even address those
cases in its petition.
Novell fails to cite (and SCO has not found) any decision from any other
federal court in conflict with the Panel's decision:
- No decision holds that a writing that specifically references
copyrights, much less a writing that specifically identifies them,
cannot satisfy Section 204(a).
9
- No decision holds that a court cannot consider extrinsic evidence of
the parties' intent in determining whether the writing at issue satisfies
Section 204(a).
- No decision holds that extrinsic evidence is admissible to determine
only whether a party has transferred all its copyrights, but is not
admissible to determine whether the parties intended to transfer only a
subset of such copyrights.
As the Panel decided: "Where ambiguity persists in the language of a parties'
shared agreement concerning a copyright transfer, the transfer is not invalidated;
instead, we look to parol evidence to construe the terms of the agreement." SCO,
2009 WL 2581735, at *9.
Instead, the cases Novell cites address particular circumstances involving a
combination of elements not at issue here namely, scenarios in which there is no
signed writing at all, or in which the writing at issue says nothing about copyrights
and the parties do not attempt to cite any extrinsic evidence of the parties' intent
outside of the writing or writings at issue. As the Panel observed:
the majority of cases that Novell draws our attention to,
in which alleged copyright transfers are found not to
satisfy Section 204, involve transactions where it is not
clear whether the parties intended that copyrights would
transfer at all not disputes over which specific
copyrights were within the scope of an intended transfer.
10
Id. In fact, several of the cases Novell cites set forth standards that directly support
the Panel's decision.4 Even the principal cases on which Novell relies do not, on
close inspection, support Novell's position.5
11
None of Novell's cases addresses a detailed written agreement that
transfers all ownership rights; identifies the copyrights at issue in the written
document itself; contains numerous material terms setting forth the types of rights
that copyrights comprise; and therefore reflects, on its face, the parties'
12
negotiations and bargaining over the subject of copyrights. Just as importantly,
none of the decisions holds that the court cannot consider extrinsic evidence in
assessing whether the writing at issue satisfies Section 204(a), and several of those
decisions in fact do consider whether such evidence exists in their analyses. The
precedent is not at all inconsistent with the Panel's core reasoning that where a
detailed contract clearly contemplates the transfer of a discrete set of copyrights, a
jury is entitled to consider the extrinsic evidence of the parties' intent to transfer
some or all of the copyrights.
II. THE PANEL'S DECISION DOES NOT UNDERMINE
THE POLICY OF THE COPYRIGHT ACT.
Novell argues that the decision conflicts with the policy of Section 204(a).
Novell's argument fails for several reasons.
First, the plain language and legislative history of Section 204(a) no more
require that the instrument meet some heightened standard of specificity in
referring to "copyrights" than they require that the parties use the word
"copyrights" in the first place that is, there is no such requirement at all.
Second, as the Panel's decision points out, ambiguities in instruments of
transfer obviously are common: Written memorializations of copyright ownership,
like written memorializations of all manner of private agreements, inevitably are
subject to more than one interpretation. SCO, 2009 WL 2581735, at *8-9. Yet
Novell proposes a standard under which a reasonable dispute between parties
13
regarding their intent to transfer particular copyrights or even, as the Panel points
out, a dispute that one party in effect manufactures by pointing out any ambiguity
in the writing at issue could not be resolved like any other contract dispute, but
instead would result in invalidating the transfer altogether. Id. at *9. Neither the
language nor the legislative history of Section 204(a), as the Panel correctly
reasoned, supports "such an onerous restraint on the alienability of copyrights." Id.
Third, it is Novell's position that would undermine the purposes of the
Copyright Act. If a detailed Asset Purchase Agreement, memorializing the sale of
a software business, is not a sufficient writing to convey copyrights, there would be
greater uncertainty as to how far parties must go to comply with Section 204(a).
Where the parties to an agreement indisputably intended to transfer copyrights as
part of numerous other ownership rights, and where all of the copyrights at issue
are identified in the agreement, the policy and goals of Section 204(a) are fully
satisfied. Ordering a trial on these issues of intent hardly creates an issue of
"exceptional importance."
III. THE PANEL'S DECISION PROPERLY REJECTS NOVELL'S
RELIANCE ON THE BILL OF SALE.
As the Panel determined, Novell's argument that the parties needed to
execute a second bill of sale in connection with Amendment No. 2 misapprehends
both the facts of the transaction and the requirements of Section 204(a) for two
reasons. First, by its own terms, Amendment No. 2 amends the schedules of assets
14
being transferred to Santa Cruz, and there is no requirement that another bill of sale
needed to have been executed at the same time as the amendment.
Second, the Panel correctly found that even if there had been no bill of sale,
Section 204(a) requires only a "note or memorandum of transfer" a standard that
Amendment No. 2 itself (and the amended APA) easily satisfies by "evincing a
clear intent to revise or clarify the formal schedule of copyrights transferred by
Novell to Santa Cruz."6 Id. This unremarkable holding does not approach the
standards for rehearing or rehearing en banc.
CONCLUSION
SCO respectfully submits, for the foregoing reasons, that the Court deny
Novell's motion for rehearing and rehearing en banc.
15
Respectfully submitted on this 1st day of October, 2009.
/s/ Edward Normand
David Boies
Robert Silver
Edward Normand
BOIES, SCHILLER & FLEXNER LLP
[address, phone]
Stuart Singer
BOIES, SCHILLER & FLEXNER LLP
[address, phone]
Brent O. Hatch (5715)
HATCH, JAMES & DODGE,PC
[address, phone]
Devan V. Padmanabhan
DORSEY & WHITNEY LLP
Attorneys for Plaintiff-Appellant, The SCO Group, Inc., by and through Edward N.
Cahn as Chapter 11 Trustee
16
CERTIFICATE OF SERVICE
I, Edward Normand, hereby certify that on this 1st day of October, 2009, a
true and correct copy of the foregoing RESPONSE OF APPELLANT, THE
SCO GROUP, INC., TO PETITION FOR REHEARING AND REHEARING
EN BANC OF APPELLEE, NOVELL, INC. was filed with the court and served
via electronic mail to the following recipients:
Thomas R. Karrenberg
Heather M. Sneddon
ANDERSON & KARRENBERG
[address]
Michael A. Jacobs
George C. Harris
David E. Melaugh
MORRISON & FOERSTER
[address]
Counsel for Defendant-Appellee Novell, Inc.
/s/Edward Normand
Edward Normand
Boies, Schiller & Flexner LLP
[address, phone, fax, email]
17
CERTIFICATE OF DIGITAL SUBMISSION
The undersigned certifies with respect to this filing that no privacy
redactions were necessary. This RESPONSE OF APPELLANT, THE SCO
GROUP, INC., IN OPPOSITION TO PETITION FOR REHEARING AND
REHEARING EN BANC OF APPELLEE, NOVELL, INC. submitted in
digital form is an exact copy of the written document filed with the Clerk. The
digital submission has been scanned for viruses with the most recent version of a
commercial virus scanning program (using Symantec Antivirus which is updated
weekly) and, according to the program, is free of viruses.
Dated: October 1, 2009
/s/ Edward Normand
Edward Normand
Boies, Schiller & Flexner LLP
[address, phone, fax, email]
1
Although Novell styles its motion as one for rehearing or rehearing en banc,
Novell asserts no grounds for rehearing by the Panel, and indeed makes no
argument for such rehearing. Novell does not identify any issue as to which the
Panel "overlooked or misapprehended" the facts or any controlling law. Fed. R.
App. P. 40(a).
2
See ITOFCA, Inc. v. MegaTrans Logistics, Inc., 322 F.3d 928, 931 (7th Cir.
2003) (written intent to transfer "all assets" can indicate intent to transfer
copyrights); Chugrue v. Cont'l Airlines, Inc., 977 F. Supp. 280, 284-85 (S.D.N.Y.
1997) (written agreement to transfer "all right, title and interest" in software
indicated intent to transfer copyrights); Relational Design & Tech., Inc. v. Brock,
No. 91-2452-EEO, 1993 WL 191323 at *6 (D. Kan. May 25, 1993) (transfer of "all
rights" in software program included copyright).
3
See, e.g., Liu v. Price Waterhouse, 302 F.3d 749, 755 (7th Cir. 2002);
Schiller v. Schmidt, Inc., 969 F.2d 410, 413 (7th Cir. 1992); Spectrum Creations,
L.P. v. Carolyn Kinder Int'l, LLC, No. SA-05-CV-750-XR, 2008 WL 416264, at
*85 (W.D. Tex. Feb. 13, 2008); Rico Records Distribs., Inc. v. Ithier, No. 04 Civ.
9782 (JSR), 2006 WL 846488, at *1 (S.D.N.Y. Mar. 30, 2006); Dick Corp. v.
SNC-Lavalin Constructors, Inc., No. 04 C 1043, 2004 WL 2967556, at *5 n.5
(N.D. Ill. Nov. 24, 2004).
4
In Radio Television Espanola S.A. v. New World Entm't, Ltd., 183 F.3d 922
(9th Cir. 1999), for example, the court expressly contemplates that where the
"facts" surrounding the negotiation of the document at issue are "compelling," the
writing at issue need not be clear on its face. Id. at 928. Similarly, in Morgan v.
Hawthorne Homes, Inc., Civil Action No. 04-1809, 2009 U.S. Dist. LEXIS 31456
(W.D. Pa. Apr. 14, 2009), the court acknowledges with approval: "When
interpreting facially ambiguous documents, some courts have looked to the
surrounding circumstances to clarify the intent of the parties." Id. at *47-48.
5
In Lyrick Studios, Inc. v. Big Ideas Prods., Inc., 420 F.3d 388 (5th Cir.
2005), the court did not even consider whether there was sufficient reference to
"copyrights" in the writings at issue to satisfy Section 204(a), because the plaintiff
in that case contended that it had received copyright ownership only through the
grant of an exclusive license. Id. at 391. The court thus did not determine whether
a signed agreement transferring assets referred to copyrights with "reasonable
certainty," but rather concluded only that the parties had never entered into an
exclusive license, where they had never entered into any contract in the first place.
Id. at 393-96.
Konigsberg Int'l, Inc. v. Rice, 16 F.3d 355 (9th Cir. 1994), is also easily
distinguished. There, the court addressed whether a letter sent over three years
after the parties entered into an oral agreement satisfied Section 204(a). The court
held that it did not suffice because (a) "it was not substantially contemporaneous
with the oral agreement"; (b) it was not "a product of the parties' negotiations"; (c)
it was written "a year and a half after the alleged term [of the agreement] would
have expired"; and (d) it was written "6 months into a contentious lawsuit." Id. at
357. In short, the letter "came far too late to provide any reference point for the
parties' license disputes." Id.
In Pamfiloff v. Giant Records, Inc., 794 F. Supp. 933 (N.D. Cal. 1992), as in
Konigsberg, the court addressed whether certain documents created after the
parties entered into the alleged oral agreement satisfied Section 204(a), with
respect to certain publishing rights claimed by the plaintiff. The first document at issue was a recording agreement that "makes no mention of any transfer of
ownership rights," or even publishing rights; the second document "was never
signed by any party and contains no date," and also made no reference to
publishing rights. Id. at 935-36. Neither document made any reference to the
"rights to reproduce, perform, distribute, market, promote, or otherwise exploit the
compositions" that publishing rights comprise. Id. at 936.
Foraste v. Brown Univ., 290 F. Supp. 2d 234 (D.R.I. 2003), concerned
whether certain Brown University's "Policies and Procedures Relating to
Copyright" satisfied Section 204(a) with respect to certain photographs that
plaintiff took while employed by Brown. The court said no, reasoning that the
policies and procedures contained "no material terms specific to the contested
photographs," and emphasized that the plaintiff "himself acknowledges that he did
not even contemplate ownership of the photographs" until well after Brown
adopted the policies and procedures, that "there is no evidence of a negotiation or
'meeting of the minds'" between the parties "regarding the contested
photographs," and that there "is no indication" that the plaintiff "ever bargained for
the copyrights he now seeks." Id. at 239-40. In addition, the court in Foraste
specifically considered whether there was extrinsic evidence of the adoption of the
policies and procedures, the parties' interpretation of them, and the parties'
performance thereunder.
In Am. Plastic Equip., Inc. v. Toytrackerz, LLC, Civil Action No. 07-2253-DJW, 2009 U.S. Dist. LEXIS 27787 (D. Kan. Mar. 31, 2009), the court held that
plaintiff failed to demonstrate chain of title between itself and Marx Toys, Inc.,
where there was "no written document memorializing that assignment in the
record," but rather only a declaration from an officer of Marx Toys that he had
assigned copyrights to plaintiffs in his official capacity. Id. at *18. In short, there
was no written agreement before the court at all; it decided only that a unilateral
declaration of the officer of a company cannot itself satisfy Section 204(a).
6
The Panel correctly rejected Novell and the District Court's position that the
reference in Amendment 2 to having been executed as of a given date meant that
the Amendment did not have retroactive effect. Clearly, an amendment to the
schedules of assets being sold is intended to relate to the transfer of those assets at
the closing and under the Bill of Sale. The reference in Amendment 2 to transfer
of copyrights owned by Novell "as of the date of the Agreement," i.e, the APA,
confirms that.
18
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