This is a document filed in opposition to the 1993 UNIX Systems Laboratories suit against BSDI. It quotes the phrase “mentally contaminated” from a previous USL deposition (not made public), and points out the ethical problem with (1) encouraging students to look at the UNIX source code to learn about operating systems (at Cal, you just had to ask Bob Henry for an account on miro) and then (2) later insisting that anybody who had ever done so could not work on any other operating system without a UNIX source license.
(I obtained this from http://ftp.cdrom.com/pub/obi/BSDI/930108.oppose; the OCR errors are in the original. Dennis Ritchie archived more of these documents, if you’re interested.)
JAMES H. FORTE (2248) SAIBER SCHLESINGER SATZ & GOLDSTEIN 1 Gateway Center Newark, New Jersey 07102-5311 (201) 622-3333 HELLER, EHRMAN, WHITE & McAULIFFE 525 University Avenue, 9th Floor Palo Alto, California 94301 Telephone: (415) 326-7600 Attorneys for Defendant Berkeley Software Design, Inc. UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY UNIX SYSTEM LABORATORIES, INC., Plaintiff, v. BERKELEY SOFTWARE DESIGN, INC., Defendant. Hon. Dickinson R. Debevoise Civil Action No. 92-1667 (DRD) Defendant Berkeley Software Design's Opposition To USL's Motion For Preliminary Injunction TABLE OF CONTENTS INTRODUCTION ........... FACTUAL BACKGROUND ..................... ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . 14 I. USL HAS NOT MET ITS HEAVY BURDEN OF ESTABLISHING ENTITLEMENT TO A PRELIMINARY INJUNCTION , . . . . . . . 4 II. USL IS NOT LIKELY TO SUCCEED ON ITS COPYRIGHT INFRINGEMENT CLAIM . . . . . . . . . . . . . . . . . . 16 A. USL Has No Valid Copyright in the 32V code . . . lo 1. The Limited Publication Doctrine is Inapplicable 2. The Header Files Which USL Claims Have Been Infringed Have Been Included in Binary Distributions Made By USL Licensees With No Copyright Notice . . . . . . . . , . . . 26 B. THE SIMILARITIES RELIED UPON BY USL WOULD NOT ESTABLISH COPYRIGHT INFRINGEMENT EVEN IF THE 32V CODE WERE COPYRIGHTED............... 1. The Features Relied Upon By USL's Experts Are Not Protectible 2. The Similarities Relied Upon By USL's Expert Are Neither Quantitatively Nor Qualitatively Substantial 3. USL Could Not Enforce A 32V Copyright Against The University Or BSDI Because Of The Lack Of Copyright Notice . . . . . . 3 7 III. USL CANNOT DEMONSTRATE A LIKELIHOOD OF SUCCESS ON ITS TRADE SECRET CLAIM A. To Prevail On Its Trade Secret Claim, USL Must Demonstrate That BSD/386 Contains USL Trade Secrets 1. The License Agreements Authorize Use Of The UNIX 32V Code To Create Modifications, Enhancements and Derivative Works 2. The License Agreements Permit Derivative Works Not Containing USL Trade Secrets To Be Made Available to Non-Licensees 3. The Duty of Confidentiality Does Not Apply To Information That Is Or Becomes Generally Known . . 1l 9 B . USL Cannot Demonstrate That Net2 or BSD/386 Contain Any USL Trade Secrets IV. USL CANNOT SHOW IRREPARABLE HARM V. THE PUBLIC INTEREST FAVORS DENIAL OF THE PRELIMINARY INJUNCTION VI. EVEN IF USL COULD ESTABLISH THAT NET2 CONTAINED SOME USL PROPRIETARY INFORMATION, THE INJUNCTION IT SEEKS IS OVERLY BROAD A. An Injunction Against The Entire BSD/386 Program WouldBe Impermissibly Overbroad B. Plaintiff is Misusing its Copyright by Attempting to EnjoinAll of BSD/386 , 787 F.2d 875 (3d Cir. 1986) cert. dismissed, 488 U.S. 918 (1988) . . . . . . . . . . . . . . . . . . . . 53 Apollo Technologies Corp. v. Centrosphere Industrial Corp,., No. 92-3712 (AJL), 1992 WL 289943 (D.N.J. 1992) . . . . 15 Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. (1983), cert. dismissed, 464 U.S. 1033 (1984) . . . . . . . . . . . . . . . . . . . 7 Baker v. Selden, 101 U. S . 99 . . . . . . . . . . . . . . . . . . . . . . 3 6 Breffort v. I Had A Ball Co., 271 F. Supp. 623 (S.D.N.Y. 1967) . . . . . . . . . . . 54 Brown v. Tabb, 714 F.2d 1088 (11th Cir. 1983). . . . . . . . . . . 19, 20, 23, 24 Brown Bag Software v. Symantec Corp., 960 F.2d 1465 (9th Cir. 1992) . . . . . . . . . . . . . 33 Campbell Soup Co. v. ConAgra. Inc., 977 F.2d 86 (3d Cir. 1992) . . . . . . . . . . . . . . 15 Colonial Book Co.. Inc. v. AMSCO School Publications. Inc., 41 F. Supp. 156 (S.D.N.Y. 1941) . . . . . . . . . . . . 54 Craft v. Kobler, 667 F. Supp. 120 (S.D.N.Y. 1987) . . . . . . . . . . . 54 Data General Corp. v. Digital Computer Controls. Inc., 188 U.S.P.Q. 276 (Del. Ch. 1975) . . . . . . . . . . . 24 Davis v. Romney, 490 F.2d 1360 (3d Cir. 1973) . . . . . . . . . . . . . 53 Educational Testing Services v. Katzman, 793 F.2d 533 (3d Cir. 1986) . . . . . . . . . . . . . . ~5 Feist Publications. Inc. v. Rural Telephone Service Co., 499 U.S. ___, 113 L. Ed. 2d 358, 111 S. Ct. 1282 (1991) ~ . . . . . . . . 27, 2~, 29 Ferroline Corp. v. General Aniline & Film Corp., 207 F.2d 912 (7th Cir. 1953), cert. denied., 347 U.S. 953 (1954) . . . . . . . . . . . . . . . . . . . . 49 Frank's GMC Truck Center. Inc. v. General Motors Corp., 847 F.2d 100 (3d Cir. 1988) . . . . . . . . . . . . 14, 15 Hubco Data Products Corp. v. Management Assistance. Inc., 219 U.S.P.Q. 450 (D. Idaho 1983) . . . . . . . . . . . 24 Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78 (3d Cir. 1982) . . . . . . . . . . . . . . 53 International Film Service Co., v. Affiliated Distributors, 283 F. 229 (S.D.N.Y. 1922) . . . . . . . . . . . . . . 54 Landsberg v. Scrabble Crossword Game Players. Inc., 736 F.2d 485 (9th Cir. 1984) . . . . . . . . . . . 28, 31 Lasercomb America, Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990) aff'd without op. 961 F.2d 211 (1992) . . . . . . . . . . . . . . . . . . . . 56 Magic Marketing v. Mailing Services of Pittsburg. Inc., 634 F. Supp. 769 (W.D. Pa. 198, 1986) . . . . . . . . . 33 McLendon v. Continental Can Co., 908 F.2d 1171 (3d Cir. 1990) . . . . . . . . . . . . . 53 Merchant & Evans v. Roosevelt Building Products, 963 F.2d 628 (3d Cir. 1992) . . . . . . . . . . . . . . 15 Morton v. Beyer, 822 F.2d 364 (3d Cir. 1987) . . . . . . . . . . . . . . 15 National Broadcasting Co. v. Sonneborn, 630 F. Supp. 524 (D. Conn. 1985) . . . . . . . . . . . 24 Orth-o-Vision. Inc. v Home Box Office, 474 F. Supp. 672 (S.D.N.Y. 1979) . . . . . . . . . 29, 54 Paramount Pictures Corp. v. Rubinowitz, 217 U.S.P.Q. 48 (E.D.N.Y. 1981) . . . . . . . . . . 24, 25 - iv- qad. inc. v. ALN Associates, Inc., 770 F. Supp. 1261 (N.D. Ill. 1991) . . . . . . . . . . ,, Rexnord. Inc. v. Modern Handling Systems, Inc., 379 F. Supp. 1190 (D. Del. 1974) . . . . . . . . . 16, 13,27 Reyher v. Children's Television Workshop, 533 F.2d 87 (2nd Cir. 1976) . . . . . . . . . . . . . . 29 SEGA Enterprises LTD., Accolade, Inc., 24 U.S.P.Q. 2d 1561 (9th Cir. 1992) . . . . . . . . . . 31 Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir.) cert. denied, 484 U.S. 890 (1987) . . . . . . . . . . . . . . . . . . . . . . . . 54 See v. Durang, 711 F.2d 141 (9th Cir. 1983) . . . . . . . . . . . . . 29 Sen-Torq, Inc. v. K Mart Corp.,, 936 F.2d 851 (6th Cir. 1991) . . . . . . . . . . . . . 33 Walker v. Time Life Films. Inc., 615 F. Supp. 430 (U.S.D.C. SD. NY, 1985) . . . . . . . 30 Warner Bros. Inc. v. American Broadcasting Companies. Inc., 770 F.2d 231 (2nd Cir. 1983) . . . . . . . . . . . . . 28 Whelan Associates, Inc. v. Jaslow Dental Laboratory. Inc., 797 F.2d 1222 (3d Cir. 1986), cert. denied . . . . . . 32 White v. Kimmell, 193 F.2d 744 (9th Cir.), cert. denied, 343 U.S. 957 (1952) . . . . . . . . . . . . . . . . . . . . . . 18, 19, 23, 2~, STATUTES 17 U.S.C. S 401 (former version) . . . . . . . . . . . . . . 16 17 U.S.C. Section 401(a) (former version applicable) . . . . 20 17 U.S.C. S 405 . . . . . . . . . . . . . . . . . . . . . . . 16 37 C.F.R. 202.1(9) (1985) . . . . . . . . . . . . . . . . 27, 3~ 37 C.F.R. 202.1(a) . . . . . . . . . . . . . . . . . . . . 33 OTHER AUTHORITIES 3 Nimmer, Nimmer on Copyright, 3.03 [F] . . . . . . . . 28 1 Nimmer on Copyright 4.13[A], at 4-70 n.13.1 (1992) . . . 25 11 Wright & Miller, Federal Practice and Procedure: Civil 2947, at 424 (1973) . . . . . . . . . . . . . . . 53 3 Nimmer on Copyright, supra 13.03[F], 3 Nimmer on Copyright, supra, 14.06[C] 3 Nimmer on Copyright. supra, 14.06[c] JAMES H. FORTE (2248) SAIBER SCHLESINGER SATZ & GOLDSTEIN 1 Gateway Center Newark, New Jersey 07102-5311 (201) 622-3333 HELLER, EHRMAN, WHITE & McAULIFFE 525 University Avenue, 9th Floor Palo Alto, California 94301 Telephone: (415) 326-7600 Attorneys for Defendant Berkeley Software Design, Inc. UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY UNIX SYSTEM LABORATORIES, INC., Plaintiff, -against- BERKELEY SOFTWARE DESIGN, INC., and the Following lndividuals in their Collective Capacity as THE REGENTS OF THE UNIVERSITY OF CALIFORNIA: PETE WILSON, LEO T. MCCARTHY, WILLIE L. BROWN, JR., et al., Defendants. Civil Action No.92-1667 (DRD) MEMORANDUM OF LAW ON BEHALF OF DEFENDANT BERKELEY SOFTWARE DESIGN, INC. IN FURTHER OPPOSITION TO PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION Introduction With this motion, plaintiff UNIX System Laboratories, Inc., ("USL") asks this Court to prohibit Berkeley Software Design, Inc. ("BSDI") from selling its only product and from maintaining any of its current employees, based on the fact that, like most experienced computer programmers, they have had access to UNIX source code. USL's supposedly secret source code has been licensed to universities and companies around the world for many years and has been so widely available that many aspects of it have become industry standards. In addition, hundreds of books have been written describing the code in great detail with no complaint from USL. (See Joint Declaration of Marshall Kirk McKusick and Keith Bostic, ~ 28.5 and 36; Affidavit of David Kashtan, ~ 6, 8, 14, 15, 17-19, 23; Affidavit of Michael Karels, ~ 34-36).[fn1] Thus, this is hardly the "garden variety" misappropriation suit USL claims it is. Having chosen to disclose its source code to students and computer programmers all over the world, and having promoted it as an industry standard, USL's attempt to portray it as a closely guarded secret, based on its own internal safeguards, is ludicrous. As in any trade secret case, a finding of misappropriation requires a showing that the specific items BSDI allegedly misappropriated are in fact secret. No such showing has been or can be made. In fact, most of the items USL relies on are standard features, consisting of file names and mnemonics commonly used, both in USL-licensed products and in UNIX-compatible products for which no USL license is required or are disclosed in publicly available materials. (See McKusick and Bostic Decl. ~ 26-28.4, 28.6.2, 28.7, 32, 33, 37, 39, 45, 53, 56, 59, and 61; Karels Aff. ~ 34-36; Kashtan Aff. ~ 3, 5, 7, 12, 17, 19, 21, 23). [fn1] The Joint Declaration of Marshall Kirk McKusick and Keith Bostic shall be referred to as the "McKusick and Bostic Decl.," respectively. The Affidavits of David Kashtan and Michael Karels shall be referred to as "Kashtan Aff." and "Karels Aff.," respectively. Unable to find significant similarities in the actual code, USL points to these same standard file names and mnemonics as evidence of copyright infringement, even though USL forfeited any copyright protection in the 32V code long ago, by making it widely available with no copyright notice. Even if USL had not forfeited copyright protection in the 32V code, it could not show copyright infringement, since mnemonics and common industry standards are not protectible under copyright law and their use does not prove illicit copying. As for the actual code, out of the over 1.5 million lines of code in BSD/386, USL's expert relies solely on a few lines interspersed in two functions, ignoring the fact that instructions on how to implement those functions are contained in various textbooks. (See McKusick and Bostic Decl., ~1 53-56; Kashtan Aff., ~1 4-6). Given the specific instructions available in such books, the trivial similarities relied on by USL are to be expected and prove neither copying nor use of the 32V code. In short, with this motion, USL seeks to exclude a legitimate competitor from the marketplace by attempting to invoke a nonexistent copyright, by relying on commonly used industry standards as evidence of copying, and by falsely claiming generally known information as its trade secrets. Not content to destroy one potential competitor, USL also seeks to keep a stranglehold on the entire market by claiming that everyone who has had ever had access to UNIX source code a group that include~ most experienced programmers in the industry is "mentally contaminated" and may not develop any functionally similar product, without first purchasing an exorbitantly expensive license from USL. In accordance with this argument, USL requests this Court to prohibit BSDI from hiring anyone who has had access to UNIX source code. USL's request would not only require BSDI to fire all of its current employees, but would make it difficult to find any qualified replacements. Having chosen to widely disseminate its source code in order to build a market for its product and having succeeded in making it an industry standard, USL cannot now claim that everyone with knowledge of it is restricted from developing competing products. USL is also unable to show irreparable harm, as it must in order to obtain a preliminary injunction. As authorized under its license agreements with USL, the University of California has distributed the Net2 software on which BSD/386 is based, with no restrictions on further disclosure and distribution. The Net2 software was written by students and employees of the University of California and thousands of other individuals around the world who have contributed their work to the University. (See Karels Aff. ~l 13-14). Hundreds of thousands of copies of Net2 have been publicly distributed and Net2 remains available from a variety of public archives. (See Affidavit of Richard F. Adams, Jr., ~1 15-16) ("Adams Aff.). In addition, at least one other company has created a complete system based on Net2 and continues to market that system. (Adams Aff., ~ 17). USL has taken no legal action against that company or against any of the numerous other entities still distributing Net2. The number of additional copies of the code BSDI will sell while this case is pending is insignificant relative to the huge number of copies already distributed and which remain freely available to the public. Thus, USL's claim of irreparable harm is totally divorced from reality. BSDI, on the other hand, will be forced out of business long before any trial is had and will be unable to pay for its defense, if it is prevented from continuing to sell its only product. For all of these reasons, USL is unable to meet the standards required for a preliminary injunction and its attempt to force BSDI out of business without affording it a full trial must be denied. Factual Background A. The Parties. Plaintiff USL is a majority-owned affiliate of AT&T. It was formerly a division within AT&T and was spun off to form a separate company with the goal of marketing UNIX source code and other software. (Thiel Dep. T. 80-8 to 80-25, 81-1 to 81-24).[fn2] It has recently been announced that AT&T's stock in USL will be sold to Novell Corporation. (See Affidavit of James H. Forte, 2) (hereinafter "Forte Aff."). Defendant University of California ("the University") is a world- renowned university. For many years, the University has distributed, on a nonprofit basis, software developed by its Computer Systems Research Group ("CSRG"). These distributions are known as Berkeley Software Distributions, and have been used by many companies, including USL, in a variety of commercial products. (See Karels Aff., 11 3-10, 12-13, 20). Some of the Berkeley Software Distributions have included code licensed to the University by USL and thus have been provided only to USL licensees. (Id., 1 9). Others not including any USL-licensed code have been made available to anyone, without requiring proof of a USL source code license. (Id., ~1 9-13). As discussed below, such distributions were expressly authorized in the University's license agreements with USL. [fn2] All citations to the deposition transcript of Charles Thiel are attached as Exhibit A to the Affidavit of James H. Forte. In July of 1991, the University began distributing its Second Networking Release ("Net2"), which did not contain USL proprietary code and thus required no USL license. USL now falsely accuses the University of violating its trade secrets and copyrights by releasing Net2 to non-licensees. Defendant BSDI is a small startup company that has spent approximately eleven man-years developing the Net2 release into a commercially viable product - BSD/386 - which is potentially competitive with USL's UNIX operating system. (Adams Aff., ~ 3-6). Initially, USL sued only BSDI, even though the claim was based on an allegation that the University's release of Net2 violated its intellectual property rights. Subsequently, USL added the University as a defendant and alleged that the code added to Net2 by BSDI also violated its rights. B. The Technology A computer program is a set of instructions implementing algorithms that enable a computer to perform various functions. Computer programs are written in a form called "source code," which consists of humanly-comprehensible instructions in one of many computer languages. UNIX source code is usually written in a language called "C". Before source code can be run on a computer it must be compiled into machine-readable code called object code or binary code. Through the use of a compiler program, the source code is turned into binary code, which consists of "1s" and "Os" strung together in a particular order. The binary code is used to operate the computer or perform a particular application. There are different kinds of computer programs, including operating system programs and application programs. An operating system is a program that directs the internal operations of the computer and interacts with a variety of compatible application programs. An application program is a program that enables the computer to perform a specific task, such as word processing, accounting or mathematical calculations. See Apple Computer. Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1243 (3d Cir. (1983), cert. dismissed, 464 U.S. 1033 (1984). C. History of the UNIX Source Code The original UNIX operating system was developed by employees of AT&T's Bell Laboratories in the late 1960's, and was based on an earlier system called Multics. (See Maurice J. Bach, The Design of the UNIX Operating System, pp. 1-3, attached as Exhibit B to the Forte Aff.; McKusick and Bostic Decl., f 28.1.3). At that time, AT&T was prohibited from selling software and developed the UNIX code solely for its own internal use. Subsequently AT&T began licensing the UNIX source code to universities for educational use, ; [REDACTED] This marketing strategy has been so successful that many aspects of the UNIX operating system have become industry standards. (See Exhibit D to the Forte Aff.; see generally McKusick and Bostic Decl.). [fn3] All citations to the deposition transcript of Edwin G. Baldwin are attached as Exhibit C to the Forte Aff. Unlike most software companies, who distribute their products only in object code, USL has distributed its operating system in source code form. (Thiel Dep- T- 95-20 to 96-5). In licensing its source code to universities for research and other educational uses, USL has required universities to distribute their enhancements and derivative works developed using the code to anyone, including AT&T, at a nominal cost. (See Karels Decl., 23). To the extent the enhancements or derivative works have included the licensed source code, they could be provided only to licensees, but still had to be provided at nominal cost. (See Karels Decl., ~ 23). As a result, USL has received the benefit of free development work from thousands of computer programmers, and has incorporated the best of that work into its own system. (See Karels Decl., ~ 20 and 34). After divestiture, which took place in 1984, AT&T began to market its UNIX source code actively in the United States and in many other countries as a commercial product. As a result of this widespread licensing and the access permitted to students all over the world, as USL admits, the UNIX source code has become "world-renowned," and many portions of it have become industry standards. Although USL may have strict internal safeguards in place, it has so widely licensed its UNIX source code that it cannot be considered a "secret" by any stretch of the imagination. Indeed, since the source code has been licensed to universities all around the country, most people who have studied computer science at universities over the past fifteen years have had access to the source code at some time, E to the Forte Aff.). Further, the strict safeguards USL claims to observe have not been observed by its thousands of licensees. consequently, USL's licensed code periodically appears on publicly accessible computers. (Bond Dep. T. 71-24 to 74-16;[fn4] Adams Aff., ~ 10). [fn4] All citations to the deposition transcript of Mitzi D. Bond are attached as Exhibit F to the Forte Aff. USL has also permitted numerous books to be written on the UNIX source code. These books describe nearly every aspect of the code, including its design, architecture, sequence, organization, structure, implementation and algorithms, and provide instruction on how to write UNIX-compatible code. See infra. Among other things, such publicly available reference materials disclose the specific features USL's expert relies upon as evidence of copying and trade secret misappropriation. (See generally McKusick and Bostic Decl.; Kashtan Aff., ~l 6, 8). D. The Berkeley Distributions The University began releasing its Berkeley Software Distributions in the late 1970's. The original distributions were modifications and enhancements of the AT&T-licensed code. Over the years, the University continued to modify the licensed code and rewrote many of the programs from scratch. It also developed many additional programs which it included in its releases and obtained a variety of other programs from outside contributors. (See Karels Aff. Il 2-14). What is now known as Berkeley UNIX has been very popular and has been included in a variety of commercial products including operating systems marketed by Sun Microsystems, Digital Equipment Corporation, and USL. (See Karels Aff. ~ 6 and 20). Thus, USL has benefitted enormously by its licensing of UNIX source code to the University and other educational institutions. In accordance with the terms of its license agreements with USL, the University has made several of its releases available to non- licensees, since they did not contain any of USL's licensed code. The first of these was in 1987 and consisted of a reimplementation of a particular function for handling daylight savings time that existed in the 32V code. The second was a package of networking code distributed in 1988. Both of these releases were made via anonymous FTP, which means that they were placed on a publicly accessible computer network, with over a million users. (See Karels Aff. ~ 9-10). Starting with the BSD4.3-Tahoe release in 1987, the University also began marking files which did not contain AT&T code with a special legend, indicating that they were freely redistributable. (See Karels Aff. ~ 9). Although the University provided the 4.3 Tahoe release only to AT&T licensees, USL has never objected to the designation of certain files as freely redistributable, and those files have in fact been redistributed by those who obtained the release. (See Karels Aff. ~ 9-11). In 1988, the University distributed its first Networking Release ("Net1"), which consisted of 134 source files from the networking portion of the BSD kernel, a login program, and a number of utility and C-Library programs. No AT&T source code license was required to obtain the Net1 release. (See Karels Aff. I 10). Contrary to USL's representation, Net1 did include some code that had a functional analogue in 32V and, like the Net2 release, made reference to code that was not included. In both the Net1 and Net2 releases, these references are present because the code is intended to be used with other programs that contain the referenced code. (See Karels Aff. ~ 10, 15-16). Thus, they do not indicate mindless copying, as USL suggests. After the Net1 release, the University made another release called BSD4.3-Reno. Although this release was provided only to USL licensees, it contained more files marked freely redistributable, and such files have in fact been distributed to non-licensees by others. (See Karels Aff. ~ 12). Although USL received a copy of both the Tahoe and Reno releases, and used portions of them in its own code, USL made no objection to any of the designations. Nor has it ever objected to the distribution of Net1 to non-licensees. (See Karels Aff. f 12). The University released its second license-free release, the Net2 software at issue in this action, in July of 1991. This included not only an updated version of the networking software included in the earlier Net1 release, but a host of other programs that had been written by University students and employees or contributed to the University. (See Karels Aff. ~1 13-14). This release was the culmination of a project begun years earlier to sort out the programs that were not subject to AT&T license restrictions and make them available to anyone, as contemplated by the University's license agreements with AT&T. (See Karels Aff. 1 17). Thus, it includes the work of thousands of authors written at different times over a period of many years. On several occasions, CSRG members attempted to obtain USL's views as to whether certain programs contained any USL proprietary matter. (Bostic Dep. T. 39-7 to 40-1, 41-11 to 41-i,, and exhibits P- 70 and P-71 attached as Exhibit I to the Forte Aff.; McKusick Dep. T. 267-2 to 268-24).[fn5] Although USL has provided such opinions to others, USL refused to take any position on the code submitted by the CSRG members. (Id.). Prior to the release of Net2, CSRG members discussed the release many times with University counsel and performed a detailed code comparison to make sure that the Net2 release did not include USL- proprietary code, applying criteria received from University counsel. The release was then reviewed by University counsel in conjunction with outside counsel and a technical expert, and ultimately was approved by University officials. (see Karels Aff. ~ 18-27). [fn5] All citations to the deposition transcripts of Keith Bostic and Marshall Kirk McKusick are attached as Exhibits G and H, respectively, to the Forte Aff. E. The Formation of BSDI and the Development of BSD/386 After the release of Net1, CSRG members had made several public announcements regarding the additional software they planned to include in the next USL-license-free release. After hearing these announcements, Richard Adams, who is now the president of BSDI, became interested in the possibility of developing a commercial product based on the upcoming release and discussed his idea with various acquaintances, including three CSRG members, Keith Bostic, Kirk McKusick and Michael Karels. (See Karels Aff., ~ 19; Adams Aff., ~ 4). Believing the release to be imminent, in January of 1991, he organized a meeting with these and several other interested individuals to explore the feasibility of the idea. Because they were concerned that USL would not like a high-quality, lower-priced competitor in the market, and might try to drive them out, they also discussed the concept with attorneys to satisfy themselves that USL would have no basis for interfering with the project. (See Karels Aff., 19; Adams Aff., ~ 4). At the time of that meeting, the CSRG members had nearly completed the process of reviewing the University's software to determine what could be included in Net2, based on the criteria that had been supplied to them by the University's counsel. They also had made several public announcements of the upcoming release and what programs they anticipated would be included in it. These announcements took place long before BSDI existed, and before anyone associated with BSDI ever discussed the idea of using the release in a product. Thus, USL's suggestion that BSDI instigated the release is ridiculous. It was the announcement of the release that "induced" the formation of BSDI, not the other way around. At the time of the January meeting, Mr. Adams was unsuccessful in persuading any of the CSRG members to leave the University to join the company he was contemplating. The CSRG members also did not agree to invest any money in the venture at that time, nor did they receive any commitments from BSDI. (See Karels Aff., 1 19-21; McKusick Dep. T. 151-20 to 152-17; Bostic Dep. T. 152-16 to 153-7; Adams Aff., 1 4). Thus, USL's assertions that the CSRG members had a financial interest in BSDI while they were working on the Net2 release is completely false. No CSRG member had any interest in BSDI until after the release of Net2. Although USL has gone to great lengths to try to portray BSDI as the driving force behind the Net2 release - including misrepresenting the testimony of BSDI and CSRG employees - USL has failed to present any evidence to support such a claim. BSDI received the Net2 release with the understanding that it contained no USL-proprietary code and put a great deal of effort and expense into making it a usable operating system.[fn6] In doing so, BSDI relied entirely on publicly available reference materials. (See Adams Aff., ~ 5). USL now seeks to enjoin BSDI from continuing to sell its BSD/386 product, which it has been selling in pre- production form for over nine months. USL further seeks to enjoin BSDI from hiring any employees that have had access to UNIX source code, a limitation that would rule out not only all of its current employees, but the thousands of other computer programmers who have had access to UNIX source code as students or employees. [fn6] USL's argument that the indemnification clause contained in the Net2 agreement should have put BSDI on notice of possible violations is belied by the fact that the same clause was included in the University's earlier licenses of BSD code to AT&T. (See Exhibit J to the Forte Aff., ~ 12). ARGUMENT I. USL HAS NOT MET ITS BURDEN OF ESTABLISHING ENTITLEMENT TO A PRELIMINARY INJUNCTION. The Third Circuit has held repeatedly that "injunctive relief is an extraordinary remedy which should be granted only in limited circumstances." Frank's GMC Truck Center. Inc. v. General Motors Corp., 847 F.2d 100, 102 (3d Cir. 1988). To obtain such extraordinary relief, the moving party bears a heavy burden of establishing: (1) The probability of irreparable injury to the moving party in the absence of relief; (2) The absence of possibility of harm to the nonmoving party if relief were granted; (3) The likelihood of success on the merits; and (4) The public interest in granting preliminary relief. Merchant & Evans v. Roosevelt Building Products, 963 F.2d 628, 632 (3d Cir. 1992); Apollo Technologies Corp. v. Centrosphere Industrial Corp., No. 92-3712 (AJL) 1992 WL 289943 (D.N.J. 1992). The injunction should issue only if plaintiff produces sufficient evidence showing that "all four factors favor preliminary relief." Merchant & Evans, 963 F.2d at 632-33. Of these four requirements, the Third Circuit places particular weight on the probability of irreparable harm and the likelihood of success on the merits. If "either or both of these prerequisites are absent," the circuit court will reverse the grant of an injunction by the district court. Frank's GMC, 847 F.2d at 102 (quoting In re Arthur Treacher's Franchisee Litigation, 689 F.2d 1137, 1143 (3d Cir. 1982)); Morton v. Beyer, 822 F.2d 364, 367 (3d Cir. 1987). Further, the moving party must make a "clear showing of immediate irreparable harm." Campbell Soup Co. v. ConAgra. Inc., 977 F.2d 86, 91, (3d Cir. 1992). To bear this burden, "the plaintiff must demonstrate potential harm which cannot be redressed by a legal or an equitable remedy following a trial. The preliminary injunction must be the only way of protecting the plaintiff from harm." Id. As shown in detail below, USL has failed to make the required showing on any of the four factors necessary to obtain the requested preliminary injunction. Thus, its motion should be denied. II. USL IS NOT LIKELY TO SUCCEED ON ITS COPYRIGHT INFRINGEMENT CLAIM. A. USL Has No Valid Copyright In The 32V Code. USL's copyright infringement claim is fundamentally flawed, in that USL has no valid copyright in the UNIX/32V source code, which USL permitted to be widely published without a copyright notice. Before March 1, 1989 (the effective date of the Berne Convention Implementation Act), the law required that a copyright notice be placed on published works to notify recipients that the author intended to claim a copyright in the work. See 17 U.S.C. 401 (former version); 17 U.S.C. 405.[fn7] Without such a notice, those receiving the work could assume that the author did not intend to claim copyright. [fn7] 17 U.S.C. 401 was amended in connection with passage of the Berne Convention in 1988, and no longer requires notice to be placed on copies of published works. Thus, publication of a work without a copyright notice resulted in forfeiture of any copyright protection, unless adequate steps were taken to cure the lack of notice and the work was registered within five years. See 17 U.S.C. S 405; see also Rexnord. Inc. v. Modern Handling Systems. Inc., 379 F. Supp. 1190, 1197 (D. Del. 1974) ("Copyrighted material loses its protected status if it is published without notice of copyright."). No such steps were taken with respect to the 32V code. As recently as 1992, USL belatedly registered its copyright in UNIX and 32V. See Exhibits A - D to Plaintiffs' Amended Complaint (copyright registration for UNIX operating system, editions 5, 6, 7, and 32V). Prior to 1989, USL made the 32V code available to thousands of educational, commercial and governmental entities throughout the world, without any copyright notice. [REDACTED] In discovery, USL produced a 3-inch-thick list of licenses which indicates that, as of 1986, at least [REDACTED] computers were licensed under either System III or System V, and thus also were licensed under 32V. (A copy of this list is attached to the Forte Aff. as Exhibit M). [REDACTED] Since AT&T permitted the widespread distribution of the32V source code without a copyright notice prior to 1989, USL has lost any copyright protection it might otherwise have had in it,and, as a matter of law, there can be no claim for copyright infringement of the 32V code. [fn8] All citations to the deposition transcript of David Frasure are attached as Exhibit K to the Forte Aff. [fn9] All citations to the deposition transcript of Chuck Greene are attached as Exhibit N to the Forte Aff. 1. The Limited Publication Doctrine Is Inapplicable. In an attempt to dodge this fatal defect in its copyright claim, USL makes the incredible assertion that the 32V source code is an unpublished work, even though it has been marketed to the commercial world for many years and has been made available to many thousands of commercial, educational and governmental entities. Compare USL's Moving Brief, at 27 with R.L. Martin The UNIX System: Preface, and A.V. Aho, The UNIX System: Foreword, AT&T Bell Laboratories Technical Journal, Vol. 63, No. 8, October 1984, pp. 1571-73, a copy of which is attached to the Forte Aff. as Exhibit P. To make such a claim, USL contends that its widespread commercial distribution has been only a "limited publication," and thus has not forfeited its copyright protection. Although courts have created a narrow exception to the forfeiture doctrine known as the doctrine of limited publication, this doctrine is not applicable here. Under the doctrine of limited publication, a work published without the proper notice will not fall into the public domain if the copyright owner can prove that its distribution was limited to (1) a definitely selected group, (2) for a limited purpose, and (3) without the right of diffusion, reproduction, distribution or sale. See White v. Kimmell, 193 F.2d 744, 746-47 (9th Cir.), cert. denied, 343 U.S. 957 (1952); Rexnord, 379 F. Supp. at 1197. Unless all three of these criteria are met, however, a publication cannot qualify as a limited publication. White, 193 F.2d at 746-47. Accordingly, restrictions on use or redistribution alone are not sufficient. Plainly, USL cannot meet the first of these requirements. Distribution of the 32V source code has not been limited to a definitely selected group. Rather, the 32V source code has been available to [REDACTED] 1988, attached as Exhibit 0 to the Forte Aff.; see also AT&T Technical Journal, p. 1573 ("UNIX System V is available to the commercial world from AT&T in a fully supported form) (emphasis added)) (See Exhibit P to the Forte Aff.). USL representatives have testified that [REDACTED] as if the category of [REDACTED] could be a "definitely selected group" under the test set forth in White. The limited publication exception is much more narrowly drawn than this. See Brown, 714 F.2d at 1092 (Court found that group consisting of "all automobile dealers or dealers in markets where the [allegedly copyrighted work] was not already in use" did not constitute a limited group). Moreover, considering the realities of the marketplace, this so- called "restriction" is really no restriction at all. As [REDACTED] well.[fn10] (Affidavit of Michael J. DeFazio in Support of Plaintiff's Motion for Preliminary Injunction, 11 and n.3 at pp. 11-12). In reality, rather than limiting its source code to a narrowly selected group, USL has actively marketed its UNIX source code [REDACTED] Forte Aff.). Limitations on sales to particular foreign countries are irrelevant to the publication issue, since a copyright notice was required to preserve USL's rights upon publication of the code "in the United States or elsewhere". 17 U.S.C. Section 401(a) (former version applicable). [fn10] The fact that one had to pay for a work in order to receive it does not make it a limited publication. See Brown v. Tabb, 71; F.2d 1088 (11th Cir. 1983). [fn11] A copy of Plaintiff's Response to Defendant's Third Set of Interrogatories is attached as Exhibit Q to the Forte Aff. In comparison with the 3-inch thick list of 1986 licensees USL produced in discovery, in its interrogatory responses, USL was able to identify only [REDACTED] who had been refused a license. [REDACTED] [fn12] A copy of Exh. D-2 is attached as Exhibit S to the Forte Aff. [fn13] [REDACTED] [fn14] All citations to the deposition transcript of Otis L. Wilson are attached as Exhibit U to the Forte Aff. . T. 86-21 to 87-4, 87-25 to 88-4, 94-15 to 97-3; Bond Dep. T. 17- 23 to 19-21). [REDACTED] 23).[fn15] Thus, this practice did not in fact place any significant limitation on the group to whom the code was available. Neither the ability to pay nor the willingness to adhere to restrictions on use are sufficient limitations to establish a limited publication. See Brown, 714 F.2d at 1092 (no limited group where the alleged copyrighted jingle "was available to any automobile dealer doing business in a market not yet exposed to the jingle who would pay the price"); White, 193 F.2d at 746-47 (the requirement that there be restrictions on use is separate and distinct from the requirement that there be a limited group). In fact, the instant case is virtually identical to a recent Ninth Circuit decision, D.C.I. Computer Systems. Inc. v. Pardini, 1992 U.S. App. Lexis 29951; 1992 Copyright L. Rep. (CCH) ~27,005 ( 9th Cir.) (A copy of this case is attached as Exhibit V to the Forte Aff.). In D.C.I., the Ninth Circuit upheld the district court's ruling that by licensing its software to automobile dealers without a copyright notice, D.C.I. published the software and forfeited its copyright in the work. Under circumstances virtually identical to those in the present case, the Court found that the limited publication doctrine did not apply: D.C.I. did not select a particular group of people and then offer to distribute ~the program] to members of that group. It is undisputed that D.C.I. licensed its F & I program to any automobile or recreational vehicle dealership in the country that would agree to enter into a contract, and so fails the select group test. The court in D.C.I. also noted that D.C.I. failed to meet the second prong of the test: "Moreover, it did not meet the limited purpose prong, since its purpose in distribution was pecuniary gain." See also Academy of Motion Picture Arts and Sciences v. Creative House Promotions, 944 F.2d 1445, 1453 (9th Cir. 1991). Obviously, since USL marketed its 32V code commercially, it cannot meet this prong of the test either. Having chosen "'the more worldly rewards that come with exploitation of [its] work"' (Brown, 714 F.2d at 1092), USL's widespread distribution of the 32V source code without a copyright notice forfeited any copyright protection in the work. Both the Hubco case and the Data General case cited by USL are inapplicable. In those cases, the code was distributed only to those who purchased a computer from the plaintiff. See Hubco Data Products Corp. v. Management Assistance. Inc., 219 U.S.P.Q. 450 (D. Idaho 1983); Data General Corp. v. Digital Computer Controls. Inc., 188 U.S.P.Q. 276 (Del. Ch. 1975). There has been no such restriction on the UNIX source code. Although AT&T does sell computers, the source code itself has been marketed as a separate product. Nor can USL find solace in a couple of questionable district court opinions, in which works distributed to a small number of entities through separately negotiated agreements were held to be limited publications. See National Broadcasting Co. v. Sonneborn, 630 F. Supp. 524 (D. Conn. 1985); Paramount Pictures Corp. v. Rubinowitz, 217 U.S.P.Q. 48 (E.D.N.Y. 1981). These cases are distinguishable in that, as explained above, USL has actively marketed its source code [REDACTED] 13 to 80-17, 81-16 to 18-23); AT&T Technical Journal, Vol. 63, No 8, p. 1573, attached as Exhibit P to the Forte Aff. ("UNIX System V is available to the commercial world from AT&T in a fully supported form"). Moreover, these cases have been criticized by Nimmer, who reasoned that "[u]nless the [parties] which might engage in such negotiations were limited in some manner, it would seem that there was no limitation as to persons." I Nimmer on Copyright 4.13[A], at 4-70 n.13.1 (1992). In the instant case, where USL has permitted distribution of its source code to thousands of entities, application of the questionable rationale espoused by Paramount and NBC would obliterate the notice requirement. USL emphasizes that its publication has been limited based on the fact that it has been distributed subject to restrictive licenses. (See USL's Moving Brief, p. 12 n. 4; Affidavit of Michael J. DeFazio in Support of Plaintiff's Motion for Preliminary Injunction, p. 27 n. 14). Unlike other types of copyrighted works, software is virtually always distributed subject to license restrictions. In any event, this argument addresses only one prong of the test for limited publication. As the court emphasized in White v. Kimmel, "the circulation must be restricted k~ as to persons and purpose, or it cannot be called a private or limited publication." White, 193 F.2d at 747 (emphasis added). Thus, USL cannot meet the limited publication test, regardless of any restrictions placed on its customers' use of the source code. Because AT&T's distribution of the 32V code constituted a general publication, and because such publication occurred without a valid copyright notice, AT&T's work has fallen into the public domain. Accordingly, USL has absolutely no basis to claim any copyright protection for its 32V source code. 2. The Header Files Which USL Claims Have Been Infringed Have Been Included in Binary Distributions Made by USL Licensees With No Copyright Notice. The binary version of the UNIX operating system has been even more widely distributed than the source code version. Although current binary versions of the code contain copyright notices, earlier versions did not. (See Bostic & McKusick Decl., 28.4). Moreover, these binary distributions included some source code files, and in particular, included the header files USL accuses the University of copying in Net2. (Bostic & McKusick Decl., ~ 28.4; Kashtan Aff. ~ 8). USL itself has never distributed binary code, but has sublicensed numerous other companies to distribute binary versions of its UNIX operating system, placing no limitations on whom they could license it to, other than those required by law. Thus, USL cannot possibly argue that the distribution of the binary code (including the header files in source form) was a limited publication. Not only is it impossible for USL to meet the "definitely selected group" test, but simply offering a work "for further distribution," as USL did with its binary code, in itself constitutes a general publication of the work. See White, 193 F.2d at 746-47; Rexnord, 379 F. Supp. at 1197. Thus, USL has no basis for claiming any copyright in the header files. B. THE SIMILARITIES RELIED UPON BY USL WOULD NOT ESTABLISH COPYRIGHT INFRINGEMENT EVEN IF THE 32V CODE WERE COPYRIGHTED. Even if USL did have a valid copyright in the 32V code, USL would not be able to establish a substantial likelihood of success on its infringement claim. Copyright law, unlike trade secret or patent law, protects only original expression. It does not protect ideas, processes, concepts or methods. Computer Associates International. Inc. v. Altai. Inc., 1992 WL 372273, at p. 9 (2d. Cir. Dec. 17, 1992). As the Supreme Court recently reaffirmed: "The mere fact that a work is copyrighted does not mean that every element of the work may be protected." Feist Publications. Inc. v. Rural Telephone Service Co., 499 U.S. 113 L.E.2d 358, 371 (1991). Whether the claim is based on direct or indirect evidence of copying, infringement may be found only where there is substantial similarity in protectible expression. Computer Associates. Inc. v. Altai. Inc., 1992 WL 372273, p. 7; Landsberg v. Scrabble Crossword Game Players. Inc., 736 F.2d 485, 488 (9th Cir. 1984). De minimis copying or copying of unprotectible portions of a work do not give rise to an infringement claim. Feist. 113 L.E.2d at 379 ("not all copying . . . is copyright infringement"); Computer Associates v. Altai, 1992 WL 372273, at 22; Warner Bros. Inc. v. American Broadcasting Companies. Inc., 720 F.2d at 242; see also 3 Nimmer on Copyright, S 13-03 [F]. USL has made no attempt to distinguish between similarities in protectible elements of its software and similarities in unprotectible elements. As explained below, virtually all of the specific items discussed in the Carson Declaration fall into the category of unprotected elements. Moreover the similarities are neither quantitatively nor qualitatively substantial. Indeed, the Carson Declaration seems to be aimed simply at establishing that Net2 was "derived" from the 32V code in the colloquial sense. For purposes of copyright law, however, a derivative work, like any other work, can be infringing only if it contains substantial, protectible expression from the prior work. 1 Nimmer on Copyright, 1 3.01 at p. 3-3 (1992) ("A work is not derivative unless it has substantially copied from a prior work. If that which is borrowed consists merely of ideas and not of the expression of ideas, then although the work may have been in part derived from prior works, it is not a derivative work".); Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2nd Cir. 1976) (quoting from Treatise). Thus, if Net2 does not contain substantial protectible expression from 32V, it cannot infringe any copyright in 32V. Id. Merely "using" a prior copyrighted work, or referring to it in developing one's own work, does not amount to copyright infringement. Feist v. Rural Telephone Service, supra, 111 S. Ct. 1282, 1290; Sega Enterprises Ltd v. Accolade Inc., 1992 WL 293141, at p. 15 (9th Cir.) ("the fundamental purpose of the Copyright Act [is] to encourage the production of original works by protecting the expressive elements of those works while leaving the ideas, facts, and functional concepts in the public domain for others to build on"). Anyone is free to make a "derivative work" that uses unprotectible aspects of a copyrighted work, such as ideas, methods or concepts. It is also permissible to remove or replace those portions of an otherwise infringing work that are protected by copyright. See, e.q., Computer Associates v. Altai, supra, 1992 WL 372273 (program from which infringing portions had been removed held non-infringing); See v. Durang, 711 F.2d 141, 143 (9th Cir. 1983); Orth-o-Vision. Inc. v Home Box Office, 474 F. Supp. 672, 686 n.14 (S.D.N.Y. 1979) ("when the infringing portion of a defendants work may be removed from the remainder, injunctive relief ought extend only to the former"); see also Sega v Accolade, 1992 WL 293941,at p. 6 (intermediate copying may infringe regardless of whether the final product infringes). In such instances, even if an intermediate version might have constituted an infringement, a subsequent version which does not contain substantial expression from the copyrighted work does not infringe. Id. In the instant case, there can be no claim for intermediate copying. As explained at length below in connection with the trade secret claim, the University's license agreements with USL expressly permit it to make modifications, enhancements and derivative works based on the licensed software. Thus, it is not copying per se that USL challenges, but the fact that Net2 was distributed to non-licensees. Since any prior BSD releases that contained AT&T proprietary code were distributed only to licensees, there can be no claim of intermediate copying. Thus, regardless of whether portions of Net2 were once included in a distribution that also included code derived from USL licensed code, the question is whether the Net2 distribution itself contains any substantial protectible expression from 32V. As explained below, it does not. 1. The Features Relied Upon by USL's Expert Are Not Protectible. Not all copyrighted works are entitled to the same level of protection. See SEGA Enterprises Ltd. v. Accolade Inc., 1992 WL 293141 at p 12. In particular, works that are highly factual, functional, technical or utilitarian in nature receive less protection than fictional works." Id. at p. 12-13. The reason for this distinction is that as a work becomes more technical or functional, the range of options for expressing ideas narrows. If there are only a limited number of ways to express a particular idea, of necessity, there will tend to be similarity in two works expressing the same idea. Such similarity cannot be the basis for a finding of copyright infringement. Otherwise, later authors would be barred from using the unprotected ideas, concepts and methods expressed in an earlier work a result that is completely contrary to the fundamental tenets of copyright law. For this reason, a much greater degree of similarity is required before such works will be found to infringe. See Landsberg v. Scrabble Crossword Game Players, Inc. v. Crown Publishers. Inc., 736 F.2d 485, 488-89 (9th Cir.), cert. denied, 469 U.S. 1037 (1984). In some cases, an idea, method or concept can be expressed in such a limited number of ways that virtual identity in expression will be required before infringement will be found. This principle is applicable to computer programs as with any other copyrighted work: [C]opyrighted language may be copied without infringing when there is but a limited number of ways to express a given idea . . . . In the computer context, this means that when specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to infringement. National Commission on Technological Uses of Copyrighted Works ("CONTU"), Final Report 1, at 20 (1979) ("CONTU Report"). [fn16] [fn16] Congress adopted all of the statutory changes recommended by CONTU verbatim. Subsequent Congresses, the courts, and commentators have regarded the CONTU Report as the authoritative guide to Congressional intent. SEGA Enterprises LTD.. Accolade. Inc., 24 U.S.P.Q. 2d 1561, 1567 fn.5 (9th Cir. 1992). A computer programmer's choices of expression also are limited by efficiency considerations. Thus, although there might be many possible ways of implementing a given task, there might be a very limited number of ways to do so efficiently. In such instances, two programmers attempting to achieve the same result in the most efficient manner would be likely to arrive at similar programming solutions. As stated in Altai, "while hypothetically, there might be a myriad of ways in which a programmer may effectuate certain functions within a program, i.e., express the idea embodied in a given subroutine efficiency concerns may so narrow the practical range of choice as to make only one or two forms of expression workable options." See 3 Nimmer on Copyright, supra, 13.03~F], at 13-89- 13-90; Whelan Associates. Inc. v. Jaslow Dental Laboratory. Inc., 797 F.2d 1222, 1243 n.43 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987) ("It is true that for certain tasks there are only a very limited number of file structures available, and in such cases the structures might not be copyrightable . . . .) Thus, if there are only a very limited number of ways to implement a particular feature efficiently, similarities in such implementations do not provide evidence of copying. Computer Associates v Altai, supra, 1992 WL 372273, at 15-16. Other external considerations which limit the range of options for programmers and hence limit the degree of protectible expression in computer programs include: (1) the mechanical specifications of the computer on which a particular program is intended to run; (2) compatibility requirements of other programs with which a program is designed to operate in conjunction; (3) computer manufacturers' design standards; and (4) demands of the industry being serviced. Computer Associates v Altai, supra, 1992 WL 372273, at 17; Sega v. Accolade, supra 1992 WL 293141 at p. 12. If such external factors dictate particular features, the use of such features does not give rise to an infringement claim. Id. Copyright law also does not protect "fragmentary words and phrases" and "lists of contents". 37 C.F.R. S 202.1(a); Sen-Torq. Inc. v. K Mart Corp.., 936 F.2d 851, 854-55 (6th Cir. 1991); Magic Marketing v. Mailing Services of Pittsburg. Inc., 634 F. Supp. 769, 771 (W.D. Pa. 1986) (copyright law does not protect "fragmentary words and phrases" or "forms of expression dictated by functional considerations"). Nor does it protect standard forms of expression. This is particularly significant in the computer industry where a variety of accepted programming practices, techniques and conventions are widely used by programmers. As stated by Nimmer, "in many instances it is virtually impossible to write a program to perform particular functions in a specific computing environment without employing standard techniques." 3 Nimmer on Copyright, 13.03 [F] at 1365. The fact that such standard programming techniques appear in two programs does not evidence copying, and such techniques cannot be monopolized by one programmer- See Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1973 (9th Cir.), cert. denied, L.E.2d 141 (1992) ("affirming the district courts' finding that [p]laintiffs may not claim copyright protection of an . . . expression that is, if not standard, then commonplace in the computer software industry"); Computer Associates International. Inc. v. Altai Inc., supra, 1992 WL 372273, at 16-17. There is also a large amount of software that is freely available and freely redistributable. Such material is in the public domain and cannot be claimed by a single author simply by including it in a copyrighted work. Computer Associates International Inc. v. Altai. Inc., supra, 1992 WL 372273, at p. 17-18. Virtually all of the specific features relied on by USL's expert fall into one of these categories and thus are not protectible. It is notable that with the exception of two extremely short functions [REDACTED] which on their face differ from the supposedly copied 32V Code - Carson does not point out any similarities in the actual code itself. Instead, he relies on similarities in things such as file names and function names, which consist of simple and obvious mnemonics, all of which are standard in the industry and well- documented in the literature. As noted above, short words and phrases are not protectible under copyright law. 37 C.F.R. Section 202.1(9). Indeed the Compendium of Copyright Office Practices includes such "mnemonics" in a list of examples of noncopyrightable elements in computer programs. (A copy of this rule is attached as Exhibit W to the Forte Aff.). USL's expert also attempts to rely on the ordering of such mnemonics, but since the order has no significance, it is simply an unprotectible list, devoid of any element of authorship or expression. (See Kashtan Aff., ~ 14). UNIX operating systems are specifically designed to permit users to modify, enhance and write their own additions or replacement programs. Some of these programs are application programs, while others, such as device drivers, become part of the operating system itself. To enable customers to write their own programs, the required interface definitions are described in the header files. As noted above, these header files are included not only in the source code distributed by USL, but also in the binary versions distributed by various other companies. Header files are provided precisely for the purpose of being used by programmers in writing UNIX- compatible software. (McKusick and Bostic Decl., ~ 28.4 and 28.4; Kashtan Aff., I 9). Thus, there can be no claim of copyright infringement based on the use of the information contained in such files. Likewise, numerous books describe how to write UNIX-compatible programs. These materials provide all the information needed to write UNIX-compatible programs, and in particular provide detailed information about the interfaces and how to write them, including such elements as the file names, function names, and the defined symbols which USL's expert relies upon. (See generally McKusick and Bostic Decl.; see generally Kashtan Aff.). The fact that these features appear in Net2 or BSD/386 thus does not establish copying. Id. Nor are these features protectible given that their use is either dictated by external considerations, including the need for compatibility with other programs, or merely reflects terms that are standard in the industry. Id. With respect to the discussion of [REDACTED] in the Carson Declaration, these are simply two functions within a single file called [REDACTED]. The implementation of these functions is well- described in the literature and includes standard features. Numerous books have been written telling programmers exactly how to implement these functions in the most efficient manner. If one follows those instructions, using standard programming conventions, the range of options is extremely narrow, and similarities are virtually guaranteed. (See McKusick and Bostic Decl., 1 53-56; Kashtan Aff., ~ 4-6). For these reasons, similarities in the way these functions are implemented do not indicate that the code was copied, and cannot form the basis for a copyright infringement claim. 3 Nimmer on Copyright, 13.03 [F]; see also, Baker v. Selden, 101 U.S. 99, 102-04 (one may copy expressive elements that must be used to express the underlying ideas, functional concepts or facts). A comparison of the 32V implementation of the [REDACTED] and [REDACTED] functions and the implementation of these functions in BSD/386 shows that in neither case are they the same. In the [REDACTED] function, only [REDACTED] lines are similar. And in [REDACTED]" only [REDACTED] lines are similar. (See tables in Affidavit of John H. Carson, at pp. 34 and 36). This degree of similarity is to be expected given the various reference books available that teach one how to implement such code. (See generally McKusick and Bostic Decl.; Kashtan Aff., ~ 4-6). 2. The Similarities Relied upon by USL's Expert Are Neither Quantitatively Nor Qualitatively Substantial. USL completely ignores how minuscule the points of similarity relied upon by their expert are in a quantitative sense. USL further distorts their qualitative significance by equating their value with the value of the kernel as a whole. Out of the over 8,000 files in BSD/386, only 80 are accused in this motion, only 30 of which have even been named. Moreover, most of them are accused simply because they use similar standard mnemonics, and not because there was any similarity in the actual code. (USL's Moving Brief at 21). Only two functions, both contained in the file [REDACTED] are challenged on the basis of actual working code. Thus, out of 1.5 million lines of code, only [REDACTED] lines of working code are challenged, and only a few of them are even similar to lines in 32V. (See Kashtan Aff., ~ 46 and 23). There has been no showing whatsoever that these particular lines of code provide any significant value to the kernel. With respect to the other items, [REDACTED] (See Affidavit of John Carson, ~ 23). They are significant now only because they are needed for purposes of compatibility with other code. Thus, although the kernel as a whole is significant, the particular items USL claims have been copied are both unprotectible and de minimis and do not give rise to a claim of copyright infringement. (See generally Bostic and McKusick Decl.; Kashtan Aff., ~ 4-6 and 23). 3. USL Could not Enforce a 32V Copyright Against the University or BSDI Because of the Lack of Copyright Notice. Even if USL had not forfeited its copyright in the 32V code, such a copyright could not be enforced against the University or BSDI due to the lack of notice. 17 U.S.C. 405(b). Where notice has been omitted from a copyrighted work, section 405 of the Copyright Act bars enforcement of the copyright against an innocent infringer who relied on the lack of notice, even if the copyright is later recaptured by taking the necessary steps to cure the omission. Both the University and BSDI believed AT&T did not claim copyright in the 32V code because it had been widely distributed with no copyright notice, and that USL had chosen to rely on trade secret law instead. (McKusick Dep. T. 247-1 to 25115; McKusick and Bostic Decl., ~ 28.4 and 28.5). Thus, to the extent there were any infringement, it would not be actionable due to the lack of notice. III. USL CANNOT DEMONSTRATE A LIKELIHOOD OF SUCCESS ON ITS TRADE SECRET CLAIM. The Affidavits submitted by Keith Bostic, Kirk McKusick and David Kashtan establish unequivocally that none of the features USL relies on in support of its motion are trade secrets. In an attempt to salvage its trade secret claim, USL argues that mere access to its licensed code was sufficient to "taint" the authors of Net2, whether or not Net2 actually contains or discloses any USL trade secrets. In order to make this argument, USL blatantly ignores the terms of its own software license agreements with the University, which preclude such a claim. A. To Prevail On Its Trade Secret Claim USL Must Demonstrate That BSD/386 Contains USL Trade SECRETS. As USL itself admits, its agreements with the University authorize the University to develop its own versions of the UNIX software. What is more, those agreements expressly provide that derivative works which do not "include" USL proprietary information are to be made available to anyone for unrestricted use. 1. The LICENSE Agreements Authorize Use of the UNIX 32-V Code To Create Modifications, Enhancements and Derivative Works Over the course of their relationship, in the late 1970s and 1980s, USL's predecessors-in-interest and the University entered into a series of software license agreements governing use of the UNIX 32V software. Although those agreements were clarified and made more specific over time, all had the same basic meaning concerning the University's right to use the licensed software for research purposes, to create derivative works based upon it and to publicly release its results, modifications, enhancements and derivative works, so long as they did not contain the licensed trade secrets. The first agreement governing use of the UNIX 32V software was the April 1, 1979 Software Agreement between Western Electric Company and the University of California (the "April 1, 1979 Agreement"), which USL has attached as Exhibit B to the Affidavit of Michael J. DeFazio. This agreement-- the earliest of the series-- is the only agreement USL refers to in its motion papers. The second agreement governing use of the UNIX 32-V software,[fnl7] was the August 1, 1981 Software Agreement between western Electric and the University of California (the "August 1, 1981 Agreement") (attached as Exhibit X to the Forte Aff.). [fn17] See, e.q., Baldwin Dep. T. 59-6 to 59-13. The most recent agreement governing the University's use of the 32V source code was entered into on November 12, 1985, and is called the Educational Software License Agreement, E-SOFT-00089 (hereinafter the "E-SOFT-00089 Agreement"). (Bond Dep. T. 32-17 to 32-25, 33-1 to 33-9, 39-7 to 43-5 and Exhibits D-25 and D-26 (see Exh [REDACTED] (Wilson Dep. T. 60-11 to 61-2; Bond Dep. T. 32-25 to 33-9, 132-10 to 133-19). Further, since the E-SOFT-00089 agreement expressly supersedes all prior agreements on the subject matter contained therein, it is the language of the E-SOFT-00089 that governs in this action. See paragraph 4 of the E-SOFT-00089 Agreement (attached as Exhibit F to the Forte Aff.). Although the language in these agreements was clarified over time, the basic intent with respect to the University's right to use the software and its confidentiality obligation was the same in each of them. (See, Karels Aff., 1 24; see also Wilson Dep. T. 36-17 to 37-8). Under each of these agreements, the University was authorized to make modifications, enhancements and derivative works using the licensed software. If a derivative work contained the licensed software or disclosed any proprietary methods or concepts used in the licensed software, it could be distributed only to those who had purchased a source code license from AT&T. As demonstrated below, however, if an enhancement, modification or derivative work did not contain or disclose any AT&T proprietary information, it belonged to the University, and was not governed by the restrictions applicable to the licensed software. See discussion infra. 2. The License Agreements Permit Derivative Works Not Containing USL Trade Secrets To Be Made Available To Non Licensees Section 2.01(b) of the E-SOFT-00089 Agreement expressly provides that the University was to distribute to anyone, on an unrestricted basis, modifications and enhancements that did not include USL's proprietary information. Likewise, Section 2.01(a) of the E-SOFT- 00089 Agreement, provides that derivative works "that contain" licensed software must be treated as licensed software i.e, must be subject to the same restrictions on disclosure as the licensed software: [Licensee's] right to use includes the right to modify such software product and to prepare derivative works based on such software product, *provided that any such modification or derivative work that contains any part of a software product subject to this Agreement is treated hereunder the same as such software product.* (See Exhibit D-25 to Bond Dep.T. (emphasis added)). The negotiations leading up to the execution of this agreement, as well as the prior course of dealing between the parties, make it clear that the words "that contains any part of a software product subject to this agreement" were intended to distinguish between derivative works that actually contained licensed software and derivative works that did not- while the former were subject to the license restrictions, the latter were not. In the negotiations leading up to the execution of the E-SOFT-00089 Agreement, USL initially proposed language providing that any derivative work "based on" the licensed materials was to be treated as licensed software. The University objected to that language, however, and insisted that it be changed to cover only derivative works "that contain" licensed software. USL accepted this modification, providing a new version of the E-SOFT-00089 Agreement in which the language "based on" licensed materials had been changed to "that contains" licensed software. (Wilson Dep. T., Exh. D-67 and D-68 (attached as Exhibits Y and Z to the Forte Aff.). This same clarification i.e., that only derivative works containing AT&T code had to be treated as licensed software had also been made in discussions surrounding a prior license agreement, the "UNIX System V Agreement". This agreement initially included within the definition of "LICENSED SOFTWARE" any derivative works prepared by the licensee "based on" the licensed materials. The University objected to that provision, which had not appeared in any of its prior agreements with AT&T, and was contrary to its understanding of its obligations. (See Karels Aff., ~ 23-26). Following discussions regarding the provision, USL wrote a letter agreement to the University "clarifying" the definition of "Licensed Software" by deleting from the definition "derivative works prepared by the licensees'. The letter further stated that AT&T never had intended to claim any interest in such works. (See Exhibit B to Karels Aff.; Exhibit D-34 to Wilson Dep. T. (Bates P000243) (Exhibit aa to the Forte Aff.)). In place of the prior language, a sentence was added stating "LICENSEE agrees that any modification or derivative work prepared by it *that contains any LICENSED SOFTWARE* shall be treated as LICENSED SOFTWARE hereunder." (Emphasis added). USL now attempts to read into the earlier 32V agreement (which it mistakenly argues applies), the same language that was deleted from both the System V Agreement and the E-SOFT-00089 Agreement even though no such language appears in either of those agreements. Contrary to USL's argument, this same point also was clarified with respect to the April, 1979 Agreement: In a letter dated January 18, 1978, the University inquired whether it could distribute UNIX-derived software.[fn18] In a written response, Edwin G. Baldwin, who was AT&T's Director of Technology Licensing at the time, stated: We take no position with regard to your use or distribution of software developed by you which does not contain any of our proprietary information such as, without limitation, the computer programs and documentation, or any portion thereof, related to the UNIX operating system, including the methods and concepts utilized therein. With regard to the distribution of any software which does contain some of our proprietary information, our primary concern is the prevention of unauthorized disclosure, either intentional or inadvertent, which might jeopardize our valuable proprietary rights in such information. [fn18] Exhibit D-11 to Baldwin Dep. T. (attached as Exhibit bb to the Forte Aff.). (See Exhibit-12 to Baldwin Dep- T- (attached as Exhibit cc to the Forte Aff.) (emphasis added)). Mr- Baldwin testified at his [REDACTED] (Baldwin Dep. T. 33-15 to 34-16). Mr. Baldwin further testified that [REDACTED] Another USL employee, Mitzi Bond, similarly testified to her understanding that [REDACTED] [fn19] ? (Bond Dep. T. 138-14 to 138-19, 137-13 to 138-13). After consulting with Ms. Bond during a break at the deposition, USL's attorney cross-examined her, at which point she changed her testimony, now stating that it was her understanding [REDACTED] 215-24, 216-20 to 216-25, 217-6 to 217-15, 219-3 to 219-15, 224-18 to 224-25). [REDACTED] (Frasure Dep. T. 172-11 to 172-20). [REDACTED] 36-18 to 39-10, 49-20 to 50-2). <a name="mental"> Given that USL twice attempted to include a provision that any derivative work "based on" the licensed software would have to be treated as licensed software (in the 1983 System V Agreement and the 198S E-SOFT-00089 Agreement) and both times the University insisted that the language be narrowed to cover only derivative works that "contain" licensed software -- the argument that the intent was to cover any work "based on" the licensed software, or any work benefiting from knowledge of the licensed software, is completely unsupportable, much less the argument that anyone who has ever seen UNIX source code is "<b>mentally contaminated</b>" and may never write another piece of code that is not subject to USL's license. </a> This argument is further contradicted by USL's own conduct ; [REDACTED] The testimony of USL's witnesses is contradicted by the express language of the agreements, the conduct of the parties, the testimony given by other USL witnesses, and in some cases, even their own prior testimony. Their alleged understanding is also contrary to the understanding of the representatives of the University who were involved in the negotiation of those agreements. (See Karels Aff. 18-36; McKusick Dep. T. 247-1 to 251-25). In interpreting the agreement, the Court should look to the parties' words and conduct before this litigation arose and particularly to the language of the agreement itself and not to USL's litigation construct. The agreements themselves and the conduct of both parties make it very clear that only enhancements, modifications and derivative works that contain or disclose USL proprietary information must be treated as licensed software. This interpretation is further confirmed by the confidentiality provision in the agreements. Section 7.05(a) of the E-SOFT-00089 Agreement provides that confidentiality must be maintained for the Software Products subject to the Agreement, including methods or concepts utilized therein. It does not require that confidentiality be maintained for derivative works not containing such Software Products or methods and concepts utilized therein.[fn.20] Likewise, section 5.06 of the August 1, 1981 Agreement and section 4.06 of the April 1, 1979 Agreement prohibit only disclosure of the Licensed Software (including methods or concepts utilized therein." At page 9 of the August l, 1981 Agreement and p. 7 of the April 1, 1979 Agreement, "Licensed Software" is defined to mean "the Computer Programs and the documentation, or any portions thereof, generally identified below and specifically listed in the attached schedule . . . ." As explained above, the one time when USL attempted to include derivative works prepared by the licensee in the definition of Licensed Software, the University objected to that definition, and the agreement was "clarified" by removing that language from the definition. In its place, a new sentence was added providing instead that derivative works "that contain" licensed software had to be treated as licensed software. Thus, USL's attempt to read into the earlier agreements a provision that derivative works not containing or disclosing AT&T proprietary information are subject to the same confidentiality restrictions as the licensed software must be rejected. Since the license agreements expressly impose a duty of secrecy only for the licensed software and methods and concepts utilized therein, and the parties' understanding in this regard was repeatedly clarified to limit the license restrictions to derivative works that actually contain or disclose USL proprietary information, no duty of secrecy can be implied for derivative works that do not contain or disclose any of USL's proprietary code, methods or concepts. See Ferroline Corp. v. General Aniline & Film Corp., 207 F.2d 912, 922, 925-26 (7th Cir. 1953), cert. denied, 347 U.S. 953 (1954) (where a license agreement expressly imposes an obligation of secrecy with respect to certain information, no further confidentiality restrictions can be implied). Thus, the cases USL cites with respect to advantages obtained by familiarity with the code are inapplicable. In this case, unlike in those, the University was authorized to use licensed software in developing its own code and was prohibited from distributing it to non-licensees only if it contained USL trade secrets. 3. The Duty of Confidentiality Does Not Apply to Information That is or Becomes Generally Known. Consistent with fundamental trade secret law, the agreements governing use of the UNIX 32-V Software expressly provide that no duty of confidentiality extends to information already generally known. Section 7.05(a) of the E-SOFT-00089 Agreement states: If information relating to a SOFTWARE PRODUCT subject to this Agreement at any time becomes available without restriction to the general public by acts not attributable to LICENSEE or its employees, students or faculty members, LICENSEE's obligations under this section shall not apply to such information after such time. Section 5.07 of the August 1, 1981 Agreement and Section 4.07 of the April 1, 1979 Agreement contain similar provisions excluding information that is or becomes generally known from the University's obligation of confidentiality. Thus, there can be no claim of misappropriation based on use or disclosure of generally known information, regardless of where the numerous authors of Net2 obtained that information. In this case, therefore, the only issue to be determined is whether by releasing Net2 to non-licensees, the University disclosed to non- licensees any code, method or concept that can be considered a trade secret. USL has not made and cannot make any such showing. B. USL Cannot Demonstrate That Net 2 or BSD/386 Contain any USL Trade Secrets The affidavit of USL's expert misses the point entirely since he has failed to identify any original licensed code, methods or concepts contained in Net2 that still qualified as USL trade secrets at the time of Net2's release. Although at one time portions of the code, methods and concepts may have been trade secrets, UNIX source code has now been so widely licensed and is so well-documented in the technical literature that its internal operation, algorithms, design, sequence, structure and organization, and many portions of the specific code, are generally known or readily ascertainable. Indeed in many respects it has become a standard in the industry. The Affidavits submitted by Keith Bostic, Kirk McKusick and David Kashtan demonstrate conclusively that USL has failed to establish the presence of any USL trade secrets in Net2 or BSD/386, since all the items USL relies on in this motion are disclosed in publicly available materials and are commonly known in the industry. Thus, USL's trade secret claim cannot possibly succeed. IV. USL CANNOT SHOW IRREPARABLE HARM USL also cannot meet the requirement of irreparable harm. Although USL has submitted a lengthy declaration outlining the supposed harm it will suffer if lower-priced competition is permitted, USL ignores the fact that Net2 has been distributed to hundreds of thousands of individuals and remains freely available from at least 66 different sources. At least one other company has already widely distributed a complete system based on Net2 and USL has taken no action against that company. (See Adams Aff., 9 -11). Moreover, a number of other UNIX clones which share many of the same features USL relies on in its motion, have been available for years. Although these systems are inferior to BSDI's, they disclose and make use of the same types of information BSDI is alleged to have misappropriated. (Bostic & McKusick Decl., ~ 28.1.3). Thus, in reality, USL cannot show any urgent need to put BSDI out of business pending the trial in this action. BSDI, on the other hand, will suffer irreparable harm if the preliminary injunction USL requests is granted. BSDI will be forced out of business and will have no way to finance its defense of this lawsuit. (Adams Aff., ~ 14). USL not only seeks to keep BSDI's only product off the market, but also seeks to force BSDI to fire all of its employees based on the fact that they, like so many other experienced computer programmers, have had access at some point to UNIX source code. This is a frivolous request that, if taken seriously, would strike fear into the hearts of programmers all over the world, who would also potentially be subject to such restrictions on their employment opportunities as a result of their access to UNIX source code as students or employees. V. The Public Interest Favors Denial of the Preliminary Injunction. BSDI makes its system available to programmers who could not afford [REDACTED] for a source license from USL. USL is able to charge this exorbitant fee only because of the lack of competition. Denial of USL's motion thus will serve the public interest by promoting competition. Denial will also prevent USL from unjustly inhibiting the employment opportunities of the thousands of computer programmers who have had access to UNIX source code. VI. EVEN IF USL COULD ESTABLISH THAT NET2 CONTAINED SOME USL PROPRIETARY INFORMATION, THE INJUNCTION IT SEEKS IS OVERLY BROAD. A. An Injunction Against the Entire BSD/386 Program Would Be Impermissibly Overbroad. Injunctive relief "must be tailored to remedy the specific harms shown," Davis v. Romney, 490 F.2d 1360, 1370 (3d Cir. 1973), and should "be no broader than necessary to provide full relief to the aggrieved plaintiff." McLendon v. Continental Can Co., 908 F.2d 1171, 1182 (3d Cir. 1990); see also Ameron. Inc. v. U.S. Army Corps of Engineers, 787 F.2d 875, 890 (3d Cir. 1986) cert. dismissed, 488 U.S. 918 (1988) (an injunction which exceeds what is required to provide plaintiff with complete relief is contrary to "jurisprudence governing injunctive remedies."); Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 84 (3d Cir. 1982) ("The injunctive decree must be broad enough to protect the plaintiff, yet sufficiently narrow to avoid affording undeserved patent protection, and to permit the defendant to participate in activity outside the intended scope of the injunction"). This Court thus has the discretion and the responsibility to "mold its [preliminary injunction] decree to meet the exigencies of [the] particular case." 11 Wright & Miller, Federal Practice and Procedure: Civil 2947, at 424 (1973). USL would have this court far exceed those boundaries by granting a preliminary injunction whose sweeping effect would enjoin the entire BSD/386 product, even though USL accuses only 80 of the more than 8000 files, and points to only a few lines of similar code out of 1.5 million. Given that the Net 2 files were written separately by thousands of different authors over a period of many years, there would no basis whatsoever for finding copying as to all of them based on allegations or evidence against only one. Thus, even if USL could establish infringement as to a few lines of code, which as explained at length above it has not, there would still be no basis for preventing BSDI from using the remaining code in BSD/386: [I]f the infringing portion of defendant's work can be removed without destroying the usefulness of the remainder of the work, the whole of the work need not be enjoined. 3 Nimmer on Copyrights. supra, li.06[c], at 14-91-92; see also Orth- O-Vision. Inc. v. Home Box Office, 474 F. Supp. 672, 686 n.14 (S.D.N.Y. 1979) ("When the infringing portion of a defendant's work may be removed from the remainder, injunctive relief ought extend only to the former."); Breffort v. I Had A Ball Co., 271 F. Supp. 623, 625-26 (S.D.N.Y. 1967) (excluding from injunction prohibiting performance of a copyright infringing play the independent performance of original music created for the play); Craft v. Kobler, 667 F. Supp. 120, 125 (S.D.N.Y. 1987) (noting that injunction prohibiting sale of author's infringing biography nevertheless allowed author to revise the work so as to eliminate the infringing materials); Salinger v. Random House. Inc., 811 F.2d 90, 100 (2d Cir.) (same), cert. denied, 484 U.S. 890 (1987); International Film Service Co. v. Affiliated Distributors, 283 F 229, 235 (S.D.N.Y. 1922) (allowing defendant to remake movie so as to delete those scenes which infringed plaintiff's copyright); Colonial Book Co.. Inc. v. AMSCO School Publications Inc., 41 F. Supp. 156, (S.D.N.Y. 1941) (injunction must be limited to the eleven pages of defendant's work which infringed plaintiff's copyright). Otherwise, USL would be granted a monopoly over a huge volume of material which even USL admits was not copied. In Educational Testing, plaintiffs' request for a similarly broad preliminary injunction was rejected by this circuit. See Educational Testing, 793 F.2d 533, 545 (3d Cir. 1986). The plaintiff in Educational Testing, claiming that defendant infringed its copyright in certain test materials, sought to enjoin defendants' "use of information obtained from" plaintiff's copyrighted tests and from "adapting" any of plaintiffs' materials. Id. The court noted that such an injunction would prohibit legitimate uses of plaintiffs' work as well as legitimate original works by defendants. See also 3 Nimmer on Copyright, supra, 14.06[C], at 14-92-14-93. B. Plaintiff is Misusing its Copyright by Attempting to Enjoin All Or BSD/386. A misuse of copyright protection is found when a copyright holder attempts to utilize his copyright to gain protection beyond that which copyright law allows. When analyzing a copyright holder's conduct for misuse, the court does not look to the validity of the copyright, but rather to the manner in which the copyright is being used. qad. inc. v. ALN Associates. Inc., 770 F. Supp. 1261, 1266 n.14 (N.D. Ill. 1991). As the court noted in qad, "[n]o party can use the limited grant that a copyright confers to gain control of components over which it has no such right." Id. at 1266 The plaintiff in qad asserted copyright infringement of its computer software program, alleging that its entire program, of which it claimed defendant's was a derivative, was original with plaintiff. When it became apparent that, in fact, much of plaintiff's program was itself copied from yet another program, the court denied plaintiff any relief even with regard to those portions of defendant's program which were infringing. The court noted that "[w]hen a copyright holder attempts to use legal proceedings to protect an improper extension of a copyright, the court may refuse to enforce the copyright." See also Lasercomb America. Inc. v. Reynolds, 911 F.2d 970, 976-78 (4th Cir. 1990), aff'd without op., 961 F.2d 211 (1992) (plaintiff was guilty of misuse of copyright where it licensed copyrighted program on the condition that licensee refrain for 99 years from creating a competing program). Plaintiffs in this action likewise are attempting to use their alleged copyright to enjoin BSDI's use not only of those programs accused of-being infringing, but of thousands of other files, consisting of hundreds of computer programs, that USL does not even accuse. In addition, USL improperly seeks to enjoin the use of standard file names and mnemonics that are protected neither by copyright nor trade secret law. For all of the reasons outlined above, plaintiffs cannot gain the expansive preliminary injunction that they seek in this action. Although no injunction is warranted, to the extent the Court grants any injunction, it must be narrowly tailored to the few lines of code USL relies upon. Conclusion Both USL's trade secret claim and its copyright infringement claim are fundamentally flawed. One because the information allegedly misappropriated is not in fact secret. And the other because USL has no valid copyright in 32V and can show no substantial copying of protectible expression. A grant of USL's motion will put BSDI out of business permanently and will prevent it from having the means to defend itself in this action. A denial of USL's motion will simply maintain the status quo, since BSDI has been selling BSD/386 for over twelve months and the Net2 code is available from dozens of other sources. For all the foregoing reasons, BSDI respectfully requests that USL's motion for preliminary injunction be denied in its entirety. Respectfully submitted, SAIBER SCHLESINGER SATZ & GOLDSTEIN Attorney f or Defendant Berkeley Software ~ Design, Inc. JAMES H. FORTE A Member of the Firm Dated: January 8, 1992 -56-