Tuesday, January 11, 2011

Did Novell, SCO and X/Open conspire to hide the true owner of the UNIX trademark??? No.

I've written previously about who owns the UNIX copyrights. Another dispute has been waged concerning the UNIX trademark.

A brief history. AT&T developed an operating system in 1969 and called it UNIX. In 1986, it sought a couple of federal trademark registrations. It then transferred ownership of the mark and registrations to its subsidiary, UNIX Systems Laboratories (USL).

USL then merged into Novell. As part of that merger, Novell acquired the UNIX trademark. Much of the computer industry (Novell included) then agreed that it was in the industry's best interest to transfer Novell's UNIX-trademark licensing business into a non-profit organization. That's X/Open's role in this story. A little later, Novell sold off some assets, including its UNIX business, to SCO.

Confused? I made a chart.


Wayne Gray started a business in the late 90s which he ended up calling iNUX. He applied for a trademark registration for "iNUX," but X/Open opposed that registration claiming it was confusingly similar to its UNIX mark. Gray did not passively respond -- he launched his own investigation into X/Open and ownership of the UNIX trademarks. In a nutshell, Gray argued that X/Open fraudulently opposed the iNUX mark because X/Open did not really own the UNIX trademark, and had claimed it did in the opposition proceeding.

Neither the district court nor the Eleventh Circuit agreed with Gray. Gray argued that SCO was the real owner of the UNIX trademark because it had received all UNIX trademarks by way of an Asset Purchase Agreement between Novell and SCO. The operative language of the Asset Purchase Agreement assigned
[t]trademarks UNIX and UNIXWARE as and to the extent held by [Novell]
(emphasis added). The courts refused to read out the limiting language at the end and by way of contract analysis held that Novell assigned what it had -- not what it had already assigned to X/Open. Thus, X/Open was the proper owner of the UNIX trademark and Gray could not maintain any of his causes of action against the three defendants because each claim was premised on X/Open's purported fraud in claiming ownership of the mark.

Summary judgment affirmed.

Gray v. Novell, Inc., No. 09-11374 (11th Cir. Jan. 7, 2011)

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