Re: Politics and Authorship in Scientific Journals

On Fri, 18 Jun 1999, Terry Carroll <carroll[_at_]tjc.com> wrote:
>
> On Thu, 17 Jun 1999, Kerry L. Konrad <k_konrad[_at_]stblaw.com> wrote: >
> >
> > Responding to Bruce Hayden's question, I recall that Judge Hatter in
> > the Ashton-Tate case against Fox initially ruled that the registration
> > for dBase II was invalid for failure to disclose that it was based on
> > a preexisting work, namely the Vulcan program that Richard Ross had
> > written while employed at the Jet Propulsion Laboratory. I think Bob
> > Kohn, later GC of Borland and then an executive at PGP (Pretty Good
> > Privacy), and the co-author (with his father) of a book that has been
> > mentioned favorably on this list (The Art of Music Licensing), had
> > prepared the registration and submitted an affidavit concerning his
> > intent. If my recollection is correct, Judge Hatter changed his ruling
> > after Ralph Oman, then the Register of Copyrights, submitted an
> > affidavit about CO registration practices.
>
> My memory of this was that Hatter ruled that the _copyright_ was
> invalid due to the error in registration. It appeared to be confusion
> between the copyright and the registration of the copyright, rather than
> some theory like copyright misuse or inequitable conduct. Initially, as I
> recall, even after Oman's affidavit, Hatter stuck to his ruling. The
> Ninth Circuit, if I recall correctly, affirmed, but afterwards, Hatter
> changed his own ruling.
>
> Note all the weasel phrases like "as I recall" above.

I remember following this case at the time because it raised so many interesting issues. As I recall (weasel phrase), Judge Terry Hatter ruled that Ashton-Tate had intentionally refused to acknowledge the existence of Vulcan (by Wayne Ratliffe) or any other pre-existing works, prior to dBASE II or III. A-T's conduct was manifested in the copyright application and in responses to interrogatories and other discovery requests, which was more than a little bit ridiculous since Ratliffe and A-T had been fairly open over the years about the history of dBase. The judge considered this to be inequitable conduct and invalidated the entire copyright in dBase. As the judge saw it, it wasn't just a mistake on a copyright application, but an entire strategy of obstruction and obfuscation, and A-T needed to pay the price for its strategy. For a while, A-T was one of the largest sellers of public domain software. :-)

While the case was on appeal to the Ninth Circuit, Judge Hatter issued an order that reversed, rescinded or vacated his earlier order invalidating the dBase copyright. That led to an interesting question as to whether a trial judge still has jurisdiction over one of his orders after it was appealed to the 9th Circuit. I believe the 9th Circuit ruled that it (not Judge Hatter) had jurisdiction at that time, but the 9th Circuit remanded back to Judge Hatter for further proceedings. The 9th Circuit noted that Judge Hatter's vacation of his own order was an indication that he had, perhaps, reconsidered.

As I recall, on remand, Judge Hatter did vacate his original order, thus restoring the copyright in dBase. He agreed with the substance of Register Oman's letter (as well as other subsequent commentary) that any defect in a copyright application or registration should be addressed by amending it rather than cancelling it, and that any Rambo-like litigation tactics should be addressed by sanctions other than terminating the copyright.

The case later ended with a whimper and a sigh, as I recall. Microsoft bought Fox Software, and Borland bought A-T. The Dept. of Justice required Borland to do a number of things, including terminating the suit against Fox, which Borland did.

--Fred

Frederic M. Wilf Technology & Intellectual Property Law Saul Ewing Remick & Saul Email fwilf[_at_]saul.com or fwilf[_at_]compuserve.com 1055 Westlakes Drive Firm URL http://www.saul.com/ Berwyn, PA 19312, U.S.A. Wilf URL http://www.saul.com/lawyers/5082.html Received on Mon Jun 21 1999 - 20:21:05 GMT