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UNITED STATES DISTRICT COURTMIDDLE DISTRICT OF FLORIDATAMPA DIVISIONWAYNE R. GRAY,Plaintiff,v.Case No. 8:06-cv-1950-T-33TGWNOVELL, INC.; THE SCOGROUP, INC.; and X/OPENCOMPANY LIMITED,Defendants. ______________________________/
ORDER 
This matter comes before the Court upon consideration ofDefendant X/Open’s Motion for Summary Judgment on Liabilityand Damages (Doc. # 85), filed on June 26, 2008; DefendantNovell’s Motion for Summary Judgment on Counts Three, Four,Five, Six, and Seven of Plaintiff’s Complaint (Doc. # 90),filed on June 27, 2008; and Plaintiff’s Motion for PartialSummary Judgment as to Liability against Defendants Novell andX/Open (Doc. # 146), filed on January 12, 2009; and theresponses thereto.
I.Background A.Novell, X/Open, SCO, and the UNIX Trademark
Novell, Inc., is a global software company incorporatedin Delaware. (Doc. # 1 at 12.) The SCO Group is also aleading marketer of software technology and a Delaware
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X/Open has submitted a redacted version of this term(continued...)
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corporation. (Id. at 13.) X/Open Company Limited, alsoknown as The Open Group, is a United Kingdom corporation.(Id. at 14.) X/Open is an international technologyconsortium that owns trademarks for various computer systemsand licenses those marks to companies whose products conformto its quality control standards. (Doc. # 85 at 8.)The original owner of the UNIX trademarks was AmericanTelephone and Telegraph Company (“AT&T”), which registered themarks with the United States Patent and Trademark Office(“PTO”) in 1986 under Registration Numbers 1,392,203 and1,390,593. (Id. at 11.) AT&T later assigned the UNIX marksand registrations to Unix Systems Laboratories, Inc. (“USL”)and the transfer was registered with the PTO in May 1990.(Id.) USL was purchased by Novell in April 1994, thetrademarks were transferred to Novell, and the transfer wasrecorded with the PTO on July 27, 1994. (Doc. ## 1 at ¶ 24;85 at 11.)In October 1993, Novell, X/Open, and non-parties Digital,HP, IBM, and Sun, signed a non-binding term sheet settingforth a framework for a future definitive agreement among thenamed entities.
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(Doc. # 86-5.) Pursuant to this term sheet,
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(...continued)sheet as Exhibit 4 to its Motion for Summary Judgment. (Doc.# 86-5.)
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X/Open has submitted a redacted version of thislicensing agreement as Exhibit 5 to its Motion for SummaryJudgment. (Doc. # 86-6.)
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the entities agreed that, in furtherance of their joint visionof “the UNIX software business being characterized by a singlespecification,” Novell would “license the ‘UNIX’ brand throughX/Open” to companies whose products conform to specifiedquality-control standards. (Id. at 3-4.) The term sheetfurther provided that at the end of three years or less,Novell would transfer ownership of the UNIX brand to X/Open,barring certain adverse financial consequences. (Id. at 3.)On May 10, 1994, Novell and X/Open executed an agreementthat, according to X/Open, embodied the terms of the 1993 termsheet.
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(Doc. ## 85 at 11; 86-6.) In the agreement, Novell(1) granted X/Open “an exclusive, perpetual, irrevocablelicense to use, and sub-license to third parties the use of,”the UNIX trademark; (2) gave X/Open responsibility forlicensing the mark to companies whose products conform tocertain quality criteria; (3) authorized X/Open to use thetrademark attribution statement “UNIX is a registered trademark licensed exclusively by X/Open;” and (4) agreed to assign
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