Jason 说：

In the Supreme Court of the United States

DONGXIAO YUE,

Applicant,

v.

STORAGE TECHNOLOGY CORPORATION; SUN MICROSYSTEMS INC.; MICHAEL MELNICK; JULIE DECECCO; MICHAEL P. ABRAMOVITZ; LISA K. RADY; JONATHAN SCHWARTZ,

Respondents.

ON APPLICATION FOR STAY FROM THE UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT

(Ninth Circuit Appeal Nos. 08-15927 and 08-17034)

(District Case No. 5:07-CV-05850-JW (N.D. Cal))

To the Honorable John G. Roberts, Chief Justice of the Supreme Court of the United States;:

NOW COMES the Plaintiff-Applicant, Dongxiao Yue, a citizen of the People’s Republic of China, the author of the PowerRPC software, pursuant to United States Supreme Court Rule 23 hereby applies for a Stay of the Order of the Northern District of California in the Yue-Sun case below that requires him to pay copyright defendants $219,949.90 attorneys’ fees under Section 505 of the U.S. Copyright Act.

Defendants made unlimited copies of Plaintiff’s PowerRPC software. They concealed the software piracy and misled Plaintiff for years. The District Court dismissed Plaintiff’s lawsuit and subsequently ordered Plaintiff to pay $219,949.90 of attorneys’ fees to Defendants under 17 U.S.C. §505.

Plaintiff’s motion for stay of the enforcement of the fee award was denied at the District Court on November 19, 2008 and denied by the Ninth Circuit on December 5, 2008. Defendants have applied for Writ of Execution/Possession of Personal Property to levy Plaintiff’s assets, primarily his family home.

The Magistrate’s award of attorneys’ fees is contrary to the American Rule established by this Court in 1898, and improperly rewards Defendants’ attorneys for violating the District Court’s Local Rules. The District Court’s refusal to review that Award is contrary to the requirement of F. R. Civ. Proc. Rule 72(b)(3) that it do so. Plaintiff’s right to due process has been denied at key junctures. All of the foregoing errors serve to thwart Congress’s intent in enacting the Copyright Law.

Facts on Defendants’ Software Piracy

Since 1994, Plaintiff Dongxiao Yue has been developing the PowerRPC software. In July 1996, when the software was near completion, Yue founded the company Netbula, LLC to market PowerRPC. Yue always owned the copyright of the pre-Netbula PowerRPC code, with U.S. Copyright Registration No. TXu 1-576-987 (the “`987 Copyright”). See Exhibit to Stay, Page A.1. Yue owned other PowerRPC copyrights via a written assignment.

In 2000, defendant StorageTek bought licenses for distributing 1000 copies of the PowerRPC runtime software. Soon afterward, StorageTek informed Yue that it had stopped distributing PowerRPC. Unknown to Yue, StorageTek incorporated PowerRPC into a product called LibAttach, and vastly exceeded the 1000-copy limit. Defendants committed the software theft knowingly. On March 2, 2004, Lisa K. Rady, the program manager of the LibAttach software, wrote in an internal email:

As you can see, we have exceeded the 1,000 distributions that we had right to with Netbula…. I think it is obvious that engineering has not and did not monitor the distributions on this product.

See A.4. In another email dated March 15, 2004, Thomas J. Murray, Director of Engineering at StorageTek, wrote:

We either need to increase the Netbula license or put a stop-ship on the LibAttach product, because we have shipped LibAttach copies up to the limit of the current Netbula license (Netbula is embedded in our LibAttach product.)

See A.5. On June 28, 2005, responding to an internal report on Sun’s PowerRPC usage, Michael Melnick wrote (A.6):

The number that Holly has provided and thought it may be low causes quite a problem for you… You will need to order additional distribution rights or we will be in breach of the agreement.

Despite its managers’ full knowledge of the unauthorized copying of the PowerRPC software, Sun went on to grant its customers the right to make unlimited copies of PowerRPC, while concealing the piracy from Plaintiff. An internal Sun project management document admitted that the PowerRPC software “has been copied, uncontrolled, for several years.” A.7. As a result, Sun caused unlimited distribution of PowerRPC by third parties. The First Amended Complaint gave detailed evidence, such as the email exchanges among the individual defendants

Procedural History

In December 2006, Netbula filed a copyright infringement lawsuit against Sun Microsystems and StorageTek based on U.S. copyright registration TX 6-211-063 (the “`063 Copyright”).

On October 22, 2007, Yue filed a pro se motion to intervene and join the Netbula-Sun action, based on his personally owned copyrights[1]. A.2-3.

Discovery in Netbula-Sun was ongoing, and there was no dispositive motion pending at the time. On October 23, 2007, Netbula deposed Sun’s 30(b)(6) witness. A.39.

On October 31, 2007, in an ex parte proceeding without Yue’s participation, the presiding judge of the Netbula-Sun case, Martin J. Jenkins, vacated “Non-Party Dongxiao Yue’s” motion to intervene in Netbula-Sun. A.8.

With his effort to join Netbula-Sun case rebuffed, on November 19, 2007, Yue filed this copyright case against Defendants for infringing the `987 Copyright entitled “YUE PWRPC” and two other copyrights[2], asserting ten claims of willful copyright infringement. The Yue-Sun case was assigned to district judge Susan Illston. A.13-14.

The next day, Yue went to the District Court for the hearing of his pro se motion to enforce a protective order in another case[3]. At the beginning of the hearing, Judge Jenkins asked Yue if Yue was Mr. Yue, then he told Yue to “cease and desist” from filing any paper before the court. When Yue tried to make an argument, Judge Jenkins cut him off and said: “Mr. Yue, I am going to have you taken out if you don’t be quiet.” A.14.

On January 2, 2008, Yue filed a motion for default in Yue-Sun. After the completion of Yue’s motion for default, on January 10, 2008, the District Court entered a backdated order relating Yue-Sun to Netbula-Sun and reassigned Yue-Sun from Judge Illston to Judge Jenkins. A.11.

On January 18, 2008, Judge Jenkins dismissed the copyright claims in Netbula-Sun. A.19.

On March 4, 2008, Judge Jenkins dismissed Yue-Sun with prejudice, stating that Yue was “virtually represented” in the Netbula-Sun case and he should have filed his claims in Netbula-Sun.

On March 18, 2008, Defendants filed a motion for attorney’s fees, seeking $92,000.00. On April 8, 2008, Defendants filed a declaration asking for an additional $42,000.00. A.41.

On April 24, 2008, in a telephone conference, Defense counsel Jedediah Wakefield threatened to incur large amount of fees, seek it from Plaintiff, causing “serious repercussions” for Plaintiff’s “personal financial stability.” Plaintiff filed a motion to strike Defendants’ fee motion for their failure to meet-and-confer with Plaintiff before filing a fee motion, as required by Northern District of California Local Rule 54-6. A.41.

On July 23, 2008, Defendants submitted a supplemental declaration asking for $87,000 additional fees. A.42.

On August 6, 2008, magistrate judge Elizabeth D. Laporte recommended that Plaintiff’s motion to strike to be denied and Defendants to be awarded $219,949.90 in attorney’s fees and costs under 17 U.S.C. §505 as prevailing copyright defendants[M1] . A.21-30.

On August 20, 2008, Plaintiff filed two duly noticed motions for de novo review of the magistrate judge’s report and recommendation with specific objections: (1) the “Motion for De Novo Determination of Defendants’ Motion for Attorney’s Fees” (Doc. 146 below; See A.32-61); and (2) the “Motion for De Novo Determination of Plaintiff’s Motion to Strike” (Doc. 145 below; See A.31). Both motions were noticed for hearing on November 3, 2008.

On September 5, 2008, the district court declined de novo review and vacated the hearing for the motion in docket 145. The order made no mentioning of Docket No. 146 or the objections raised therein. A.62-63.

Defendants have applied for a Writ of Execution to levy Plaintiff’a assets. A.66. Plaintiff’s motion to stay of enforcement of the fee award was denied in the District Court and the Ninth Circuit. A.65, 67.

ARGUMENT

A. Plaintiff is Likely to Succeed on the Merits of Appeal.

1. Awarding fees to software pirates would serve injustice and damage U.S. copyright law.

As shown by the emails by Rady, Melnick and Murray, Sun and StorageTek knowingly distributed PowerRPC without buying licenses. A.4-7. Defendants concealed the piracy from Plaintiff and misled Plaintiff for years. These facts were not mentioned in various court orders, but they are in the Complaint and other court record and are undeniable. Awarding fees to Defendants is awarding software piracy.

Under the American rule, parties “bear their own attorney’s fees unless Congress provides otherwise.” Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994). The attorneys’ fees were awarded under Section 505 of the Copyright Act. A.21-30. That award was in contrary to Copyright Act and the decisions interpreting the scope of its attorney fee provisions.

As a matter of policy, rewarding Sun for pirating software weakens the Copyright Law, by encouraging other powerful businesses to follow Sun’s example and violate the Copyrights of less powerful inventors contributing to the development of arts and technology.

2. Dismissal based on virtual representation ran counter to Supreme Court decision in the case of Taylor v. Sturgell

The District Court dismissed Plaintiff’s claims under the doctrine of virtual representation, which had been disapproved in Taylor v. Sturgell, 128 S. Ct. 2161 (June 12, 2008). The Magistrate Judge, in her recommendation, stated the two grounds for finding privity: (1) “Plaintiff was an assignee;” and (2) “Plaintiff was virtually represented in Netbula’s case as a result of his intertwined relationship with Netbula.” A.25:12-15.

Both grounds for finding privity were erroneous, because “due process considerations make adequacy of representation a prerequisite to privity.” Kourtis v. Cameron, 419 F.3d 989, 996 (9th Cir. 2005).

The `987 Copyright (YUE PWRPC) was created before the existence of Netbula. There was no assignment as regard to the `987 Copyright. Yue always owned this copyright. The `847 and `697 copyrights were assigned to Yue, but they were never part of the Netbula’s action. “The only copyright at issue” in Netbula’s action was the `063 Copyright. A.10, 16.

Although the `063 Copyright asserted in Netbula’s action was a derivative work of the YUE PWRPC (`987) Copyright, elements drawn from a pre-existing work remain the property of the owner of the pre-existing work and “[i]t is irrelevant whether the pre-existing work is inseparably intertwined with the derivative work.” Stewart v. Abend, 495 U.S. 207, 223 (1990). None of the `987, `847 and `697 copyrights were represented in Netbula-Sun, therefore there was no privity between Netbula and Yue on the `987, `847 and `697 copyrights alleged in Yue-Sun. Under Ninth Circuit law, Netbula did not even have standing to sue on Yue’s copyrights such as the YUE PWRPC.

The District Court first excluded “Non-Party” Yue from Netbula-Sun by vacating Yue’s motion to intervene and join Netbula’s action; then it dismissed Yue’s action on the ground that Yue should have joined Netbula’s action. No matter what Yue tried to do, he could not have his day in court to protect his rights.

3. Defendants are not prevailing parties for fee award purposes under the Copyright Act because the District Court made no ruling on the merits of the copyright claims

The dismissal order made no mentioning of any of the infringement facts. It did not analyze the ten infringement claims in the complaint. A.44. Because the District Court did not decide the merits of the copyright claims, Defendants are not prevailing parties under the Copyright Act. As the First Circuit held in Torres-Negrón v. J & N Records, 504 F.3d 151, 164 (1st Cir. 2007):

We have made no ruling on [plainitff’s] claims of infringement. Therefore, [defendant] has not prevailed on the merits of the copyright infringement allegations and is not entitled to a fee award under the statute.

Without a ruling on the merits of the copyright claims, it would also be impossible to apply the factors identified in Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (such as frivolousness and objective unreasonableness). The Magistrate Judge, in analyzing the “objective unreasonableness” Fogerty factor for awarding fees under the Copyright Act, stated:

While Yue attacks Abramovitz’s credibility, he does not offer any factual basis for naming the particular two high level officers in this action, revealing that the allegations against them are speculative.

A.26, 57. However, the District Judge never made any factual findings. Yue provided sufficient facts in the Complaint to alleged vicarious and contributory liability of the two Sun officers, including the allegation that they played the delaying game with Plaintiff while allowing the infringement to continue at Sun and its customers. Moreover, as long as Plaintiff gave defendants a fair notice of the claim and the ground upon which it rests, “[s]pecific facts are not necessary.” Erickson v. Pardus, 127 S. Ct. 2197, 2200 (2007).

4. The fee award was not properly determined because the District Court did not perform de novo review of magistrate judge’s report and recommendation

The District Court’s “ORDER … DENYING MOTION FOR DE NOVO REVIEW” gave the following reason for declining de novo review:

Since the Court has wide discretion to consider and reconsider a magistrate’s recommendation, the Court finds that Judge Laporte’s award of attorney fees and costs are reasonable and ADOPTS Judge Laporte’s Report and Recommendation.

A.63. But, Federal Rule of Civil Procedure 72(b) (3) says that “[t]he district judge must determine de novo any part of the magistrate judge’s disposition that has been properly objected to.” The Sixth Circuit has held that:

the district court is obliged to make clear and adequate findings of fact, expressly addressing Plaintiff’s specific timely objections. Otherwise, the reasonableness of the award of attorney’s fees will be virtually unreviewable.

Massey v. City Of Ferndale, 7 F.3d 506, 510 (6th Cir. 1993). Plaintiff raised twenty-nine (29) objections on law and fact that were dispositive of the fee award, but the district court did not mention any of them in its order denying motion for de novo review. Since the district court did not even mention Plaintiff’s specific objections, the fee award was not properly decided.

5. Yue was Denied Due Process from the Beginning to the End

The U.S. Constitution prohibits deprivation of property without due process of law. Three of the rudimentary elements that have been identified as basic to one’s receipt of due process of the law are: (1) the opportunity to be heard “at a meaningful time and in a meaningful manner”; (2) timely and adequate notice; and (3) a tribunal whose conclusion will be based “solely on the legal rules and evidence adduced at the hearing [and who is] of course . . . impartial.” Goldberg v. Kelly, 397 U.S. 254, 267-71 (1970). Measured against this standard, the denial of Yue’s due process was total.

1) October 31, 2007, in an ex parte proceeding, Judge Jenkins vacated Non-party Yue’s pro se motion to intervene and join Netbula-Sun;

2) November 20, 2007, Judge Jenkins issued a spontaneous “cease and desist” order prohibiting Yue from filing papers;

3) December 14, 2007, Judge Jenkins granted Sun’s oral motion to delay answering the Yue-Sun complaint while forbidding pro se Plaintiff Yue to speak (The Yue-Sun case wasn’t even assigned to Judge Jenkins at the time);

4) March 4, 2008, Judge Jenkins dismissed Yue-Sun with prejudice by concluding that Yue was virtually represented in Netbula-Sun, no decision was made on the merits of the copyright claims;

5) March 18, 2008, Defendants filed their fee motion without conferring with Plaintiff;

6) Plaintiff had no opportunity to challenge Defendants’ subsequently filed declarations seeking $129,000.00 additional fees;

7) The Magistrate Judge’s report and recommendation did not even list the reasonable hourly rates and reasonable hours spent by the attorneys;

Plaintiff’s motion for de novo determination of the fee award was ignored completely. The district court’s order adopting the Magistrate Judge’s recommendation did not even mention Plaintiff’s motion for de novo determination of the fee award.

As shown above, Plaintiff was denied due process at key junctures of the case. His motion to join Netbula’s action was never heard, it was taken off calendar in an ex parte proceeding; he was not given any chance to argue against that “cease and desist” order; he did not have any prior notice of Defendants’ request to enlarge time in answering the Yue-Sun complaint and was denied the right to speak against it; he did not have the day in court to litigate the merits of his copyright claims; he did not have the opportunity to contest the fee demands; the District Court refused to conduct de novo review of the Magistrate Judge’s report and recommendation, and completely ignored the twenty-nine (29) specific objections raised in his motion for de novo determination (Docket 146 at the District Court).

Local Rule 54-6(b) of the Northern District of California says counsel “must” meet-and-confer before filing a motion for attorneys’ fees. Defendants did not make any effort to meet-and-confer. They admitted it was an “oversight on counsel’s part.” The district court excused Defendants’ non-compliance then awarded them over $10,000.00 allegedly spent on defending their violation of the local rule of the District Court.

B. Plaintiff Would be Irreparably Injured Absent a Stay

As Plaintiff declared at the District Court and the Ninth Circuit, the only way for Plaintiff to come up with the $219,949.90 is to sell his family home. The consequence for Plaintiff’s family to lose their home would be harsh in this cold winter. The trauma inflicted on Plaintiff’s children would be irreparable. Plaintiff attempted to negotiate with Defendants to no avail — they would not accept installment payments. They have applied for Writ of Execution to possess Plaintiff’s personal property. A.66.

Sun has authorized numerous third parties to make unlimited copying of Plaintiff’s software. Plaintiff suffers irreparable harm from Defendants’ copyright infringement. Defendants are using the fee award to acquire Plaintiff’s copyrights and other assets, leading to deprivation of Plaintiff’s real and intellectual property.

C. A Stay Will Not Substantially Injure the Other Parties

Sun Microsystems has pirated vast number of copies of PowerRPC and profited immensely from the piracy. There is no prejudice to Defendants if the $219,949.90 fee award is stayed pending appeal.

D. The Public Interest in Copyright Protection Favors a Stay

This PowerRPC infringement case has been widely reported in China and the U.S. Sun’s conduct was typical software piracy. Decisions in this case will have profound impact on copyright protection in China and U.S. Software pirates, big and small, domestic and foreign, can readily borrow the legal arguments Sun used in this case and related cases. Absent a stay, Plaintiff will not be able to maintain his appeal; the erroneous copyright decisions below will stand as the law of the United States and negatively impact the rights of U.S. copyright holders.

CONCLUSION

For the reasons stated above, Plaintiff respectfully requests that the United States Supreme Court grant a stay pending appeal of the order requiring Plaintiff to pay $219,949.90 to copyright defendants.

Respectfully submitted,

DATED: December 8, 2008

_______________________

Dongxiao Yue
Plaintiff-Applicant
In Pro Se

CERTIFICATE OF SERVICE

I hereby certify that on December 8, 2008, I served the foregoing Application for Emergency Stay on Defendants-Respondents via First Class Mail, postage fully-paid at the address below.

Laurence Pulgram

Jedediah Wakefield
Liwen Mah

Fenwick & West, LLP

555 California Street, Suite 1200

San Francisco, CA 94104

Ph. 415.875.2300

Fax: 415.281.1350

I also mailed a copy of the Application on

Zhou Wenzhong

Ambassador of China to the U.S.

2300 Connecticut Ave., NW

Washington, D.C. 20008

DATED: December 8, 2008

__________________

DONGXIAO YUE

Pro Se

CERTIFICATE OF COMPLIANCE WITH WORD COUNT LIMITATIONS

I certify that the motion contains no more than 3,200 words (including footnotes).

Dated: December 8, 2008

________________

Dongxiao Yue

[1] Defense counsel had long acknowledged that Yue owned the copyrights of part of the code. For instance, on January 16, 2008, Defense counsel wrote in a motion: “there is a common question of whether Yue or Netbula holds the copyrights in the software, and what parts are owned by each.” A.12.

[2] The other two copyrights are: the “00-SDK” code, with Registration No. TX 6-437-847 (the “`847 Copyright) and the “2K4” code, with Registration No. TX 6-491-697 (the “`697 Copyright). None of these three copyrights was part of the Netbula-Sun litigation.

[3] Sun’s counsel had used confidential documents from the related case in other cases.

[4] Mr. Wakefield did not notice his appearance in the Yue-Sun case until January 7, 2008.

Jason 说：

http://www.american-justice.org/index.pxe/ctype=Page/site_id=6/objid=35/curloc=Cat:19

SPECIFIC OBJECTIONS (Nos. 10 to 29)

In addition to the general objections above, Plaintiff raises the following specific objections to the Recommendation of the Magistrate Judge (“RMJ”).

RMJ at p.1:20-22: “On December 14, 2007, the Court ordered that no responsive pleadings would be due until such time as the Court set a date at the upcoming status conference. Despite this order, Plaintiff filed a motion for default judgment, which the Court denied.”

Objection 10: On December 14, 2007, Yue-Sun had not yet been reassigned to Judge Jenkins. The Executive Committee reassigned the case to Judge Jenkins after the completion of the briefing of the motion for default. “[T]he structure of the federal courts does not allow one judge of a district court to rule directly on the legality of another district judge’s judicial acts or to deny another district judge his or her lawful jurisdiction.” In Re McBryde, 117 F.3d 208, 225 (fn.11) (5th Cir. 1997). “No express or implied power is granted a chief judge to affect administratively, directly or indirectly, litigation assigned to and pending before another judge of the court.” United States v. Heath, 103 F. Supp. 1, 2 (D. Haw. 1952). The situation was at least confusing to Yue.

RMJ at p.2:3-5: “In that case, the Court granted Defendants’ motion for summary judgment based on its determination that Defendants’ use of Netbula’s software was within the scope of the 2000 and 2004 license agreements between Netbula and StorageTek.”

Objection 11: The summary judgment order in Netbula-Sun only addressed three narrow issues: (1) the number of users of the SDK; (2) the excess distribution of the PowerRPC runtime; (3) the non-assignment clause of the agreement. That order did not address other infringement claims. For more detailed analysis of the Netbula-Sun order, see Objection 22 below. In addition, the fraud, contract and unfair competition claims are ongoing in Netbula-Sun.

RMJ at p.2:6-7: “In determining that this action was duplicative of Netbula-Sun, the District Court found that this case presented the same claims already asserted.”

Objection 12: Plaintiff created a large table showing the differences between the two cases. These differences were not analyzed in the RMJ.

RMJ at p.2:7-10: “In fact, many of the allegations in the complaint that Plaintiff claimed constituted additional facts in this case were a verbatim restatement of Yue’s declaration presented in opposition to the Netbula-Sun defendants’ motion for summary judgment.”

Objection 13: Yue’s declaration in Netbula-Sun was not a complaint. The declaration could not be used to assert additional claims. Yue’s declaration had 88 paragraphs, with 45 exhibits, providing a lot of detail about Sun’s infringing activities and fraudulent conduct. The Netbula-Sun court only made reference to paragraphs 35, 40, 49 and Exhibit 13 (a release note of LibAttach Software) of Yue’s declaration6. The only references to Yue’s declaration in the Netbula-Sun summary judgment order were made in the following context:

StorageTek purchased at least one more license. (See Yue Decl., ¶¶ 35, 49; Defs.’ Mem. of P. & A. at 23.)

Plaintiff’s evidence consists of “release notes” regarding StorageTek’s LibAttach 1.1 software, which state that this software supports Windows 2000 systems, purportedly showing that it was developed for Windows 2000. (Yue Decl. ¶ 40; Exh. 13)

RMJ at p.2:10-11: “In addition, the Court granted summary judgment on the merits of claims in Netbula-Sun that were now presented in this case.”

Objection 14: The Yue-Sun case had 10 counts of infringement claims. The comparison table in Yue’s opposition brief showed that most of the claims were not in the Netbula-Sun case. In addition, the Yue-Sun case is about infringement of different intellectual property rights owned by Yue and not in Netbula-Sun. On December 14, 2007, Judge Jenkins clearly stated that Yue-Sun “is not completely overlapping with [Netbula-Sun].” Although Judge Jenkins granted summary judgment as to the copyright claim in Netbula-Sun on January 18, 2008, he made no decision on the merits of the 10 infringement claims in Yue-Sun.

RMJ at p.2:10-15: “Finally, the Court found that the two actions involved infringement of the same rights. Even though Plaintiff claimed that Defendants’ use of software impacted additional copyrights, Netbula should have asserted violations of those copyrights in Netbula-Sun, rather than filing this subsequent lawsuit.”

Objection 15: Yue-Sun involved the infringement of the `987, `847 and `697 copyrights by different types of infringing activities. The Magistrate Judge overlooked the following:

(1) The `987 Copyright was always owned by Yue. Netbula never had any standing to sue for this copyright. See, e.g., Triple Tee Golf, Inc. v. Nike, Inc., NO. 4:04-CV-302-A. (N.D.Tex. 8-10-2007) (the corporation plaintiff had no standing to sue on copyright owned by its founder Jack Gillig).

(2) After Netbula transferred the `847 and `697 copyrights to Yue in September 2007, it lost standing on these two copyrights. So Yue sought to join Netbula-Sun.

(3) Judge Jenkins and Sun specifically constrained the Netbula-Sun case to the `063 Copyright. The `063 Copyright was “the only copyright at issue” in the Netbula-Sun case. The `987, `847 and `697 copyrights were precluded from Netbula-Sun after Yue-Sun was filed.

(4) Yue was excluded from Netbula-Sun before and after Yue-Sun was filed (Catch-22).

RMJ at p.2:19-20: “The Court further found that Plaintiff entered into this assignment at least in part due to his desire to bring Netbula’s then pending copyright claims in his own name, on a pro se basis.”

Objection 16: There is no evidence that the purpose of the assignment of the `847 and `697 copyrights to Yue was for the purpose of bringing the action pro se. Yue had original ownership of the `987 Copyright. That copyright alone gave him the standing to prosecute his own copyright claims without any assignment, pro se7 or otherwise.

RMJ at p.2:21-23: “In dismissing the action, the Court noted that Plaintiff’s tactics have ranged from duplicative to nearly vexatious.”

Objection 17: The range of “from duplicative to nearly vexatious” was not precisely defined. There is a qualitative difference between “litigious” and “vexatious.” The heart of the vexatious litigant analysis is to inquire whether the district court made “`substantive findings as to the frivolous or harassing nature of the litigant’s actions.’” Molski v. Evergreen Dynasty, 500 F.3d 1047, 1059 (9th Cir. 2007) (per curium) (imposing pre-filing requirement for filing 400 lawsuits on near identical injuries). But, see also, Molski v. Evergreen Dynasty., 521 F.3d 1215, 1220-22 (9th Cir. 2008), for the dissenting opinion by Judge Kozinski and four circuit judges. At every step, Yue followed the court orders, the rules and the controlling authorities. The Court has not identified a single incident where Yue filed a frivolous paper or acted in a harassing manner.

RMJ at p.3:3-5: “This was not the first time Plaintiff attempted to avoid Judge Jenkins in this case, as he also sought leave to oppose Sun’s earlier motion to relate this case to Netbula-Sun.”

Objection 18: A litigant should not care who the judge is, but what the law is. But, when a judge orders a litigant to “cease and desist” from filing papers, it was impossible for that litigant to meaningfully proceed before the judge. Judge Jenkins “instructed Yue that he could not file motions, notice hearing dates, or speak in court unless he had leave of court or until he was given permission to represent himself.” Doc. No. 142, Netbula-Sun (Feb 8, 2008). How can a litigant present his case when the judge refuses to accept his papers or listen to his arguments?

Yue did not oppose relating Yue-Sun to Netbula-Sun and he never indicated that he would oppose relating Yue-Sun to Netbula-Sun. In all his papers, he stated that he would file a “response” if he was permitted to do so. A response is not necessarily an opposition. This distinction is important: all Yue wanted was to make sure that he could have his day in court once the case was reassigned to Judge Jenkins.

RMJ at p.4:26-28: “In addition, Plaintiff’s complaint did not raise a novel issue of law or fact or an objectively reasonable claim, as the same basic claims had already been previously rejected by the District Court.”

Objection 19: The Yue-Sun case was filed on November 19, 2008. The summary judgment in Netbula-Sun was issued on January 18, 2008, two months later. Yue could not possibly predict the outcome of Sun’s summary judgment motion back in 2007. All facts and known caselaws pointed to the conclusion that Sun’s conduct was plain software piracy. Yue could not be charged with the duty to predict the Court’s ruling from the parties’ papers either. After the completion of the briefing on the summary judgment motion in Netbula-Sun, on December 14, 2007, Judge Jenkins specifically stated that the Netbula-Sun copyright claim “may survive.” Even after the summary judgment order in Netbula-Sun, Yue had no reason to believe that Yue-Sun would be dismissed because Judge Jenkins stated that Yue-Sun is not completely overlapping with Netbula-Sun.

There were 10 copyright infringement claims in this case. Judge Jenkins had not made a finding on whether Plaintiff’s complaint raised novel issue of law or fact or an objectively reasonable claim. Yue didn’t have the chance to litigate the claims on the merits. The Court does not have jurisdiction to make such conclusions on the merits now when the case is on appeal.

RMJ at p.5:1-5: “Defendants’ degree of success in the action was total, as they established that Plaintiff could not assert new copyrights against Defendants for their use of Netbula’s software pursuant to licenses, the subject of the prior suit.”

Objection 20: The summary judgment order in Netbula-Sun was not final and it only covered certain narrow issues. To permanently extinguish Yue’s copyright claims and declare Sun’s conduct protected by the copyright law, there must be judgment on the merits. The Yue-Sun dismissal order did not make any finding on the merits of the 10 infringement claims.

RMJ at p.5:7-15: “Plaintiff’s lawsuit was also objectively unreasonable. In granting the motion to dismiss, the District Court recognized that the caselaw clearly prevented a party or those in privity from bringing a separate action involving the same subject matter against the same defendants in a different action. See March 4, 2008 Order at 3-6 (quoting relevant case law including Adams v. Cal. Dep’t of Health Servs., 487 F.3d 684 (9th Cir. 2007)).”

Objection 21: The Adams case was distinguishable from this case. In Adams, the same party-plaintiff filed a second suit against the same defendants while the first case is pending. In this case, a non-party to Netbula-Sun filed the second suit. Moreover, the Adams case was not a copyright case. As cited in Plaintiff’s briefs, the controlling authority for this situation is Kourtis v. Cameron, 419 F.3d 989 (9th Cir. 2005) (no privity relationship between an employer and an employee who filed successive copyright lawsuits). In Kourtis, a second copyright owner sued the same defendants on the same copyright years after the first suit adjudicated that the defendants did not infringe that copyright. Even though the Kourtis plaintiff was closely involved in the first suit and was deposed as a witness in the first suit, the Ninth Circuit found the second suit not precluded by the first one. In addition, the U.S. Supreme Court has recently disapproved the “virtual representation” grounds of non-party preclusion in Taylor v. Sturgell, 128 S. Ct. 2161 (June 12, 2008).

RMJ at p.5:16-22: “In addition, the District Court’s previous order in Netbula-Sun granting Defendants’ motion for summary judgment established that Defendants’ use of Netbula’s PowerRPC software was licensed and did not constitute infringement. See Jan. 18, 2008 Summary Judgment Order. The Court had already determined as a matter of law that the license between Netbula and StorageTek foreclosed a claim of copyright infringement.”

Objection 22: Judge Jenkins did not make a broad holding that “the license between Netbula and StorageTek foreclosed a claim of copyright infringement.” A licensee infringes when its copying exceeds the scope of a license. Whether defendants copied the PowerRPC software without a license or the copying exceeded the scope of a license is a factual inquiry. In the January 18, 2008 summary judgment order, Judge Jenkins decided the following issues:

1.

The User Count for the SDK license

The SDK licenses were purchased pursuant to a written purchase agreement drafted by defendant Michael Melnick. The agreement stated in part:

NETBULA grants STORAGETEK, a … license for use by STORAGETEK’s employees, consultants and subsidiaries for up to ONE user(s), for each of the licenses purchased, to use the PowerRPC SDK Product under Windows NT and 95/98 platforms; each user can only use the software on one computer….

The license is not transferable without written permission of Nebula…

Payment. You agree to pay NETBULA the amounts set forth in Exhibit C in full payment for the rights and licenses granted…

On the number of users, Judge Jenkins wrote:

First, turning to the number of users, both the 2000 and 2004 Agreements state that one user may use each of the licenses purchased. This provision does not limit how the software may be used… the limitation on the number of users is a separate contractual promise, or covenant, that does not limit or condition the use of the license. Therefore, because this provision is not a limitation on the scope of the license, Plaintiff is not entitled to a copyright infringement claim on this issue.

Plaintiff could not find any prior authority which held that a “one user on one computer’ restriction “does not limit or condition the use of the license.” Thus, Judge Jenkins’s January 18, 2008 order established a new precedent unknown to Yue when he filed the instant action in 2007. Even so, Judge Jenkins’s conclusion was a narrow one. In fact, in the same section of the order, Judge Jenkins recognized that the platform restrictions “to use the PowerRPC SDK Product under Windows NT and 95/98 platforms” did “limit the scope of the license itself.” Regarding the StorageTek’s emails indicating they developed software for Windows 2000, Judge Jenkins wrote that “Plaintiff offers these communications… to show that StorageTek distributed software for users on unlicensed platforms,” leaving such acts open for infringement claims.

The Yue-Sun action, filed two months before that order, alleged different infringing activities. On the infringement of the SDK, the Yue-SunYue-Sun complaint alleged that Sun/StorageTek destroyed evidence of the infringement by erasing the contents of computers. Counts I, II, III, V and VII of the FAC. complaint alleged that Sun/StorageTek infringed the SDK copyright by exceeding both the number of users and the number of computers. Moreover, the

2.

The Excess Distribution of PowerRPC

The 2000 agreement stated that StorageTek “shall pay Netbula …for the right to distribute up to 1000 units of software containing the Supporting Programs.” Netbula offered StorageTek to purchase additional licenses. Sun and StorageTek admitted that the agreement was a “prepayment” agreement. The licenses were not unlimited but counted. Mr. Melnick wrote in an internal email: “The number that Holly has provided and thought it may be low causes quite a problem for you. We have only made 2 purchases for the rights to distribute a total of 2000 licenses.” The situation is no different from a bookstore (Netbula) offering customers (StorageTek) to buy books (licenses). One who pays for one copy of a book but takes home two copies commits theft. “Having taken the copyrighted material, [defendant] is in no better position … than an ordinary thief.” Polar Bear Productions, Inc. v. Timex Corp., 384 F.3d 700, 709 (9th Cir. 2004).

On exceeding the number of licenses, Judge Jenkins entered summary judgment for Sun in Netbula-Sun on the ground that the “prepayment” term is merely a contract covenant. Again, the order established a precedent in copyright law. Recently, the Federal Circuit reversed similar readings of a license agreement in Jacobsen v. Katzer, No. 06-CV-01905 JSW, 2007 WL 2358628 (N.D. Cal. Aug. 17, 2007). See, Jacobsen v. Katzer, 2008-1001 (Fed. Cir. 8-13-2008) (attribution clause in Artistic License is not an independent contractual covenant). See also, MDY Industries, Llc v. Blizzard Entertainment, Inc., No. CV-06-2555-PHX-DGC (Ariz. 7-14-2008) (using an automated program to play a licensed computer game constitutes copyright infringement). In any case, Yue-Sun involved claims that are different, such as distributing infringing derivative works, issuing floating licenses, fail to comply with the limited distribution clause, inducing infringement by others… See Counts IV, V, VIII and IX of the FAC.

(3) The Termination of the License Agreement upon Sun’s Acquisition of StorageTek

The Netbula-StorageTek agreement was not transferable and was terminated upon Sun’s acquisition of StorageTek. In the January 18, 2008 order, Judge Jenkins ruled that “this provision does not limit the scope of the license.” However, in the instant Yue-Sun action filed in 2007, Plaintiff contends that the license ceased to exist because it was terminated. A non-existent license does not have a scope. Therefore, the instant action was about the existence of the license, not the scope. The claim was thus different. See Count X of the FAC.

In summary, the January 18, 2008 order only resolved three narrow issues. The Yue-Sun case filed in 2007 had 10 counts of infringement that were distinctive from the claims in Netbula-Sun.

RMJ at p.5:20-23: “In addition, defense counsel warned Plaintiff that before filing an entirely new and separate infringement action, he should meet and confer with counsel because the action was duplicative, advising that Sun would seek to recover attorney’s fees.”

Objection 23: Yue requested Sun to stipulate to Yue’s joinder in Netbula-Sun. Sun refused to stipulate. Instead, Sun filed a motion to vacate Yue’s motion to join Netbula-Sun, forcing Yue to file a separate lawsuit. Judge Jenkins later concluded that new lawsuit — Yue-Sun — was not completely overlapping with Netbula-Sun. Yue Decl., at ¶10, Ex. B. Yue had no reason to believe that defense counsel knew better than the judge. Ninth Circuit’s controlling authority on successive copyright suits by a non-party seemed to be the case of Kourtis v. Cameron, 419 F.3d 989 (9th Cir. 2005). Yue had the right to bring the additional claims on his personally owned `987, `847 and `697 copyrights that were excluded from Netbula-Sun.

RMJ at p.5:25-28: “While the Supreme Court recently disapproved of the doctrine of preclusion by virtual representation, see Taylor v. Sturgell, 128 S. Ct. 2161, 2173 (June 12, 2008), it noted that non-parties to the prior litigation may be precluded under certain recognized exceptions… Here, the District Court found privity based on assignment. In addition, Yue appears to have assumed control over the earlier litigation.”

Objection 24: “[P]rivity has shown itself to be an elusive and manipulable concept” and should be only used as “a convenient means of expressing conclusions that are supported by independent analysis.” Meza v. General Battery Corp., 908 F.2d 1262 (5th Cir. 1990) (internal quotes and citations removed). Under federal law, “concepts summarized by the term privity are looked to as a means of determining whether the interests of the party against whom claim preclusion is asserted were represented in prior litigation.” Chase Manhattan Bank, N.A. v. Celotex Corp., 56 F.3d 343, 346 (2nd Cir. 1995). “Privity may exist for the purpose of determining one legal question but not another depending on the circumstances and legal doctrines at issue.” Id. Such inquiry avoids the fallacy of circular logic. Yue sued on the `987 Copyright, which he always owned, Netbula had no standing on sue on it. Though the `847 and `697 Copyrights were assigned, they were not litigated in Netbula-Sun – they were excluded. The `063 copyright was the only one at issue in Netbula-Sun. Judge Jenkins made no finding that Yue assumed control of Netbula-Sun.

RMJ at p.6:1-9: “As to factual reasonableness, Plaintiff alleged claims against Sun’s officers based on communications between them and Plaintiff in 2006. However, Plaintiff knew from the factual record in Netbula-Sun that the allegedly infringing acts stopped in late 2005. For example, he was present at the deposition where Sun’s Rule 30(b)6) witness testified that it removed the allegedly infringing Netbula software in late 2005. See Netbula-Sun Docket No. 107, Ex. 44 at 3. While Yue argues that the evidence shows ongoing infringement as recently as 2007, he does not state how the individual defendants are connected to such alleged ongoing infringement. While Yue attacks Abramovitz’s credibility, he does not offer any factual basis for naming the particular two high level officers in this action, revealing that the allegations against them are speculative.”

Objection 25: On October 23, 2007, Abramovitz testified about his personal acts of erasing the PowerRPC software from computers8. As cited in Yue’s opposition to the fees motion, Abramovitz admitted having no knowledge about the control and monitoring of the distribution of PowerRPC within or outside Sun/StorageTek. He did not even know who had that knowledge. He was a test engineer. Abramovitz only talked about his own actions of removing the software. Sun’s managers, such as DeCecco and Melnick, submitted declarations in Netbula-Sun, but none of them was willing to state that Sun stopped the alleged infringement at any time. Therefore, the allegation that Sun stopped the alleged infringement in late 2005 was unfounded. The Netbula-Sun Court made no finding of fact that Sun or its customers stopped the alleged infringement anywhere.

The Magistrate Judge stated that although Yue presented evidence that there was infringement as recent as 2007, his claims against two high-level Sun executives were “speculative.” In the FAC, Yue alleged specific facts that support Schwartz, Melnnick and DeCecco’s liabilities under the copyright law. Moreover, judgment in the case was entered at the “motion to dismiss” stage. Under Federal Rule of Civil Procedure 8(a), as long as Yue gave defendants a fair notice of the claim and the ground upon which it rests, “[s]pecific facts are not necessary.” Erickson v. Pardus, 127 S. Ct. 2197, 2200 (2007). Thus, the FAC satisfied the notice pleading standard.

In any case, Judge Jenkins did not rule on any of such substantive issues regarding the sufficiency of the infringement claims or whether they are speculative. The district court did not have jurisdiction to resolve these issues as the case was on appeal.

RMJ at p.6:12-14: “In particular, the number of unsuccessful motions for recusal and for relief from judgment indicates that Plaintiff filed repetitive motions that lacked merit, which only served to increase fees.”

Objection 26: The Court has not identified any of Yue’s motions to be frivolous. Yue did not file repetitive motions. The rule 60(b) motion was re-filed because the Court had ordered Yue to do so.

As for Plaintiff’s motion to disqualify counsel, the Court had narrowed the issues to whether a former Fenwick attorney presumably shared confidences within Fenwick on a prior case involving PowerRPC. In similar situations, a law firm is disqualified. See, e.g., Cho v. Superior Court, 39 Cal.App.4th 113 (1995) (former settlement judge in a related case was hired by the law firm, the law firm was disqualified); McKenzie Const. v. St. Croix Storage Corp., 961 F.Supp. 857 (V.I. 1997); Fields-D’arpino v. Restaurant Associates, 39 F.Supp.2d 412(S.D.N.Y. 1999); Poly Software Intern., Inc. v. Su, 880 F. Supp. 1487(Utah 1995).

As for the disqualification of the former judge, it was filed on March 18, 2008, under the authority of Liljeberg v. Health Services Acquisition Corp., 486 U.S. 847, 108 S. Ct. 2194 (1988). Judge Ware’s finding that the issue was moot due to intervening events does not make the motion frivolous or lacking merit.

RMJ at p.6:15-19: “In addition, Plaintiff’s pro se status does not warrant leniency here, where Plaintiff has received much education throughout the multiple cases that he and Netbula have litigated. He also has had counsel at times in this litigation and Netbula is still represented by counsel in Netbula-Sun. As to Plaintiff’s allegations of bias on the part of Judge Jenkins, Yue sets forth no factual basis for them.”

Objection 27: Yue-Sun was the first copyright case Yue litigated himself. On March 18, 2008, defense counsel contacted Yue by email stating that Yue was a pro se again. Yue Decl. at ¶¶ 3-8. However, as Judge Ware noted in a recent order,

In the Court’s Order Granting Defendants’ Motion to Dismiss the STK II [Yue-Sun] action, the Court found that the rights of Netbula and Yue are deeply intertwined,” and that Dr. Yue could not represent Netbula pro se.

Docket entry 51 states that “The Court DID NOT GRANT plaintiff REQUEST to proceed pro se.” Under Civil Local Rule 11-5, an attorney may not withdraw until relieved by court order. It was not until July 23, 2008 that the Court granted attorney Elena Rivkin’s motion to withdraw.

As for the allegation of bias of the former judge, Yue supplied certain evidence and indicated that he could provide more confidential documents. Plaintiff does have a constitutional right to have an impartial decision maker to decide his property rights. However, the Court has ruled that issue is moot now. To show that he did not file a baseless disqualification motion under 28 U.S.C. § 144 would require Plaintiff to reopen the issue.

RMJ at p.7: 10-13: “Defendants seek fees and costs in excess of $92,000 as of their opening brief, and over $134,000 as of the reply brief. On July 24, 2008, Defendants submitted a supplemental declaration stating that over $87,000 in additional fees had been incurred since April 8, 2008, when the reply brief was filed. The first amended complaint in this case lists ten claims, all for copyright infringement. Therefore, there is no need to apportion copyright versus non-copyright claims. The hourly rates charged by Fenwick range from $245 per hour to $690 per hour. These rates are comparable to other full service Bay Area law firms, Wakefield Decl. ¶ 4, and are reasonable.”

Objection 28: “Plaintiff’s complaint did not raise a novel issue of law or fact.” RMJ at p.4:27-28. The Court ruled that the instant action was duplicative of Netbula-Sun. No analysis of the merits of the 10-count infringement claims was made. The case was quickly dismissed. No discovery was done. These factors would reasonably suggest that this case should consume very little attorney time.

About 30% of the fees requested were the so called “fees upon fees” — the attorney fees spent on the motion for attorneys’ fees. Defense counsel’s “fees upon fees” was over $60,000.00 (sixty thousand dollars). For instance, on March 4, 2008, Laurence Pulgram spent 1.8 hour conferring with his colleagues and clients on “strategies on potential motion for attorney’s fees”; March 15 and 16, 2008, Albert Sieber billed $5453 for 13.3 hours of work on drafting motion for attorney’s fees; On March 17 and 18, 2008, Wakefield billed $8409.5 for 13.9 hours of work to “draft arguments for fee motion”; April 5 and 6, Sieber billed $4428 for 10.8 hours of work drafting the reply brief for the fee motion; April 7, 2008, Wakefield billed $6292 for 10.4 hours of work for fee motion related work; April 8, 2008, Wakefield, $5082 for 8.4 hours on reply brief for the fee motion and Sieber billed for another 7 hours on the same task the same day. There are many block billing entries with fewer hours, and they add up.

The opening brief of Sun’s fee motion totaled 19 pages. The argument portion was about 9 pages and 4000 words. Of that, about three (3) pages were dedicated to the analysis of two emails between Pulgram and Yue on Netbula-Sun matters and one paragraph of the complaint. Defense counsel have previously quoted and analyzed these communications in their motion to dismiss. The rest of the six pages of argument consist of standard arguments for asking fees, mostly repeating their arguments in the motion to dismiss. Defense counsel billed over $22,000.00 for preparing and filing the opening brief.

In Cancio v. Financial Credit Network, Inc, 2005 US DIST LEXIS 13626 at 16 (N D Cal 2005) (Henderson, J), the plaintiff asked $9312.00 for spending 22.65 hours in preparing and filing the fee motion. Because “[t]he issues raised by this fee application are neither novel nor complex” and “[t]he litigation was limited in time and complexity”, the court found the “fees on fees” to be too excessive and reduced the amount to about $3000.

Unlike Cancio, this case was terminated without any ruling on the merits of the 10-count infringement claims, and there was no discovery or planning of discovery. In the more involved and more complex Cancio, $9312 of “fees on fees” was excessive and the proper amount should be $3000. Here, the “fees on fees” was over $60,000, twenty (20) times more excessive.

Cancio was an FDCPA case, “fees upon fees” was allowed. There is no similar allowance of “fees upon fees” under the Copyright Act. Nevertheless, the amount of hours spent on “fees on fees” shows that defense counsel’s hourly rate and hours are unreasonable. In addition, Plaintiff re-states Objections 2-9 above, including “block billing” on other tasks.

RMJ at p.8:19-20: “The prevailing party in a copyright infringement action is also entitled to recover out of pocket expenses incurred by the attorney and passed on to the client.”

Objection 29: Under the Copyright Act, the decision to award costs is also discretionary and should be made only after the same analysis of the fees award, for which the pivotal criterion is faithfulness to the purposes of the Copyright Act.

MOTION FOR DE NOVO DETERMINATION AND CONCLUSION

Based on Objections 1-29 above and authorities cited, Plaintiff respectfully disagrees with the Magistrate Judge’s report and recommendation. Plaintiff requests the District Court to make a de novo determination of Defendants’ motion for attorneys’ fees.