tom@tmmnet.UUCP (tmmnet ltd.-Tom Marshall, Esq.) (07/25/88)
For all those who have followed, commented and guessed about this
matter, there follows below all of the public details about the
final disposition.
Tom Marshall, Esq. - tmmnet ltd.(...princeton!tmmnet!tom)
Voice: 201-993-5779 Modem: 201-326-9776 (UNIX V login: guest)
Jimmy Stewart statement to Henry Fonda in "Cheyenne Social Club":
"Never read a letter from a lawyer on an empty stomach!"
FOR RELEASE ON AUGUST 2, 1988
From: System Enhancement Associates, Inc. (SEA)
and
PKWARE, Inc. and Phillip W. Katz (PK)
August 2 1988 - Milwaukee, WI
In the first known "Shareware" litigation, pending in
the local United States District Court, the parties System En-
hancement Associates, Inc. (Plaintiff - SEA) and PKWARE, Inc.
/Phillip W. Katz (Defendants - PK), after reaching agreement,
consented to the entry of the attached Judgment for Plaintiff
on Consent. That Judgment was entered by Judge Myron L.
Gordon, effective on August 2, 1988.
Part of the agreement reached by the parties included
a Confidential Cross-License Agreement under which SEA licensed
PK for all the ARC compatible programs published by PK during
the period beginning with the first release of PKXARC in late
1985 through July 31, 1988 in return for the payment of an
agreed upon sum which was not disclosed. Additionally, PK was
licensed, for an agreed upon royalty payment, to distribute its
existing versions of PK's ARC compatible programs until January
31, 1989, after which PK is not licensed and agreed not to pub-
lish or distribute any ARC compatible programs or utilities that
process ARC compatible files. In exchange, PK licensed SEA to
use its source code for PK's ARC compatible programs.
PK agreed to cease any use of SEA's trademark "ARC"
and to change the names or marks used with PK's programs to
non-confusing designations.
The Judgment provided for the standard copyright,
trademark and unfair competition injunctive relief for SEA a-
gainst PK, as well as damages and litigation expenses to be paid
by PK to SEA.
Both parties agreed to refrain from any comment
concerning the settlement of the disputes, other than the text
of this press release. Also, the parties instructed all of
their representatives to refrain from any such activity.
Any other details of the Cross-License Agreement
were agreed to be maintained in confidence and under seal of
the Court.
In reaching the agreement to dispose of the pending
litigation and to settle the disputes that are covered thereby,
PK did not admit any fault or wrongdoing.
Attachment: JUDGMENT FOR PLAINTIFF ON CONSENT
CONFORMED AND PAGINATED COPY BY: THOMAS M. MARSHALL, ESQ.
080388
U.S. DIST. COURT EAST DIST. WISC.
FILED
SOFRON B. NEDILSKY
AUG 1 1988
/s/ in chambers
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF WISCONSIN
----------------------------------------------------------
SYSTEM ENHANCEMENT )
ASSOCIATES, INC., )
)
Plaintiff, )
)
v. ) Case No. 88-C-447
)
PKWARE, INC. and )
PHILLIP W. KATZ, )
)
Defendants. )
----------------------------------------------------------
JUDGMENT FOR PLAINTIFF ON CONSENT
----------------------------------------------------------
THIS MATTER, having been brought before the Court, on joint
application by the parties, and upon the respective counsels'
representation that the parties hereto have settled and composed
their controversies that caused this action to be instituted in a
CONFIDENTIAL CROSS-LICENSE AGREEMENT, dated effective as of
August 1, 1988 between the parties hereto, a true executed copy of
which is hereto attached under the seal of the Court, to be opened
only upon further order of this Court; and
Each of the parties by their respective counsel have stipulated
and agreed to the entry of this JUDGMENT FOR PLAINTIFF ON CONSENT
and as to the form thereof, as well as the final disposition of
this matter thereby;
NOW THEREFORE, the Court having been fully advised of the
foregoing premises and agreements:
IT IS HEREBY ORDERED AND DECREED THAT:
- 1 -
(1) Defendants and each of them, jointly and
severally, and any of their agents, servants or any in active
concert or participation with any of them, be and hereby are
enjoined permanently from infringing Plaintiff's copyrights in
any manner, and from publishing, licensing, selling, distributing
or marketing or otherwise disposing of any copies of
Defendants' works PKARC and PKXARC, except as expressly
provided for otherwise in the Agreement between the parties
effective as of August 1, 1988; and from infringing in any
manner Plaintiff's trademark ARC; and
(2) Defendants, jointly and severally, are hereby
Ordered to pay Plaintiff such damages as Plaintiff has sustained
in consequence of Defendants' acts of infringement of
Plaintiff's copyrights, trademark and the unfair trade practices
and unfair competition by paying the amounts specified in and
at the times stated in the Agreement between the parties
effective as of August 1, 1988; and
(3) Defendants are hereby ordered to deliver up to
the Court for destruction all copies of any infringing work,
including all copies of said works entitled PKARC and PKXARC,
in the possession or control of Defendants or either of them or
any of their employees, agents, servants, distributors, or
licensees, as well as all computer media, diskettes,
documentation and any means for making such infringing
copies, which are not expressly licensed under the Agreement
between the parties effective as of August 1, 1988 or which are
- 2 -
on hand as of the termination date of the license granted by
Plaintiff to Defendants as specified the Agreement between the
parties effective as of August 1, 1988, and shall no later than
February 1, 1989 certify to the Court in writing that all
copies have been destroyed and that they have retained no
copies; and
(4) Judgment is hereby entered awarding Plaintiff
the costs of this action and reasonable attorneys' fees against
Defendant in the amount specified in the Agreement between
the parties effective as of August 1, 1988.
SO ORDERED.
/s/2nd MLG
This 1st day of August, 1988
("1st" struck out)
/s/Myron L. Gordon
Myron L. Gordon
UNITED STATES DISTRICT JUDGE
/s/2nd KAK
Entered on this 1st day of August, 1988
("1st" struck out)
/s/Katherene M. Kirchman
/s/Deputy Clerk of Court
- 3 -
STIPULATED and AGREED TO AS TO FORM AND CONTENT:
This /s/29th day of July, 1988.
By: /s/Michael A. Lechter
Attorneys for Plaintiff.
FOLEY & LARDNER
By: /s/Michael A. Lechter
Michael A. Lechter, Esquire
777 East Wisconsin Avenue
Milwaukee, Wisconsin 53202
and
Thomas M. Marshall, Esquire
Powder Mill Village
89 Patriots Road
Morris Plains, New Jersey 07950
This /s/29th day of July, 1988.
Attorneys for Defendants.
FULLER, PUERNER & HOHENFELDT, S.C.
By /s/Nicholas A. Kees
Nicholas A. Kees, Esquire
633 West Wisconsin Avenue
Milwaukee, Wisconsin 53203
ATTACHMENT UNDER SEAL OF THE COURT: CONFIDENTIAL
CROSS-LICENSE AGREEMENT EFFECTIVE AS OF AUGUST 1, 1988
- 4 -
--
Tom Marshall, Esq. - tmmnet ltd.(...princeton!tmmnet!tom)
Voice: 201-993-5779 Modem: 201-326-9776 (UNIX V login: guest)
Jimmy Stewart statement to Henry Fonda in "Cheyenne Social Club":
"Never read a letter from a lawyer on an empty stomach!"