EF Johnson Co. v. Uniden Corp. of America

Decision Date13 December 1985
Docket NumberCiv. No. 4-85-767.
Citation623 F. Supp. 1485
PartiesE.F. JOHNSON CO., a Minnesota corporation, Plaintiff, v. UNIDEN CORPORATION OF AMERICA, an Indiana corporation, Defendant.
CourtU.S. District Court — District of Minnesota

Robert A. Schwartzbauer, Jon F. Tuttle and I. Fay Nosow, Dorsey & Whitney, Minneapolis, Minn., for plaintiff.

Robert F. Henson and Bruce C. Recher, Henson & Efron, Minneapolis, Minn., Dale

H. Hoscheit, Edward F. McKie, Jr. and Nina L. Medlock, Banner, Birch, McKie & Beckett, Washington, D.C. (of counsel), and Harold A. Ducote, Jr., Indianapolis, Ind. (of counsel), Uniden Corp. of America, for defendant.

MEMORANDUM AND ORDER

MacLAUGHLIN, District Judge.

This matter is before the Court on plaintiff's motion for a preliminary injunction. Plaintiff seeks an order of the Court enjoining defendant from publishing, selling, marketing, or otherwise disposing of any copies of defendant's LTR-compatible radio program in any form, and impounding during the pendency of this action and destruction upon conclusion thereof any materials, programs, or other articles of information by means of which plaintiff's copyrighted computer software has been or may be produced by defendant. The Court heard testimony and arguments on plaintiff's motion September 9-10, 1985. Plaintiff's motion will be granted. This order incorporates the findings of fact and conclusions of law required by Federal Rule of Civil Procedure 52.

I. FACTS
A. Parties

Plaintiff E.F. Johnson Co. (EFJ) is a Minnesota corporation engaged in the business of manufacturing and selling two-way land-based communications systems. EFJ's principal place of business is in Waseca, Minnesota. Defendant Uniden Corporation of America (Uniden) is an Indiana corporation, a subsidiary of Uniden Corporation of Japan. Uniden imports and distributes electronic equipment including land-based communications systems.

B. Background

In the spring of 1980 EFJ introduced into the market its newly developed "Clearchannel LTR" logic trunked radio system (LTR). A logic trunked radio system is one consisting of mobile radio units, typically installed in motor vehicles such as taxis, police cars, delivery trucks, etc., and "repeaters," base stations which receive and transmit signals to and from the mobile radio units. The heart of the EFJ LTR system is computer software contained in the mobile radios and repeaters. The computer software, independently developed by EFJ engineers Mervin Grindahl, Keith Barnes, and Phillip Keefer, allows the LTR system to pool radio frequency channels, thereby making all assigned radio channels accessible to all system users, at a significant gain in operational efficiency. The software contained in the EFJ 8700 series mobile radio units are subject to copyright.

In April, 1985, defendant Uniden introduced into the market its model FTS 250T two-way 800 MHZ FM trunked mobile radio compatible with LTR-system radios and repeaters. The Uniden mobile radio also contains computer software, which allows it to receive and transmit messages from and to EFJ's LTR-system radios.

Shortly after the Uniden FTS 250T radios came onto the market EFJ engineers subjected one of the radios to scrutiny at their Waseca laboratories. Concluding that the software contained in the FTS 250T radio is identical to software contained in EFJ radios, EFJ commenced the instant litigation, claiming copyright infringement, 17 U.S.C. § 501 et seq., and seeking preliminary injunctive relief.

C. Definitions

Before launching into the technological complexities of this matter, a few definitions of terminology as used in this opinion may be helpful.

ALGORITHM — A step-by-step procedure, or defined set of instructions, designed to solve a particular problem or produce a particular result.

ASSEMBLY LANGUAGE — A computer program written in humanly-recognizable commands or mnemonics. An assembly language program is converted into machine-readable form by an assembler.

BINARY — A system of numeration consisting of only two digits, zero and one.

BIT — The smallest unit of information used in a computer, represented as zero or one.

BYTE — A grouping of eight bits.

EPROM — Anagram for Erasable Programmable Read-Only Memory. A microchip on which data can be stored, and which may be erased and reprogrammed.

HEXADECIMAL — A base 16 numbering system used as a shorthand representation of a string of binary instructions.

MICROPROCESSOR — A miniature computer placed on a single microchip which is capable of performing arithmetic, logic, and control functions.

PROGRAM — "a set of statements i.e., data or instructions to be used directly or indirectly in a computer in order to bring about a certain result," Pub.L. No. 96-517, § 10(a), 94 Stat. 3015, 3028 (1980) (amending 17 U.S.C. § 101 (1976)).

PROM — Anagram for Programmable Read-Only Memory. A microchip-mounted program from which a computer may read instructions. Nonerasable.

OBJECT CODE — Computer program expressed as sequence of ones and zeroes, readable only by machines.

SOURCE CODE — Disassembled object code, expressed in humanly-readable form with accompanying comments and labels.

D. EFJ's Development of the LTR-System Radio

EFJ engineers first conceived the idea of a trunked mobile radio system in late summer, 1977. At that time no trunked radio systems were on the market. EFJ engineer Mervin Grindahl was assigned the task of developing the LTR code. In pursuit of this objective, Grindahl first developed signal methods for sending data transmissions over radio waves to direct mobile radios. Grindahl then developed a system architecture which permitted use of the signalling method, and signalling protocols to implement the system architecture. Finally, Grindahl created the algorithms necessary to development of the LTR computer software.

At this point the baton was passed to Keith Barnes, another EFJ engineer, who wrote the LTR software program from specifications detailed in the Grindahl algorithms. Barnes completed the detailed program sometime in 1978. Following an extensive period of "debugging" and program modification, the LTR system was ready for public unveiling in April, 1980.

The LTR mobile radio introduced into the market in 1980 was the model 8800 radio. The model 8800 radio contains a computer software program authored by Grindahl and Barnes. The Grindahl-Barnes EFJ LTR software is the subject of a valid copyright, Registration No. TX 957-037, registered June 30, 1982.

During the period 1982-85 EFJ engineers made certain modifications to the LTR mobile radio. Specifically, EFJ introduced into the market mobile radio models 8700, 8710, 8805, 8810, 8855, 8865, and 8870. Each of these models contains computer software programs, designated by EFJ as versions 1.01, 2.0, 3.0, 4.0, and 5.0. Version 3.0 was authored by EFJ engineer Phillip A. Keefer. Version 3.0 includes certain design improvements and enhancements of the Grindahl-Barnes program made by Keefer, who joined the LTR project in October, 1982. Version 3.0 of the EFJ LTR software is the subject of a valid copyright, Registration No. TX1-568-701, registered June 4, 1985. EFJ mobile radios containing version 3.0 or derivations thereof are models 8805, 8855, 8865, 8870, and 8710.

Sales of EFJ's LTR-system radios since their introduction have been brisk. EFJ's annual sales volume of trunked radios is approximately $25 million factory net, $40 million retail. Approximately 30 percent of EFJ's total sales are of mobile trunked radios. The national retail market for mobile trunked radios is on the order of $200-$250 million per year. Of 500 authorized EFJ retail dealers, 150 carry trunked mobile radios.

E. Logic Trunked Radio Systems

The concept of "trunking" had its genesis in the telephone industry.1 As the Court understands it, the "trunking" of frequency channels permits the system to afford all system users automatic access to all channels for maximum efficiency. Rather than assigning each user a discrete channel, the trunked system, through the use of sophisticated computer software, patches together unutilized airwave "spaces" to create an uninterrupted channel of communication. The net result is that the system can accommodate more users than it has frequency channels available.

EFJ's clearchannel LTR system is composed of two elements: (1) repeaters, which control access to the system and receive and retransmit signals from mobile radio units; and (2) mobile radio and control units. The system works in the following manner. Each mobile radio is assigned to a repeater. Repeaters are analogous to radio station transmitters. The mobile radios send signals — high speed digital data bursts at sub-audible frequencies — to the repeater, which identifies the sending unit and which retransmits and amplifies the signal so that it can be received by the appropriate mobile unit. The "trunked logic" aspect of the system comes into play in the system's selection of open frequency channels. The FCC has assigned certain radio frequencies for use by trunked radio systems. Dealers who sell repeaters are licensed by the FCC to operate a trunked system on an assigned frequency.2 In addition, any purchaser of a mobile radio or radios must purchase the right to use the repeater from the licensed dealer or system operator and must also obtain an FCC license for the radios. Thus, the universe of potential utilizers of trunked radios is finite, as constrained by the number of frequency channels assigned by the FCC for trunked radio use. A "fully loaded" trunked radio channel will support between 100 and 500 mobile radios. Hence, the market for mobile radios is much larger than the market for repeaters.

EFJ manufactures both repeaters and mobile radios. The heart of the LTR system, as mentioned above, is the copyrighted computer software found in both repeaters and mobile radios. EFJ's software is mounted on a Read-Only Memory (ROM) microch...

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