PUBLISH 

UNITED STATES COURT OF APPEALS 

FOR THE TENTH CIRCUIT 

_________________________________ 

THE SCO GROUP, INC., 

 Plaintiff Counterclaim Defendant - 

 Appellant, 

v. 

INTERNATIONAL BUSINESS 

MACHINES CORPORATION, 

 Defendant Counterclaimant - 

 Appellee. 

No. 16-4040 

_________________________________ 

Appeal from the United States District Court 

for the District of Utah 

(D.C. No. 2:03-CV-00294-DN)

_________________________________ 

Edward Normand, Boies, Schiller & Flexner LLP, Armonk, New York (Jason C. 

Cyrulnik, Boies, Schiller & Flexner LLP, Armonk, New York, Stuart H. Singer, Boies, 

Schiller, & Flexner LLP, Fort Lauderdale, Florida, Brent O. Hatch and Mark F. James, 

Hatch, James & Dodge P.C., Salt Lake City, Utah, with him on the briefs), for Plaintiff 

Counterclaim Defendant-Appellant. 

David Marriott, Cravath, Swaine & Moore LLP, New York, New York (Evan R. Chesler, 

Cravath, Swaine & Moore LLP, New York, New York, Amy F. Sorenson and Amber M. 

Mettler, Snell & Wilmer L.L.P., Salt Lake City, Utah, with him on the briefs), for 

Defendant Counterclaimant-Appellee. 

_________________________________ 

Before KELLY, EBEL, and BACHARACH, Circuit Judges. 

_________________________________ 

EBEL, Circuit Judge. 

_________________________________ 

FILED 

United States Court of Appeals 

Tenth Circuit 

October 30, 2017

Elisabeth A. Shumaker 

Clerk of Court
2 

 This case arises out of a business deal gone wrong. The Santa Cruz Operation, 

Inc. (Santa Cruz) entered into a business arrangement with International Business 

Machines Corp. (IBM) to develop a new operating system that would run on a more 

advanced processor manufactured by Intel Corporation (Intel). The parties signed an 

agreement memorializing this collaborative effort and called it Project Monterey. 

Another technology company, The SCO Group, Inc. (SCO), then acquired Santa Cruz’s 

intellectual property assets and now brings this lawsuit for IBM’s alleged misconduct 

during and immediately after Project Monterey. 

 Project Monterey involved mutual contributions by IBM and Santa Cruz of 

proprietary materials, including computer code for their respective operating systems. 

SCO believes that IBM merely pretended to go along with the arrangement in order to 

gain access to Santa Cruz’s coveted source code. SCO, the successor-in-interest to Santa 

Cruz’s intellectual property assets, accused IBM of stealing and improperly using this 

source code to strengthen its own operating system, thereby committing the tort of unfair 

competition by means of misappropriation. The district court awarded summary 

judgment to IBM on this claim based on the independent tort doctrine, which bars a 

separate tort action where there is no violation of a duty independent of a party’s 

contractual obligations. 

SCO also accused IBM of disclosing Santa Cruz’s proprietary materials to the 

computer programming community for inclusion in an open-source operating system 

called Linux. When SCO acquired Santa Cruz’s assets involved in Project Monterey and 

then sought licensing agreements from various technology companies, IBM allegedly 
3 

instructed SCO’s business affiliates and investors to cut ties with SCO. These alleged 

efforts to disrupt SCO’s business relationships, together with the purportedly improper 

Linux disclosures, prompted SCO also to file suit against IBM for tortious interference of 

contract and business relations. In a separate order, finding insufficient evidence of 

actionable interference by IBM, the district court granted summary judgment in favor of 

IBM on these tortious interference claims. 

Finally, after the deadline for amended pleadings in this case, SCO sought leave to 

add a new claim for copyright infringement based on the allegedly stolen source code 

from Project Monterey. SCO claimed it had only discovered the essential facts to support 

this claim in IBM’s most recent discovery disclosures. The district court rejected SCO’s 

proposed amendment for failure to show good cause. 

SCO now appeals all three decisions by the district court: (1) the summary 

judgment order on the misappropriation claim; (2) the separate summary judgment order 

on the tortious interference claims, and (3) the denial of leave to amend the complaint. 

We REVERSE and REMAND the district court’s summary judgment order on the 

misappropriation claim, and AFFIRM as to the remaining issues. 

 
4 

I. BACKGROUND 

A. UNIX Operating System and Intel Processors 

UNIX is a computer software operating system that is widely used in the business 

or “enterprise” computing environment.1

 In the late 1960s, AT&T Technologies 

developed UNIX and began licensing it for widespread enterprise use, and those 

licensees in turn developed and distributed their own variations of the UNIX platform. 

One of those distributors, Santa Cruz, created a UNIX variation which eventually 

dominated the market for UNIX-based operating systems running on Intel processors. 

During the 1980s, most other companies were running their UNIX variations on 

more expensive non-Intel architectures. Santa Cruz, however, recognized early on that 

transistors were getting smaller over time, so Intel’s cheaper processors were becoming 

faster and thus more capable of handling the demands of high-power enterprise 

computing. Santa Cruz predicted that Intel’s less-expensive processors would soon be 

able to run the UNIX operating system more effectively than earlier iterations of the 

hardware. By 1998, Intel processors had become as capable as the more expensive 

alternatives, and Santa Cruz had ultimately become the worldwide market leader for 

UNIX-on-Intel with 80 percent share of the market. 

In contrast to Santa Cruz, IBM had almost no presence in the UNIX-on-Intel 

market. Instead, IBM distributed its own UNIX derivative called AIX, which was 

designed to operate on IBM’s own proprietary Power processors. The product was thus 

 

1

 An operating system serves as the link between the computer hardware and the 

various software programs or applications that run on the computer. 
5 

suitably known as AIX for Power. Recognizing that Santa Cruz had positioned itself as 

the market leader for UNIX-based systems on the increasingly desirable Intel 

architecture, IBM began considering the benefits of collaborating with Santa Cruz. 

Further, IBM knew that Santa Cruz’s operating system was based on a more advanced 

version of the UNIX operating system: UnixWare System V Release 4 (SVr4). IBM’s 

own AIX platform was based on an earlier and less advanced code, so the opportunity to 

work with SCO and gain access to the SVr4 code may have been appealing. Santa Cruz, 

for its part, also appreciated the advantages of working with IBM, which was a larger 

company with more resources, retail relationships, and marketing outlets. So the stage 

was set for a mutually beneficial cooperative venture. 

B. Project Monterey and the Joint Development Agreement 

Before IBM and Santa Cruz began working together, most processors (including 

Intel’s chips) operated only at a 32-bit capacity, but in 1994, Intel announced its intention 

to develop a higher-capacity 64-bit chip called Itanium. Anticipating Intel’s forthcoming 

Itanium architecture, Santa Cruz and IBM jointly endeavored to build a new UNIX-based 

operating system that would run on the faster processor. In October 1998, Santa Cruz 

and IBM entered into a Joint Development Agreement (JDA) that would govern the 

mechanics of their collaboration, including licenses, royalties, and project management 

responsibilities. This endeavor became known as Project Monterey. 

As part of the JDA, each party granted the other a limited license to its own 

respective technologies for the purpose of developing the IA-64 Product. 
6 

After signing the JDA, the parties entered into a Project Supplement that provided: “The 

Licensed Materials . . . are to be used solely for development of the IA-64 Product.” 

Aplt. App. 884 (emphasis added). According to SCO, this provision imposed a default 

rule that IBM could not use Santa Cruz’s contributed materials in its own AIX for Power. 

That Supplement, however, also included a caveat: “Notwithstanding [that limitation], 

any such Licensed Material included in the IA-64 Product Release 1 shall be licensed 

pursuant to the terms and conditions set forth in the [JDA].” Aplt. App. 884 (emphasis 

added). In other words, any Santa Cruz materials that ultimately found their way into the 

“IA-64 Product Release 1” would be licensed to IBM pursuant to the JDA, which in turn 

granted IBM a “worldwide, non-exclusive, royalty free” right of use, Aplt. App. 3085, 

JDA § 2(d)(2). Under these provisions, IBM would have known that if it wanted to use 

Santa Cruz’s materials in AIX for Power, there must be a “IA-64 Product Release 1” 

containing those materials. 

SCO further points out that a product release is only regarded as the “IA-64 

Product Release 1” if the product is made generally available. This requirement is based 

on Amendment 5 to the JDA, which provided that if IBM wanted to distribute a “PreRelease IA-64 Product” for testing purposes, that pre-release sublicense would terminate 

at least by the date of “general availability of the IA-64 Product Release 1.” Aplt. App. 

5157. Otherwise stated, any distribution of the Monterey system before the product 

became generally available was regarded merely as a “Pre-Release IA-64 Product,” not

the actual “IA-64 Product Release 1” itself. Thus, to the extent that IBM wanted a 

“worldwide, non-exclusive, royalty free” license to the coveted SVr4 code, it needed to 
7 

wait until there was a generally available release of the IA-64 Product which included 

that code.2

 

C. IBM Transitions Focus from Project Monterey to the Linux Operating 

System 

The success of Project Monterey hinged on the forthcoming availability of Intel’s 

64-bit Itanium chip. But Intel was behind schedule in developing and delivering Itanium 

to market. Intel announced a target date of 1999, but was substantially delayed, and 

continued to have development difficulties throughout 1999 and 2000. These delays 

caused a decrease in market interest in the IA-64 Product under construction through 

Project Monterey. 

The slump in market interest for the IA-64 Product caused IBM to transition its 

focus to a competing open-source operating system called Linux.3

 At the time, Linux 

occupied the lower end of the computing market as it was designed for lower-capacity 

desktop computing. But IBM began to strengthen the Linux platform so that Linux could 

compete in the enterprise market, which was the focus of Project Monterey’s forthcoming 

UNIX-based product. 

 

2

 IBM does not appear to dispute this interpretation. Moreover, SCO offered 

evidence that IBM shared this understanding during the course of Project Monterey. 

For example, an internal IBM memo indicated that IBM believed withdrawal from 

Project Monterey would mean forfeiting access to Santa Cruz’s SVr4 code. See Aplt. 

App. 9059-60. 

3

 Unlike other UNIX-based systems, Linux is distributed without a fee to users, and 

the programming code is publicly available to all who want to access or customize it. 
8 

As part of its contributions to Linux, as early as February 2000, IBM began 

disclosing some of Santa Cruz’s proprietary UNIX technologies—acquired through 

Project Monterey—to the Linux community for the purpose of fortifying Linux as a 

commercially viable option for enterprise use. The evidence suggests that “SCO’s 

revenues decline[d] precipitously in 2000 through 2002, dropping 74%, immediately after 

the first alleged contributions of IBM in February of 2000.” Aplt. App. 7384. SCO’s 

sales dropped as customers migrated to Linux, which has been referred to as a “free 

UNIX clone.” Aplt. App. 7389. Because of these declining revenues, SCO relies on 

IBM’s Linux disclosures as part of the basis for its tortious-interference claim. 

IBM’s general support for Linux, however, was no secret. As early as March 

1999, IBM publicly announced its support of Linux at a LinuxWorld conference. But 

scaling up Linux to compete in the enterprise market posed a potential conflict with 

Project Monterey. To assuage concerns, IBM began re-assuring the public and Santa 

Cruz that Linux and the IA-64 Product would compete in different markets, so there was 

no conflict. For example, in August 1999, IBM officers explained publicly that the 

Monterey IA-64 Product would target enterprise-level computing needs while Linux was 

designed for the smaller-scale computing market. IBM made similar representations in a 

private meeting with Santa Cruz officers in January 2000. But at least one IBM 

executive recognized that such a distinction was fragile: 

The distinction used to position Monterey versus Linux is that 

Monterey is targetted [sic] for high-end servers, where as 

Linux comes in at the lower to mid range of servers. 

However, this distinction is a fragile one, since IBM is 
9 

working as fast as it can to bolster Linux’s ability to compete 

in the mid to high end range of servers. 

Aplt. App. 5693 (emphasis added). Construing the evidence in SCO’s favor, it may be 

that IBM led Santa Cruz to believe its Linux product would not compete against 

enterprise-level developers—but IBM was actually working quickly, and without Santa 

Cruz’s knowledge, to scale up Linux to compete in the enterprise space. Meanwhile, 

IBM maintained that it was fully committed to Project Monterey. It reaffirmed that 

commitment in the January 2000 meeting and, as late as December 2000, IBM stated 

publicly that its devotion to the success of the IA-64 Product remained strong. 

But a jury could find that IBM’s heart was not in Project Monterey. Throughout 

late 1999 and early 2000, IBM executives began recommending “internally that IBM take 

more definitive steps to drop Project Monterey and transition even more support to 

[Linux].” Aplt. App. 9591, Dist. Ct. Op. at 24. In July 2000, another IBM internal report 

recommended a “significant reduction in emphasis” in Project Monterey. Aplt. App. 

6202. Further, IBM’s effort to bolster Linux as a potential competitor in the enterprise 

space could indicate to a jury that IBM was not fully committed to the success of Project 

Monterey, despite its public assurances to the contrary. 

D. IBM’s Alleged Misappropriation of Santa Cruz’s Code 

In October 2000, IBM used some of the SVr4 code in a test version of its own 

AIX for Power product, which was intended for certified software developers and “not 

intended for general production use.” Aplt. App. 8610. This appears to have been a 

preparatory step in anticipation of later releasing an upgraded AIX for Power product for 
10 

general distribution. But again, IBM would need to make generally available the 

Monterey operating system including the SVr4 code before IBM would acquire the 

royalty-free license for general distribution of that code in its own products. 

With that in mind, IBM announced in April 2001 a forthcoming IA-64 Product, 

which included the SVr4 code, and planned to make it available on May 4, 2001. As 

scheduled, IBM released a version of the Monterey operating system on May 4, 2001 as a 

Programming Request for Price Quote (PRPQ), which is the term used internally at IBM 

to describe beta test releases. This release lacked what is known as a compiler, which in 

this case refers to a software program that translates programming code into a language 

readable by the computer processor. Without a compiler, an operating system cannot be 

executed by the processing hardware, but it does not seem that IBM had a confirmed plan 

to include a compiler in the product. Moreover, this Monterey release was offered free of 

charge and without support, was not on IBM’s price lists, and was not marketed. In light 

of these characteristics, a reasonable jury could find that this PRPQ version was not a 

generally available release of the product and thus did not entitle IBM to a royalty-free 

license to the SVr4 code included therein.4

 

4

 One internal e-mail from an IBM executive defending the PRPQ release cuts in the 

other direction, explaining that IBM had “a very positive product to deliver” that was 

“not under-function for this target delivery” and was “stable and worth release.” 

Aplt. App. 5167. But this is a disputed issue of material fact. On summary judgment 

we adopt the version of the facts most favorable to SCO, which suggests that IBM’s 

May 4, 2001 PRPQ of the Monterey product was not equivalent to a generally 

available release. 
11 

Moreover, the evidence suggests that IBM was conscious of the inadequacies of 

this May 4, 2001 release of the Monterey product. For example, an IBM project manager 

stated in an internal e-mail: “I think the compiler MUST be available in some form or the 

whole thing just doesn’t make sense (ie [Santa Cruz] won’t buy it).” Aplt. App. 5194 

(italicized emphasis added). And another internal IBM strategy document explained that 

there was “no confirmed compiler plan” and that IBM would “[c]ontinue to ship AIX 5L 

as a PRPQ” which would be in “[s]tealth mode only.”5

 Aplt. App. 5170. That document 

also indicated that IBM would “[a]t the appropriate time announce plan not to GA AIX 

5L and withdraw the PRPQ” sometime during the “July/August timeframe.”6

 Id. What 

is more, one piece of evidence suggests that IBM appears to have known that the May 4, 

2001 PRPQ version might not have been sufficient to acquire the SVr4 license. In one 

internal e-mail, an IBM employee stated: “As you know, we need to GA this PRPQ to 

gain rights to [Santa Cruz] code we want for our base AIX product delivery . . . I know 

the fine lines we are walking here.” Aplt. App. 5167. 

Nevertheless, despite the deficiencies in the May 4, 2001 release of the Monterey 

operating system and despite IBM’s apparent knowledge of the problem, that very same 

day IBM released for general distribution a version of its own proprietary AIX for Power 

product that included the SVr4 code. SCO thus argues that IBM released a “sham” 

 

5

 The reference to “AIX 5L” appears to be IBM’s shorthand for the product released 

for operation on Intel’s IA-64 processor. 

6

 We assume the acronym “GA” to be a reference to “general availability” of the IA64 Product. 
12 

version of the Monterey system in order to legitimize its own general distribution of the 

AIX for Power product containing Santa Cruz’s SVr4 code. (Aplt. Br. 2, 13.) This is the 

essence of SCO’s misappropriation claim.7

E. Santa Cruz Transfers Assets to Caldera International 

Santa Cruz owned a license to use, develop, and distribute its UNIX-based 

technology.8

 During the life of Project Monterey, however, Santa Cruz decided to sell its 

UNIX business to SCO.9

 In mid-June 2000, Santa Cruz sent IBM an official notice of the 

 

7

 SCO’s initial claim of misappropriation was based not on the allegedly stolen SVr4 

code, but rather on the improper Linux disclosures discussed earlier. SCO says it 

discovered the SVr4 code in the AIX for Power product late in the discovery process 

after filing this lawsuit, which is why the current misappropriation theory differs 

from the original theory. IBM does not appear to dispute, however, that a party can 

change its theory for a particular existing cause of action as new evidence comes to 

light during the discovery process. Moreover, the language of SCO’s operative 

complaint encompasses this revised theory. The cause of action is labeled “unfair 

competition” and it is based, in part, on “[m]isappropriation of source code, methods, 

and confidential information of plaintiff,” as well as “[u]se of deceptive means and 

practices in dealing with plaintiff with respect to its software development efforts[.]” 

Aplt. App. 156. 

8

 A company called Novell, Inc. (Novell) purchased the UNIX assets and intellectual 

property rights from AT&T (the original developer) in 1993, and later sold its UNIX 

business to Santa Cruz in 1995. As described in two earlier decisions of this Court, Santa 

Cruz did not receive the full panoply of intellectual property rights in that 1995 

transaction, but rather received only a license to use, develop, and distribute Novell’s 

copyrighted UNIX technologies. See SCO Group, Inc., v. Novell, Inc., 439 F. App’x 

688, 691-93 (10th Cir. 2011) (unpublished); SCO Group, Inc. v. Novell, Inc., 578 F.3d 

1201, 1204-06 (10th Cir. 2009). 

9

 At the time of this transaction, plaintiff SCO went by the name Caldera 

International. For consistency and convenience, we use the SCO label to describe 

plaintiff even at the time that it acquired Santa Cruz’s intellectual property rights. 
13 

forthcoming asset transfer to SCO.10 Hearing no formal objection from IBM, Santa Cruz 

followed through with the agreement and, on May 7, 2001, finalized the deal with SCO. 

On June 6, 2001, Santa Cruz informed IBM of the consummation of the sale and the 

assignment of the rights under the JDA. IBM then responded on June 19, 2001, formally 

objecting to the assignment and officially terminating the JDA, thereby putting a formal 

end to Project Monterey. 

F. IBM’s Alleged Direct Interference With SCO’s Business Relationships 

In late 2002 and early 2003, SCO began investigating the intellectual property 

within Linux and discovered that Linux customers were using SCO’s proprietary UNIX 

technologies. SCO then devised a licensing strategy whereby Linux users would 

purchase from SCO a license to use Linux, as enhanced by SCO’s proprietary 

technologies. SCO presented this licensing plan to multiple partners, including Oracle, 

Intel, and Computer Associates, all of which responded favorably. IBM, on the other 

hand, objected to the proposed strategy. 

IBM asked SCO not to issue its press release announcing and initiating the 

licensing plan. Nevertheless, in January 2003, SCO announced a new business division, 

SCOsource, to manage the licensing of its UNIX technologies for Linux customers. The 

 

10 The JDA governing Project Monterey required Santa Cruz to give IBM notice if 

Santa Cruz received an offer by another company to purchase substantially all of 

Santa Cruz’s assets. Aplt. App. 3109, JDA § 16.1. This requirement was apparently 

designed to give IBM a reasonable period of time to submit a counteroffer. Id., JDA 

§ 16.2. 
14 

next day, IBM executive Karen Smith told SCO’s CEO Darl McBride that she expected 

SCO’s approach to “kill Linux.” Aplt. App. 4095. She further threatened: 

[I]f [SCO] did not drop [its] library licensing program and 

[its] investigation of Linux and withdraw [its] press 

release . . . , that IBM was going [to] cut off all business from 

[SCO] and they were going to encourage partners and 

customers from doing any business with SCO as well. 

Id. at 4095. SCO did not back down. That afternoon, Smith met with Hewlett-Packard 

executive Richard Becker. According to Becker’s deposition, 

[Smith] indicated to [him] that IBM was going to withdraw 

all their business activities from SCO, and that in the interest 

of the best outcome for [IBM’s and Hewlett-Packard’s] joint 

Linux initiatives that she was going to suggest that HP, and 

[he] was representing HP, and following [him], Intel should 

do the same. 

Aplt. App. 2352. 

SCO believes that, in addition to Hewlett-Packard, IBM directly communicated 

with other SCO business affiliates and investors in an effort to persuade those entities to 

refrain from doing business with SCO. Those entities included Oracle, Computer 

Associates, Intel, and Baystar. SCO presented evidence that, after SCO began 

implementing its licensing strategy, these entities began withdrawing or reducing their 

business dealings with SCO. IBM responded, however, with sworn declarations by 

executives representing each entity indicating that, to the best of their knowledge, IBM 

never approached them about cutting ties with SCO and that any change in business 

dealings with SCO was not the result of IBM’s statements or actions. Nevertheless, SCO 
15 

asserts that IBM directly interfered with SCO’s business relationships by inducing SCO’s 

key investors and affiliates to cease doing business with SCO. 

G. Procedural Background 

We are now almost fifteen years into this litigation. SCO filed the initial 

Complaint on March 6, 2003, which included nine claims against IBM.11 After twice 

amending its Complaint, SCO sought leave to amend a third time in October 2004, after 

the deadline for amended pleadings, for the purpose of adding a tenth cause of action for 

copyright infringement based on IBM’s alleged misuse of the SVr4 code. The district 

court denied that motion, finding insufficient cause to permit the untimely addition of the 

claim. The case then proceeded but was administratively closed in 2007 after SCO filed 

for bankruptcy. 

Alongside its suit against IBM, SCO also filed suit against another company called 

Novell, which had publicly claimed that it, rather than SCO, owned the UNIX copyrights. 

Novell entered into an asset purchase agreement with Santa Cruz in 1995 wherein Novell 

transferred a license to the UNIX technology to Santa Cruz. Santa Cruz believed that it 

had received through this asset transfer the UNIX copyrights, and thus the right to license 

 

11 Counts 1 through 4 alleged breaches of the original software and sublicensing 

agreements between IBM and AT&T (the original UNIX developer), and between 

Sequent Computer Systems, Inc. (which was later acquired by IBM) and AT&T. 

Count 5 alleged copyright infringement based on SCO’s later-disproven belief that it 

owned the UNIX copyrights. Count 6 alleged unfair competition by means of, in 

part, misappropriation. Count 7 alleged tortious interference of SCO’s contracts with 

Linux users and licensees. Count 8 alleged tortious interference of SCO’s asset 

purchase agreement with Novell executed in 1995. Count 9 alleged tortious 

interference of SCO’s specific business relationships. 
16 

all derivations and variations of the UNIX system. That belief, however, ended up being 

wrong. In 2011, this Court affirmed a jury verdict that found Santa Cruz did not, in fact, 

receive the UNIX copyrights in that deal, rather it merely received a license to use, 

develop, and distribute the UNIX technology. See SCO Group, Inc. v. Novell, Inc., 439 

F. App’x 688 (10th Cir. 2011) (outlining this background). 

When the bankruptcy stay was lifted in this case, the district court here re-opened 

the case in 2013. Because the Novell litigation had established that SCO did not own the 

copyrights to the UNIX technologies, SCO voluntarily dismissed many of its claims 

against IBM that were predicated upon that faulty assumption. All that remained of 

SCO’s case against IBM were allegations that IBM (1) committed unfair competition by 

means of misappropriation, and (2) tortiously interfered with SCO’s business 

relationships.12 On February 5, 2016, the district court awarded summary judgment to 

IBM on the misappropriation claim. In a separate order, on February 8, 2016, the district 

court also awarded IBM summary judgment on the tortious interference claims. 

SCO brings three issues to this Court for appeal: (1) the district court’s summary 

judgment order on the misappropriation claim; (2) the district court’s separate summary 

judgment order on the tortious interference claims; and (3) the district court’s denial of 

leave for SCO to add a claim for copyright infringement after the deadline for amended 

pleadings. We address these issues in turn. 

 

12 Count 6 encompassed the misappropriation claim; Counts 7 and 9 represented the 

remaining claims for tortious interference. 
17 

II. DISCUSSION 

A. Misappropriation 

1. Applicable Law

The parties could not agree on which State’s law governs SCO’s misappropriation 

claim. Instead they have stipulated that either the laws of Utah or New York should 

control, believing there are no material differences in the relevant legal principles. The 

district court similarly relied on both Utah and New York law to ground its analysis of 

this claim. We cannot, however, analyze this claim without first deciding which State’s 

law should govern. 

The JDA provides: “This Agreement shall be governed by, and the legal relations 

between the parties hereto shall be determined in accordance with, the substantive laws of 

the State of New York.” Aplt. App. 3112, JDA § 22.3. Whether SCO’s claim ultimately 

sounds in contract or tort, this provision mandates that “the legal relations between the 

parties” be adjudicated pursuant to New York law. Id. That phrase is sufficiently broad 

to encompass a claim by one party of unfair competition based on misappropriation.13 

Thus, we rely on New York substantive law to resolve the propriety of summary 

judgment on SCO’s misappropriation claim. 

 

13 Moreover, the parties’ consensus that the laws of New York and Utah are 

materially the same on this issue further confirms that our application of New York 

law should be acceptable to the parties. 
18 

New York courts recognize “two theories of common-law unfair competition: 

palming off and misappropriation.”14 ITC Ltd. v. Punchgini, Inc., 880 N.E.2d 852, 

858 (N.Y. 2007). The gravamen of SCO’s claim is misappropriation, which 

“concerns the taking and use of the plaintiff’s property to compete against the 

plaintiff’s own use of the same property.” Sidney Frank Importing Co., Inc. v. Beam 

Inc., 998 F. Supp. 2d 193, 208-9 (S.D.N.Y. 2014) (internal quotation marks omitted) 

(interpreting New York law); accord Punchgini, 880 N.E.2d at 859. “To state a claim 

for the misappropriation theory of unfair competition, a plaintiff must allege that the 

defendant: (1) misappropriated the plaintiff’s labors, skills, expenditures, or 

goodwill; and (2) displayed some element of bad faith in doing so.” Sidney Frank 

Importing, 998 F. Supp. 2d at 209 (internal quotation marks, citations omitted). 

Tracking these requirements, SCO claims that IBM (a) misappropriated the 

SVr4 code for its own commercial advantage and (b) exhibited bad faith in doing so 

by pretending to support Project Monterey and releasing a sham version of the IA-64 

Product in order to legitimize its use of SCO’s code. 

 

14 Relying on an unpublished case from the Second Circuit, SCO argues “the tort of 

unfair competition is a broad and flexible doctrine that has been described as 

encompassing any form of commercial immorality[.]” Big Vision Private Ltd. v. E.I. 

du Pont de Nemours & Co., 610 F. App’x 69, 70 (2d Cir. 2015) (unpublished) 

(internal quotation marks omitted) (interpreting New York law). SCO says, 

therefore, that unfair competition is not limited only to palming off and 

misappropriation, but is much broader. The interpretation of New York’s highest 

court, however, controls over that of a federal court expressed in an unpublished 

case. Because New York limits its unfair-competition tort to palming off and 

misappropriation, see Punchgini, 880 N.E.2d at 858, we confine our understanding of 

the tort to those theories alone. 
19 

2. Independent Tort Doctrine

The district court granted IBM’s motion for summary judgment after concluding 

that the “independent tort doctrine” precluded the misappropriation claim. The 

independent tort doctrine provides that “a simple breach of contract is not to be 

considered a tort unless a legal duty independent of the contract itself has been violated.” 

Clark-Fitzpatrick, Inc. v. Long Island R.R. Co., 516 N.E.2d 190, 193 (N.Y. 1987). This 

separate duty must “spring from circumstances extraneous to, and not constituting 

elements of, the contract, although it may be connected with and dependent upon the 

contract.” Id. at 194 (emphasis added). 

When the plaintiff is “essentially seeking enforcement of the bargain,” rather than 

a societal policy or law that gives rise to a duty of care, “the action should proceed under 

a contract theory.” Sommer v. Fed. Signal Corp., 593 N.E.2d 1365, 1369 (N.Y. 1992); 

see also Abacus Fed. Savings Bank v. ADT Sec. Servs., Inc., 967 N.E.2d 666 (N.Y. 

2012) (finding no separate liability in tort when the gravamen of the claim was the 

defendant’s failure to make good on its promise to offer functional security services that 

would prevent a bank burglary). In other words, when the defendant has a duty “separate 

and apart from its contract obligations,” then an action in tort will lie. N.Y. Univ. v. 

Continental Ins. Co., 662 N.E.2d 763, 768 (N.Y. 1995) (finding no separate liability in 

tort when the breach of an insurance policy also violated New York statutory insurance 

law because “the provisions of the Insurance Law are properly viewed as measures 

regulating the insurer’s performance of its contractual obligations, . . . not as a legislative 

imposition of a separate duty of reasonable care”). 
20 

For this analysis, we focus not on the conduct which might constitute a breach of 

contract, but instead on the defendant’s duties. As an intermediate New York appellate 

court helpfully explained: 

[T]he focus is not . . . on whether the tortious conduct is 

separate and distinct from the defendants’ breach of 

contractual duties, for it has long been recognized that 

liability in tort may arise from and be inextricably intertwined 

with that conduct which also constitutes a breach of 

contractual obligations. Rather, the focus is on whether a 

noncontractual duty was violated; a duty imposed on 

individuals as a matter of social policy, as opposed to those 

imposed consensually as a matter of contractual agreement. 

Apple Records, Inc. v. Capitol Records, Inc., 529 N.Y.S.2d 279, 281-82 (N.Y. App. Div. 

1988) (emphasis added) (internal citations omitted). To illustrate, consider a scenario 

where two parties reach an agreement that one shall not assault the other. If an assault 

occurs, we would not say that the victim is limited to a breach-of-contract remedy—of 

course he would also have a claim for tortious assault. That is because society imposes a 

duty not to assault others which is independent of the contractual promise made by the 

parties. 

 With this in mind, we turn to the misappropriation claim here. The district court 

held that the independent tort doctrine barred SCO’s claim, but in doing so the district 

court focused too narrowly on IBM’s allegedly wrongful conduct, observing that the 

same conduct would constitute both an unfair-competition claim and a breach of the 

JDA. But that analysis misses the point. What matters is not whether IBM’s “use of 

the code” violated the contract, but rather whether IBM violated some separate and 

independent non-contractual duty in using that code. 
21 

 To be sure, the district court devoted some attention to this question, but it 

restricted its inquiry to whether there existed a fiduciary relationship between the 

parties, i.e., a joint venture or partnership, giving rise to a heightened duty of care. 

The JDA clearly provides that “[t]his Agreement shall not be construed to establish 

any form of partnership, agency, franchise or joint venture of any kind between SCO 

and IBM, . . [nor] to provide for any sharing of profits or losses between the parties.” 

Aplt. App. 3113, JDA § 22.5. So the district court correctly concluded that the 

parties were dealing with each other at arms’ length and had no fiduciary or 

heightened duty toward one another. 

But New York does not appear to require a heightened duty incident to a 

partnership or fiduciary relationship as a predicate to an unfair competition claim—

any common-law or statutory duty will suffice. For example, in Sidney Frank 

Importing Co., Inc. v. Beam Inc., 998 F. Supp. 2d at 210, a federal court applying 

New York law permitted a whiskey distributor to bring a misappropriation claim 

against its supplier even though the supply contract addressed the wrongful conduct, 

and there was no specially recognized relationship between those two entities other 

than the fact that they did business together. In another case, Cargill, Inc. v. Sears 

Petroleum & Transport Corp., 388 F. Supp. 2d 37, 65 (S.D.N.Y. 2005) (interpreting 

New York law), a misappropriation claim survived alongside a breach-of-contract 

claim when the breached agreement specifically governed the use of confidentially 

shared information between the parties, and the parties had not formalized any joint 

venture between themselves. 
22 

 Similarly, in this case, while IBM and SCO may not have had a formal 

partnership or joint venture as a matter of law, they surely enjoyed a business 

relationship in which each reposed a degree of trust and confidence in the other. In 

that situation, there exists a duty not to take a business collaborator’s property in bad 

faith and without his consent in order to compete against that owner’s use of the 

same property. Because that duty is separate from the JDA, even though the JDA 

addresses the same topic, the independent tort doctrine does not bar SCO’s 

misappropriation claim. Accordingly, the district court’s order cannot be affirmed on 

this ground. 

3. Standing as Assignee of Santa Cruz’s Claim

IBM offers alternative reasons to affirm the summary judgment order. It first 

contends that SCO lacks standing to pursue its misappropriation claim. SCO was not a 

party to the JDA, rather it was the successor-in-interest to Santa Cruz’s intellectual 

property rights. In 2000, Santa Cruz assigned to SCO all of its “right, title and interest” 

in the UNIX technologies, Aplt. App. 5311, including the “rights and privileges 

pertaining to” the intellectual property, id. at 5312, and all “rights to enforce 

confidentiality or similar obligations” in relation to the transferred assets, id. 

The JDA, however, contained a provision limiting Santa Cruz’s assignment power: 

“[n]either party may assign, or otherwise transfer, its rights . . . under this Agreement 

without the prior written consent of the other party.” Aplt. App. 3114, JDA § 22.12. 
23 

Because IBM never gave its prior written consent to Santa Cruz’s assignment, it argues 

that SCO did not validly acquire any right from Santa Cruz to sue for misappropriation. 

This argument falls flat for two reasons. First, under New York law, a nonassignment provision that merely prohibits assignment—and does not expressly 

declare that such assignments are void or invalid—merely entitles the aggrieved 

party to damages. See Sullivan v. Int’l Fidelity Ins. Co., 465 N.Y.S.2d 235, 237-38 

(N.Y. App. Div. 1983) (citing cases). Without such a clear and express statement of 

invalidity of assignments included in the contract, the assignment survives and the 

assignee can enforce the transferred rights against the third party. Id. In this case, 

the JDA merely prohibits assignment without consent—it does not state that 

nonconsensual assignments are void. 

Second, and more importantly, the non-assignment provision here specifically 

forbids the transference of rights “under this Agreement.” Aplt. App. 3114, JDA 

§ 22.12. We have already held that SCO’s lawsuit is not to vindicate rights under the 

JDA itself, but is instead to vindicate a tort arising from a duty separate and apart 

from that contract. Accordingly, even if this non-assignment provision operated to 

invalidate nonconsensual contractual assignments, the assignment of rights at issue 

here is outside the scope of that provision. SCO therefore has standing to bring its 

misappropriation claim against IBM as an assignee of Santa Cruz’s rights.15

 

15 IBM cites one unpublished federal case, TeeVee Toons, Inc. v. Gerhard Schubert 

GmbH, No. 00 Civ. 5189, 2006 WL 2463537 (S.D.N.Y. Aug. 23, 2006), for the 

proposition that a non-party to a contract lacks standing to sue on the contract. But 
24 

4. Limitations Period 

IBM next contends that SCO’s misappropriation claim is untimely under the 

contractual limitations period. The JDA provided: “Any legal or other action related 

to a breach of this Agreement must be commenced no later than two (2) years from 

the date of the breach . . . .” Aplt. App. 3113, JDA § 22.3 (emphasis added). At the 

outset, SCO objects to the application of this provision to its tort claim which, as 

earlier discussed, is separate from the contract. We may assume, without deciding, 

that the contractual language applies not only to breach-of-contract claims, but also 

to “[a]ny legal or other action related to a breach” of the JDA. Id. (emphasis added). 

Even as a separate tort action, there is no question that SCO’s misappropriation claim 

is “related to” a breach of the JDA because the JDA expressly deals with the use of 

SCO’s licensed materials. We thus apply the two-year limitations period to SCO’s 

misappropriation claim, which SCO initially filed on March 6, 2003. 

Nevertheless, SCO complied with the contractual limitations period because it 

filed suit less than two years after its claim accrued. Under New York law, “[a] tort 

claim accrues as soon as the claim becomes enforceable, i.e., when all elements of 

the tort can be truthfully alleged in a complaint[.]” IDT Corp. v. Morgan Stanley 

Dean Witter & Co., 907 N.E.2d 268, 273 (N.Y. 2009) (internal quotation marks, 

citation omitted). Recall that the elements of a misappropriation claim are that the 

 

TeeVee Toons is materially different from the case before us: it did not involve any 

assignment or transfer of rights to a third party. 
25 

defendant “(1) misappropriated the plaintiff’s labors, skills, expenditures, or good 

will[,] and (2) displayed some element of bad faith in doing so.” Sidney Frank 

Importing, 998 F. Supp. 2d at 209. 

SCO’s misappropriation theory is predicated on the improper inclusion of the 

SVr4 code in IBM’s AIX for Power product.16 That claim accrued when IBM 

released the AIX for Power operating system containing the SVr4 code on May 4, 

2001, which was less than two years before SCO filed its complaint. This release was 

allegedly undertaken in bad faith because IBM attempted to legitimize its distribution 

of the SVr4-enhanced AIX product based on a “sham” release of the Monterey 

operating system made available on a limited basis that very same day. (Aplt. Br. 13.) 

Thus, May 4, 2001, is the date upon which “all elements of the tort [could] be 

truthfully alleged in a complaint” against IBM. IDT Corp., 907 N.E.2d at 273 

(internal quotation marks omitted). 

To be sure, IBM included the SVr4 code in a beta test version of AIX for 

Power in October 2000, but there was nothing improper about that because IBM was 

expected to take preparatory steps toward eventually releasing a functional and 

publicly available version of its AIX for Power product containing the SVr4 code. 

 

16 SCO’s initial theory of misappropriation was based on IBM’s alleged disclosure of 

confidential materials, acquired through Project Monterey, to the Linux community 

in order to make Linux competitive in the enterprise computing market. However, 

SCO specifically asserts that it only learned of IBM’s improper use of the SVr4 code 

during discovery in this case, at which point its theory shifted to focus on the 

improper use of that code, rather than the Linux disclosures. 
26 

SCO’s claim therefore did not accrue at that time. IBM counters that SCO instructed 

its own expert to calculate damages for the misappropriation claim beginning on 

October 1, 2000. But we decline to assign that fact any significance, as SCO cannot 

unilaterally change the claim accrual date any more than IBM can change it—and 

were SCO to prevail at trial on this claim, a factfinder could certainly disagree with 

SCO’s damages calculations. Accordingly, SCO’s claim for misappropriation based 

on improper use of the SVr4 code in the AIX for Power product accrued on May 4, 

2001, well within the contractual limitations period. 

5. Copyright Preemption

IBM argues that SCO’s misappropriation claim is preempted by federal 

copyright law. Section 301 of the federal Copyright Act provides: “[A]ll legal or 

equitable rights that are equivalent to any of the exclusive rights within the general 

scope of copyright . . . and come within the subject matter of copyright . . . are 

governed exclusively by” federal copyright law. 17 U.S.C. § 301(a). In other words, 

the Copyright Act “preempts a state common law or statutory claim if: (1) the work is 

within the scope of the subject matter of copyright . . . ; and (2) the rights granted 

under state law are equivalent to any exclusive rights within the scope of federal 

copyright . . . .” Harold Stores, Inc. v. Dillard Dep’t Stores, Inc., 82 F.3d 1533, 

1542-43 (10th Cir. 1996) (internal quotation marks, citations omitted). The parties 

do not dispute that the SVr4 code at issue here is copyrightable subject matter, see 

Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522, 533 (6th Cir. 
27 

2004), so we proceed on that assumption. The real battleground is whether SCO’s 

misappropriation claim is “equivalent” to any of the exclusive rights granted by 

federal copyright law. 17 U.S.C. § 301(a). 

Section 301 “preempts only those state law rights that may be abridged by an 

act which, in and of itself, would infringe one of the exclusive rights provided by 

federal copyright law.” Harolds Stores, 82 F.3d at 1543 (quoting Computer Assocs. 

Int’l v. Altai, Inc. 982 F.2d 693, 716 (2d Cir. 1992)). Those exclusive rights include 

the rights to reproduce the work, prepare derivative works, distribute copies, and 

perform or display the work publicly. See 17 U.S.C. § 106; see also Harolds Stores, 

82 F.3d at 1543. Accordingly, “if a state cause of action requires an extra element, 

beyond mere copying, preparation of derivative works, performance, distribution or 

display, then the state cause of action is qualitatively different from, and not 

subsumed within, a copyright infringement claim and federal law will not preempt 

the state action.” Gates Rubber Co. v. Bando Chemical Indus., Ltd., 9 F.3d 823, 847 

(10th Cir. 1993) (emphasis added). The dispositive question, then, is whether a 

misappropriation claim under New York law has an “extra element” beyond the 

elements of a federal copyright infringement claim. We hold that it does. 

Misappropriation claims in New York require the victim to demonstrate that 

the defendant acted with bad faith. See, e.g., Schroeder v. Pinterest Inc., 17 

N.Y.S.3d 678, 693 (N.Y. App. Div. 2015); Abe’s Rooms, Inc. v, Space Hunters, Inc., 

833 N.Y.S.2d 138, 140 (N.Y. App. Div. 2007); Saratoga Vichy Spring Co., Inc. v. 

Lehman, 625 F.2d 1037, 1044 (2d Cir. 1980) (observing that the “element of bad 
28 

faith” is central to the misappropriation theory of unfair competition under New York 

law); see also 104 N.Y. Jur. 2d Trade Regulation § 248 (Aug. 2017) (“The gravamen, 

or essence, of unfair competition under New York law is the bad faith 

misappropriation” of another’s property. (footnotes omitted)). 

By contrast, federal copyright infringement does not require proof of bad faith. 

A plaintiff seeking relief for federal copyright infringement must prove only that he 

“owns a valid copyright” and that the defendant “copied protectable elements of the 

copyrighted work.” Paycom Payroll, LLC v. Richison, 758 F.3d 1198, 1204 (10th 

Cir. 2014) (internal quotation marks, citation omitted). Because misappropriation 

under New York law has the extra element of bad faith, SCO’s claim is not 

“equivalent” to a federal copyright infringement claim. Accordingly, it is not 

preempted by the Section 301 of the Copyright Act.17

 

17 IBM argues that the district court’s denial of SCO’s attempt to add a copyright 

infringement claim should be relevant in determining whether the Copyright Act 

preempts SCO’s misappropriation theory. It is not. The district court precluded 

amendment of SCO’s complaint for procedural reasons—SCO had failed to 

demonstrate good cause for why the copyright claim was not included in the initial 

complaint. That does not mean that misappropriation under New York law is 

“equivalent” to a copyright infringement claim for preemption purposes. Nor does 

SCO’s unsuccessful attempt to amend its complaint prevent SCO from using facts 

learned during the discovery stage as the basis for its existing causes of action, i.e., 

misappropriation. As explained earlier, that is apparently what SCO did here. After 

it discovered the presence of the SVr4 code in IBM’s AIX for Power product, that 

discovery became the predominant basis for its existing misappropriation claim, 

displacing its earlier theory of misappropriation which focused on the confidential 

materials which IBM allegedly disclosed to the Linux community. 
29 

B. Tortious Interference 

1. Applicable Law

The parties have apparently agreed that Utah law governs SCO’s tortious 

interference claims.18 Although the JDA requires that the “legal relations between the 

parties” are governed by New York law, Aplt. App. 3112, JDA § 22.3, IBM’s alleged 

intermeddling does not concern the legal relations between IBM and SCO. Moreover, 

SCO’s headquarters and principal place of business is in Utah, so that is where it suffered 

the alleged injury. Accordingly, we apply the law from the State of Utah in evaluating 

SCO’s tortious interference claims. 

Under Utah law, the elements of tortious interference are: (1) intentional 

interference with plaintiff’s existing or potential business relationships, (2) the 

interference is accomplished by improper means, and (3) injury suffered by plaintiff. See 

Eldridge v. Johndrow, 345 P.3d 553, 556 (Utah 2015).19 With these elements in mind, 

SCO offers two theories of tortious interference. First, SCO alleges that IBM indirectly

interfered with SCO’s business relationships generally in the UNIX-on-Intel market by 

 

18 The district court relied on Utah authorities, and the parties cite Utah cases 

throughout their briefs before this Court, as they did in the district court. 

19 Before Eldridge v. Johndrow was decided in 2015, Utah courts permitted a plaintiff 

to prove tortious interference even without improper means, so long as the defendant 

harbored a predominant improper purpose. See 345 P.3d at 556; see also Anderson 

Dev. Co. v. Tobias, 116, P.3d 323, 331 (Utah 2005) (“[O]nly one alternative, either 

improper purpose or improper means, need be established; a plaintiff need not prove 

both.”). Eldridge changed the law by repudiating the improper-purpose alternative 

and requiring improper means to establish a claim for tortious interference. See 345 

P.3d at 565 (“We therefore conclude that the improper-purpose doctrine has not 

worked well in practice, . . . . It should therefore be abandoned.” (internal citation 

omitted)). 
30 

improperly disclosing Santa Cruz’s proprietary materials to the Linux community, 

thereby causing SCO’s customers to prefer Linux over SCO’s fee-based UNIX platform. 

Second, SCO claims that IBM directly interfered with SCO’s business relationships by 

inducing SCO’s affiliates to cut ties with SCO. We address these in turn. 

2. Indirect Interference Through Improper Linux Disclosures

The district court found that SCO’s theory of indirect interference based on IBM’s 

Linux disclosures is not actionable under Utah law. SCO asserts that IBM’s wrongful 

disclosures of proprietary UNIX materials to the open-source community drove SCO’s 

potential customers away from its fee-based products and toward the free Linux 

alternative, resulting in SCO’s substantially diminished sales in the UNIX-on-Intel 

market. In other words, this theory is predicated upon a defendant’s alleged marketbased activities which may have caused potential customers to refrain from doing 

business with the plaintiff. Whether Utah courts would recognize such a theory as a 

tortious-interference claim is an unsettled question of state law. 

“[W]hen an appeal presents an unsettled question of state law, we must ordinarily 

‘attempt to predict how the highest court would interpret the issue.’” Belnap v. Iasis 

Healthcare, 844 F.3d 1272, 1295 (10th Cir. 2017) (alterations omitted) (quoting 

Cornhusker Cas. Co. v. Skaj, 786 F.3d 842, 852 (10th Cir. 2015)). “Further, ‘we are 

generally reticent to expand state law without clear guidance from the highest court.’” Id. 

(quoting Schrock v. Wyeth, Inc., 727 F.3d 1273, 1284 (10th Cir. 2013)). In fact, we have 

indicated that a party encouraging a federal court to apply a new legal principle under 
31 

state law must make a “strong showing” that the highest court of that state would adopt 

that principle if presented with the question. Id. at 1295 (“Absent a strong showing to the 

contrary, we are disinclined to predict that the Utah Supreme Court would recognize” 

another theory of estoppel); id. at 1296 (“And Defendants fail to make such a strong 

showing.”). With this in mind, we turn to Utah law. 

Utah law clearly embraces a theory of intentional interference based on evidence 

that potential or prospective customers—rather than merely existing customers—were 

driven away by the defendant’s improper intermeddling. See, e.g. Anderson Dev. Co. v. 

Tobias, 116 P.3d 323, 331 (Utah 2005) (“A claim for intentional interference with 

economic relations protects both existing contractual relationships and prospective 

relationships of economic advantage not yet reduced to a formal contract.” (internal 

quotation marks, citation omitted)); Leigh Furniture & Carpet Co. v. Isom, 657 P.2d 293, 

306 (Utah 1982), overruled on other grounds by Eldridge, 345 P.3d at 553 (“Driving 

away an individual’s existing or potential customers is the archetypical injury this cause 

of action was devised to remedy.” (citations omitted)). 

Furthermore, Utah law does not require that a defendant directly confront the third 

party to induce that person to cut economic ties with the plaintiff. The Utah Supreme 

Court’s seminal decision in Leigh Furniture & Carpet Co. v. Isom, illustrates this point. 

In that case, the defendant committed tortious interference when its representatives 

frequently visited plaintiff’s “store during business hours to confront him, question him, 

and make demands and inquiries regarding the manner in which he was conducting his 

business.” Leigh Furniture, 657 P.2d at 306. These disruptive intrusions “repeatedly 
32 

interrupted sales activities, caused [plaintiff]’s customers to comment and complain, and 

more than once caused a customer to leave the store.” Id. Although there was no direct 

communication between defendant and the third-party customers who were driven away 

from plaintiff’s business, the Utah Supreme Court nevertheless found this to be 

actionable interference by the defendant. 

 But SCO’s theory of indirect interference goes substantially further than the facts 

of Leigh Furniture. In this case, IBM’s alleged improper conduct was directed toward the 

public and the market generally. The evidence, when construed in SCO’s favor, suggests 

that IBM improperly disclosed confidential Monterey materials to a public community of 

interested software developers who then used those contributions to strengthen the opensource Linux platform, which ultimately became a preferable alternative to SCO’s feebased UNIX product, thereby diminishing SCO’s customer base. 

To be sure, Leigh Furniture endorsed a tortious-interference claim based on 

potential customers who were not directly contacted by the defendant, but it does not 

follow clearly from Leigh Furniture that any improper conduct directed toward the public 

and the general market would be actionable as a claim for tortious interference whenever 

a competitor’s business relationships suffer as a result of the improper conduct. That, in 

effect, would convert almost any claim for illegal market-based activities into a tortiousinterference claim, and we find no indication in Utah case law that the state supreme 

court would accept such an expansive interpretation. At the very least, because SCO has 

not cited any controlling case on point, it has failed to make a “strong showing” that the 

Utah Supreme Court would validate this theory if presented with the issue. Belnap, 844 
33 

F.3d at 1295, 1296. Accordingly, we agree with the district court that SCO’s indirectinterference theory is not actionable under Utah law. 

3. Direct Interference by Inducing Business Partners to Cut Ties With 

SCO

The district court also granted summary judgment on SCO’s direct-interference 

theory based on IBM’s alleged efforts to persuade SCO’s business partners and investors 

to cut ties with SCO. The district court first concluded that, with the exception of IBM’s 

communications with Hewlett-Packard, there was inadequate evidence to support a 

finding of direct interference with SCO’s business relationships. But even the HewlettPackard evidence was not sufficient because, according to the district court, there was no 

causal link between IBM’s alleged intermeddling with any of the relationships and SCO’s 

injury. Further, IBM offers an alternative ground to affirm the decision below: that the 

evidence does not support even an inference that IBM acted with improper means, a 

required element of tortious interference under Utah law. 

The improper-means requirement “is satisfied where the means used to interfere 

with a party’s economic relations are contrary to law, such as violations of statutes, 

regulations, or recognized common-law rules.” Leigh Furniture, 657 P.2d at 308. 

“Commonly included among improper means are violence, threats or other intimidation, 

deceit or misrepresentation, bribery, unfounded litigation, defamation, or disparaging 

falsehood.” Id. (internal quotation marks, citation omitted). In other words, merely 
34 

persuading another company to withdraw its business from a competitor is not, without 

more, an improper means under Utah law. 

Turning to the facts of this case, we agree with the district court that a jury could 

find IBM attempted to interfere with SCO’s relationship with Hewlett-Packard. After 

SCO announced its Linux licensing strategy, IBM executive Karen Smith told SCO’s 

CEO that she was going to encourage partners and customers not to do business with 

SCO. Smith then followed through with that threat the same day when she suggested to 

Hewlett-Packard executive Richard Becker that Hewlett-Packard “withdraw all [its] 

business activities from SCO[.]” Aplt. App. 2352. 

The other business relationships are a different story. We agree with the district 

court that there is not enough evidence in this record to conclude that IBM actually 

interfered with SCO’s relationships with Oracle, Computer Associates, Intel, and 

Baystar.20 There is simply no admissible direct evidence that IBM ever confronted these 

companies. To the contrary, executives representing each of these companies stated in a 

sworn declaration that, to the best of their knowledge, IBM never approached them about 

cutting ties with SCO and that any change in business dealings with SCO was not the 

 

20 SCO did offer some evidence that IBM had attempted to persuade a managing 

member of Baystar named Lawrence Goldfarb to discontinue Baystar’s investment in 

SCO. SCO’s chief executive Darl McBride submitted a declaration stating that 

Goldfarb told McBride “that IBM had been ‘on him, on him, on him’ to retract his 

support from SCO.” Aplt. App. 5586. But that evidence would have been 

inadmissible hearsay, as it was offered out of court to prove the truth of the matter 

asserted and SCO has not pointed to any hearsay exception on appeal that would have 

salvaged the statement from exclusion at trial. Nor can the Court think of an 

applicable exception. Thus, a jury would not have been entitled to consider this 

statement so it is not proper to include it in our analysis for the purpose of summary 

judgment. 
35 

result of IBM’s statements or actions. SCO, for its part, counters that circumstantial 

evidence should trump these self-serving declarations, at least enough to create a triable 

issue of fact. 

Even if that were true, however, IBM’s alternative argument nevertheless compels 

us to dispose of all the allegations of direct interference, including those involving 

Hewlett-Packard and these other entities. Under Utah law, “no tortious interference 

claim can succeed without evidence of improper means.” Eldridge, 345 P.3d at 555. 

That requires that the means be “contrary to law, such as violations of statutes, 

regulations, or recognized common-law rules.” Leigh Furniture, 657 P.2d at 308. A 

competitor’s attempt merely to convince third parties not to deal with a plaintiff does not 

meet this requirement. To confirm that point, the Utah Supreme Court cautioned that the 

intentional-interference tort ought not sweep within its scope “efforts to persuade others 

not to . . . deal with certain entities” because that would be a legitimate form of thirdparty influence. Id. at 303. 

Thus, even if we assume that IBM actually followed through with its threat to 

persuade industry players not to do business with SCO—as it did with HewlettPackard—that conduct would not have been “improper” within the meaning of the Utah 

tort of intentional interference. The district court therefore appropriately granted 

summary judgment on this claim.21

 

21 Because we resolve this claim on the improper-means requirement, we do not 

address the district court’s determination that SCO failed to demonstrate adequate 

causation for its injury on summary judgment. 
36 

C. Amendment of Complaint 

After the deadline for amended pleadings, SCO attempted to add a claim for 

copyright infringement against IBM based on its late discovery of IBM’s allegedly 

unauthorized distribution of the SVr4 code in the AIX for Power product.22 The district 

court denied SCO’s request as untimely and likely to expand the litigation. We review a 

denial of leave to amend a complaint for abuse of discretion. E.g. Wessel v. City of 

Albuquerque, 299 F.3d 1186, 1197 (10th Cir. 2002). Under that deferential standard, we 

affirm the district court’s order on this issue. 

A brief procedural overview will facilitate the analysis. SCO filed its initial 

complaint on March 6, 2003, and then timely amended its complaint on July 22, 2003. 

IBM responded with counterclaims of its own on August 6, 2003, and then timely 

amended those on September 25, 2003. The district court set a deadline of February 4, 

2004 for amended pleadings, but allowed SCO and IBM each to file second amended 

pleadings on February 27, 2004 and March 29, 2004, respectively. 

In March and April 2004, IBM produced almost a million pages of documents and 

dozens of CDs of source code included in AIX. When SCO reviewed these discovery 

materials, SCO claims that it learned for the first time that AIX contained the SVr4 code 

 

22 The original complaint contained a claim for copyright infringement, but that 

appears to be based on SCO’s mistaken belief that it owned the copyrights to all the 

UNIX technologies, so any unauthorized use of a UNIX variation might have been 

vulnerable to the copyright owner’s challenge. This later-added copyright claim is 

based on SCO’s discovery that IBM had improperly used SCO’s SVr4 code 

specifically—a claim that is different from SCO’s misappropriation claim because 

the copyright theory does not depend upon proof of bad faith, while misappropriation 

does.
37 

which had been copied from Santa Cruz’s contributions to Project Monterey. After 

analyzing this voluminous document production, SCO sought again to amend its 

complaint on October 14, 2004 to add a claim for copyright infringement based on the 

unauthorized use of the SVr4 code.23

The federal rules of civil procedure provide that “[a] schedule may be modified 

only for good cause and with the judge’s consent.” Fed. R. Civ. P. 16(b)(4) (emphasis 

added). Thus, good cause must be shown in order to submit a pleading beyond the 

deadline set by the district court’s scheduling order, which was February 4, 2004 in this 

case. Rule 15(a)(2) further indicates that “[t]he court should freely give leave [to amend 

pleadings] when justice so requires.” Fed. R. Civ. P. 15(a)(2). Consistent with this rule, 

we have held that “[t]he purpose of [Rule 15(a)(2)] is to provide litigants the maximum 

opportunity for each claim to be decided on its merits rather than on procedural niceties.” 

Minter v. Prime Equipment Co., 451 F.3d 1196, 1204 (10th Cir. 2006) (internal quotation 

marks, citation omitted); accord 6 Charles Alan Wright & Arthur R. Miller, Federal 

Practice & Procedure § 1484 (3d ed. 2010). 

We turn now to the arguments and the district court’s reasoning. In defending its 

attempt to add a claim after the February 4, 2004 deadline, SCO contended that IBM 

would not be prejudiced because IBM had already asserted a counterclaim for declaratory 

 

23 It also seems that this late-stage discovery is the event that prompted SCO to shift 

its theory on its existing cause of action for misappropriation. As explained earlier, 

while the initial misappropriation theory was predicated on IBM’s alleged Linux 

disclosures, SCO’s current misappropriation theory is based on the allegedly stolen 

SVr4 code. 
38 

judgment on SCO’s copyrights. That counterclaim provided: “IBM does not infringe, 

induce the infringement of, or contribute to the infringement of any SCO copyright 

through the reproduction, improvement, and distribution of AIX and Dynix, and that 

some or all of SCO’s purported copyrights in UNIX are invalid and unenforceable.”24 

Aplt. App. 233. 

The district court, however, reasoned that IBM’s copyright counterclaim was not 

intended to encompass literally any SCO copyright, but rather it sought a more limited 

declaration that IBM was not violating SCO’s copyrights to the original UNIX 

technologies because Santa Cruz never received the UNIX copyrights in the Novell 

agreement. After all, SCO had initially filed a copyright infringement claim against IBM 

on that theory, and IBM’s responsive counterclaim should be construed in that context. 

The district court then reasoned: “Having determined that the [IBM’s] Counterclaim was 

not intended to sweep so broadly, SCO’s proposed amendment is no longer the mirrorimage of IBM’s [copyright] Counterclaim. To permit the proposed amendment would 

expand this already sizable and complex litigation and would serve only to delay its 

resolution.” Aplt. App. 1836-37, Dist Ct. Order at 3-4 (emphasis added). Switching 

course, the district court stated without explanation that SCO had unduly delayed in 

asserting the proposed cause of action: “It appears that SCO—or its predecessor—either 

knew or should have known about the conduct at issue before it filed its original 

 

24 “Dynix” is a reference to the UNIX variation developed by Sequent, a company 

that was subsequently merged into IBM. 
39 

Complaint.” Aplt. App. 1837, Dist. Ct. Order at 4 (emphasis added). For these two 

reasons, the district court denied SCO’s motion to amend. 

Notwithstanding the liberal treatment courts ordinarily afford these requests, we 

cannot say that the district court abused its discretion in finding the absence of “good 

cause” for the proposed amendment. The parties had already modified the scheduling 

order previously and the litigation was certainly sizable and complex at the time. 

Moreover, while SCO may have genuinely realized the existence of the SVr4 code late in 

the game, it is not unreasonable to conclude that SCO could have investigated the matter 

before it filed its original complaint, or at least alleged the claim based on information 

and belief.25 Accordingly, we affirm the denial of leave to amend because the district 

court did not act outside its broad range of discretion. 

III. CONCLUSION

The district court’s order awarding IBM summary judgment on the 

misappropriation claim is REVERSED, and the matter is REMANDED for further 

proceedings consistent with this opinion. 

 

25 This is not inconsistent with our earlier determination regarding SCO’s compliance 

with the two-year contractual limitations period. We held that the misappropriation 

claim, which is based on the allegedly unauthorized use of the SVr4 code acquired 

through Project Monterey, did not accrue until May 4, 2001 because that is the date 

on which IBM released a purportedly “sham” version of the IA-64 Product to 

legitimize its use of the SVr4 code in its own AIX for Power product released that 

very same day, thereby satisfying the requisite element of bad faith under New York 

law. 
40 

The district court’s order awarding IBM summary judgment on the tortious 

interference claims is AFFIRMED. The district court’s order denying SCO leave to 

amend its complaint is also AFFIRMED.26

 

26 On August 31, 2016, Appellant filed an “Unopposed Motion for Permission to File 

Opening Brief and Appendix Under Seal.” On September 12, 2016, Appellant filed a 

supplement to that motion entitled “Appellant’s Supplement to its Unopposed Motion 

for Permission to File Opening Brief and Appendix Under Seal,” and on September 

16, 2016, Appellant filed a second supplement to that motion entitled “Appellant’s 

Second Supplement to its Unopposed Motion for Permission to File Opening Brief 

and Appendix Under Seal.” 

On September 16, 2016, this Court entered an Order ruling on all three motions, 

largely denying them. However, as our Order makes clear, the matters identified in 

paragraph 4 in “Appellant’s Supplement to its Unopposed Motion for Permission to 

File Opening Brief and Appendix Under Seal” filed on September 12, 2016, were to 

remain “provisionally sealed” subject to a further ruling by the merits panel. 

Those documents are identified as the following appendix volumes: 6, 7, 8, 9, 12, 

14, 18, 19, 20, 21, 22, 25, 36, 37, 38, 39, 40, 43, 44, 45, 46, 47, 48, 52, 53, 54, 55, 56, 

61, 62, 63, 64, and 66. 

Appellant represents, and Appellee does not oppose, that these materials contain 

sensitive confidential revenue and profitability information, as well as strategic 

business and marketing plans. 

All record material relevant to our opinion has been disclosed in the opinion itself. 

The Court sees no need to require further public disclosure of these confidential 

materials. 

Accordingly, the Court affirms its previous provisional order accepting the materials 

listed above under seal. 

This disposes of all open or provisional rulings pertaining to motions to seal in this 

case.