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Sun Microsystem's Motion for Summary Judgment of Copyright Infringement.
Re: Sun v. Microsoft, U.S.D.C., N.D. Cal., San Jose, Case No. 97-20884.

Date: January 22, 1999.
Source: HTML version created by Sun Microsystems.  Copyright Sun Microsystems, Inc.   Reprinted with permission.
In this document, the list of Plaintiff's attorneys has been omitted, and footnotes have been converted into sidenotes.  Otherwise, this document has been edited for HTML, but not for content.


[List of Plaintiff's attorney's omitted]

 

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

SUN MICROSYSTEMS, INC.,
a Delaware corporation,

Plaintiff,

v.

MICROSOFT CORPORATION,
a Washington corporation, Defendant,       

No. C 97-20884 RMW (PVT)

SUN MICROSYSTEMS, INC.'S MOTION FOR
SUMMARY JUDGEMENT OF COPYRIGHT
INFRINGEMENT

Date: March 12, 1999
Time: 9:00 a.m.
Judge: Hon. Ronald M. Whyte


TABLE OF CONTENTS

NOTICE OF MOTION

INTRODUCTION

STATEMENT OF FACTS

ARGUMENT

I. Legal Standard

II. Sun Is The Owner of Valid Copyrights In The JDK computer Program.

III. Microsoft Copied Protected Elements Of The Source Code For Sun's JDK Computer Program.

IV. The TLDA Between Sun And Microsoft Is Not A Valid Defense Because Microsoft Exceeded The Scope Of Its License By Distributing Products Which Failed Sun's Test Suite.

A. A Licensee Who Exceeds The Scope Of Its License Is Liable For Copyright Infringement

B. From September 1997 To May 1998, Microsoft Exceeded The Scope Of Its License By Distributing Products Which Failed To Pass The Signaturetest In Sun's JCK 1.1a Test Suite

C. From September 1997 To The Present, Microsoft Exceeded The Scope Of Its License By Distributing Products Which Failed To Pass The JNI Tests In Sun's JCK 1.1a Test Suite

CONCLUSION

TABLE OF AUTHORITIES

CASES PAGE
Adobe Sys., Inc. v. Southern Software, Inc., 45 U.S.P.Q.2d 1827 (N.D. Cal. 1998) 7
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) 5
Computer Assocs. Int'l v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992) 6
Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988) 7
Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc. 109 F.3d 1394, 1397 (9th Cir.), cert. dismissed, 118 S. Ct. 27 (1997) 7
Entertainment Res. Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211 (9th Cir. 1997), cert. denied, 118 S. Ct. 1302 (1998) 6
Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) 6
Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173 (9th Cir. 1989) 6
Microsoft Corp. v. Very Competitive Computer Prods. Corp., 671 F. Supp. 1250 (N.D. Cal. 1987) 9
Rano v. Sipa Press, Inc., 987 F.2d 580 (9th Cir. 1993) 9
S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081 (9th Cir. 1989) 7, 9
Sun Microsystems, Inc. v. Microsoft Corp., 21 F. Supp. 2d 1109 (N.D. Cal. 1998) 10, 12, 13
Sun Microsystems, Inc. v. Microsoft Corp., 999 F. Supp. 1301 (N.D. Cal. 1998) 10
Triad Sys. Corp. v. Southeastern Express Co., 64 F.3d 1330 (9th Cir. 1995) 6
OTHER AUTHORITIES
Melville B. Nimmer & David Nimmer, Nimmer on Copyright 13.03[F][4] (1998). 7

NOTICE OF MOTION

Footnotes

1  The "Microsoft Virtual Machine for JavaTM" includes Microsoft's implementation of the JAVA Runtime Interpreter and JAVA Classes. 1/22/99 Schroer Decl., 6.

On March 12, 1999, Sun Microsystems, Inc. will move the Court for summary judgment of copyright infringement. Sun will ask the Court, pursuant to Rule 56 of the Federal Rules of Civil Procedure, to enter judgment that Microsoft's distribution of products containing builds of the Microsoft Virtual Machine for JavaTM ("Microsoft VM")1 which failed to pass Sun's JCK 1.1a test suite, including (without limitation) Windows 95 OSR 2.5, Windows 98, Windows NT 4 SP4, Internet Explorer ("IE") 4.0, Visual J++ 6.0 and Software Development Kit for JavaTM ("SDKJ"), exceeded the scope of Microsoft's license and infringed Sun's copyrights in its JavaTM Development Kit ("JDK") computer program.

INTRODUCTION

In 1996, Sun agreed to grant Microsoft a license to Sun's JAVATM technology and copyrighted source code. Microsoft copied Sun's source code, and then shipped millions of copies of computer programs like Windows 98 and IE 4.0 based on that copied code. Microsoft's products have enjoyed widespread commercial distribution.

2  Under the Court's Order, Microsoft remains free, subject to certain warning and default setting requirements, to distribute software development tool products which fail the Compiler Output Requirement of Sun's JCK 1.1a test suite. Sun maintains that this distribution infringes Sun's copyrights as well, but does not seek to resolve that dispute via summary judgment at this time.

Microsoft, however, exceeded the scope of its license by distributing Products copied or derived from Sun's copyrighted code that failed to pass Sun's compatibility test suite. Microsoft's license to distribute products based on Sun's copyrighted code was expressly conditioned upon first passing Sun's compatibility test suites. Microsoft's products, however, failed these tests. Despite Sun's repeated pleas, the filing of this lawsuit, and a preliminary injunction based on trademark infringement, Microsoft continued its course. Microsoft only began to take steps to stop its copyright infringement with respect to certain products in response to the Court's November 17, 1998 Order granting in part Sun's motion for preliminary injunction based on copyright infringement.2

The present motion addresses issues that this Court has previously considered and resolved in the context of Sun's preliminary injunction motions. Sun is entitled to summary judgment that Microsoft's distribution of products that are based on code copied from Sun's JDK computer program, but fail Sun's compatibility test suite, infringes Sun's copyrights because such distribution is outside the scope of Microsoft's license.

STATEMENT OF FACTS

3  Unless otherwise indicated, all citations are to the Declaration of Lloyd R. Day, Jr. in Support of Sun Microsystem's Motions for Summary Judgment/Adjudication. For the Court's convenience, copies of declarations previously filed are also attached to the Day Declaration.

Sun created and developed the JDK computer program as a tool for software developers interested in using Sun's JAVA technology. Sun has registered its copyrights in various versions of the JDK and received certificates of registration from the Copyright Office. Exhibit 7.3

Sun and Microsoft entered into the Technology License and Distribution Agreement dated March 11, 1996 ("TLDA"). Exhibit 1. According to the "Recitals" to the TLDA, Sun wished "to license its JAVA technology, while maintaining compatibility among JAVA language based products," and Microsoft wished "to develop and distribute products related to SUN's JAVA technology." Id.

Section 2.0, "LICENSE GRANTS," of the TLDA defines the scope of the copyright license granted to Microsoft. Sections 2.1(a) and 2.2(a)(iii) grant Microsoft, among other things, a nonexclusive license under Sun's "Intellectual Property Rights" (defined to include copyrights) to (1) "make, access, copy, view, display, modify, adapt and create Derivative Works of the Technology in Source Code form for the purposes of developing, compiling to binary form and supporting Products" and (2) "make, use, import, reproduce, license . . . sell or otherwise distribute to end users as part of a Product or an upgrade to a Product, the Technology and Derivative Works thereof in binary form." Id. Sections 2.6(a)(iv) and (vi) of the "LICENSE GRANTS," however, expressly condition the license upon the requirement that, prior to commercial distribution by Microsoft, each new version of any Microsoft product which incorporates a Significant Upgrade of the Technology first pass the Java Test Suite that accompanied the Significant Upgrade:

"(iv) . . . Licensee shall deliver to SUN, in accordance with the terms of Section 3.3, an upgrade to the Java Reference Implementation (each, a 'Compatible Implementation') that passes the test suite that accompanied the Significant Upgrade (a 'Relevant Test Suite') . . . .

. . . .

"(vi) Licensee agrees that any new version of a Product that Licensee makes commercially available to the public after the most recent Compatibility Date shall only include the corresponding Compatible Implementation . . . ."

Id.

Shortly after entering into the TLDA, Sun delivered the source code for its copyrighted JDK computer program to Microsoft. Exhibit 17 (11/10/98 Ellison-Taylor Tr. 16:13-17:7). Sun also made the source code for upgrades to the JDK available to Microsoft. Id. at 17:24-18:13. For example, in December 1996 Microsoft downloaded (i.e., copied) the source code for JDK 1.1 from Sun, and sometime prior to July 1997 Microsoft downloaded the source code for JDK 1.1.3. Id. at 22. After downloading upgraded versions of the JDK source code from Sun, Microsoft employees would review Sun's source code and copy into its products the files or portions of files which Microsoft wanted to incorporate in its products. Id. at 24-26.

As a result, the source code for Microsoft's implementation of the JAVA runtime -- the Microsoft VM -- contains source code copied from Sun's JDK. Id. at 32-33. According to Microsoft's 30(b)(6) designee regarding its use of Sun's JDK 1.1 code in Microsoft products for the Win32 operating systems, "Source code I can say for certain that was copied from Sun's JDK into the Microsoft products would be typically the Java.* and Java source classes." Id. at 35. Another Microsoft 30(b)(6) designee testified that Internet Explorer 4.0 and 4.01 for the Macintosh contain "class files copied directly from Sun's JDK" and that "hundreds of class files" in those Microsoft products are "identical to Sun's JDK." Exhibit 16 (1/14/99 Eames Tr. 153).

4  As the briefing relating to Microsoft's recent motion for an extension of time to comply with the November 17, 1998 preliminary injunction made clear, Microsoft incorporates its VM in many different products. Sun has repeatedly asked Microsoft for a list of which build numbers are contained in which products. To date, Microsoft has only provided partial information. As a result, Sun cannot be certain that it has identified all of the builds of the Microsoft VM which contain copies of Sun's JDK code. However, it is clear that the build numbers which Microsoft has identified and produced to Sun do contain source code copied from Sun's JDK.

Analysis of Microsoft's source code confirms the substantial amount of source code literally copied from Sun's JDK. Microsoft cannot dispute that hundreds of source code files for builds 2252, 2339, 2424, 2435, 2750, 2829, 2922, 2924 and 3155 of the Microsoft VM were literally copied from Sun's JDK source code. Lanovaz Decl., 23-24 & Exhibit U; see also Exhibit 17 (11/10/98 Ellison-Taylor Tr. 16-35, 70-71, 83-88, 106 and Exhs. 5-7). Any Microsoft product incorporating any of these builds of the Microsoft VM, including Windows 95 OSR 2.5, Windows 98, Windows NT 4 SP4, IE 4.0, 4.01 and 4.01 SP1, SDKJ 2.0 and 3.0 and Visual J++ 6.0, therefore contains code compiled from source code literally copied from Sun's JDK. Exhibit 17 (11/10/98 Ellison-Taylor Tr. 70:12-71:11) and Exhibits 59 & 60 (1/18/99 letters from Landers to Galvin); Lanovaz Decl., Exhibit V. 4 Similarly, the code for Microsoft's IE 4.0 and 4.01 for the Macintosh and Solaris/Unix operating systems was compiled from source code literally copied from Sun's JDK. Exhibit 16 (1/14/99 Eames Tr. 78); Lanovaz Decl., 29-31.

Although Microsoft copied Sun's JDK 1.1 source code and distributed products based on Sun's copyrighted source code, it is undisputed that those products nevertheless failed the JCK 1.1a compatibility test suite that accompanied JDK 1.1. Microsoft admits that the versions of IE 4.0 and SDKJ 2.0 for the Win32 operating systems which it distributed between September 1997 and May 1998 failed to pass the SignatureTest in Sun's JCK 1.1a test suite. Exhibit 3 (Microsoft's Response to RFA No. 59); see also 1/22/99 Schroer Decl., Exhibit C. Microsoft also admits that the versions of IE 4.0 for the Macintosh and Solaris operating systems which it distributed prior to September 1998 failed to pass the SignatureTest in Sun's JCK 1.1a test suite. Exhibit 3 (Microsoft's Response to RFA Nos. 62-63); see also 1/22/99 Schroer Decl., Exhibit C.

5  The following table is compiled based on the information contained in Exh. U of the Lanovaz Declaration; 1/22/99 Schroer Declaration Exhibit C; Exhibit 2 (Microsoft's Response to RFA Nos. 13-14) and Exhibit 3 (Microsoft's Response to RFA Nos. 59, 62-63). Information contained in the Lanovaz and Schroer declarations regarding Microsoft's recent builds 3155 and 3158 of the Microsoft VM have been omitted because these builds pass Sun's JCK 1.1a test suite.

Because Microsoft did not begin to distribute products which supported JNI until after the Court's November 17, 1998 preliminary injunction order, Microsoft cannot and does not dispute that since September 1997 it has commercially distributed products containing the Microsoft VM, like Windows 98, IE 4.0 and Visual J++ 6.0, which fail all JNI tests contained in the JCK 1.1a test suite. Exhibit 2 (Microsoft's Response to RFA Nos. 13-14); see also 1/22/99 Schroer Decl., Exhibit C.

The following table summarizes the undisputed evidence regarding Microsoft's copying of Sun's JDK source code and its failure to pass Sun's JCK 1.1a test suite:5

Table 1

Microsoft VM Build Number Source Code Copied From Sun's JDK Fails Sun's JCK 1.1a Test Suite
2252 Yes Yes
2339 Yes Yes
2424 Yes Yes
2750 Yes Yes
2752 Yes Yes
2829 Yes Yes
2922 Yes Yes
2924 Yes Yes
VM in IE 4.0 and 4.01 for Macintosh Yes Yes
VM in IE 4.0 and 4.01 for Solaris Yes Yes

Based on these undisputed facts, Sun now seeks summary judgment of copyright infringement against Microsoft for distributing any product containing the above-listed build numbers of the Microsoft VM.

ARGUMENT

I.  Legal Standard

Sun is entitled to summary judgment if it demonstrates that there is no genuine issue of material fact and that Sun is entitled to a judgment as a matter of law. Fed. R. Civ. P. 56. When a rational jury, looking at the record as a whole, could not find for the nonmoving party, no genuine issue of material fact exists and summary judgment is proper. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 254 (1986).

To establish a claim of copyright infringement, Sun must show that (1) Sun is the owner of a valid copyright and (2) Microsoft copied expression protected by Sun's copyrights. Triad Sys. Corp. v. Southeastern Express Co., 64 F.3d 1330, 1335 (9th Cir. 1995).

II.  Sun Is The Owner Of Valid Copyrights In The JDK computer Program.

Sun has received certificates of registration for various versions of its JDK computer program. Exhibit 7 (Certificates of registration for JDK). These certificates of registration, made within five years of the first publication of the JDK computer program, constitute prima facie evidence of Sun's ownership and raise a presumption of validity for Sun's copyrights. 17 U.S.C. 410(c); Entertainment Res. Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211, 1217 (9th Cir. 1997), cert. denied, 118 S. Ct. 1302 (1998); Triad Sys., 64 F.3d at 1335. "Source code and object code, the literal components of a program, are consistently held protected by a copyright on the program." Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989); see also Computer Assocs. Int'l v. Altai, Inc., 982 F.2d 693, 702 (2d Cir. 1992).

Sun expects Microsoft will renew the argument, previously rejected by this Court, that Sun's copyrights are invalid because a small percentage of the source code for Sun's JDK computer program was authored by third parties. This argument is without merit. Sun told the Copyright Office about the presence of the third-party code. Exhibit 7 (Certificates of registration for JDK). The Copyright Office nevertheless issued certificates of registration to Sun because the presence of a small amount of unoriginal expression in a work does not invalidate a copyright. Instead, unoriginal expression should simply be filtered out of the infringement analysis because a defendant does not infringe if she only copied unoriginal expression contained in a copyrighted work. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (holding copyright infringement requires "copying of constituent elements of the work that are original") (emphasis added); Melville B. Nimmer &David Nimmer, Nimmer on Copyright 13.03[F][4] (1998).

The presence of third-party code in Sun's JDK is simply not relevant because Sun is not basing its infringement claim on any of the source code authored by third parties contained in Sun's JDK. The evidence of copying upon which Sun relies excludes any source code files which contain expression authored by parties other than Sun. Lanovaz Decl., 17-18, 21. Microsoft is not liable for copyright infringement because it copied third-party code. Microsoft is liable for copyright infringement because it copied Sun's original source code as well.

III.  Microsoft Copied Protected Elements Of The Source Code For Sun's JDK Computer Program.

"'[C]opying' is shorthand for the infringing of any of the copyright owner's five exclusive rights." S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085 n.3 (9th Cir. 1989). Sun, as the owner of copyrights to the JDK computer program, owns the following relevant, exclusive rights: (1) to reproduce the copyrighted work; (2) to prepare derivative works based on the copyrighted work; and (3) to distribute copies of the copyrighted work to the public. 17 U.S.C. 106; Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1397 (9th Cir.), cert. dismissed, 118 S. Ct. 27 (1997). "Copying may be established by direct evidence of actual copying or circumstantial evidence showing the defendant's access to the copyrighted work and substantial similarity of the general ideas and expression of the copyrighted work." Adobe Sys., Inc. v. Southern Software, Inc., 45 U.S.P.Q.2d 1827, 1830 (N.D. Cal. 1998) (citing Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 206 (9th Cir. 1988)).

Here, Microsoft cannot dispute that it copied Sun's JDK computer program, prepared derivative works based on the program, and distributed copies of the copyrighted work to the public.

Microsoft downloaded (i.e., copied) the source code for Sun's JDK computer program. Exhibit 2 (Microsoft's Response to RFA No. 1) and Exhibit 17 (11/10/98 Ellison-Taylor Tr. 14-17). Microsoft maintained copies of the copyrighted JDK source code on its computers. Exhibit 17 (11/10/98 Ellison-Taylor Tr. at 24:20-25:11). Software developers at Microsoft then copied portions of the source code for Sun's JDK computer program into the source code for the Microsoft VM, which was then incorporated into products such as Internet Explorer 4.0, Visual J++ 6.0 or Windows 98. Id. at 32-33.

6  A "diff program" is a computer program which identifies the source code differences between two files. Exhibit 17 (11/10/98 Ellison-Taylor Tr. 26.).

According to Ian Ellison-Taylor, Microsoft's 30(b)(6) designee on the subject of copyright infringement, "Source code I can say for certain that was copied from Sun's JDK into Microsoft products would be typically the Java.* and Java source classes." Id. at 35. In addition, the presence of Sun's copyright notices in source code files for Microsoft products indicates, "barring mistakes" that "there would be JDK source code in those source files." Id. at 83. The "best way" to determine whether or not a particular file had been copied from Sun's JDK was "to do a source code comparison, do a diff6 between two files with the same name from the JDK and the file that's in the Microsoft SDK and just look at the diff results." Id. at 106. According to Mr. Ellison-Taylor, if every line were identical, he would "conclude that the file was a copy of the JDK." Id. at 111.

The Declaration of Daniel Lanovaz submitted in support of this motion provides the very analysis which Mr. Ellison-Taylor suggested. Using "diff" programs modified to exclude any files potentially written by third parties, Mr. Lanovaz's results demonstrate, beyond genuine dispute, that the source code for each of the builds of the Microsoft VM listed in Table 1 (see supra p. 5) contains substantial amounts of code literally copied from Sun's JDK computer program. Lanovaz Decl., Exhibit U.

For example, the source code for build number 2424 of the Microsoft VM distributed as part of Windows 98 contains 957 files with Sun's copyright notice. Lanovaz Decl., 27. Even after excluding all code potentially authored by third parties, over 300,000 lines of source code for this build are identical to the source code for Sun's copyrighted JDK 1.1.3 computer program. Id., 27-28. In the java.* classes which Mr. Ellison-Taylor acknowledged were copied by Microsoft, of the 442 total files for which a corresponding file was found, a total of 411 files (93%) were either identical (319 files), contained trivial differences (26 files), or contained less than 10% lines of different code (66 files). Id., 27.

A review of the actual text of Microsoft's source code further demonstrates that Microsoft copied protected expression. Microsoft's source code files for the Microsoft VM not only contain Sun's copyright notices, they contain text stating "This software is the confidential and proprietary information of Sun Microsystems, Inc." Exhibit 17 (11/10/98 Ellison-Taylor Tr. 85-86, Exhs. 5-7). Many of Microsoft's source code files contain extensive comments authored by Sun's employees documenting the functionality of the code, and specifically identify the names of Sun employees as "authors" of the source code and comments. Id. (11/10/98 Ellison-Taylor Tr. 87-88, Exhs. 5-7).

Based on Microsoft's admissions and the evidence of massive, literal copying submitted in support of this motion, it cannot be disputed that Microsoft copied expression protected by Sun's copyrights. Thus, Microsoft's distribution of every product that includes the Microsoft VM builds listed in Table 1 of this motion infringes Sun's copyrights unless Microsoft's distribution was within the scope of its license.

IV.  The TLDA Between Sun And Microsoft Is Not A Valid Defense Because Microsoft Exceeded The Scope Of Its License By Distributing Products Which Failed Sun's Test Suite.

A.  A Licensee Who Exceeds The Scope Of Its License Is Liable For Copyright Infringement.

"A licensee infringes the owner's copyright if its use exceeds the scope of the license." S.O.S., Inc., 886 F.2d at 1087; see also Rano v. Sipa Press, Inc., 987 F.2d 580, 586 (9th Cir. 1993); Microsoft Corp. v. Very Competitive Computer Prods. Corp., 671 F. Supp. 1250, 1257 n.4 (N.D. Cal. 1987). "The critical question is not the existence but the scope of the license." S.O.S., Inc., 886 F.2d at 1087-88.

7  The source code for Microsoft products which contain build numbers 2435 and 2924 of the Microsoft VM also contains source code copied from Sun. However, to the extent such products pass Sun's test suites (e.g., versions of Windows 98 distributed in compliance with Court's November 17, 1998 Order), Microsoft's distribution of such products would fall within the scope of its license.

Here, Microsoft will be unable to rely on any license under the TLDA as a defense to Sun's copyright infringement claim because Microsoft's distribution of products containing the Microsoft VM builds listed in Table 1 fail to pass Sun's JCK1.1a compatibility test suite, and therefore fall outside the scope of any license granted to Microsoft under the TLDA.7

Section 2.0 of the TLDA, "LICENSE GRANTS," defines the scope of the copyright license granted to Microsoft. Pursuant to section 2.1(a) and 2.2(a)(iii), Sun granted to Microsoft, among other things, a nonexclusive license under Sun's Intellectual Property Rights, including copyrights, to (1) "make, access, copy, view, display, modify, adapt and create Derivative Works of the Technology in Source Code form for the purposes of developing, compiling to binary form and supporting Products" and (2) "make, use, import, reproduce, license . . . sell or otherwise distribute to end users as part of a Product or an upgrade to a Product, the Technology and Derivative Works thereof in binary form." Exhibit 1 (TLDA). Under section 2.6(a)(iv) and (vi), that license, however, was conditioned upon the requirement that, prior to commercial distribution by Microsoft, each new version of any Microsoft product which incorporates a Significant Upgrade of Sun's JAVA technology first pass the Java Test Suite that accompanied the Significant Upgrade. Id.

The TLDA defines "Java Test Suite" as "SUN's publicly available test suites for validating that products which interpret Java bytecodes comply with the SUN specification of the AAPI as of the date of the test suites." Id., 1.15. JCK 1.1a was the name of the test suite that accompanied Sun's Significant Upgrade of the JAVA technology, JDK 1.1. 1/22/99 Schroer Decl., 3.

Since at least September 1997, Microsoft has distributed products which incorporate Sun's JDK 1.1 technology by copying source code from Sun's copyrighted JDK, but fail to pass Sun's JCK 1.1a test suite. In its March 24, 1998 opinion, this Court concluded that Sun had demonstrated a sufficient likelihood of establishing that (1) the JCK 1.1a test suite was the Relevant Test Suite under the TLDA; (2) 100% compliance with the Relevant Test Suite is required and (3) Microsoft's IE 4.0 and SDKJ 2.0 failed to pass the JCK 1.1a test suite in "several material requests." Sun Microsystems, Inc. v. Microsoft Corp., 999 F. Supp. 1301, 1308-11 (N.D. Cal. 1998). In its November 17, 1998 opinion, the Court found that Microsoft's Windows 98, Visual J++ 6.0, as well as new versions of IE 4.0 and SDKJ 2.0 and 3.0, similarly failed to pass the required JCK 1.1a test suite. Sun Microsystems, Inc. v. Microsoft Corp., 21 F. Supp. 2d 1109, 1114-17 (N.D. Cal. 1998). Now, Sun asks this Court to render its preliminary findings permanent by ruling, as a matter of law, that Microsoft's commercial distribution of products which fail to pass the JCK 1.1a test suite infringes Sun's copyrights in the JDK computer program.

B.  From September 1997 To May 1998, Microsoft Exceeded The Scope Of Its License By Distributing Products Which Failed To Pass The Signaturetest In Sun's JCK 1.1a Test Suite.

Microsoft does not dispute that from September 1997 to May 1998 it commercially distributed versions of IE 4.0 and SDKJ 2.0 for the Windows operating system which failed to pass the SignatureTest in Sun's JCK 1.1a test suite. Exhibit 3 (Microsoft's Response to RFA No. 59). Microsoft also does not dispute that, at least prior to September 1998, its versions of IE 4.0 and 4.01 for the Macintosh and Solaris operating systems also failed to pass the SignatureTest in Sun's JCK 1.1a test suite. Exhibit 3 (Microsoft's Response to RFA Nos. 62-63). In addition, Sun has submitted evidence that builds 2252, 2334 and 2339 of the Microsoft VM (which were included within IE 4.0 and 4.01 and SDKJ 2.0 and 2.01) as well as the Microsoft VM contained in IE 4.01 for the Macintosh and Solaris operating systems also fail SignatureTest. 1/22/99 Schroer Decl., Exhibit C.

Based on these undisputed fact, the Court should enter summary judgment in favor of Sun that Microsoft's distribution of any product that contained builds 2252, 2334 and 2339 of the Microsoft VM, including IE 4.0 and 4.01 and SDKJ 2.0 and 2.01, as well as Microsoft's distribution of IE 4.0 and 4.01 for the Macintosh and Solaris operating systems, infringed Sun's copyrights in the JDK computer program.

C.  From September 1997 To The Present, Microsoft Exceeded The Scope Of Its License By Distributing Products Which Failed To Pass The JNI Tests In Sun's JCK 1.1a Test Suite.

8  In response to this Court's November 17, 1998 preliminary injunction order, Microsoft, for the first time beginning in December 1998, made available a new version of the Microsoft VM, which supports JNI and passes the JNI test suites. As Microsoft made clear in its recent Motion for a Partial Extension of Time to Comply with November 17, 1998 Preliminary Injunction Order, however, it continues to ship products which fail to pass the JNI tests contained in the JCK 1.1a test suite.

Microsoft does not dispute that since September 1997 it has commercially distributed products like Windows 98, IE 4.0, Visual J++ 6.0, among others, which do not support JNI and therefore fail all JNI tests contained in the JCK 1.1a test suite.8 Exhibit 2 (Microsoft's Response to RFA Nos. 13-14).

Based on this undisputed fact, the Court should enter summary judgment in favor of Sun that Microsoft's distribution of any product that contained the builds for the Microsoft VM listed in Table 1, including Windows 95 OSR 2.5, Windows 98, Windows NT 4 SP4, IE 4.0, 4.01 and 4.01 SP1, SDKJ, and Visual J++ 6.0, among others, infringed Sun's copyrights in the JDK computer program because such products failed to implement JNI and, consequently, failed to pass the required JNI tests contained in JCK 1.1a test suite.

Sun expects that Microsoft will attempt to resurrect the argument, rejected in the Court's November 17, 1998 order, that the JNI tests in the JCK 1.1a test suite are invalid because JNI is somehow not part of the "SUN's specification of the AAPI." 21 F. Supp. 2d at 1119-22. Microsoft's argument should be rejected as a matter of law because it contradicts the unambiguous text of the TLDA, as this Court previously found. Id. at 1121.

Under the TLDA, "Java Test Suite" means "SUN's publicly available test suite for validating that products which interpret Java bytecodes comply with the SUN specification of the AAPI as of the date of the test suites." Exhibit 1 (TLDA, 1.15). "AAPI" is defined, in relevant part, as "the public application programming interface to the Java Applet Environment (JAE) reflected in the Technology as identified in Exhibit A . . . as modified by Sun during the term of this Agreement." Id., 1.1. Exhibit A of the TLDA states that the "Java Applet Environment" consists of certain Java Classes and the "Java Runtime Interpreter, which implements the Java Virtual Machine." Id., Exhibit A.

Based on these definitions, any "public application programming interface" to the "Java Runtime Interpreter" falls squarely within the definition of AAPI. Since "Technology" is expressly defined in section 1.25 to include "Upgrades," "AAPI" encompasses "the public application programming interface . . . as modified by Sun," and the "Java Test Suite" tests for compliance with the specification of the AAPI "as of the date of the test suites," Sun's Upgrades to the "Java Runtime Interpreter" also fall squarely within the definition of "AAPI." The Java Test Suite therefore may test for compliance with Sun's specification of Upgrades to the Java Runtime Interpreter.

On the issue of whether JNI is a public application programming interface to the Java Runtime Interpreter, there is no genuine dispute. Sun has submitted evidence from other licensees such as IBM, Inprise and Netscape, as well as experts attesting that JNI is a public application programming interface to the Java Runtime Interpreter. See Exhibit 51 (8/21/98 Sueltz Decl., 7); Exhibit 42 (8/21/98 LeFaivre Decl., 5); Exhibit 18 (5/15/98 Hennesey Tr. 193:13-199:18); Exhibit 19 (5/12/98 Joy Tr. 122:15-18); Exhibit 15 (6/30/98 Deutsch Tr. 290:24-291:15); Exhibit 37 (8/21/98 Gosling Reply Decl., 15).

Microsoft admits that JNI is an application programming interface. Exhibit 40 (8/7/98 Huhns Decl., 40). Microsoft also admits that "JNI is a native programming interface to the Java Virtual Machine." Exhibit 2 (Microsoft's Response to RFA No. 27); Exhibit 26 (7/21/98 Silverberg Tr. 38). Since the Java Runtime Interpreter "implements" the Java Virtual Machine or "VM," an interface to the Java Virtual Machine such as JNI is, by definition, an "interface to the Java Runtime Interpreter" according to Microsoft's own admissions. Indeed, the TLDA specifically describes "interfaces to the Reference Implementation VM" as including "native code interfaces." Exhibit 1 (TLDA, 2.9(e)).

9  As this Court previously found, this plain reading of the TLDA is also supported by the Java Language Specification and Java Virtual Machine Specification, sections 2.9(b) and (f) of the TLDA, and the negotiation history of the TLDA as evidenced by the draft agreements. 21 F. Supp. 2d at 1120.

Thus, as this Court previously found, "It follows that, since JNI is a an application programming interface to the Java Runtime Interpreter which, according to Exhibit A of the TLDA, is part of the Java Applet Environment, JNI falls within Microsoft's compliance obligations under section 2.6 of the TLDA." 22 F. Supp. 2d at 1120.9 Since it is undisputed that Microsoft has and continues to distribute products which fail the JNI tests contained in the Java Test Suite, Microsoft's distribution of those products exceeds the scope of its license under the TLDA and infringes Sun's copyrights.

CONCLUSION

Summary judgment of copyright infringement should be entered against Microsoft. Microsoft has distributed products (Windows 98, IE 4.0, Visual J++ 6.0, SDKJ, and all other products which include the Microsoft VM) which contain source code copied or derived from the source code from Sun's copyrighted JDK computer program. Microsoft's distribution of these products exceeds the scope of Microsoft's license under the TLDA because they fail to pass Sun's test suites, particularly the SignatureTest and JNI tests. Therefore, Microsoft's distribution of any product containing the builds of the Microsoft VM listed in Table I infringes Sun's copyrights in its JDK computer program.

Dated: January 22, 1999      DAY CASEBEER MADRID
WINTERS & BATCHELDER LLP

By:_________________________
            Lloyd R. Day, Jr.

Attorneys for Plaintiff
SUN MICROSYSTEMS, INC.

 


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