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Sun Microsystem's Motion for Summary Judgment of Trademark 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 TRADEMARK
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. The JAVA COMPATIBLE Logo Is A Protected Trademark Owned By Sun

III. Microsoft's Use Of The JAVA COMPATIBLE Logo Was Unauthorized

IV. Microsoft's Unauthorized Use Of The JAVA COMPATIBLE Logo Was Likely To Confuse Consumers

CONCLUSION

TABLE OF AUTHORITIES

CASES PAGE
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) 3
Anthony Distribs., Inc. v. Miller Brewing Co., 904 F. Supp. 1363 (M.D. Fla. 1995) 5
Burger King Corp. v. Mason, 710 F.2d 1480 (11th Cir. 1983) 7
Digital Equip. Corp. v. AltaVista Tech. Inc., 960 F. Supp. 456, 473 (D. Mass. 1997) 5
Franchised Stores of New York, Inc. v. Winter, 394 F.2d 664 (2d Cir. 1968) 5
Green River Bottling Co. v. Green River Corp., 997 F.2d 359, (7th Cir. 1993) 7
Hollywood Athletic Club Licensing Corp. v. GHAC-Citywalk, 938 F. Supp. 612 (C.D. Cal. 1996) 8
Metro Pub., Ltd. v. San Jose Mercury News, 987 F.2d 637 (9th Cir. 1993) 4
Pacific Supply Co-op v. Farmers Union Cent. Exch., Inc., 318 F.2d 894, 908-09 (9th Cir. 1963) 4
Rodeway Inns Int'l v. Amar Enters., Inc., 742 F. Supp. 365 (S.D. Miss. 1990) 8
S & R Corp. v. Jiffy Lube Int'l, Inc., 968 F.2d 371 (3d Cir. 1992) 5, 8
Seven-Up Bottling Co. v. Seven-Up Co., 561 F.2d 1275 (8th Cir. 1977) 4
Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1396 (9th Cir. 1985) 5
Sun Microsystems, Inc. v. Microsoft Corp., 999 F. Supp. 1301 (N.D. Cal. 1998) passim
U.S. Structures, Inc. v. J.P. Structures, Inc., 130 F.3d 1185 (6th Cir. 1997) 7
OTHER AUTHORITIES
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (1998 ) 4, 5

NOTICE OF MOTION

On March 12, 1999, Sun Microsystems, Inc. will move the Court for summary judgment of trademark infringement. Sun will ask the Court, pursuant to Rule 56 of the Federal Rules of Civil Procedure, to enter summary judgment that Microsoft's display of Sun's JAVA COMPATIBLE Logo on or in connection with the advertising, distribution, sale or promotion of Internet Explorer 4.0 ("IE 4.0") and Software Development Kit for JavaTM2.0 ("SDKJ 2.0") constituted trademark infringement under section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).

INTRODUCTION

In 1996, as part of the Technology License and Development Agreement ("TLDA") between Sun and Microsoft, Sun licensed its JAVA COMPATIBLE Logo to Microsoft, subject to certain conditions. The key condition was the requirement that Microsoft use the JAVA COMPATIBLE Logo only in connection with products that had successfully passed Sun's compatibility test suite.

The intent of this provision was clear. The purpose and promise behind Sun's JAVATMtechnology was to minimize the "porting" or switching costs required to make a program operate on different, otherwise incompatible, computer systems, browsers or runtime implementations. Sun intended for its JAVA COMPATIBLE Logo to be used by its distributors on products that incorporated Sun's JAVA technology and passed Sun's compatibility test suites. The JAVA COMPATIBLE Logo would be Sun's stamp of approval.

Microsoft, however, has commercially distributed products such as IE 4.0 and SDKJ 2.0 that contained implementations of the JAVA technology, but failed to pass Sun's compatibility test suite. Worse yet, Microsoft marketed these products falsely using Sun's stamp of approval -- the JAVA COMPATIBLE Logo.

In its March 24, 1998 Order, this Court granted Sun's motion for preliminary injunction pursuant to section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), barring Microsoft from using Sun's JAVA COMPATIBLE Logo in connection with the advertising, distribution, sale or promotion of Microsoft's IE 4.0 or SDKJ 2.0 products unless and until such products passed the appropriate compatibility test suite. Sun Microsystems, Inc. v. Microsoft Corp., 999 F. Supp. 1301, 1311-12 (N.D. Cal. 1998).

Now, Sun asks the Court to grant summary judgment on the same claim. Based on the undisputed facts before the Court, Sun is entitled to judgment against Microsoft as a matter of law. Microsoft's use of Sun's protectable trademark -- the JAVA COMPATIBLE Logo -- was unauthorized. The TLDA did not authorize Microsoft to use the JAVA COMPATIBLE Logo in connection with products like IE 4.0 and SDKJ 2.0, which did not pass the relevant compatibility test suite. Since Microsoft actually used Sun's trademark, and not simply a mark which was similar, consumer confusion can and should be presumed as a matter of law. Sun's motion for summary judgment should therefore be granted.

STATEMENT OF FACTS

Footnotes

1  Section 5 of the Trademark License states:
"SUN is the sole owner of the Compatibility Logo and all goodwill associated therewith. Licensee's use of the Compatibility Logo inures solely to the benefit of SUN. Licensee shall not knowingly and intentionally do anything that might harm the reputation or goodwill of the Compatibility Logo. Licensee shall not challenge SUN's rights in or attempt to register the Compatibility Logo. Licensee shall take no action inconsistent with SUN's rights in the Compatibility Logo."
2  Unless indicated otherwise, all citations are to the Declaration of Lloyd R. Day, Jr. in Support of Sun Microsystems, Inc.'s Motions for Summary Judgment/Adjudication. Relevant declarations which were previously submitted to the Court are also attached to the Day Declaration for the Court's convenience.

Sun is the owner of the JAVA COMPATIBLE Logo, as Microsoft acknowledged when it signed on March 11, 1996 the Trademark License attached as Exhibit E to the TLDA.1 Exh. 1 (TLDA, Exh. E, 5).2  The JAVA COMPATIBLE Logo comprises the words "JAVA COMPATIBLE" below a stylized depiction of a steaming coffee cup against a trapezoidal background, Exh. 43 (Logo Artwork, 11/17/98 Paolini Decl., Exh. E), as shown here:

[ LOGO OMITTED ]

Under the terms of the Trademark License, Microsoft was entitled to use the JAVA COMPATIBLE Logo only on "versions of Licensee's Products that have successfully passed the Java Test Suites made available by SUN to Licensee pursuant to the TLDA, and which otherwise fully comply with all other compatibility and certification requirements of the TLDA." Exh. 1 (TLDA, Exh. E, 3.)

In February of 1997, Sun delivered to Microsoft the Java Development Kit ("JDK") 1.1, designating it a Significant Upgrade. Exh. 32 (2/13/98 Baratz Decl. 9 & Exh. B); Exh. 14 (1/15/98 Baratz Tr. 81); Exh. 23 (7/31/98 Patch Tr., Exh. 23). The JDK 1.1 was accompanied by the Java Compatibility Kit ("JCK") 1.1a test suite. 1/22/99 Schroer Decl., 3.

Beginning in September 1997, Microsoft used the JAVA COMPATIBLE Logo in connection with the advertising, distribution, sale and promotion of IE 4.0 and SDKJ 2.0. Exh. 35 (11/17/97 Deutsch Decl., Exh. D) and Exh. 71 (11/17/97 Armstrong Decl., Exh. D). According to Microsoft, both of these products incorporated the JDK 1.1 version of the JAVA technology. Exh. 46 (11/17/97 Schroer Decl., Exh. A). Neither Internet Explorer 4.0 nor SDKJ 2.0 passed all of the tests of the JCK 1.1a as required for Microsoft to use the JAVA COMPATIBLE Logo. In particular, both products failed the SignatureTest and JNI tests. See Exhs. 2 and 3 (Microsoft's Response to RFA Nos. 14 and 59); 1/22/99 Schroer Decl., Exh. C. Microsoft was aware of these test failures, but decided to use the JAVA COMPATIBLE Logo on these products anyway to falsely indicate that these products met "the criteria provided by [the TLDA] for use of the Logo." Exh. 31 (11/17/97 Baratz Decl., Exh. D). Microsoft only stopped using the Logo on its incompatible products when enjoined by this Court's March 24, 1998 Order.

ARGUMENT

I.  Legal Standard

Sun is entitled to summary judgment if it can demonstrate 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).

3  Because Sun does not expect that Microsoft will challenge that it used the JAVA COMPATIBLE Logo "in connection with goods or services" and that its "use was in interstate commerce," these issues will not be separately addressed.

Section 43(a) of the Lanham Act prohibits the use in commerce of "any word, term, name, symbol or device" which "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods . . . by another person." 15 U.S.C. 1125(a)(1). To establish a claim of trademark infringement under this section, Sun must prove: "(1) ownership of a protectable trademark; (2) unauthorized use of that trademark by the defendant; (3) that defendant's use was in connection with goods or services; (4) that the use was in interstate commerce; and (5) a likelihood of consumer confusion."3 Sun Microsystems, Inc. v. Microsoft Corp., 999 F. Supp. 1301, 1308 (N.D. Cal. 1998) (citing Metro Pub., Ltd. v. San Jose Mercury News, 987 F.2d 637, 640-41 (9th Cir. 1993)).

II.  The JAVA COMPATIBLE Logo Is A Protectable Trademark Owned By Sun.

In the Trademark License between Microsoft and Sun, Microsoft expressly concedes the validity of the JAVA COMPATIBLE Logo as well as Sun's rights in and to this mark, and Microsoft waives any right it might have to challenge the mark:

"SUN is the sole owner of the Compatibility Logo and all goodwill associated therewith. Licensee's use of the Compatibility Logo inures solely to the benefit of SUN. Licensee shall not knowingly and intentionally do anything that might harm the reputation or goodwill of the Compatibility Logo. Licensee shall not challenge SUN's rights in or attempt to register the Compatibility Logo. Licensee shall take no action inconsistent with SUN's rights in the Compatibility Logo."

Exh. 1 (TLDA, Exh. E at 5 (emphasis added)). Under the doctrine of licensee estoppel, Microsoft is estopped from contesting the validity of Sun's mark. See Seven-Up Bottling Co. v. Seven-Up Co., 561 F.2d 1275, 1279 (8th Cir. 1977); Pacific Supply Co-op v. Farmers Union Cent. Exch., Inc., 318 F.2d 894, 908-09 (9th Cir. 1963); 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 18.63 (1998). Accordingly, Microsoft cannot dispute that Sun is the valid owner of a protectable trademark -- the JAVA COMPATIBLE Logo.

III.  Microsoft's Use Of The JAVA COMPATIBLE Logo Was Unauthorized.

"It is well-settled that one who licenses a trademark must retain control over the quality of goods sold by the licensee under the trademark." Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1396 (9th Cir. 1985). "The purpose of this rule is to protect the public from deception." Id. The trademark owner thus has not only the right to control quality, "it has the duty to control quality." McCarthy, supra, 18.42.

If a licensee fails to abide by quality control requirements set forth in the license agreement, the licensee's use of the associated trademark is unauthorized because its actions are beyond the scope of the license. See Anthony Distribs., Inc. v. Miller Brewing Co., 904 F. Supp. 1363, 1367 (M.D. Fla. 1995); see also S & R Corp. v. Jiffy Lube Int'l, Inc., 968 F.2d 371, 375 (3d Cir. 1992) ; Digital Equip. Corp. v. AltaVista Tech. Inc., 960 F. Supp. 456, 473 (D. Mass. 1997); McCarthy, supra, 25.30 ("Any sales of goods or services under the mark which are outside the area of consent granted in the license are regarded as infringements of the mark."). A licensee may proceed with the protection of its trademark and enforcement of quality control standards independently of any contractual rights it may have. Anthony Distribs., 904 F. Supp. at 1367; see also Franchised Stores of New York, Inc. v. Winter, 394 F.2d 664, 668 (2d Cir. 1968).

Here, Microsoft's license to use Sun's Logo in connection with its products is expressly conditioned upon those products passing Sun's Java Test Suite. Sun granted Microsoft a non-exclusive license to use the JAVA COMPATIBLE Logo only "with respect to each of the Products that fully meet the certification requirements of Section 3." Exh. 1 (TLDA, Exh. E, 2). Section 3 of the Trademark License provides: "This License applies only to versions of Licensee's Products that have successfully passed the Java Test Suites made publicly available by SUN to Licensee pursuant to the TLDA, and which otherwise fully comply with all other compatibility and certification requirements of the TLDA." Id. at 3.

In its March 24, 1998 Order, this Court concluded that Sun's JCK 1.1a test suite was the Relevant Test Suite under the TLDA, which Microsoft's products were required to pass. Sun Microsystems, 999 F. Supp. at 1308-09. Section 2.6(a)(iv) of the TLDA provides:

"Subject to the satisfaction of Section 2.6(a)(iii), Licensee agrees that upon the earlier of (a) six (6) months after the date that SUN delivers to Licensee an Upgrade that SUN designates a significant Upgrade (each, a 'Significant Upgrade'), or (b) the date that Licensee includes the Significant Upgrade of the Java Reference Implementation in the commercial release of any Product, Licensee shall deliver to SUN . . . 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') . . . ."

Sun delivered JDK 1.1 in February 1997 and designated it a Significant Upgrade. Exh. 32 (2/13/98 Baratz Decl. 9 and Exhibit B thereto); Exh. 14 (1/15/98 Baratz Tr. 81); Exh. 23 (7/31/98 Patch Tr., Exh. 23). The JCK 1.1a test suite accompanied JDK 1.1. 1/22/99 Schroer Decl., 3. Since it is undisputed that Microsoft incorporated the JDK 1.1 technology into IE 4.0 and SDKJ 2.0, those products were required to pass the JCK 1.1a test suite pursuant to section 2.6(a)(iv) of the TLDA.

Microsoft itself recognized that IE 4.0 and SDKJ 2.0 were required to pass the JCK 1.1a test suite. Four days prior to the release of IE 4.0, Microsoft's program manager, Charles Fitzgerald, confirmed that "Microsoft is obligated to pass a suite of 8,245 tests (aka JCK 1.1.1) that is used to determine formal Java compatibility." Exh. 68 (MSS 97948). According to Microsoft's test manager, Kory Srock, it "seemed pretty straightforward to me" that Microsoft was required "to use the test suite that accompanied the version of the JDK implemented in the product." Exh. 27 (Srock Tr. 35). Thus, "once IE4 incorporated the JDK 1.1 technology, Microsoft used the JCK 1.1 test suite to test it." Id. (Srock Tr. 124).

4  Section 2.6(a)(iii) requires:
"Each Upgrade delivered by SUN to Licensee shall pass the Java Test Suite that accompanied such Upgrade and the test suite that accompanied the prior two (2) Upgrades, provided, that the Upgrades delivered by SUN do not need to pass the Java Test Suites that accompanied the prior two (2) Upgrades to the extent that the Upgrade includes a SUN modification to the Technology that is intended to fix a program error in such Technology and Licensee agrees to accept such modification as an exception to the requirement stated in this Section 2.6(a)(iii), which acceptance shall not be unreasonably withheld."
5  Microsoft's test manager, Kory Srock, also admitted that, before Internet Explorer 4.0 shipped, Microsoft knew Internet Explorer 4.0 failed "about 50" tests in Sun's JCK 1.1a compatibility test suite. Exh. 27 (Srock Tr. 126:2-18.)
6  As this Court preliminarily concluded in its March 24, 1998 Order, "100% compliance with the Relevant Test Suite is required of Microsoft." Sun Microsystems, 999 F. Supp. at 1310.

Microsoft may again argue that its products were not required to pass the JCK 1.1a test suite based on Sun's alleged breach of section 2.6(a)(iii) of the TLDA.4 Sun disputes that it breached section 2.6(a)(iii) and, in any event, this dispute is not material. As this Court previously concluded, "Even assuming that Sun's JDK 1.1 release does not comply with section 2.6(a)(iii), the TLDA does not appear to allow Microsoft to incorporate that release into its software products free of all compatibility obligations." Sun Microsystems, 999 F. Supp. at 1309 (citing Green River Bottling Co. v. Green River Corp., 997 F.2d 359, 362 (7th Cir. 1993)). Thus, even if Microsoft truly believed the JDK 1.1 Upgrade did not comply with section 2.6(a)(iii), that belief alone did not permit Microsoft to incorporate the Upgrade into its product free of the compatibility obligations of sections 2.6(a)(iv) and (vi). Nor did it entitle Microsoft to infringe Sun's trademark by distributing incompatible goods as a "self-help" remedy for Sun's alleged breach of the TLDA. See Green River Bottling Co., 997 F.2d at 362.

Although IE 4.0 and SDKJ 2.0 were required to pass the JCK 1.1a test suite, it is undisputed that they did not. Microsoft has already admitted, and thus cannot dispute, that beginning in September 1997 it commercially distributed versions of IE 4.0 and SDKJ 2.0 which failed to pass the SignatureTest and JNI tests in Sun's JCK 1.1a Test Suite. Exhs. 2 and 3 (Microsoft's Response to RFA Nos. 14 and 59).5   Microsoft also cannot dispute that it used the JAVA COMPATIBLE Logo in connection with the distribution or sale of these products. Exh. 35 (11/17/97 Deutsch Decl., 28 & Exh. D) and Exh. 71 (11/17/97 Armstrong Decl., 5 & Exh. D). Because Microsoft used Sun's JAVA COMPATIBLE Logo in connection with the distribution of products that failed to pass the JCK 1.1a Test Suite,6 Microsoft's use of Sun's trademark was unauthorized.

IV.  Microsoft's Unauthorized Use Of The JAVA COMPATIBLE Logo Was Likely To Confuse Consumers.

A licensee's persistent unauthorized use of a licensor's trademark establishes, as a matter of law, a likelihood of consumer confusion. U.S. Structures, Inc. v. J.P. Structures, Inc., 130 F.3d 1185, 1190 (6th Cir. 1997) (holding that "proof of continued, unauthorized use of an original trademark by one whose license to use the trademark had been terminated is sufficient to establish 'likelihood of confusion'" for summary judgment purposes); Burger King Corp. v. Mason, 710 F.2d 1480, 1492-93 (11th Cir. 1983) ("Common sense compels the conclusion that a strong risk of consumer confusion arises when a terminated franchisee continues to use the former franchisor's trademarks.... [M]any courts have held that continued [unauthorized] trademark use ... satisfies the likelihood of confusion test and constitutes trademark infringement."); Hollywood Athletic Club Licensing Corp. v. GHAC-Citywalk, 938 F. Supp. 612, 614 (C.D. Cal. 1996); Rodeway Inns Int'l v. Amar Enters., Inc., 742 F. Supp. 365, 367 (S.D. Miss. 1990) (granting summary judgment based on licensee's unauthorized use of identical mark). Courts so hold because, seeing identical marks, the consumer will simply assume that there is some affiliation or sponsorship between the licensee and licensor. See Hollywood Athletic Club, 938 F. Supp. at 614; S & R Corp., 968 F.2d at 375 ("We have held that 'there is a great likelihood of confusion when an infringer uses the exact trademark' as the plaintiff.").

Here, it is beyond dispute that Microsoft actually used Sun's JAVA COMPATIBLE trademark. Microsoft did not use a mark similar to Sun's trademark; it used the identical mark. Furthermore, Microsoft's use of Sun's trademark falsely implied that Sun approved of the products, despite the undisputed fact that Sun did not approve of the products and expressly requested that Microsoft remove the JAVA COMPATIBLE Logo. Exh. 31 (11/16/97 Baratz Decl., 7 & Exh. C); see also Sun Microsystems, 999 F. Supp. at 1311. Based on these undisputed facts, Sun has established likelihood of consumer confusion as a matter of law.

CONCLUSION

The Court should enter an order granting Sun's motion for summary judgment of trademark infringement, pursuant to section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), against Microsoft. Microsoft was not authorized to use Sun's JAVA COMPATIBLE Logo in connection with the advertising, distribution or sale of Internet Explorer 4.0 and SDKJ 2.0 because those products failed to pass Sun's JCK 1.1a test suite as required by the TLDA. Since Microsoft's unauthorized use of Sun's trademark necessarily caused consumer confusion, Sun's motion for summary judgment should be granted.

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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