IN THE UNITED STATES DISTRICT COURT
Microsoft Corporation ("Microsoft") seeks clarification and/or modification of this court's Order Re Sun's Motions for Preliminary Injunction Against Microsoft issued on November 17, 1998 ("Preliminary Injunction" or "Order"). Specifically, Microsoft seeks clarification that the Preliminary Injunction is not intended to restrict Microsoft's distribution of independently developed Java technology which makes no use of and is not derived from any Sun program code or documentation licensed to Microsoft under the Technology License and Distribution Agreement dated March 11, 1996 ("TLDA"). Motion at 1.1 Microsoft apparently plans to distribute an "enhanced Java compiler," either on a stand-alone basis or as part of a developer tool product incorporating other independently developed Java technology. Motion at 2; Muglia Dec. ¶ 4.
Microsoft argues that the Preliminary Injunction requires clarification since section H of the injunction could be read to restrain Microsoft from distributing any non-compliant Java software development tool or compiler regardless of whether such development tool or compiler infringes Sun's copyrights in its Java technology. Such a restraint, according to Microsoft, finds no support in the Order, the TLDA, or federal copyright law.
Sun does not dispute that the Preliminary Injunction as issued prohibits Microsoft from distributing independently developed, non-compliant Java tools. However, Sun opposes Microsoft's motion to clarify or modify the injunction. As a preliminary matter, Sun asserts that the issue raised by Microsoft is not ripe for adjudication. Sun also reasons that the current breadth of the Order finds support in the record and is necessary to prevent Microsoft from improperly evading the effect of the injunction.
A. Jurisdiction to act
Microsoft filed a notice of appeal from the Preliminary Injunction on December 16, 1998. When an appeal is taken from an interlocutory order granting an injunction, the district court may in its discretion "suspend, modify, restore, or grant an injunction during the pendency of the appeal upon such terms... as it considers proper for the security of the rights of the adverse party. Fed.R.Civ.Proc. 62(c). However, the court cannot otherwise modify or supersede an order for a preliminary injunction once an appeal has been filed. See Flynt Distributing Co., Inc. v. Harvey, 734 F.2d 1389, 1392 n.1 (9th Cir. 1984).
B. Ripeness for Adjudication
Sun asserts that Microsoft's motion improperly seeks an advisory opinion on an issue not ripe for adjudication.
The ripeness doctrine prevents "the courts, through premature adjudication, from entangling themselves in abstract disagreements." See Abbott Labs. v. Gardner, 87 S.Ct. 1507, 1515 (1967), overruled on other grounds, Califano v. Sanders, 97 S.Ct. 980, 984 (1977). In other words, ripeness precludes the adjudication of claims based upon "contingent future events that may or may not occur as anticipated, or indeed may not occur at all." Thomas v. Union Carbide Agric. Products Co., 105 S.Ct. 3325, 3333 (1984) (citations omitted).
The Supreme Court has articulated a two-prong test for ripeness: "'the fitness of the issues for judicial decision and the hardship to the parties of withholding court consideration.'" Poland v. Stewart, 117 F.3d 1094, 1104 (9th Cir. 1997) (quoting Abbott Labs., 87 S.Ct. at 1515).
The subject matter of the present motion appears to be ripe for judicial determination. The primary issues involved in Microsoft's present motion are whether this court's Preliminary Injunction is intended to restrain Microsoft from distributing independently developed, non-compliant Java technology, and, if so, whether such restraint is factually supported.2 These issues appear to be fit for adjudication as they are purely legal questions, requiring no further factual development for clarification. See Union Carbide, 105 S.Ct. at 3333 (citations omitted). Moreover, according to Microsoft, this court's Preliminary Injunction would, if read as Microsoft fears, restrain it from executing its current plan to distribute independently developed Java technology. Muglia Dec. ¶¶ 4, 5. See Matter of Hendrix, 986 F.2d 195, 200 (7th Cir. 1993) (persons subject to an injunction have right to ask court if the injunction applies to conduct in which the person proposes to engage, even if it amounts to an advisory opinion) (citing Regal Knitwear Co. v. NLRB, 65 S.Ct. 478, 481-82 (1945)); Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1432 (7th Cir. 1985) ("The right to seek clarification or modification of the injunction provides assurance... that proposed conduct is not proscribed."). Additionally, to withhold a judicial determination of this issue may irreparably harm Microsoft's ability to exercise its First Amendment right to create and publish software. See Bernstein v. U.S. Dep't of State, 922 F. Supp. 1426, 1435-36 (N.D. Cal. 1996) (computer program source code constitutes speech entitled to First Amendment protection).
C. Merits of Motion for Clarification
Microsoft is concerned that the Preliminary Injunction restrains it from distributing independently developed, non-compliant Java technology, either as a stand-alone product or in a developer tool product. Sun appears to believe that the Preliminary Injunction as written does have the scope that Microsoft fears.
Microsoft contends that court's factual findings in its Order do not support an injunction restraining Microsoft's distribution of independently developed Java technology, including an independently developed Java compiler. Sun, on the other hand, contends that Sun's claims of copyright infringement and unfair competition support the breadth of the Order. Sun also argues that allowing Microsoft to distribute an independently developed compiler without the modifications ordered by the court would allow Microsoft to evade the effect of the court's Order and "eviscerate the relief granted to Sun." Opposition at 4.
As the court stated at the February 5, 1999 hearing, the court did not contemplate, and the record did not suggest, the possibility of Microsoft's development or distribution of independently developed Java technology. Indeed, the court based its Order primarily on Sun's claim of copyright infringement. The court only addressed those aspects of Sun's motion for preliminary injunctive relief based upon unfair competition which did not overlap with Sun's motion based on copyright infringement. Accordingly, the factual findings and the reasoning contained in the Order were not intended to support an injunction restraining Microsoft from developing and distributing independently developed Java tools products which infringe no Sun copyright. See Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1526 (9th Cir. 1992) (noting software industry's use of "clean rooms" to prevent copying of protected expression); Entertainment Research Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211, 1217 (9th Cir. 1997), cert. denied, 118 S.Ct. 1320 (1998) (copyright infringement requires proof of access to protected expression and substantial similarity between the copyrighted work and the accused work).
Sun urges the court to consider its additional unfair competition arguments to support its interpretation of the current breadth of the Order. However, the court did not contemplate the possibility of Microsoft's development and distribution of independently developed Java tools, as neither Sun nor Microsoft suggested such a possibility. Accordingly, the arguments and evidence submitted in connection with Sun's previously filed motions, without more, are insufficient to support an injunction based upon alleged violations of the TLDA that do not constitute copyright infringement. Microsoft's proposed distribution of independently developed Java technology implicates certain provisions of the TLDA, including section 8.2, which were not examined in connection with Sun's motions for preliminary injunction relief. It would be extremely difficult to deem a particular business practice "unfair" as to Sun, if the parties contemplated such practice when they executed the TLDA. On the other hand, distribution of a product that does not infringe Sun's copyright but nevertheless violates the TLDA may be "unfair."
In any event, the issue of what the TLDA authorizes with respect to Microsoft's independent development of the Java technology is not properly before the court.3 The court cannot decide that issue based upon the preliminary injunction applications filed to date.
In light of the foregoing, the court hereby clarifies that the Preliminary Injunction is not intended to restrict Microsoft's distribution of any operating system, browser product, compiler, or software development tool, that does not incorporate computer program code copied or derived from any Sun copyrighted program code or documentation for the Java Technology as that term is defined in the TLDA. See TLDA § 1.25 and Exhibit A.
Nothing in this order of clarification, however, should be construed as authorizing Microsoft to sell or distribute any product which infringes any of Sun's copyrights or other intellectual property rights in the Java technology or in any way violates the TLDA. The court expresses no opinion at this time on Sun's claim that distribution of an independently developed Java compiler would violate the TLDA. Further, nothing in this order is intended to suggest whether any product Microsoft may develop and attempt to distribute will constitute an independently developed product.
The court recognizes that this order leaves unresolved the parties' dispute as to what rights, if any, Microsoft has to distribute independently developed, non-compliant Java technology under the TLDA. This order is without prejudice to an application by Sun to restrain Microsoft from distributing an independently developed, non-compliant product, if Sun believes that such distribution would violate the TLDA and that the requirements for such an injunction could be met.4