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Sun's Motion for Preliminary Injunction Under 17 USC 502.
Re: Sun v. Microsoft, U.S.D.C., N.D. Cal., San Jose, Case No. 97-20884.

Date: May 12, 1998.
Source: Sun Microsystems.


COOLEY GODWARD LLP
LLOYD R. DAY, JR. (90875)
JANET L. CULLUM (104336)
JAMES R. BATCHELDER (136347)
JAMES DONATO (146140)
ROBERT M. GALVIN (171508)
MICHAEL D. MOREHEAD (172672)
Five Palo Alto Square
3000 El Camino Real
Palo Alto, CA 94306-2155
Telephone: (650) 843-5000

Attorneys for Plaintiff
SUN MICROSYSTEMS, INC.

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.

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No. C 97-20884 RMW (PVT) ENE

Sun Microsystems, Inc.'s Motion for Preliminary Injunction Under 17 U.S.C  502

Date: July 31, 1998

Time: 9:00 a.m.

Judge:Judge: Hon. Ronald M. Whyte

Crtrm: 6

 

NOTICE OF MOTION AND STATEMENT OF RELIEF REQUESTED

On July 31, 1998 at 9:00 a.m., or as soon thereafter as the matter can be heard by Judge Ronald M. Whyte in Courtroom 6 of the United States District Court located at 280 South First Street, San Jose, California 95113, plaintiff, Sun Microsystems, Inc. ("Sun") will move for a preliminary injunction against defendant Microsoft Corporation ("Microsoft") pursuant to 17 U.S.C. 502 for copyright infringement.

Sun will ask the Court to enjoin Microsoft from reproducing, distributing or selling the following Microsoft products which infringe Sun's copyrights for its JAVATM Development Kit ("JDK") computer program: Internet Explorer 4.0 ("IE 4.0"), Software Development Kit for JAVATM ("SDKJ") 2.0 and 3.0, Visual J++ 6.0 and Windows 98, unless and until Microsoft has demonstrated that these products successfully pass Sun's compatibility test suite and comply with all other compatibility and certification requirements provided for in the Technology License and Development Agreement ("TLDA") between Sun and Microsoft.

MEMORANDUM OF POINTS AND AUTHORITIES

I.  Statement Of Issue To Be Decided.

Will Microsoft be permitted to infringe Sun's copyrights for its JDK computer program by distributing products that fail to pass Sun's compatibility test suite?

II.  Statement Of Relevant Facts.

A.  Microsoft's Continuing Efforts to Fragment the JAVATM Technology.

The parties have previously briefed in detail many of the background facts surrounding Sun's JAVATM Technology and the limited rights granted to Microsoft in the TLDA to distribute products incorporating the JAVATM Technology. See Sun's Motion for Preliminary Injunction dated November 17, 1997 at 2-6; Microsoft's Opposition dated February 6, 1998 at 2-6. Upon consideration of the parties' prior submissions and arguments, the Court made the following preliminary findings in granting Sun's earlier motion for injunctive relief:

Microsoft's opposition indicates that the determination of whether IE 4.0 and SDKJ 2.0 "pass" Sun's relevant test suite is solely an issue of contractual interpretation. Microsoft appears to admit that its IE 4.0 and SDKJ 2.0 products generate Signature Test failures. Microsoft argues, however, that when the Signature Test's reported failures are construed in light of the TLDA, Microsoft's products fully comply with the compatibility requirements of section 2. Microsoft argues that the TLDA allows Microsoft "to extend and enhance the java.* classes as long as it does not modify or extend the java.* class names." Opposition at 16. See TLDA 2.8(d). Accordingly, Microsoft argues that the reported Signature Test errors are merely the results of changes to the JAVA classes permitted by the TLDA.

Microsoft's manipulation of the ambiguities surrounding section 2 of the TLDA, however, cannot be reconciled with the purpose behind the TLDA and the JAVATM Technology itself. Microsoft's reading of the TLDA would essentially allow Microsoft to destroy the cross-platform compatibility of the JAVA programming environment. See Hankinson Supp. Decl. 8, 11, 12. Moreover, the TLDA appears to limit any functionality added by Microsoft (VAOPs) to classes outside the public java.* class APIs. The TLDA also appears to require Microsoft to adhere to specific naming conventions for this added functionality. See TLDA 1.28, 2.8.

* * *

. . . [T]he course of dealing between Microsoft and Sun merely establishes that Microsoft's products must pass all the tests in the JCK test suite, unless Sun indicates otherwise. In the present case, Microsoft did not provide Sun with the opportunity to review the test suite results of IE 4.0 and SDKJ 2.0. Sun has also demonstrated a sufficient likelihood of establishing that 100% compliance with the Relevant Test Suite is required of Microsoft. See Hankinson Sup. Decl. 15, 16.

* * *

In summary, it appears that JCK 1.1a is the Relevant Test Suite under the TLDA. Furthermore, it appears that Microsoft's IE 4.0 and SDKJ 2.0 products both fail Sun's JCK 1.1a test suite in several material respects. . . .

Order Re Sun's Motion for Preliminary Injunction dated March 24, 1998 ("3/24/98 Order") at 14-15, 17. Since the Court's ruling, Microsoft's test manager, Kory Srock, has confirmed that -- contrary to Microsoft's earlier contentions -- Microsoft knew and understood that Sun's JCK 1.1a was the relevant test suite and that IE 4.0 and SDKJ 2.0 both fail that test suite. Srock Tr. at 32-35, 124-26, 151, 165-69.

The Court's initial injunction has not deterred Microsoft from its continued efforts to undermine Sun's JAVATM Technology. Most recently, Microsoft has introduced pre-release versions of three new products: SDKJ 3.0, Visual J++ 6.0 and Windows 98.

• SDKJ 3.0 is simply a newer version of SDKJ 2.0 -- the developer's kit product that the Court previously found to fail Sun's JCK 1.1a test suite for compatibility. In essence, SDKJ 3.0 is the JAVATM Technology adapted for the Windows platform. Schroer Decl. Exh. C.

• Visual J++ 6.0 is a software development environment product that utilizes the JAVATM Technology which Microsoft received from Sun, and includes additional functionalities. Id. Exh. E.

• Windows 98 is Microsoft's latest operating system which includes IE 4.01 -- a minor modification to IE 4.0. Id. Exh. G.; Srock Tr. at 144-47.

Sun has obtained pre-release versions of these three products from Microsoft and tested them with Sun's JCK 1.1a test suite for compatibility. Schroer Decl. 13-23. Like IE 4.0 and SDKJ 2.0, each of Microsoft's new products fails to pass the JCK 1.1a test suite. Id. 15,19,23. SDKJ 3.0, Visual J++ 6.0 and Windows 98 contain the same modifications that caused SDKJ 2.0 and IE 4.0 to fail Sun's tests. Id. 23(a). In addition, these new products embody still further, dramatic departures from Sun's specifications for the JAVATM Technology that can render programs written in the programming environment supported in these Microsoft products operable only with Microsoft's products.

Notwithstanding the fact that these Microsoft products fail to pass Sun's test suite and are instead designed to undermine -- not support -- cross-platform compatibility, Microsoft is currently distributing all three products via its Website, and has announced plans for the commercial launch of each product in the immediate future.

B.  Sun's JAVATM Technology.

Sun's JAVATM Technology is a collection of programming components that create a standard, platform-independent programming and runtime environment. Sun's JAVATM Technology has two basic elements: the JAVATM programming environment and the JAVATM runtime environment.

The JAVATM programming environment allows software developers to create a single version of program code that is capable of running on any platform that conforms to Sun's specifications for the JAVATM runtime environment. The JAVATM programming environment is comprised of three components: Sun's specification for the JAVATM language, Sun's specification for the JAVATM class libraries, and the JAVATM compiler.

The JAVATM runtime environment is comprised of the JAVATM class libraries and the JAVATM runtime interpreter. A systems platform or browser program that implements the JAVATM runtime environment can execute application programs developed for the JAVATM programming environment.

Sun makes the JAVATM programming and runtime environments available to developers via a computer program which embodies the language, the classes and the compiler. This computer program is called the JAVATM Developer's Kit ("JDK"), which can be downloaded in binary form from Sun's website, pursuant to a license. Sun also licenses the source code for its JDK computer program to systems and browser manufacturers (e.g., Apple, IBM, Microsoft, Netscape, etc.) to enable them to incorporate and distribute the JAVATM programming and runtime environments in their own operating systems, browsers and development tool kits.

C.  Microsoft Copied Sun's Source Code For The Copyrighted JDK Computer.

1.  Sun Owns Valid Copyrights for the JDK Computer Program.

In January 1996, Sun first released a version of its JDK computer program, called JDK 1.0. Schroer Decl. 3. At the same time, Sun released a set of compatibility tests called the 1.0 test suite, to enable licensees who incorporated the JDK 1.0 technology to test their products for conformance with Sun's requirements. Id.

In February 1997, Sun released the JDK 1.1 computer program, a significant upgrade of the JDK 1.0 Id. 4. The JDK 1.1 release was accompanied by the JAVATM Compatibility Kit ("JCK") 1.1a test suite. Id. Subsequently, Sun released a series of revised "bug-fix" versions of JDK 1.1 that corrected minor problems as they were subsequently discovered, including JDK 1.1.3. Id. 7.

Sun has registered its copyrights in the JDK computer program by filing applications with the Copyright Office and depositing portions of the source code for the computer program. After determining that the JDK computer program constituted copyrightable subject matter pursuant to 17 U.S.C. 410(a), the Copyright Office has issued certificates of registration for the JDK computer program to Sun. Crean Decl. Exhs. A-C.

2.  Microsoft's Access To Sun's JDK Source Code.

In February 1997, Sun notified Microsoft that the source code for JDK 1.1 was available for download via the Javasoft Partners Website. Schroer Decl. 5. Each time a new version of JDK was available, Sun placed the new source code on its Javasoft Partners Website and announced that it was available for download. Id.

Microsoft regularly downloaded Sun's JDK source code from the Javasoft Partners Website. Id. 6. In February and March 1997, Microsoft copied the entire source code for JDK 1.1 by downloading the information from the Javasoft Partners Website, and in July and August 1997, Microsoft copied the entire source code for JDK 1.1.3 by again downloading the information from the Javasoft Partners Website. Id. 6-7.

3.  Sun's JDK Source Code Copied Into Microsoft's IE 4.0 and SDKJ 2.0

On January 30, 1998, pursuant to Magistrate Judge Trumbull's order, Microsoft produced to Sun portions of the source code for IE 4.0 and SDKJ 2.0 which implement portions of the JAVATM Technology. Batchelder Decl., Exh. B. Examination of that source code reveals that IE 4.0 and SDKJ 2.0 contain hundreds of files literally copied from Sun's source code for the JDK 1.1 and 1.1.3 computer programs and many additional files where Sun's source code is reproduced with only minor modifications.

Specifically, 993 files of Sun's JDK 1.1.3 source code were found to have corresponding files in Microsoft's source code for IE 4.0 and SDKJ 2.0. Deutsch Decl. 35. Of the 993 corresponding files, 596 files (60%) were identical to Sun's JDK 1.1.3, 46 files (5%) contained trivial differences and 230 files (23%) contained differences in less than 10% of the lines of source code comprising the file. Id. The direct copying of Sun's copyrighted source code is further confirmed by the fact that hundreds of files of the IE 4.0 and SDKJ 2.0 source code contain Sun's notice of copyright. Id. 37.

An analysis of the copyrighted JDK source code copied by Microsoft reveals that there are a wide range of expressive choices for achieving the desired functionality. Id. 44. The source code could have been written a number of different ways to achieve the same functions. Id. The massive, literal identity between Sun's copyrighted source code and Microsoft's source code for IE 4.0 and SDKJ 2.0 confirm beyond any reasonable doubt that Microsoft copied Sun's code. Id.

4.  Microsoft's SDKJ 3.0, Visual J++ 6.0 and Windows 98.

Microsoft recently began distributing several new products which implement and incorporate Sun's JAVATM Technology, namely SDKJ 3.0, Visual J++ 6.0 and Windows 98. On March 11, 1998, Microsoft began distributing pre-release versions of SDKJ 3.0 and Visual J++ 6.0 via the Microsoft Website. Schroer Decl. 8-9 . In April 1998, Microsoft began distributing Windows 98 Release Candidate 0. Id. 10. Microsoft has announced it will commercially distribute SDKJ 3.0 and Visual J++ 6.0 before the end of 1998 and Windows 98 on June 25, 1998. Id. 8-10.

Although Sun does not have access to the source code for SDKJ 3.0, Visual J++ 6.0 and Windows 98, the source code for SDKJ 3.0, Visual J++ 6.0 and Windows 98 will likely contain a significant amount of Sun's copyrighted JDK source code. According to Microsoft, Windows 98 will include IE 4.01 -- a "bug fix" version of IE 4.0. Srock Tr. at 146-48. IE 4.0 was found to contain hundreds of files of Sun's copyrighted source code. Deutsch Decl. 25-37. SDKJ 3.0 is simply a new version of SDKJ 2.0, which similarly contains hundreds of files directly copied from Sun's copyrighted source code for the JDK computer program. Id. As for Visual J++ 6.0, Microsoft claims on its website that the Visual J++ 6.0 compiler "supports all language features in Java, including Sun's additions to the language specified in the Java Developers Kit (JDK) 1.1." Schroer Decl. 9, Exh. E (emphasis added).

D.  Microsoft's Products Fail To Pass Sun's Test Suite For Compatibility.

1.  The Court Has Ruled That Sun Is Likely To Establish That Microsoft's IE 4.0 and SDKJ 2.0 Fail To Pass Sun's JCK 1.1a Test Suite

In granting Sun's motion for a preliminary injunction, this Court previously held that Sun "demonstrated a sufficient likelihood of establishing that 100% compliance with the Relevant Test Suite is required of Microsoft." 3/24/98 Order at 15. The Court concluded:

In summary, it appears that JCK 1.1a is the Relevant Test Suite under the TLDA. Furthermore, it appears that Microsoft's IE 4.0 and SDKJ 2.0 products both fail Sun's JCK 1.1a test suite in several material respects.

3/24/98 Order at 17.

Microsoft's test manager, Kory Srock, who was deposed after the Court issued its preliminary injunction, has confirmed Microsoft knew that JCK 1.1 was the relevant test suite and that both IE 4.0 and SDKJ 2.0 fail that test suite, contrary to the positions Microsoft took while opposing Sun's preliminary injunction motion. Srock Tr. at 32-35, 124-26, 151, 165-69. According to Mr. 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." Id. at 35. Thus, "once IE4 incorporated the JDK 1.1 technology, Microsoft used the JCK 1.1 test suite to test it." Id. at 124. Nevertheless, before IE 4.0 was shipped, Microsoft knew IE 4.0 failed "about 50" tests on the Sun JAVATM compatibility test suite. Id. at 126. When asked about an e-mail concerning public relations information which asserted that "the Java virtual machine in Internet Explorer 4.0 passes every one of those tests," Mr. Srock testified that "it is not a true statement." Id. at 168-69.

Consequently, not only has the Court already adjudicated that Sun is likely to establish Microsoft's IE 4.0 and SDKJ 2.0 products fail to pass the JCK 1.1a test suite as required by the TLDA, subsequent discovery has confirmed the correctness of the Court's decision.

2.  Pre-Release Versions of SDKJ 3.0, Visual J++ 6.0 and Windows 98 Also Fail To Pass Sun's JCK 1.1a Test Suite.

Sun recently performed compatibility testing of Microsoft's SDKJ 3.0 Pre-Release 1, Visual J++ 6.0 Technology Preview 1 and Windows 98 Release Candidate 0. Schroer Decl. 13-25. After downloading binary copies of SDKJ 3.0 and Visual J++ 6.0 and receiving a binary copy of Windows 98, Sun performed each of the JCK 1.1a compatibility tests, and found that SDKJ 3.0, Visual J++ 6.0 and Windows 98 fail to pass the JCK 1.1a test suite. Id.

Like IE 4.0 and SDKJ 2.0, SDKJ 3.0 fails to pass the JCK 1.1a "SignatureTest." Id. 15(a). The "SignatureTest" detected the same 107 changes, additions and deletions in SDKJ 3.0 as in SDKJ 2.01 and IE 4.01. Id. 15(a) and 23(a); see also Schroer Supp. Decl. dated January 29, 1998, 25. Microsoft has modified the set of public APIs for the "java" class libraries by adding and deleting various methods and fields in the "java" classes. Schroer Decl. 15(a). These non-conforming modifications were not previously disclosed to Sun by Microsoft and result in the failure of SDKJ 3.0 to pass the JCK 1.1a "SignatureTest." Id.

In addition, SDKJ 3.0 fails to pass any of the 214 required tests for the JAVATM Native Interface ("JNI"), and two tests for the JAVATM compiler. Id. 15(b) and (c).

Visual J++ 6.0 and Windows 98 also fail to pass the JCK 1.1a test suite, revealing the same changes, additions and deletions present in SDKJ 3.0, IE 4.01 and SDKJ 2.0.1. Id. 19, 23.

III.  Legal Argument.

A.  Sun Is Entitled To A Preliminary Injunction.

Injunctive relief is specifically authorized by the Copyright Act. 17 U.S.C. 502(a). A plaintiff seeking a preliminary injunction must demonstrate either (1) "a likelihood of success on the merits and the possibility of irreparable injury" or (2) "serious questions going to the merits were raised and the balance of hardships tips sharply in its favor." Cadence Design Sys., Inc. v. Avant! Corp., 125 F.3d 824, 826 (9th Cir. 1997), petition for cert. filed (Feb. 19, 1998). In a copyright infringement action, a presumption of irreparable harm arises if the plaintiff is able to show a reasonable likelihood of success on the merits. Id.; Triad Sys. Corp. v. Southeastern Express Co. 64 F.3d 1330, 1335 (9th Cir. 1995).

In the present case, a preliminary injunction is warranted because Sun can demonstrate a likelihood of success on the merits on its copyright infringement claim. The Court previously found that, because Microsoft's IE 4.0 and SDKJ 2.0 failed the JCK 1.1a test suite, Microsoft's use of the "JAVA Compatible" trademark was unauthorized. 3/24/98 Order at 17. Like the "JAVA Compatible" trademark, Microsoft's license to copy and distribute products that use Sun's copyrighted source code is similarly conditioned upon the requirement that all such products first pass Sun's applicable test suite for the technology they incorporate. Since Microsoft's IE 4.0 and SDKJ 2.0 fail to pass the JCK 1.1a test suite, distribution of those products by Microsoft infringes Sun's copyrights. Because Microsoft is distributing additional products -- SDKJ 3.0, Visual J++ 6.0 and Windows 98 -- which implement the same version of Microsoft's virtual machine and class libraries as IE 4.0 and SDKJ 2.0 and also fail the JCK 1.1a test suites, Microsoft is poised yet again to infringe Sun's copyrights.

The irreparable harm that will befall Sun if Microsoft is permitted to continue and expand its infringement of Sun's copyrights is more than presumptive. Using its dominant position in the marketplace for desktop operating systems, Microsoft is preparing to inundate the market with an unlicensed and incompatible version of Sun's JAVATM Technology by incorporating nonconforming versions of Sun's technology in its upcoming release of Windows 98. If this occurs, Microsoft will quickly establish its unlicensed and incompatible version as a de facto industry standard, and no relief this Court can subsequently grant will undo the harm that will befall Sun, its licensees and their customers.

B.  Sun Is Likely To Establish That Microsoft Infringes Sun's Copyrights For Its JDK Computer Program Since Microsoft Has Clearly Copied Sun's Source Code

In order to establish copyright infringement, Sun must prove (1) ownership of a valid copyright and (2) copying of an expression protected by copyright. Triad Sys., 64 F.3d at 1335.

1.  Sun's Certificates Of Registration For Its JDK Computer Program Are Prima Facie Evidence Of Its Ownership Of A Valid Copyright

After an examination by the Copyright Office, Sun has received certificates of registration for various versions of its JDK computer program, including JDK 1.1. See, e.g., Crean Decl., Exh. C. These certificates of copyright 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. Sun therefore will have no difficulty establishing this element of its copyright claim.

2.  Microsoft Has Copied 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).

a.  Direct Evidence Of Copying.

Here, there can be no doubt that Microsoft has copied Sun's JDK computer program, prepared derivative works based on the program, and distributed copies of the copyrighted work to the public. Sun doubts that Microsoft will contest these facts.

Sun's website records reveal that persons at Microsoft downloaded (i.e., copied) the source code for Sun's JDK 1.1 and 1.1.3 in February and July of 1997, respectively. Schroer Decl. 6-7. An examination of the source code produced by Microsoft for IE 4.0 and SDKJ 2.0 reveal the presence of Sun's copyright notice in hundreds of files of Microsoft's source code. Deutsch Decl. 37. IE 4.0 and SDKJ 2.0 are plainly "derivative works" because they are based upon Sun's copyrighted JDK computer program. See 17 U.S.C. 101 (defining "derivative work"). The object code for IE 4.0 and SDKJ 2.0 is simply compiled ("translated") from Sun's copyrighted source code. Since Sun's JDK computer program is literally copied into Microsoft's IE 4.0 and SDKJ 2.0 products, Microsoft is also distributing copies of Sun's copyrighted work to the public.

Based on Microsoft's announcements regarding SDKJ 3.0, Visual J++ 6.0 and Windows 98, Sun will likely succeed in establishing that Microsoft's activities regarding those products also infringe Sun's copyrights.

b.  Circumstantial Evidence Of Copying Based On Access and Substantial Similarity

Even if Sun's direct evidence were insufficient, Sun has presented compelling circumstantial evidence of copying as well. "Because direct evidence of copying is rarely available, copying may be established by proof of access and substantial similarity." Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127, 1135 (N.D. Cal. 1986); see also Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996).

Microsoft indisputably had access to Sun's JDK program in both source code and object code form. Sun has demonstrated that Microsoft regularly was informed of new versions of the JDK program, and that Microsoft had access to a special Javasoft Partners website where licensees could download the source code for new versions of the JDK program. Schroer Decl. 5. In fact, Sun's records demonstrate persons at Microsoft did in fact download the source code for the JDK computer program, including versions 1.1 and 1.1.3. Id. 6-7. Given this high degree of access, the standard of proof required to show substantial similarity is lowered. Smith, 84 F.3d at 1218 (discussing the "Inverse Ratio Rule" requiring a "lower standard of proof on substantial similarity when a high degree of access is shown").

Sun's evidence of substantial similarity is so striking, however, that Sun satisfies this requirement regardless of the standard of proof. "Substantial similarity may be found whenever the works share significant similarity in protected expression both on an objective, analytical level and a subjective, audience-response level." Dr. Seuss, 109 F.3d at 1398 (internal quotations omitted). Expert analysis of Microsoft's source code for IE 4.0 and SDKJ 2.0 reveals a very high degree of similarity between Microsoft's files and Sun's JDK files. Deutsch Decl. 34. At least 434 files in the source code for IE 4.0 and SDKJ 2.0 were identical to the source code in Sun's JDK 1.1, and at least 596 files were identical to the source code in Sun's JDK 1.1.3. Deutsch Decl. 34-35. Approximately 86% of the IE 4.0/SDKJ 2.0 files for which corresponding JDK 1.1 files were identified were either identical or contained less than 10% lines of different source code. Id. 34. Approximately 88% of the IE 4.0/SDKJ 2.0 files for which corresponding JDK 1.1.3 files were identified were either identical or contained less than 10% lines of different source code. Id. 35. Microsoft's IE 4.0 and SDKJ 2.0 contain, at the very least, over 100,000 lines of source code which are literally identical to the source code of Sun's copyrighted JDK program. Id. 36.

Given the extensive, literal identity between the source code, Microsoft must have copied Sun's source code. Source code for a particular function can be expressed in a variety of different ways. Id.. 44. Many choices are simply a reflection of a particular programmer's style or preferences. Id. As Dr. Deutsch has shown, source code that is identical between Microsoft and Sun's files could have been expressed in a variety of ways, yet still carry out the same task with comparable conciseness and efficiency. Id. 45-48. The extensive, literal identity in the source code is not a fortuitous coincidence. Microsoft chose to copy Sun's particular form of expression.

3.  Microsoft's Copyright License From Sun Pursuant To The TLDA Is Not A Defense Because Microsoft's Actions Are Outside The Scope Of The License

"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.

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 IE 4.0, SDKJ 2.0 and 3.0, Visual J++ 6.0 and Windows 98 fail to pass Sun's compatibility test suite, and therefore fall outside the scope of any license granted to Microsoft in the TLDA.

Section 2.0, "LICENSE GRANTS," of the TLDA, defines the scope of the copyright license granted to Microsoft. Pursuant to sections 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." Batchelder Decl. Exh. C. Under section 2.6(a)(iv) and (vi), that license, however, was conditioned upon the requirement that each new version of any Microsoft product that incorporates Sun's JAVATM Technology first pass Sun's compatibility test suit prior to its commercial distribution by Microsoft. Id. Microsoft's license from Sun was further limited by section 2.8(d) which prohibited Microsoft from making any modification to any "public class or interface declarations whose names begin with `java.'" Id.

Microsoft's products, IE 4.0, SDKJ 2.0 and 3.0, Visual J++ 6.0 and Windows 98, incorporate Sun's JAVATM Technology by copying source code from the copyrighted JDK computer program, but fail to pass Sun's JCK 1.1a test suite. In its March 24, 1998 opinion, this Court concluded 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." 3/24/98 Order at 12-17. The subsequent testimony of Microsoft's Kory Srock confirms those findings. With the present motion, Sun presents additional evidence demonstrating that SDKJ 3.0, Visual J+ 6.0 and Windows 98 similarly fail to pass the JCK 1.1a test suite as required under the TLDA.

By distributing products which fail to pass the compatibility requirements of the TLDA, Microsoft is exceeding the scope of its copyright license. As the recital to the TLDA makes clear, Sun "wishes to license its JAVA technology, while maintaining compatibility among JAVA language based products." Batchelder Decl. Exh. C (emphasis added); cf. 3/24/98 Order at 14 n.3 ("Microsoft's interpretation of the TLDA is inconsistent with JAVA's objective of cross-platform compatibility."). Microsoft is not authorized to copy Sun's JDK source code for use in a product that fails to pass the compatibility requirements of the TLDA. Nor is Microsoft licensed to prepare derivative works of the JDK computer program that fail to pass the compatibility provisions of the TLDA. By commercially distributing or preparing to commercially distribute incompatible products that copy Sun's JDK 1.1 and 1.1.3 computer programs, but fail to pass Sun's JDK 1.1a test suite, Microsoft is exceeding the scope of its license, and therefore, is infringing Sun's copyrights.

The decision in S.O.S., Inc. v. Payday, Inc. is directly on point. In that case, the Ninth Circuit reversed the district court's grant of summary judgment for the defendant on plaintiff's claim of copyright infringement, holding that the district court "erred in assuming that a license to use a copyrighted work necessarily precludes infringement." S.O.S., 886 F.2d at 1085. S.O.S. had granted Payday a license only to use S.O.S.'s payroll software. By copying and preparing a modified version of S.O.S.'s software without permission, Payday exceeded the scope of the license. Id. 1088-89. The Ninth Circuit remanded the case to the district court to determine whether Payroll's acts, "unshielded by any license, infringed S.O.S.'s copyrights." Id. at 1089; see also Gilliam v. American Broadcasting Cos., 538 F.2d 14, 20 (2d Cir. 1976) ("One who obtains permission to use a copyrighted work in the production of a derivative work, however, may not exceed the specific purpose for which permission was granted.").

As demonstrated above, Microsoft's IE 4.0, SDKJ 2.0 and 3.0, Visual J++ 6.0 and Windows 98, fall outside the scope of the copyright license contained in the TLDA because those products do not comply with the TLDA's compatibility requirements. Like the defendant in S.O.S., Microsoft has made unauthorized copies and modifications to the licensed computer program. Sun granted Microsoft a limited license to copy certain works, subject to and conditioned upon Microsoft's obligation to distribute only products which first passed Sun's relevant test suite and otherwise satisfied the compatibility requirements of the TLDA. Having willfully exceeded the scope of the license granted, Microsoft's copying of the JDK computer program is unshielded by any license and, therefore, infringes Sun's copyrights.

C.  Sun Will Suffer Irreparable Harm If Microsoft Is Not Enjoined From Shipping Its Infringing Products

Because Sun has shown that it is likely to succeed on the merits of its claim that Microsoft is infringing Sun's copyrights, Sun is entitled to a presumption of irreparable harm. Cadence Design, 125 F.3d at 826. Microsoft cannot rebut the presumption of irreparable harm by asserting the adequacy of money damages. Id. at 827. Moreover, "the balance of hardships issue cannot be accorded significant -- if any -- weight in determining whether a court should enter a preliminary injunction to prevent the use of infringing material where . . . the plaintiff has made a strong showing of likely success on the merits." Id. at 830.

Even without reliance upon that presumption, however, it is clear that Sun faces irreparable harm if Microsoft is not enjoined from shipping incompatible (and therefore infringing) products, especially through its planned massive distribution of Windows 98. Sun's entire licensing program, premised on maintaining cross-platform compatibility among licensees of the JAVATM Technology, will be irreparably damaged if Microsoft is permitted to distribute products which do not pass Sun's test suites. Microsoft's shipment of these products will "destroy the cross-platform compatibility of the JAVATM programming environment," 3/24/98 Order at 15, robbing Sun and its licensees of the substantial time and capital invested in the JAVATM Technology. Such losses undoubtedly constitute irreparable harm. See Apple Computer, Inc. v. Formula Int'l, Inc., 725 F.2d 521, 525-26 (9th Cir. 1984) (jeopardy to plaintiff's "investment and competitive position" caused by defendant's infringement "satisfies the requirement of irreparable harm needed to support a preliminary injunction") (internal quotations omitted).

D.  Alternatively, Sun Is Entitled To A Preliminary Injunction Because It Has Shown That Serious Questions Exist And The Balance Of Hardships Tips In Its Favor

At the very least, Sun has raised "serious questions" as to whether Microsoft is infringing Sun's copyrights by distributing products which copy Sun's JDK computer programs, but fall outside the scope of the license granted in the TLDA because they fail to satisfy the compatibility requirements of the TLDA.

Sun also has shown the balance of hardships tips sharply in its favor. Sun will suffer immediate and grave harm if Microsoft is not restrained from releasing products which copy Sun's JDK computer program, yet fail to pass the compatibility requirements of the TLDA in contravention of the TLDA's overarching purpose and the Technology's overriding "objective of cross-platform capability."

Microsoft, on the other hand, "cannot complain of the harm that will befall it when properly forced to desist from its infringing activities." Triad, 64 F.3d at 1338; see also Cadence Design, 125 F.2d at 830 (holding district court erred in denying preliminary injunction based on "devastating" effect injunction would have on infringer's business). Moreover, the hardship to Microsoft is minimized given the nature of the limited injunction Sun now seeks. Sun only seeks an injunction prohibiting Microsoft from distributing incompatible versions of Microsoft's products which copy Sun's JDK computer program. Microsoft would remain free to distribute IE 4.0, SDKJ 2.0 and 3.0, Visual J++ 6.0 and Windows 98 by either (1) modifying the products so they pass the JCK 1.1a test suite for compatibility or (2) removing all JAVATM Technology from the products.

IV.  Conclusion.

Microsoft cannot avail itself of the benefits of the TLDA while shirking its obligations. It cannot copy Sun's JDK computer program, and then distribute incompatible products which do not pass Sun's JCK 1.1a test suite. Having willfully exceeded the scope of its license from Sun, Microsoft is now infringing Sun's copyrights. Sun is entitled to stop that infringement now, before the harm becomes irreparable. The Court should grant Sun's motion, and promptly enjoin Microsoft from any further infringement of Sun's copyrights, unless and until Microsoft's products pass Sun's compatibility test suite and comply with all other compatibility and certification requirements provided for in the TLDA.

Dated: May 12, 1998

COOLEY GODWARD LLP

 

By:

Lloyd R. Day, Jr.

Attorneys for Plaintiff
SUN MICROSYSTEMS, INC.

 


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