Sun Microsystems, Inc. v. Microsoft Corp.
| Decision Date | 17 November 1998 |
| Docket Number | No. C 97-20884 RMW (PVT).,C 97-20884 RMW (PVT). |
| Citation | 21 F.Supp.2d 1109 |
| Parties | SUN MICROSYSTEMS, INC., a Delaware Corporation, Plaintiff, v. MICROSOFT CORPORATION, a Washington Corporation, Defendant. |
| Court | U.S. District Court — Northern District of California |
Lloyd R. Day, Jr., Vernon Winters, Day, Casebeer, Madrid, Winters & Batchelder, Cupertino, CA, Janet Cullum, Cooley Godward LLP, Palo Alto, CA, for Plaintiff.
David T. McDonald, Karl J. Quackenbush, Preston, Gates & Ellis, Seattle, WA, Terrence P. McMahon, Barbara A. Caulfield, Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA, Allen Ruby, Ruby & Schofield, San Jose, CA, Thomas Burt Microsoft Corp., Redmond, WA, for Defendant.
Edward P. Davis, Jr., Skjerven, Morrill, MacPherson, Franklin & Friel LLP, San Jose, CA, Roger R. Myers, Steinhart & Falconer, San Francisco, CA, for Media Entities.
Plaintiff's motions for preliminary injunctive relief based on 17 U.S.C. section 502 and section 17200 of the California Business and Professions Code were heard on September 8-10, 1998. The court has read the moving and responding papers, considered the witness testimony and heard the oral argument of counsel. For the reasons set forth below, the court grants in part plaintiff's motions for preliminary injunctive relief.
According to Sun Microsystems, Inc. ("Sun"), Microsoft Corporation's ("Microsoft") Internet Explorer 4.0 ("IE 4.0"), Software Development Kit for Java ("SDKJ") versions 2.0 and 3.0, Visual J + + 6.0 ("VJ 6.0") and Windows98 products infringe Sun's copyrights for the source code embodying the Java Technology. More specifically, Sun asserts that Microsoft's license to distribute products which use Sun's copyrighted source code depends on compliance with Sun's applicable test suite for the version of the technology which Microsoft's products incorporate. Sun submits that the above-mentioned products fail to pass the applicable compatibility test suite and that, therefore, Microsoft's distribution of these products infringes Sun's copyrights.
Sun now seeks to immediately enjoin Microsoft from reproducing, distributing or selling SDKJ 2.0 and 3.0, and VJ 6.0, 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 between Sun and Microsoft. Sun also challenges Microsoft's right to distribute IE 4.0 and Windows98 in their current configurations. However, Sun's proposed injunction as to these products would allow Microsoft ninety days to modify IE 4.0 and Windows98 such that these products also pass Sun's compatibility test suite.
Sun's Java Technology is a collection of programming components that create a standard, platform-independent programming and runtime environment. Sun's Java Technology has two basic elements: the Java programming environment and the Java runtime environment.
The Java programming environment allows software developers to create a single version of program code that is capable of running on any platform which possesses a compatible implementation of the Java runtime environment. The Java programming environment comprises (1) Sun's specification for the Java language, (2) Sun's specification for the Java class libraries and (3) the Java compiler.
The Java runtime environment comprises the Java class libraries and the Java runtime interpreter. A system platform or browser program that implements the Java runtime environment can execute application programs developed using the Java programming environment.
Sun's Java programming and runtime environments are available to software developers in the form of the Java Developer's Kit ("JDK") which is a tool embodying the language, class libraries and the compiler. Sun also licenses the source code for its JDK software to systems and browser manufacturers (e.g., Apple, IBM, Microsoft, Netscape, etc.) to enable them to incorporate the Java Technology in their own operating systems, browsers and software development tool kits.
The negotiations between Sun and Microsoft which resulted in the Technology License and Distribution Agreement ("TLDA") comprised several rounds of telephone conferences, e-mail communications and face-to-face negotiations. On December 6, 1995, Sun and Microsoft executed a Letter of Intent ("LOI") setting forth the general subject matter and basic terms of the agreement to be negotiated. See McMahon Decl. Ex. 36. During the negotiations of the LOI, Sun and Microsoft contemplated that any license agreement would grant Microsoft the right to include the Java Technology only in its Internet browsers and software development tools. See Baratz Reply Decl. ¶ 27; Patch Reply Decl. ¶ 9.1 However, the proposed agreement was soon expanded to encompass Microsoft's use of the Java Technology in operating systems.
Near the end of February 1996, the intensity and frequency of the negotiations resulting in the TLDA increased. Microsoft planned a Professional Developers Conference for mid-March 1996 during which it would announce the details of Microsoft's Internet strategy to technical system developers. Muglia Decl. ¶ 12. This conference marked a deadline for Microsoft's contract negotiations with Sun. Id. Even on the day before the conference, Microsoft and Sun had not finalized many material terms and details of the agreement. Microsoft's negotiators flew down to Sun's offices in Cupertino to begin discussions at 10:00 a.m. on Monday morning, March 11, 1996. Muglia Decl. ¶ 15. After almost 19 hours of negotiations, Sun and Microsoft executed the final agreement at 4:45 a.m. on March 12, 1996.2 Id. Less than fours hours later, Microsoft announced the execution of the TLDA at the conference. Id. ¶ 17.
Pursuant to the TLDA, Sun granted to Microsoft a nonexclusive license "under the Intellectual Property Rights of SUN to make, access, use, 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." Batchelder Decl. Ex. C (TLDA § 2. 1(a)). Sun also granted Microsoft a license to "make, use, import, reproduce, license, rent, lease, offer to sell, 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." TLDA § 2.2(a)(iii). However, as to browser and operating systems, the TLDA also provides that each new version of any "Product" that incorporates Sun's Java Technology must pass Sun's compatibility test suite prior to its commercial distribution. TLDA §§ 2.6(a)(iv), (vi). The TLDA defines the "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." TLDA § 1.15. The AAPI or Applet Application Programming Interface is defined as:
(a) the public application programming interface to the Java Applet Environment (JAE) reflected in the Technology as identified in Exhibit A, (b) the bytecode specification in the Documentation entitled "OEM Java Virtual Machine Specification," (c) the Java language specification in the Documentation entitled "OEM Java Language Specification" and (d); the OEM Java API Specification, as modified by SUN during the term of this Agreement.
TLDA § 1.1. The TLDA permits Microsoft to extend or make additions to the AAPI, referred to as "Value Added Open Packages" or "VAOPs." TLDA §§ 1.28, 2.8(a). However, the TLDA restricts Microsoft to a specific naming convention for any VAOPs. See TLDA § 2.8(d). Additionally, the TLDA proscribes any modification or addition to the names of the public Java classes "whose names begin with `Java', `COM.sun' or their equivalents." TLDA § 2.8(d).
Microsoft's products which include Java compilers are subject to a slightly different compliance standard. Any Microsoft product having a Java language compiler "shall include a mode which a Tool Customer may use to permit such Product to pass the Java Language Test Suite3 that accompanied the Significant Upgrade." TLDA § 2.6(b)(iv). Microsoft argues that this provision allows it to develop compiler directives and keyword extensions which optimize the Java Technology for software developers who wish to write applications solely for the Win32 platform, as long as the compiler includes a mode that disables these compiler directives and extensions. See Muglia Decl. ¶¶ 5, 9, 11. Sun, on the other hand, argues that section 2.6(b)(iv) only allows Microsoft to include in its compilers the ability to compile code for prior compatible versions of the Java Technology that were incorporated in earlier products. See Baratz Reply Decl. ¶¶ 15, 18-21; Patch Reply Decl. ¶ 62-68. Sun also avers that Microsoft never discussed the possibility of extending the Java, language.. Patch Reply Decl .... ¶ 68; but see Muglia Decl. ¶ 11.
Sun contends that Microsoft's Windows98 and IE 4.0 products fail to pass the JNI tests of Sun's JCK 1.1 a test suite. Schroer Supp. Decl. ¶¶ 5, 6 & Ex. A. Microsoft's SDKJ 2.02 and 3.0 and VJ 6.0 software development tools, according to Sun, do not support Sun's JNI and RMI technology and, therefore, fail (1) Sun's JNI tests, and (2) St & s RMI Compiler tests. Sun also contends that Microsoft's use of incompatible keywords and compiler directives cause its compiler to generate output which fails to properly execute on the JDK 1.1 virtual machine. See Schroer Supp. Decl. ¶¶ 7, 8, 9 & Ex. A. Sun also contends that SDKJ 2.02 fails two required compiler tests. Schroer ...
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