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Sun Microsystems v. Microsoft
(Java Licensing Suit) |
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Sun Microsystems, Inc. v. Microsoft Corporation, U.S. District Court,
Northern District of California, San Jose, Case Number 97-CV-20884.
Microsoft Corporation v. Sun Microsystems, Inc., U.S. Court of
Appeal, Ninth Circuit, Case Number 98-_____.
Nature of the Case. Suit by Java Technology
developer and licensor Sun Microsystems against software giant Microsoft,
alleging that Microsoft has violated its Java licensing agreement with Sun.
This page was last updated on January 30, 2000. |
Plaintiff. Sun
Microsystems, 901 San Antonio Rd, Palo Alto, California, 94303. Attorney:
Lloyd Day, Day Casebeer, San Francisco, 408-255-3255.
Defendant. Microsoft Corporation, One Microsoft Way,
Redmond, WA, 98052-6399. Attorneys.
Facts. Sun Microsystems makes network
computing systems which use a Unix operating system. Sun also is the developer
and licensor of Java Technology, a standardized application programming
environment that is designed to allow software developers to create programming
code that can run across different platforms. One set of uses is for applets
that improve the appearance and interactive quality of web pages. On March
11, 1996, Sun and Microsoft entered into a licensing agreement which allows
Microsoft to use, modify and adapt Java Technology. Microsoft proceeded to use
Java Technology in developing MS Internet Explorer 4.0, and other software
products. Sun alleges that Microsoft has refused to adhere to Sun's most recent
set of Java specifications and Java API, and that this constitutes an attempt to
fragment the standardized application environment, and break with cross platform
compatibility. Sun filed suit on October 8, 1997, seeking both injunction
relief, and $35 million in monetary damages. Microsoft has counter-claimed
against Sun.
Issues. The suit is based on breach of
contract, the Federal Trademark Act (Lanham Act) 15 USC § 1051 et. seq., and a
shotgun volley of other contract and tort causes or action. At issue is whether
Microsoft has violated its Java license agreement with Sun Microsystems, and
whether Microsoft has otherwise engaged in breach of contract, false
advertising, trademark infringement, unfair competition, or interference with
economic advantage. Sun alleged in its Motion for Preliminary Injunction
that the fundamental issue is: "Will MS be permitted to use Sun's Java
Compatible Logo to promote and distribute its Internet Explorer 4.0 and related
products even though its products fail to pass Sun's compatibility tests suite,
and therefore fail to satisfy the conditions for use of Sun's trademark."
Microsoft has raised several issues in its counterclaim, including whether
Sun breached the agreement for allegedly withholding from Microsoft a public set
of test suites or for failing to treat Microsoft on an equal footing with other
licensees, and whether Sun has engaged in intentional interference with
prospective advantage and unfair business practices for its alleged false
statements about the compatibility and desirability of Microsoft’s products
and Microsoft’s rights under the agreement.
Another set of issues is, if Microsoft has violated license agreement, what
relief is Sun entitled to? The guts of Sun's requests are for
injunction relief, preventing use of the logo, and withdrawal of products from
the market.
However, the bigger issue is not a legal one. It is the extent to which
Sun will be able to control the Java platform, and keep it from
fragmenting.
Holdings.
1. District Court Injunction, March 24,
1998. The District Court issued a Preliminary Injunction against Microsoft
on March 24, 1998 which bars Microsoft from using the Java Compatibility Logo.
This preliminary order is based upon the Court's determination that Microsoft
likely breached the Agreement placing the Java Compatibility Logo on software
products that failed Sun's compatibility tests, and its finding that the
Agreement allows injunction relief. See, Preliminary
Injunction.
2. District Court Injunction, November 17,
1998. The District Court issued a broader Preliminary Injunction on November
17, 1998, which requires Microsoft to modify all its software products that ship
with Java technologies to pass Sun's Java compatibility test suite. The order
affects MS Internet Explorer 4.0, Windows 98, Windows NT 4.0, and the
development tool, Visual J++ 6.0. The injunction gives Microsoft 90 days
to come into compliance. See, Preliminary Injunction.
3. Court of Appeals Opinion Vacating
Injunction, August 23, 1999. Microsoft appealed the November 17, 1998
injunction to the U.S. Court of Appeals for the 9th Circuit. The 9th Circuit set
aside the injunction on August 23, 1999. See, Opinion.
4. District Court Order Reinstating
Injunction, January 24, 2000. Sun moved to reinstate the injunction of
November 17, 1998. Judge Whyte did so on January 24, 2000. See, Order Reinstating
Preliminary Injunction. (Link to Sun web site.)
Status. Microsoft is enjoined
from shipping software products with Java technologies that do not pass Sun's
Java compatibility test suite.
Chronology with Links to Pleadings and Related
Resources
- 3/11/96, Sun and Microsoft enter into Technology
Licensing and Distribution Agreement (TLDA) and Trademark License
Agreement. (Link to Sun website.)
- 10/7/97, Sun files original Complaint. (See, press release and transcript of Sun
press teleconference; links to Sun website.)
- 10/09/97, Microsoft sends letter to customers
regarding filing of complaint.
- 10/14/97, Sun files first Amended Complaint.
- 10/27/97, Microsoft files Answer and
Counterclaim. (Link to Microsoft website.)
- 11/17/97, Sun files Motion for
Preliminary Injunction (MPI) (Link to Sun website.)
- 2/5/98, Microsoft files sworn declarations of Russ Arun, Charles
Fitzgerald, and Robert Muglia.
(Links to Microsoft website.)
- 2/27/98, Sun files Brief in Support of
MPI, and Declarations of L. Peter Deutsch
and Carla
Schroer in support. (Links to Sun website.)
- 2/27/98, hearing before U.S.D.C. Judge Ronald Whyte on Sun's 11/17/97 MPI..
- 3/24/98, Judge Whyte grants Preliminary
Injunction against Microsoft. (Story.)
- 5/12/98, Sun files two Motions for Preliminary Injunction (MPI).
(Filed under seal, and made public on 10/21/98.). (Story.)
• Brief in Support of
MPI Under Cal. Bus. & Prof. Code. (Unfair competition
claim.)
• Brief In Support of
MPI Under 17 USC 502. (Copyright infringement claim.)
- 5/13/98, Sun issues press release, and Alan
Baratz holds press teleconference, on the MPIs filed on 5/12/98 under seal.
(See, transcript;
link to Sun website.)
- 5/13/98, Microsoft issues press release on
Sun's MPIs.
- 5/15/98, Microsoft describes suit in SEC Form 10-Q. (Excerpt of 10-Q.)
- 5/12/98, Sun files Second Amended and
Supplemental Complaint. (Link to Sun website.)
- 8/6/98, Microsoft files Statement of Robert
Muglia. (See also, 8/18/98 Letter from
Robert Muglia to Microsoft customers.)
- 8/7/98, Judge Whyte issues Order Amending
Stipulated Protective Order.
- 9/4/98, Microsoft files Opposition to Sun
MPI under Cal. Bus. & Prof. Code. (Made public on
10/22/98.)
- 9/10/98, Microsoft files Opposition to
Sun MPI under 17 USC 502. (Made public on 10/22/98.)
- Sun file's Reply Brief's in support of its MPIs. (Filed 9/10, and
made public on 10/20.)
• Reply Brief (re: 17
USC 502, copyright infringement). (Link to Sun website.)
• Reply Brief (re: Cal
Bus. & Prof. Code, unfair competition). (Link to Sun website.)
- Declarations of Sun employees and attorneys in support of its MPIs.
(Links to Sun website.)
• James A. Gosling
(executed 8/21, filed 9/10)
• Alan E. Baratz
(executed 8/21, filed 9/10)
• Lee
Patch (executed 8/21, filed 9/10)
• Carla Schroer
(executed 8/21, filed 9/10)
• Peter Deutsch
(executed 8/21, filed 9/10)
• Lloyd
R. Day (executed 8/21, filed 9/10)
• J. Paul Armstrong
(executed 8/21, filed 9/10)
- 9/8/98 -9/10/98, evidentiary hearing before Judge Whyte on Sun's MPIs
filed on 5/12/98. (Transcript
of hearing on 9/10/98; large file in Sun website.)
- 9/10/98, Sun
statements and press teleconference held by Sun's lead attorney Lloyd
Day and PR person Lisa Poulson.
- 10/20/98-10/22/98, Sun and Microsoft make public copies of numerous
pleadings pertaining to Sun's MPIs filed on 5/12/98.
- 10/21/98, letter to
Wall Street Journal from Paul Maritz, Group VP, Platform &
Applications Group, Microsoft. (Link to Microsoft website.)
- 11/17/98, Judge Whyte issues Preliminary
Injunction. (Story.)
- 1/13/99. Microsoft files Appeal Brief
with 9th Circuit Court of Appeals. (Story.)
- 1/22/99. Sun files three motions for summary judgment in District
Court. (Story.)
• MSJ on copyright issues.
• MSJ on trademark issues.
• MSJ on TLDA § 2.7(A).
- 2/10/99. Sun files Brief
of Appellee with 9th Circuit Court of Appeals. (Link to Sun website.)
- 2/19/99. Judge Whyte issues order clarifying
preliminary injunction order of 11/17/98. (Story).
- 8/23/99. Ninth Circuit issued its Opinion
vacating Judge Whyte's injunction. (Story.)
- 1/24/00. Judge Whyte issued an Order
reinstating the November 17, 1998 preliminary injunction. (Link to Sun web
site.)
Trademark Licensing and Distribution Agreement (TLDA).
The full text of the agreement in dispute is a page in this website, with
internal links to some key sections.
Sun Microsystems Information.
- Sun Microsystems Press Releases.
Sun Microsystems operates two websites - this one, and its java.sun site.
This main site contains press releases, but no pleadings from the case.
This page also contains a search engine for searching Sun's press releases
files.
- Sun Microsystem's Java.Sun website
includes a Lawsuit
Information Page which links into an extensive set of Sun's pleadings in
this case.
- Sun Attorneys.
- DAY CASEBEER MADRID WINTERS & BATCHELDER, 20400 Stevens Creek
Boulevard, Suite 750, Cupertino, CA, 95014, 408-255-3255.
• Lloyd R. Day, Jr., lead attorney. (Day biography.)
• Vernon Winters, James Batchelder, David Estrada,
Robert Galvin, Julie Turner.
- Cooley Godward, 5 Palo Alto Square,
4th Floor, 3000 El Camino Real, Palo Alto, Ca, 94306-2155. 650-843-5133.
Janet Cullum and James Donato.
- Sun public relations people:
Microsoft Information.
- Microsoft's
Java Suit Information Page.
- Microsoft's Attorneys.
- McDONALD & QUACKENBUSH, P.S., David McDonald, Karl Quackenbush, 3300
First Interstate Center, 999 Third Avenue, Seattle, WA 98104,
206-224-7099.
- ORRICK, HERRINGTON & SUTCLIFFE LLP, Terrence McMahon, G. Hopkins
Guy, III, William Anthony, Shelley Sandusky, 1020 Marsh Road, Menlo Park,
CA 94025, 650- 833-7800.
- RUBY & SCHOFIELD, Allen Ruby, 60 South Market Street, Suite
1500, San Jose, CA, 95113, 408-998-8500.
- MICROSOFT CORPORATION, Thomas Burt, Linda Norman, One Microsoft Way,
Bldg. 8, Redmond, WA, 98052, 425-882-8080.
- Public relations people:
- Jim Cullenen. Microsoft. 425-703-5913.
- Wagner Edstrom. (PR firm.) 425-637-9097.
Tech Law Journal Stories.
Judge Issues Preliminary
Injunction in Java Suit, 11/18/98.
Microsoft Files Appeal Brief
in Java Suit, 1/17/99.
Appeals Court Vacates Java
Injunction, 8/23/99.
Judge Reinstates Java Injunction in Sun v. Microsoft, 1/30/00.