Judge Whyte Enjoins Microsoft
from Using Java Compatible Logo

(March 25, 1998.)  Federal District Court Judge Ronald Whyte issued a Preliminary Injunction on Tuesday, March 24, in the suit Sun Microsystems v. Microsoft.  The order bars Microsoft from using the Java Compatible Logo on its Internet Explorer 4.0 and Java development software.  The ruling is a victory for Sun in its bid to retain control over the Java platform, and to keep it from fragmenting.  Microsoft has not been enjoined from selling any software products.

Sun Microsystems filed suit against Microsoft last October 8 alleging that Microsoft violated their 1996 licensing agreement.  Microsoft had labeled and promoted its MSIE 4.0 and Java development software as Java Compatible.  Sun asserted that Microsoft Java products had failed its compatibility tests, and were thus in violation of the agreement.  Judge Whyte held a hearing on February 27 on pre-trial motions.

The ruling is not a final decision in the case, but rather a preliminary one, which remains in effect until trial, or other disposition of the case.  To enter the preliminary injunction, the Judge had to find that Sun was likely to prevail on the merits at trial, and that it would suffer irreparable harm without the injunction.

Whyte's Preliminary Injunction

Judge Whyte ruled that Microsoft's interpretation of the licensing agreement between the two companies "would essentially allow Microsoft to destroy the cross-platform compatibility of the Java programming environment. Sun has demonstrated a sufficient likelihood of establishing consumer confusion," said Judge Whyte, to entitle it to a "presumption of irreparable harm."

Judge Whyte barred Microsoft from using directly or indirectly Sun's Java Compatible trademark in connection with the advertising, distribution, sale or promotion of the products "unless and until each such product first passes the Sun test suite accompanying the most current version of the Java technology incorporated in such product."

More specifically the Court ordered that, "Since the court finds that Sun is likely to prevail on the merits and that it may suffer irreparable harm if Microsoft is not enjoined, a preliminary injunction is hereby issued against Microsoft, and its officers, agents, servants, employees, attorneys, and those in active concert or participation with them who receive actual notice of this order by personal service or otherwise, pending trial, from:

(1)  Using, directly or indirectly, Sun's "JAVA Compatible" trademark or any other mark, logo, or identification that imitates, simulates, or is confusingly similar to said "JAVA Compatible" trademark on or in connection with the advertising, distribution, sale, or promotion of Microsoft's Software Developer's Kit for Java 2.0 (SDKJ 2.0) or Microsoft's Internet Explorer 4.0 (IE 4.0), unless and until each such product first passes the Sun test suite accompanying the most current version of the JAVA^TM Technology incorporated in such product as passing is defined in the TLDA; and

(2)  With regard to any SDKJ 2.0 or IE 4.0 product currently in the commercial distribution channel, Microsoft shall immediately undertake either to withdraw the product from the commercial sales channel or to remove or sufficiently sticker, obscure, or cover the "JAVA Compatible" mark which appears externally on the product packaging and in any point of purchase advertising, product manual, and collateral materials, and internally on any splash screens and icons. Microsoft shall also immediately remove the "JAVA Compatible" trademark from any Microsoft Web site where it appears in any location that refers to the IE 4.0 or SDKJ 2.0 product, and any location which has one or more links to one or more Web pages that refer to said products.

Microsoft shall have thirty (30) days from the date of this order to complete the foregoing and certify to this court that it has done so."

Good News for Sun

"This is good news for consumers, for software developers, and for our customers and licensees," said Michael H. Morris, Sun's Vice President/General Counsel, in a press release.  "As a result of today's ruling Microsoft will no longer be able to use Sun's Java Compatible logo in a confusing and misleading way. We are eager to take our case to trial and look forward to a prompt resolution."  He continued that, "This is about a trademark, and our insistence that products labeled as 'Java Compatible' satisfy Sun's requirements for use of its logo."

Microsoft Disappointed

In a statement to Reuters, Microsoft Associate General Counsel Tom Burt stated, “We will immediately comply with the court’s order, but we remain confident that once all the facts are presented in the larger case the court will find Microsoft to be in full compliance.”  Tom Burt also said, “We are disappointed by the court’s decision, and we believe that Microsoft has been in full compliance with our contract with Sun.”