Tent_Order_Granting_Sun_Mot_Sum_Jud_Of_Copyrt_Infringe_And_Denying_MS_Mot_For_Sum_Jud_Re_Sun_CopyRt_InfrinG_order_5_24_99.
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UNITED STATES DISTRICT COURT
The court has read the moving and responding papers and consulted with the neutral expert appointed in the present case. For the reasons set forth below, the court tentatively grants plaintiff's motion for summary judgment of copyright infringement and denies defendant's motion for summary judgment relating to plaintiff's copyright infringement claim.
Plaintiff Sun Microsystems, Inc. ("Sun") moves for summary judgment of copyright infringement. Sun seeks an order adjudicating that Microsoft Corporation's ("Microsoft") distribution of software products containing an implementation of the Java virtual machine*, which failed to pass Sun's JCK 1.1a test suite, exceeded the scope of the copyright license granted in the TLDA and, therefore, constitutes copyright infringement. Microsoft also moves for summary judgment as to Sun's claim for copyright infringement. It contends that the compatibility provisions of section 2.6 are covenants independent of the license grants in the TLDA and that, therefore, Sun cannot maintain a claims for copyright infringement based upon alleged breaches of these covenants.
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 Source Code form for the purposes of developing, compiling it binary form and supporting Products." 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, the TLDA also places compatibility requirements on Microsoft's commercially distributed implementations of the Java technology. See TLDA § 2.6(a)(vi) ("Licensee agrees that any new version of a Product that Licensee makes commercially available to the public after the most recent Compatibility Date shall only include the corresponding Compatible Implementation (subject to Licensee's right to exclude the Supplemental Java Classes pursuant to Section 2.7); provided, that any version of a Product which, as of such Compatibility Date, is being beta tested by third parties, shall be exempt from such requirement."). Both Sun's and Microsoft's motions for summary judgment relating to Sun's claims for copyright infringement involve the issue of whether section 2.6 limits the scope of the license grants in the TLDA or stands as an independent covenant, the breach of which does not support a claim for copyright infringement.
Sun compared its JDK 1.1.3 source code to the Microsoft's source code for "builds" of Microsoft's virtual machine. Lanovaz 1/22/99 Decl. 6 8, 20. For purposes of this motion, Sun relies solely on Microsoft's alleged copying of the java.* class libraries. See Sun's Reply at 6 n.5. The results of Sun's comparison reveals a substantial number of files in each build of Microsoft's virtual machine that are identical to the files in the java. * class libraries. See Lanovaz 1/22/99 Decl. Ex. U. According to Sun, the infringing builds of Microsoft's virtual machine appeared in Windows 95 OSR 2.5, Windows 98, Windows NT 4 SP4, Internet Explorer 4.0, Visual J++ 6.0 and software Developmental Kit for Java. See Lanovaz 1/22/99 Decl. Ex. V. Sun highlights VM Build 2424 of Microsoft's Virtual Machine for Java, which was incorporated in Windows 98, Internet Explorer 4.01 and SDK for java 2.02. See Lanovaz 1/22/99 Decl. 6625-28. According to Sun, VM Build 2424 contains 957 source code files that include a Sun copyright notice. Id. 6 27. In the java.* class libraries, 319 files in VM Build 2424 are identical to source code files on Sun's JDK 1.1.3. Id. Responding to Microsoft experts, Sun revised its comparison. This revised comparison indicated that Microsoft's VM Build 2424 includes 317 source code files which are identical to source code files in Sun's JDK 1.1.3. Lanovaz 2/26/99 Reply Decl. 6 15, Exs. B, E. Sun further explains the extent of Microsoft's copying related to Internet Explorer 4.0 and 4.01 for the Macintosh. The CD-ROM disc containing the source code corresponding to these versions, says Sun, did not contain source code for all of the java. * classes implemented in Internet Explorer 4.0 and 4.01 for the Macintosh. Lanovaz 1/22/99 Decl. 6 29. According to Sun., Microsoft shipped verbatim copies of the actual binary files for the java.* classes from Sun's JDK 1.1.4. See Day 1/27/99 Decl. Ex. 16 (Eames 1/14/99 Depo. at 77:6-78:18, 153:3-18); but see Jager 2/12/99 Decl. 664-5 (Microsoft compiled the source code that was used by the Mac VM team and did not use any binary file from Sun).
As to compatibility, Microsoft appears to admit that Internet Explorer 4.0 and SDKJ 2.0 for Win32 operating systems, distributed between September 1997 and May 1998, failed to pass Sun's Signature Test in the JCK 1.1a test suite. Day 1/27/99 Decl. Ex. 3 (Microsoft's Response to RFA No. 59); Schroer 1/22/99 Decl. Ex. C. Microsoft also admits that Internet Explorer 4.0 for the Macintosh and Solaris operating systems, which it distributed prior to September 1998 failed the SignatureTest of the JCK 1.1a test suite. Day 1/27/99 Decl. Ex. 3 (Microsoft's Response to RFA NO. 62, 63); Schroer 1/22/99 Decl. Ex. C. Sun also relies on Microsoft's apparent failure to support JNI in products distributed since September 1997, such as Windows 98, Internet Explorer 4.0 and Visual J++ 6.0. Day 1/27/99 Decl. Ex. 2 (Microsoft's Response to RFA Nos. 13, 14); Schroer 1/22/99 Decl. Ex. C.
Summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.Proc. 56(c). Initially, it is the moving party's burden to demonstrate that there is no genuine issue of material fact and that it is entitled to summary judgment as a matter of law. British Airways Board v. Boeing Co., 585 F.2d 946, 951 (9th Cir. 1978). When, as here, the movant bears the burden of proof at trial on the issues raised in the summary judgment motion, its showing must be sufficient for the court to find that no reasonable trier of fact could find together than for the moving party. See Calderone v. United States, 799 F.2d 254, 259 (6th Cir. 1986) (quoting W. Schwarzer, Summary Judgment Under the Federal Rules: Defining Genuine Issues of Material Fact, 99 F.R.D. 465, 487-88 (1984)). Additionally, "[t]he inquiry involved in a ruling on a motion for summary judgment . . . necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits. Anderson v. Liberty Lobby, Inc., 106 S.Ct. 2505, 2510-11 (1986). Once the moving party satisfied this initial burden, the nonmoving party "may not rest upon the mere allegations or denials of the adverse party's pleadings . . .[T]he adverse party's response . . . must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.Proc. 56(e). The nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 106 S.Ct. 1348, 1356 (1986). "Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no 'genuine issue for trial.'" Id.; Anderson, 106 S.Ct. at 2512 ("There mere existence of a scintilla of evidence . . . will be insufficient."). However, on summary judgment, the court must draw all justifiable inferences in favor of the nonmoving party. Masson v. New Yorker Magazine, Inc., 111 S.Ct. 2419, 2434-35 (1991).
To establish copyright infringement, a plaintiff must prove (1) ownership of a valid copyright and (2) copying of expression protected by its copyright. Triad Systems Corp. v. Southeastern Express Co., 64 F.3d 1330, 1335 (9th Cir. 1995).
Ownership of a valid copyright requires proof that the subject matter in which the plaintiff claims a copyright is, inter alia, (1) original to the author and (2) subject to copyright protection. A copyright registration certificate, however, "made before or within five years of first publication of the work constitutes prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). The registration of a derivative work, however, creates no presumption in favor of the preexisting work. See Cooling Systems & Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 490 (9th Cir. 1985), overruled on other grounds in, Fogerty v. Fantasy, Inc., 114 S.Ct. 1023 (1994). To support its claims for copyright infringement, Sun submits certain copyright registration certificates and supplementary registrations covering certain versions of the JDK. Sun's original JDK 1.0 appears to be covered by Registration No. TXu 835-277 which states that the title of the work is "JAVA DEVELOPMENT KIT VERSION 1.0 alpha." Crean 2/26/99 Reply Decl. Ex. G. According to sun, this is the first version of Sun's JDK and was never published. Id. 6 9. The registration certificate indicates that this version includes "third party computer programs." Crean 2/26/99 Reply Decl. Ex. G. The first published version, says Sun, is covered by Registration No. TX 4-576-685 for "JAVA DEVELOPMENT KIT VERSION 1.0 alpha 2." Day 1/27/99 Decl. Ex. 7; Crean 2/26/99 Reply Decl. 6 4, Ex. A. Prompted by Microsoft's opposition, Sun filed an expedited supplementary certificate of registration for JDK 1.0 alpha 2 to disclose that it incorporates third party code and that it is first published edition of a work previously registered in unpublished form. Crean 2/26/99 Reply Decl. 6 11, Ex. I. Sun's subsequent JDK 1.0.2 release appears to be covered by Registration No. TX 4-576-685, which states that it includes certain preexisting material from "JAVA DEVELOPMENT KIT VERSION 1.0 alpha 2 and other previous versions of the JAVA DEVELOPMENT KIT, including third party computer programs incorporated therein." Id. Registration No. TX 4-576-687 states that JDK 1.1 is a derivative work based on "JDK version 1.0 alpha 2. and JDK version 1.0.2 and other previous versions of the JDK, including third party computer programs incorporated therein. Id. Lastly, Sun submits a certificate of registration for JDK 1.1.3 (No. TX 4-468-509), which also discloses that it was based on previous versions of the JDK and incorporates third party computer programs. See Crean 2/26/99 Reply Decl. Ex. F. Sun's certificates of copyright registration raise a rebuttable presumption that Sun owns valid copyrights in the JDK computer program. 17 U.S.C. § 410(c), Entertainment Research v. Genesis Creative Group, 122 F.3d 1211, 1217 (9th Cir. 1997). The burden, therefore, shifts to Microsoft to prove that Sun's copyrights are invalid. Entertainment Research, 122 F.3d at 1217 (citing Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 668 (3rd Cir. 1990)). To rebut the presumption, Microsoft must "simply offer some evidence or proof to dispute or deny [Sun's] prima facie case." Id. (citations omitted). Microsoft appears to argue that the statements in the Sun's copyright registration certificates as to the inclusion of third party code in the computer programs embodying Sun's JDK rebut the presumption that such computer programs are original to Sun. However, as Microsoft correctly notes, a certificate of registration is prima facie evidence as to the facts stated in the certificate. Therefore, by its copyright registration certificates, Sun has established prima facie that portions of the JDK are original to Sun, while other portions are unoriginal to Sun. See Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997) (rejecting challenge to validity of copyrights where defendant "presented no evidence that [plaintiff's] software is entirely unoriginal").
Microsoft contends that under a proper comparison there is no substantial similarity between Sun's copyrighted computer program code embodying the Java Technology and its accused code. For example, Microsoft asserts that Sun's comparison included unprotectable third-party code. Microsoft also argues that many alleged similarities result from programming conventions and the constraints imposed by particular tasks. Copying may be established by direct evidence of actual copying or by circumstantial evidence demonstrating access to the copyrighted work and substantial similarity between the copyrighted work and the accused work. Data East USA, Inc. v. Epyx, Inc., 862 f.2d 204, 206 (9th Cir. 1998). However, even where actual copying is shown, a plaintiff must show the existence of protectable expression and copying of that expression. Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 207-08 (9th Cir. 1989).
For purposes of its motion, Sun primarily relies on Microsoft's alleged copying of the JDK 1.1.3 release. According to Sun, Microsoft downloaded the source code for JDK 1.1.3 "sometime prior to July 1997." Motion at 3; Day 1/27/99 Decl. Ex. 17 (Ellison-Taylor 11/10/98 Depo. at 22:3-20). Microsoft engineers would review the source code and copy into its software products the files, or portions thereof, which Microsoft wished to incorporate. Id. at 24:16-27:1. See also id. at 35:15-18 ("Source code I can say for certain that was copied from Sun's JDK into the Microsoft products would be typically the Java.* and Java source classes."). In addition, Microsoft appears to admit that Internet Explorer 4.0 and 4.01 for the Macintosh contain "class files directly copied from Sun's JDK" and that "hundreds of class files" in those Microsoft products are "identical to Sun's JDK." See Day 1/27/99 Decl. Ex. 16 (Eames 1/14/99 Depo. at 29:12-18, 31:1-32:25, 153:3-17). However, Microsoft submits evidence indicating that it compiled Sun's source code itself and did not copy any object code originating from Sun. See Jager 2/12/99 Decl. 66 4-5.
To simplify matters, Sun relies solely on Microsoft's copying of the program code contained in the java.* class files. Sun's Reply at 6 n.5. Excluding unoriginal source code files, Sun compared the java.* class libraries corresponding to JDK 1.1.3 to Microsoft's Virtual Machine Build 2424. Lanovaz 2/26/99 Reply Decl. 6 10; see also Lanovaz 1/22/99 Decl. 6 8, 20. Among the 640 source code files in the java.* class libraries, Sun's expert identified 318 identical files in Microsoft's Virtual Machine Build 2424. Lanovaz 2/26/99 Reply Decl. 6 10. Microsoft's expert identifies four files in the java.* class libraries, which he contends should be excluded. Lee 2/12/99 Decl. 6 38, Ex. E. Taking these asserted exclusions into account, Sun's expert reran the comparison. Lanovaz 2/26/99 Reply Decl. 6 15. Sun's expert reports that, of the 438 java.* files tested, 317 identical files were found in Microsoft's Virtual Machine Build 2424. Id. Where verbatim or wholesale copying is shown, courts generally presume copying of protectable expression. Triad Sys., 64 F.3d at 1335. Here, Sun has established a prima facie showing that 317 source code files in the java.* directory were copied verbatim into Microsoft's Virtual Machine Build 2424. Therefore, Microsoft must demonstrate that these 317 java.* files do not contain copyrightable subject matter.
Microsoft contends that many files in the java.* class libraries may be unoriginal to Sun. However, Microsoft fails to raise a triable issue of fact as to the whether these files are original to Sun. Microsoft identifies 79 files in the java.* class libraries that bear no indication of the author's name and 72 files identifying the author as "unascribed." See Lee 2/12/99 Decl. 6 40. Microsoft submits that these files were not authored by Sun, since "it is apparently Sun's policy" to list the author's name in source code files authored by Sun employees. Opposition at 10; Lee 2/12/99 Decl. 6 40. However, the evidence submitted by Microsoft establishes no basis for concluding what policies Sun has implemented with respect to the designation of authorship in source code files. Moreover, Sun replies that it has no such policy. See Gosling 2/26/99 Reply Decl. 66 19-27; Kannegaard 2/26/99 Reply Decl. 6 9. Sun also submits evidence demonstrating that the files contested by Microsoft were authored by Sun personnel. Reinhold 2/26/99 Reply Decl. 66 5-9, Exs. A, B; see also Gosling 2/26/99 Reply Decl. 66 19-23.
Microsoft contends that the range of possible expression in the source code for the java.* class libraries is highly constrained by programming conventions and the constraints imposed by the particular task. For example, Microsoft contends that any class files that defines a public interface should be excluded from the analysis since it is "completely determined and mandated by the specifications." Huhns 2/12/99 Decl. 6 30. While Microsoft submits evidence suggesting that Sun's source code embodying the java.* class libraries may deserve "thin" copyright protection due to programming conventions and the constraints imposed by Sun's specifications, it fails to demonstrate that Sun's java.* class libraries are completely devoid of protected expression.1 Accordingly, Microsoft's verbatim copying of these files suffices to establish copying of protected expression. See Apple Computer Inc. v. Microsoft Corp., 35 F.3d 1435, 1444 (9th Cir. 1994) ("when an idea and its expression are indistinguishable, or "merged," the expression will only be protected against nearly identical copying."); see also Atari Games Corp. v. Nintendo of America Inc., 975 F.2d 832, 840 (Fed. Cir. 1992) ("Even for works warranting little copyright protection, verbatim copying is infringement.").
Microsoft contends that Sun's failure to compare the respective object code versions of Sun's JDK 1.1.3 and the various builds of Microsoft's Virtual Machine is fatal to its copyright infringement claim. Microsoft argues that Sun's copyright infringement claim requires assessment of Microsoft's object code that it distributes, rather than human-readable source code. More specifically, Microsoft argues that, because of the nature of compilation, it cannot be assumed that the expression embodied in Sun's source code is preserved in the resulting object code. Microsoft points out that different compilers generate different output from the same source code. Lee 2/12/99 Decl. 6 53. In addition, compilers, says Microsoft, "analyze source code and extract from it the function that the programmer wants the computer to perform." Id. 6 52. For example, comments, variable names and spacing "disappear in the compilation process because they are meaningless to the machine which will be commanded by the object code." Id. 6 50. Microsoft further submits that object code resulting from a particular compiler will often "reflect the creativity of the compiler designer in determining how to optimize the final object code for a given computer system." Id. 6 52. However, Microsoft overlooks that it distributes the actual source code for the java.* classes in its Visual J++ 6.0 and Software Development Kit for JAVA products. See Lanovaz 2/26/99 Reply Decl. 66 25-36. Moreover, Microsoft's distinction between object code and source code is unavailing. While Microsoft submits evidence suggesting that the compilation process either extracts or materially alters some of the expressive components of source code, controlling and persuasive authority appears to treat source code and object code as two different copies or representations of a particular computer program. See Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989) (source and object code are two different "components" of a computer program); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1249 (3rd Cir. 1983) ("[A] computer program, whether in object code or source code, is a 'literary work' and is protected from unauthorized copying, whether from its object code or source code version."); Computer Associates Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 702 (2d Cir. 1992) ("the literal elements of a computer program, i.e., their source and object codes, are subject to copyright protection."); GCA Corp. v. Chance, 217 U.S.P.Q. 718, 720 (N.D. Cal. 1982) ("Because the object code is the encryption of the copyrighted source code, the two are to be treated as one work; therefore, copyright of the source code protects the object code as well."); Data General Corp. v. Grumman Sys. Support Corp., 803 F. Supp. 487 (D. Mass. 1992). The view of the U.S. Copyright Office is inconsistent with the above cited authorities. See Copyright Office, Compendium II of Copyright Office Practices § 321.03 ("The Copyright Office considers source code and object code as two representations of the same computer program. For registration purposes, the claim is in the computer program rather than in any particular representation of the program."). Federal copyright law appears to focus on the "computer program" being the protected work, rather than the source code version. Accordingly, source and object code are merely different copies of the same computer program. The Federal Copyright Act defines a computer program as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result." 17 U.S.C. § 101. A copy under federal copyright law is any fixation of a work "by any method now known or later developed" in a medium "from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." Id. Moreover, even if Microsoft's compiler significantly alters the expression contained in Sun's source code, Microsoft's resulting object code constitutes an infringing derivative work. In other words, through the compilation process, Microsoft has translated the source code into one of many possible forms executable by a computer. See 17 U.S.C. § 101 (translations are derivative works). While Microsoft submits expert declarations suggesting that compilers alter or extract from source code expression at the lowest levels of abstraction, it fails to demonstrate that no protectable expression at higher levels of abstraction code migrates into the resulting object code. See Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir. 1984) (infringing derivative work must incorporate the copyrighted work in some form and must be substantially similar thereto); Micro Star v. Formgen, Inc. 154 F.3d 1107, 1112 (9th Cir. 1998).
Microsoft contends that is distribution of Sun's copyrighted code is licensed and that the compatibility obligations set forth in section 2.6 of the TLDA are merely covenants, the breach of which do not support Sun's claim for copyright infringement. A licensee infringes the licensor's copyright if it exceeds the scope of the license. S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th Cir. 1989). "[C]opyright licenses are assumed to prohibit any use not authorized." Id. at 1088. Therefore, the affirmative grants and express limitations thereof contained in the TLDA determine the scope of Microsoft's license. See Cohen v. Paramount Pictures Corp., 845 F.2d 851, 853-54 (9th Cir. 1988) ("[A copyright] license must be construed in accordance with the purpose underlying federal copyright law."); Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505, 511 (9th Cir. 1985). A licensee's breach of an independent covenant, however, does not support a claim for copyright infringement. See Effects Associates, Inc., v. Cohen, 908 F.2d 555, 559 (9th Cir. 1990); Graham v. James 144 F.3d 229, 236 (2d Cir. 1998); Fantastic Fakes Inc. v. Pickwick Int'l, Inc., 661 F.2d 479 (5th Cir. 1981). The parties agree that present issue distills down to whether the compatibility provisions set forth in section 2.6 of Article 2.0 entitled "LICENSE GRANTS" limit the scope of the licenses granted in the TLDA or operate as covenants independent from these grants. The authorities cited by Sun and Microsoft provide little guidance as to whether a particular provision in a license agreement should be interpreted as a limitation on the scope of the license grant or as a covenant independent of such grant. Fantastic Fakes, upon which Microsoft heavily relies, involved the issue of whether a provision relating to the affixation of a copyright notice was a condition precedent to the license grants or an independent covenant.2 See 661 F.2d at 483. Similarly, Gilliam v. American Broadcasting Co., 538 F.2d 14 (2d Cir. 1976), Sun's "leading case," contains no discussion of the present issue. Rather, Gilliam appears to conclude without discussion that the contractual provisions at issue limit the scope of the license grants. A review of the relevant authorities suggests that a provision in a copyright license agreement limits the scope of the license grant, where it directly relates to the nature of the licensee's use of the copyrighted work as contemplated by the agreement. See Oddo v. Ries, 743 F.2d 630, 634 (9th Cir. 1984) (publication of article in a different manuscript exceeded scope of implied license); Gilliam, 538 F.2d at 21 (substantial revisions to script exceeded limited editing rights). On the other hand, provisions contained in a copyright license agreement which are ancillary or do not directly relate to the nature of the licensee's use of the copyrighted work are generally interpreted as covenants. Graham, 144 F.3d at 237 (treating royalty payment and notice of authorship as covenants); Fantastic Fakes, 661 F.2d at 483 (holding that copyright notice provision was an independent covenant rather than a condition precedent). In the present case, the compatibility provisions of section 2.6 further define the scope of the licenses granted in the TLDA, since they directly relate to the nature of Microsoft's use and distribution of Sun's Java Technology as contemplated by the parties. The TLDA grant to Microsoft a license to develop derivative works of Sun's Java Technology for the limited purpose of creating "Products." See TLDA § 2.1(a) ([Sun grants to Microsoft a license] "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."); see also TLDA § 2.1(b). The TLDA separately grants Microsoft the limited right to distribute the "Technology and Derivative Work thereof" only "as part of a Product or an upgrade to a Product." TLDA § 2.2(a), (b). Section 2.6 sets forth a procedure for validating that the "Products" which Microsoft distributes pass Sun's test suites. Additionally, section 2.6 evidences Microsoft's express agreement to certain limits on the scope of its distribution right. See TLDA § 2.6(a)(vi) ("Licensee agrees that any new version of a Product that Licensee makes commercially available to the public after the most recent Compatibility Date shall only includes the corresponding Compatible Implementation (subject to Licensee's right to exclude the corresponding Compatible Implementation (subject to Licensee's right to exclude the Supplemental Java Classes pursuant to Section 2.7); provided, that any version of a Product which, as of such Compatibility Date, is being beta tested by third parties, shall be exempt from such requirement."). The court's interpretation is consistent with the stated purpose and the entirety of the TLDA. See TLDA Recitals ("SUN wishes to license its JAVA technology, while maintaining compatibility among JAVA language based products."). Additionally, review of the TLDA as a whole reveals that the compatibility provisions set forth in section 2.6 are the main focus of the TLDA. Microsoft's extrinsic evidence does not render the TLDA reasonably susceptible to its interpretation and, therefore, fails to raise a triable issue of fact. Microsoft relies on the drafting history of the TLDA to demonstrate that it rejected Sun's attempts to place conditions precedent on the license grants of the TLDA. Its alleged rejection of Sun's proposed conditions precedent to the TLDA's license grants, however, does not warrant the conclusion that section 2.6(a)(vi) does not operate to limit the scope of the licenses.
In light of the foregoing, the court tentatively grants Sun's motion for summary judgment of copyright infringement and denies Microsoft's motion for summary judgment regarding Sun's copyright infringement claim. In addition, the court denies Microsoft's request under Rule 56(f) of the Federal Rules of Civil Procedure, since no showing has been made that evidence exists that would prevent summary judgment. Oral argument is set for June 24, 1999 at 2:00 p.m. The court emphasizes that the foregoing ruling and supporting reasoning is only tentative. The court expects each party to identify the problems it perceives in the reasoning set forth in the present order. In addition, the parties shall address the following questions at oral argument:
FOOTNOTES 1 Moreover, Sun submits evidence that its java.* classes may be implemented without even approximating the degree of literal similarity found in Microsoft's source code. See Lanovaz 2/26/99 Reply Decl. 66 38-46, 47-63; see also Day 2/26/99 Reply Decl. Ex. 50 (Finger 2/18/99 Depo. at 50-51). back to text 2 Moreover, Fantastic Fakes is distinguishable from the present case, since the copyright notice provision was a minor aspect to the agreement. Here, the TLDA's compatibility provisions are a material and central aspect of the parties' negotiations and the agreement. back to text *As used on this web site, the terms "Java virtual machine" or "JVM" mean a virtual machine for the Java platform. |