DAY CASEBEER MADRID
WINTERS & BATCHELDER LLP
Lloyd R. Day, Jr. (90875)
Vernon M. Winters (130128)
James R. Batchelder (136347)
David J. Estrada (168105)
Robert M. Galvin (171508)
Julie S. Turner (191146)
20400 Stevens Creek Boulevard, Suite 750
Cupertino, CA 95014
(408) 255-3255

COOLEY GODWARD LLP
Janet L. Cullum (104336)
Five Palo Alto Square, 3000 El Camino Real
Palo Alto, CA 94306-2155
(650) 843-5000

Attorneys for Plaintiff
SUN MICROSYSTEMS, INC.

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

Amidst the sound and fury of Microsoft's opposition to Sun's motion for summary judgment regarding copyright infringement, Microsoft's silence on several key points is striking. Microsoft does not contest that it directly and literally copied source code from Sun's JDK. It does not contest that products like Internet Explorer 4.0 (IE 4.0) and Windows 98 contain object code compiled from source code copied or derived from Sun's JDK, or that products like SDKJ 3.0 and Visual J++ 6.0 also contain literal copies of Sun's source code. Nor does it contest that the products it distributed failed Sun's JCK 1.1a test suite. Microsoft also does not contend that it independently developed the source code contained or used in the products at issue.

Unable to contest its massive, literal copying of Sun's JDK, Microsoft throws up a series of legal arguments and defenses that are flawed as a matter of law and fail to demonstrate any genuine issue of material fact.

Microsoft argues that Sun has not met its burden of proof because Sun's code comparison allegedly included unprotectable and unoriginal elements. Given the wholesale copying of source code from Sun's JDK, particularly the source code for Sun's java.* class libraries, it is beyond genuine dispute that a substantial amount of protected expression was copied, regardless of the precise number of files and lines. Sun's analysis of copied material was very conservative by design, focusing only on identical code, precisely to eliminate all room for dispute. Even if all of the particular files identified by Microsoft's experts were excluded, Sun's showing still demonstrates that a substantial number of source code files in the java.* class libraries were literally and completely copied by Microsoft. At best, Microsoft has shown that some of the copied source code may not be protectable expression. It has failed to demonstrate, however, that none of the copied source code is protectable. Sun, in contrast, has submitted irrefutable evidence that its JDK source code contains extensive protectable expression, and that this expression was substantially and literally copied by Microsoft. Moreover, because the scope of expression protected by Sun's copyrights is a legal issue for the Court's determination, Microsoft's arguments should be resolved as a matter of law.

Microsoft's remaining legal arguments are similarly without merit. Microsoft attempts to argue that by translating Sun's source code into object code it places itself beyond the reach of the copyright law, because its mechanically translated object code is different from Sun's source code. Not only does this argument defy common sense, it contradicts well-established law. As for Microsoft's argument that its distribution of incompatible products is licensed under the TLDA, this argument has been twice rejected before and should be rejected again with finality.

Microsoft fails to demonstrate any genuine issue of material fact precluding summary judgment. Sun's motion for summary judgment of copyright infringement should be granted.

2. Microsoft Has Not Rebutted The Presumption That Sun's Copyrights In The JDK Are Valid

To establish copyright infringement, Sun must show "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); see also Triad Sys. Corp. v. Southeastern Exp. Co., 64 F.3d 1330, 1335 (9^th Cir. 1995).

There is no genuine dispute as to ownership. Microsoft does not contest that Sun has certificates of registration for its JDK computer program. See Sun's Statement of Undisputed Facts. The certificates of registration create a presumption of validity and constitute prima facie evidence of originality. See 17 U.S.C. § 410(c); Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9^th Cir. 1989). "At this juncture, it is incumbent upon a putative infringer to establish that the work in which copyright is claimed is unprotectable (for lack of originality) or, more specifically, to prove that the portion of the copyrighted work actually taken is unworthy of copyright protection." Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11^th Cir. 1996); see CMM Cable Rep, Inc. v. Ocean Coast Properties, Inc., 97 F.3d 1504, 1513 (1^st Cir. 1996).

Microsoft attempts to make its required showing by alleging that some of the files in the JDK contain unoriginal code, and that Sun's source code does not contain protectable expression. Microsoft fails as a matter of law to show that Sun's copyrights are invalid because it does not offer any evidence that all of the files in the JDK are not original to Sun. See Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997) (rejecting challenge to validity of copyright where defendant "presented no evidence that Fonar's software is entirely unoriginal") (emphasis added). And while Microsoft's arguments regarding the scope of protectable expression are relevant to copying, they are not relevant to the validity of Sun's copyrights. Apple Computer, Inc. v. Microsoft Corp., 759 F. Supp. 144, 1456 (N.D. Cal.), aff'd, 35 F.3d 1435 (9^th Cir. 1994). Summary judgment regarding validity is therefore appropriate. See Adobe Sys. Inc. v Southern Software Inc., 45 U.S.P.Q.2d 1827, 1830 n.6 (N.D. Cal. 1998).

1. Microsoft Fails To Demonstrate A Triable Issue Of Fact Regarding Originality Of Expression In Sun's JDK.

Microsoft attempts to challenge the originality of the expression contained in Sun's JDK by arguing that some of the source code contained in the JDK was authored by third parties and that some of the files are "identical or virtually identical to each other." See Opp. at 10-11.

"Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Feist, 499 U.S. at 345. "[T]he requisite level of creativity is extremely low . . . . The vast majority of works make the grade quite easily, as they possess some creative spark, no matter how crude, humble or obvious it might be." Id.

Sun does not deny that the JDK contains source code authored by third parties. In fact, Sun told the Copyright Office about the presence of third-party code in the JDK. See Reply Crean Decl., ¶¶ 6-7. As this Court previously observed, "Microsoft cites no authority indicating that the acknowledged presence of third-party code in copyrighted software is sufficient to rebut the presumption of validity." Sun Microsystems, Inc. v. Microsoft Corp., 21 F. Supp. 2d 1109, 1119 (N.D. Cal. 1998); see also Synercom Tech., Inc. v. University Computing Co., 462 F. Supp. 1003, 1009-10 (N.D. Tex. 1978) (rejecting claim that copyrights in manuals were invalid because 20-30% of the text was not original by explaining that a "copyright is not invalid because some parts of the whole were not independently conceived"); E.F. Johnson Co. v. Uniden Corp., 623 F. Supp. 1485, 1499-1500 (D. Minn. 1985) (compilation of preexisting data tables in computer program protected). In fact, the copyright law expressly recognizes that derivative works and compilations can be entitled to copyright protection, even though they contain unoriginal material. See 17 U.S.C. § 103; see also Feist, 499 U.S. at 350-51. Microsoft, therefore, has not offered sufficient evidence to rebut the presumption that Sun's JDK contains original expression.

2. Microsoft Fails To Demonstrate A Triable Issue Of Fact Regarding Copyrightability Based On Programming Conventions Or Other Constraints.

Microsoft also argues that expression contained in the copied JDK source code files is not protectable because these files contain unprotectable ideas, scenes a faire, or expressions which have merged with or are indistinguishable from unprotectable functions or ideas. See Opp. at 5-7. These defenses, however, are only relevant to the copying inquiry, not copyrightability, and are therefore addressed in the following section. See Apple Computer, 759 F. Supp. at 1456; Nimmer & Nimmer, Nimmer on Copyright § 13.03[B][3] (1999).

3. Microsoft Copied Protectable Expression From The Source Code Of Sun's JDK.

1. Based on Microsoft's Undisputed Massive, Literal Copying Of Sun's Source Code, Copying Of Protectable Expression Should Be Presumed.

This case is somewhat unusual because there is uncontradicted, direct evidence of literal copying. See Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp. 1127, 1135 (N.D. Cal. 1986); see also Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 813 (1^st Cir. 1995). It is therefore unnecessary to apply the standard test for circumstantial evidence of copying, which requires showing defendant's access to the copyrighted work and substantial similarity of the general ideas and expression of the copyrighted work. See Broderbund Software, 648 F. Supp. at 1135. Copying here has been shown as a matter of law.

Given the massive extent of Microsoft's literal copying, Sun has limited its showing to only the most obvious, egregious copying — literal identity -- in order to avoid potential factual disputes. Contrary to Microsoft's suggestion, the conservative analysis upon which Sun relies significantly understates the scope of Microsoft's infringement because it focuses on only the most slavish, indisputable form of copying. Reply Gosling Decl., ¶¶ 32-44. It also ignores for present purposes the extent to which Microsoft has copied or derived its code from Sun's other copyrighted expression, such as Sun's specifications.

It is beyond any genuine dispute that Microsoft's copying constitutes a massive duplication of the source code for Sun's java.* class libraries. Even if all of the specific files identified by Microsoft as containing some evidence of third-party authorship or potential computer generation are excluded (see infra p. 6), 438 files remain for which a corresponding file was compared, and a total of 407 files (93%) are either identical (317 files), contain trivial differences (26 files), or contain less than 10% lines of different code (64 files). Reply Lanovaz Decl., ¶ 14. Excluding all of the above mentioned files, 83,676 lines of source code for the java.* class libraries in build 2424 of the Microsoft VM (Windows 98) are identical to the source code contained in Sun's JDK 1.1.3. Id. A printout of these identical lines would span 1,000 to 2,000 pages. Reply Gosling Decl., ¶ 29. Since the entire java.* class libraries in JDK 1.1.3 consists of only 640 source code files, approximately 50% of Sun's files were identically copied by Microsoft into the source code for build 2424 without changing a single line of code. Reply Lanovaz Decl., ¶ 14.

In such cases of wholesale copying, courts have presumed copying of protectable expression. Triad Sys., 64 F.3d at 1335; Broderbund Software, 648 F. Supp. at 1135; see also Dynamic Microprocessor Assocs. v. EKD Computer Sales & Supplies Corp., 1997 WL 231496 at * 12 (E.D.N.Y. 1997). The reason is simple. If the computer program is presumed to contain some protectable expression based on the presumption of validity, it is reasonable to presume that literal copying on such a massive scale will necessarily copy portions containing protectable expression. On the record before this Court, it is more than reasonable to presume that Microsoft's wholesale copying of Sun's java.* class libraries included protectable expression.

Even if all possible inferences were made in Microsoft's favor, at best, Microsoft has shown only that some of the source code contained in Sun's JDK may not be protectable. It has not shown that none of the 317 files or 83,676 lines of code identically copied from Sun's java.* class libraries contain protectable expression.

2. Microsoft Has Not Demonstrated The Existence Of A Triable Issue Of Material Fact Regarding Its Copying Of Protected Expression.

Microsoft argues summary judgment should be denied because Sun allegedly has not shown that Microsoft copied original, protectable expression. Given Microsoft's massive copying, however, there is no genuine issue of fact because Microsoft has failed to submit evidence indicating that all of the material it copied was unoriginal or unprotectable.

Microsoft nonetheless asks the Court to use analytic dissection to define the scope of protectable expression contained in Sun's JDK. See Opp. at 5. To the extent the Court determines that it must weigh the evidence submitted by the parties on this issue, the scope of Sun's protected expression is an issue of law for the Court to decide, not a jury. As the Ninth Circuit has explained, "Using analytic dissection, and if necessary, expert testimony, the court must determine whether any of the allegedly similar features are protected by copyright." Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9^th Cir. 1994) (emphasis added); see also Adobe Sys., 45 U.S.P.Q.2d at 1830 n.6. Thus, summary judgment would still be appropriate.

1. Microsoft copied expression original to Sun.

In the analysis submitted in support of its motion, Sun purposefully took a very conservative approach and attempted to exclude from its copyright analysis any file that may contain some code authored by third parties, even though many of the excluded files likely contain Sun protectable expression. See 1/22/99 Lanovaz Decl. ¶ 17. Microsoft's expert has identified four out of 640 source code files in the java.* class libraries that he says should have been excluded because they contain a third-party copyright notice or a statement that the file was "inspired" by a third-party computer program. See 2/11/99 Lee Decl., ¶¶ 37-38 & Ex. E. As shown above, even if these four files are excluded from the analysis, 317 identically copied files and over 83,000 lines of identically copied code from the java.* class libraries remain. Reply Lanovaz Decl., ¶ 14.

Microsoft also has identified in the java.* class libraries 79 source code files that do not indicate the author's name and 72 files that identify the author as "unascribed." See 2/11/99 Lee Decl., ¶ 40; Reply Lanovaz Decl., ¶ 18. Asserting that "it is apparently Sun's policy" to list the author's name in source code files authored by Sun personnel, Microsoft contends these files may have been written by third parties and are therefore not original to Sun. Opp. at 10. Microsoft's conclusory allegation is insufficient as a matter of law because Microsoft has not demonstrated that these files were copied from another's work. North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9^th Cir. 1992).

Nonetheless, Sun has submitted evidence demonstrating beyond dispute what the law requires this Court to presume -- that Sun personnel are the original authors of the vast majority of source code contained in the JDK, including the files listed without an author's name or as "unascribed." Reply Gosling Decl., ¶¶ 16-20; Reply Kannegaard Decl., ¶¶ 16, 20. Contrary to Microsoft's unsupported speculation, there is no common practice or procedure within Sun requiring Sun personnel to list their names as authors. Reply Gosling Decl., ¶¶ 19-27. In fact, most Sun engineers refrain from listing themselves as authors in the source code they create, and instead rely upon an automated Source Code Control System ("SCCS") to track such information. Id., ¶¶ 19-23. The data in the SCCS reveals that the files contested by Microsoft were created by Sun personnel. Reply Reinhold Decl., Exhs. A-B. No genuine issue of material fact exists. Microsoft copied expression original to Sun.

2. Microsoft's code is identical to Sun's because it slavishly copied, not because it was constrained to write identical code.

Microsoft argues that "[t]o the extent that similarities between computer programs result from constraints imposed by the nature of the program or programming conventions they are not protected by copyright." Opp. at 11. Microsoft misstates the law. In determining substantial similarity, where there is no evidence of direct copying, courts will analyze whether similarities "flow naturally from basic ideas, or are one of the few ways in which a particular idea can be expressed given the constraints of the computer environment." Apple Computer, 35 F.3d at 1439. Dissection is used in the context of circumstantial evidence of copying to determine whether the similarity of expression results from the "merger" of idea and expression. Id. at 1444. If anyone seeking to copy an unprotectable idea must necessarily use the same or very similar expression, then the expression is said to have merged with the idea, and it, like the idea, is not protectable. Similarly, the closely-related scenes a faire doctrine addresses certain standard features of expression that are recognized or accepted as conventional. Id. When analyzing circumstantial evidence of copying, such features are also excluded from the scope of protectable expression.

The merger and scenes a faire doctrines, however, are only relevant to the copying inquiry, not copyrightability. See Nimmer & Nimmer, supra, § 13.03[B][3]. Moreover, even in those cases where the range of protectable expression is circumscribed by the merger or scenes a faire doctrines, the benefit of copyright protection is not eliminated and still protects against nearly identical copying. Apple Computer, 35 F.3d at 1444; 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.").

Thus, even if the Court were to assume that the possible range of expression for Sun's java.* source code was tightly constrained by Sun's specifications and by programming conventions, Microsoft would still be liable for copyright infringement because it identically copied substantial portions of Sun's copyrighted source code. Microsoft's files are not identical because its independent expression was constrained by Sun's specifications or by programming conventions. Microsoft's code is identical because it slavishly copied Sun's source code. As a matter of law, it is therefore liable for copyright infringement.

Contrary to Microsoft's claim, the identity between Sun's source code and Microsoft's source code for the java.* classes is not "dictated by the Java specifications" and would not "necessarily be found in any Java implementation." Opp. at 11. Microsoft's own 30(b)(6) witness has admitted that he "would not expect the files to be identical," if two programmers were independently asked to write the source code implementing a particular class from the JAVA API specification. Reply Day Decl., Ex. 50 [Finger Tr. at 50-51]. According to Microsoft's witness, one would expect differences in internal implementation details like names of variables, comments, and private methods as well as differences in the actual algorithms used to implement the functionality described in the specification. Id. [Finger Tr. at 51-55]

In fact, when the source code for an implementation of portions of the java.* class libraries developed by an independent third party, which purports to have implemented the specifications, but not copied Sun's source code, is compared with Microsoft's copied source code, the difference is striking. While 317 Microsoft files and 83,676 Microsoft lines are identical – in every respect – to Sun's JDK 1.1.3, none of the files and only 4,860 lines are identical to Sun's JDK 1.1.3 in Transvirtual's implementation of the java.* libraries. Reply Lanovaz Decl., ¶ 39. Microsoft's unsubstantiated assertion that any implementation of the java.* classes would necessarily contain the identical source code found in Sun's JDK is just that – unsubstantiated. See Reply Gosling Decl., ¶¶ 37-58. The preposterous notion floated by Microsoft's two "experts" that any implementation would necessarily be identical is belied by the identity of expressive differences found in different implementations of the class libraries. Reply Gosling Decl., ¶¶ 37-58.

"Computer programming is a highly creative and individualistic endeavor. A court should not be led by defense counsel to believe that complex programs consist only of commonly known techniques and materials strung together without significant originality or skill." Nimmer & Nimmer, supra, § 13.03[F][3][e]. Examination of even the most highly constrained portions of source code copied by Microsoft reveals a wide variety of alternative ways in which the code can be expressed, indicating significant originality, creativity and expressive choices. Reply Gosling Decl., ¶¶ 43-58; Reply Lanovaz Decl., ¶¶ 46-62. See Cybermedia, Inc. v. Symantec Corp., 19 F. Supp. 2d 1070, 1077 (N.D. Cal. 1998)(basing finding of copyright infringement on fact that "hundreds" of code lines "could have been written differently, even as constrained by functional necessity and the use of common programming tools"); Adobe Sys., 45 U.S.P.Q.2d at 1831-32 ("That some creativity is involved is illustrated by the fact that two independently working programmers using the same data and same tools can produce an indistinguishable output but will have few points in common."). Even Microsoft's own 30(b)(6) witness has conceded that the copied source code in the java.* class libraries contain creative and expressive choices. Reply Day Decl., Ex. 50 [Finger Tr. at 56-57].

3. Microsoft Cannot Escape Liability For Copyright Infringement By Arguing That Its Products, As A Whole, Are Substantially Different Than Sun's JDK.

Microsoft claims summary judgment should be denied because "Microsoft has submitted two expert opinions that there is no substantial similarity of protected expression between Sun's JDK and Microsoft's products." Opp. at 1. Microsoft's expert opinions on this point, however, are legally irrelevant because they are based on a flawed comparison.

Both of Microsoft's experts base their opinion on alleged differences between the programs as a whole. See 2/11/99 Lee Decl., ¶ 4(a) ("I have personal experience using both Sun's JDK and Microsoft's Java implementations. The two programs have significantly different characteristics and perform substantially differently."); 2/11/99 Huhns Decl., ¶ 5 ("Based on my personal experience using both Sun's JDK and Microsoft's Java implementations, I believe the two products have significantly different characteristics and perform substantially differently . . . . This indicates to me that the source code of the two products on the whole is substantially different.").

The fact, however, that there may be differences in portions of Microsoft's products that it did not copy is irrelevant. "No plagarist can excuse the wrong by showing how much of his work he did not pirate." Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936). In Harper & Row Publishers, Inc. v. Nation Enter., 471 U.S. 539, 565 (1985), the Supreme Court rejected a similar argument raised by a defendant who published a 2,250 word article containing only 300 copied words, explaining that "a taking may not be excused merely because it is insubstantial with respect to the infringing work." The Supreme Court further observed:

[T]he fact that a substantial portion of the infringing work was copied verbatim is evidence of the qualitative value of the copied material, both to the originator and to the plagarist who seeks to profit from marketing someone else's copyrighted expression.

Here, applying even the most conservative analysis, it is beyond dispute that Microsoft literally copied the majority of source code for the java.* class libraries. Reply Lanovaz Decl., ¶¶ 5-6, 14. It is also beyond genuine dispute that the java.* class libraries are an essential component of the JDK and Sun's JAVA technology. The java.* class libraries contain application programming interfaces and classes that provide critical functionality for every program written using the JAVA programming language. Reply Gosling Decl., ¶¶ 10-15, 30-31.

Given the massive amount of literal copying, and the qualitative importance of the copied code, it cannot credibly be argued that Microsoft's copying was de minimis. See Harper & Row, 471 U.S. at 565; Roy Export Co. v. Columbia Broad. Sys., Inc., 503 F. Supp. 1137, 1145 (S.D.N.Y. 1980) (taking 55 seconds out of 1 hour and 29-minute film deemed qualitatively substantial) aff'd, 672 F.2d 1095 (2d Cir. 1982). Even in cases where only a relatively small percentage of the lines of program code are copied, the copying has been found not to be de minimis where the copied code is essential to the functioning of the program. See Cybermedia, 19 F. Supp. 2d at 1077-78; see also Apple Computer, Inc. v. Microsoft Corp., 821 F. Supp. 616, 624 (N.D. Cal. 1993) (stating that "quantitatively insignificant infringement may be substantial if the material is qualitatively important to plaintiff's work"), aff'd, 35 F.3d 1435 (9^th Cir. 1994).

4. The Fact That Microsoft Distributes Some Of Its Copied Code As Object Code Is Irrelevant.

Even though Microsoft copied Sun's source code, compiled that copied code, and distributed the resulting object code in its products, Microsoft contends summary judgment of copyright infringement must be denied because Microsoft's object code is purportedly different than Sun's source code and object code. Microsoft's arguments are irrelevant as a matter of law.

1. The distinction Microsoft makes between source code and object code ignores the fact that Microsoft actually distributes Sun source code for the java.* class libraries in its Visual J++ 6.0 and SDKJ tool products.

Microsoft's opposition and experts incorrectly assume that Microsoft only distributes object code in its products. See Opp. at 13. Perhaps they should look at Microsoft's products before making such assertions. Microsoft's software development tools, Visual J++ 6.0 and Software Development Kit for JAVA ("SDKJ"), contain a debugging tool which allows a user to view the actual source code for java.* classes that Microsoft copied from Sun. Reply Lanovaz Decl., ¶¶ 24-36. Every copy of Visual J++ 6.0 and SDKJ therefore contains a copy of Sun's source code for java.* classes, including the comments added by Sun programmers. Id., ¶ 24. Since Microsoft's tools products actually contain source code files, not just object code files, copied from Sun, Microsoft's object code argument has no application to Visual J++ 6.0 or SDKJ 2.0 and 3.0.

2. Sun's copyrights in the JDK computer program protect both source code and object code.

"[A] computer program, whether in object code or source code, is a 'literary work' and is protected from unauthorized copying, whether from its object or source code version." Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1249 (3d Cir. 1983); see also Johnson Controls, 886 F.2d at 1175; 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 treated as one work; therefore, copyright of the source code protects the object code as well.")

Microsoft contends that its implementation of the JAVA compiler generates different output than Sun's implementation. See Opp. at 13. Even assuming that this is the case, it proves nothing of relevance. Sun's copyrights in the JDK computer program protect all tangible forms in which that computer program may be expressed, including both source code and object code. The fact that Microsoft's compiler produces output different than Sun's compiler is of no consequence. If Sun's JDK source code were compiled using Microsoft's JAVA compiler, the object code files would be identical to Microsoft's object code. Reply Lanovaz Decl., ¶ 17.

Microsoft's entire argument is premised on the faulty assumption that different compilers should be used before comparing the resulting object code. Nothing in the law requires that such a skewed comparison be made. Sun's copyrights protect every object code copy of the JDK program, regardless which particular compiler is used. See Data General Corp. v. Grumman Sys. Support Corp., 803 F. Supp. 487 (D. Mass. 1992) (holding plaintiff can show infringement based on either the source code or the object code representation).

3. Because Microsoft's object code files are a mechanical translation of Sun's source code files, they are derivative works which infringe Sun's copyrights.

Even if Microsoft's object code were not treated as an identical copy of Sun's registered work, Microsoft's argument ignores that its compiled object code is simply a translation of Sun's copyrighted source code. Translations are derivative works, which are actionable if not authorized by the copyright holder. See 17 U.S.C. § 101; Nimmer & Nimmer, supra, § 2.04 n. 30.1. An infringer who distributes a translated work is liable for infringing any copyrights in both the underlying work and any derivative translation. See, e.g., Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1111-12 (1^st Cir. 1993) (copying of unregistered Cambodian translation of Chinese television program infringes copyrights in underlying Chinese program).

Certainly a Chinese translation of Gone with the Wind will look, on its face, very different than the original text. An infringer, however, does not escape liability by simply translating the work into a different language. See Synercom Tech., 462 F. Supp. at 1013 n.5 ("[I]t is as clear an infringement to translate a computer program from, for example, FORTRAN to ALGOL, as it is to translate a novel or play from English to French.") Here, Microsoft used source code copied from Sun as the input for its compiled code. Sun's copyrighted source code was then mechanically translated into a different format. As a matter of law, this mechanical translation is insufficient to shield Microsoft from liability for copyright infringement. Cf. Kalem Co. v. Harper Bros., 222 U.S. 55, 61 (1911) (holding reproduction of copyrighted story by moving pictures constituted copyright infringement because the "essence of the matter . . . is not the mechanism employed, but that we see the event or story lived"). If Microsoft's position were correct, then an infringer would be free to steal a copy of the source code for a computer program, compile the code using a different compiler, and distribute copies of the compiled code around the world. The Court should not construe the law in a way that leads to such an absurd result.

4. Microsoft's 30(b)(6) designee admitted that Microsoft's Internet Explorer for the Macintosh operating system contained object code files directly copied from Sun.

In its opposition, Microsoft claims Sun's contentions regarding IE 4.0 and 4.01 for the Macintosh "are based upon a misunderstanding of second hand information taken in a deposition." Opp. at 13. However, Sun's assertion that Microsoft's IE 4.0 and 4.01 for Macintosh contained object code files copied directly from Sun's JDK was based upon the sworn testimony of the lead Microsoft software developer who worked on the project, whom Microsoft had designated to testify as its corporate representative regarding the JDK. See 1/27/99 Corrected Day Decl., Ex. 16 (Eames Tr. at 78, 153). Mr. Eames testified that Internet Explorer for the Macintosh contained binary "class files copied directly from Sun's JDK." Id. (Eames Tr. at 153).

With its opposition, however, Microsoft submitted a declaration from another Microsoft employee which directly contradicted Mr. Eames's 30(b)(6) testimony. Jager Decl., ¶¶ 4-5. And one month after the completion of the deposition, Microsoft submitted a "correction" sheet for the deposition of Mr. Eames which contained 15 substantive changes to his testimony, all of which contradict his prior sworn testimony. Reply Day Decl., Ex. 53 (2/17/99 Letter from Anderson to Stiles). Microsoft should not be allowed to avoid summary judgment by rewriting 30(b)(6) testimony that later proves contrary to its litigation position.

Even if Microsoft were allowed to re-write Mr. Eames's testimony, Microsoft does not contest that the source code for IE 4.0 and 4.01 for the Macintosh contains substantial portions of code copied from Sun's JDK. Therefore, summary judgment should be granted.

4. Microsoft's Distribution of Products THAT Failed Sun's Test Suite EXCEEDS the Scope of its License.

Microsoft's opposition raises many of the same arguments addressed in detail in Sun's Opposition to Microsoft's Motion for Partial Summary Judgment Regarding Sun's Copyright Infringement Claim. Rather than repeat the arguments addressed in that briefing, Sun directs the Court to this earlier briefing for a complete statement of Sun's position.

A few points, however, deserve emphasis. First, Microsoft does not contest it is liable for copyright infringement if it exceeds the scope of its license. Second, Microsoft fails to acknowledge that its lead negotiator for the TLDA, Robert Muglia, admitted that "[i]n order for the technology to be licensed under this contract, we need to have run the test suites and passed them." Reply Day Decl., Ex. 2 (Muglia Tr. at 117). Third, Microsoft's proposed construction of the TLDA ignores the fact that the compatibility limitation of section 2.6(a)(vi) is part of the "License Grant" section and fails to interpret and give effect to the contract as a whole.

For the first time, Microsoft's opposition suggests that language in prior drafts of the TLDA supports Microsoft's contention that it is licensed to distribute products that fail Sun's test suite. Opp. at 16. The initial draft of the TLDA did propose conditioning Microsoft's license upon each and every provision of the TLDA. Reply Patch Decl., ¶ 7. This sweeping condition precedent to Microsoft's license was eventually removed. Id., ¶ 9. The removal of a condition precedent to Microsoft's license proves nothing, however, since Sun has never argued that Microsoft's license is conditional. Rather, as Sun has always argued, Microsoft's license is limited to the distribution of compatible Products. As reflected in section 2.6(a)(vi) of the final TLDA, the parties expressly agreed to limit the scope of Microsoft's commercial distribution license to only such Products as incorporate the most current Upgrade of Sun's JAVA technology and pass the compatibility test suite that accompanied it. Id., ¶¶ 10-11. As a result, the negotiation history and draft TLDAs are consistent with Sun's interpretation, not Microsoft's.

Since Microsoft commercially distributed Products that fail Sun's test suite, it acted outside the scope of its license and is liable for copyright infringement. Sun's motion for summary judgment should therefore be granted.