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

1. Introduction

In its Motion for Summary Judgment of Trademark Infringement, Sun presented undisputed evidence showing that Microsoft used Sun’s JAVA COMPATIBLE Logo on products that incorporated the JDK 1.1 Significant Upgrade of Sun’s JAVAÔ technology, but failed to pass the JCK 1.1a test suite that accompanied JDK 1.1. In its Opposition, Microsoft argues that it was authorized to use Sun’s trademark because Sun had breached a provision of the TLDA requiring Upgrades to pass earlier test suites and because Sun’s JCK 1.1a test suite includes tests barred by the TLDA.

Microsoft frames its opposition around three issues:

(1) Is JCK 1.1a the "Relevant Test Suite" for products incorporating the JDK 1.1 Significant Upgrade, or, as Microsoft contends, is JCK 1.0.2a the "Relevant Test Suite?"

(2) Are the JCK 1.1a JNI tests or Signature Test valid under the TLDA?

(3) Has Sun met its burden of proving that Microsoft’s unauthorized use of Sun’s logo has created a likelihood of confusion?

Opp. Memo at 1:11-15.

The answer to the first issue raised by Microsoft is "yes." JCK 1.1a is undisputedly the "Relevant Test Suite" for products implementing JDK 1.1. The definition of "Relevant Test Suite" under the TLDA could not be clearer: it is "the test suite that accompanied the Significant Upgrade" implemented by the product being tested. TLDA §§ 2.6(a)(iv) and (vi). Sun designated the JDK 1.1 Upgrade a Significant Upgrade and the JCK 1.1a test suite is the test suite that accompanied it. Consequently, JCK 1.1a is the Relevant Test Suite. This ineluctable truth would not be altered even if Microsoft’s assertion that Sun had breached TLDA section 2.6(a)(iii) were correct. Indeed, Microsoft’s argument to the contrary is a poorly disguised attempt to circumvent the well-established principle that an alleged breach of contract by the licensor of a trademark does not entitle the licensee to invoke the self-help remedy of trademark infringement.

The answer to the second issue is also "yes." The TLDA unambiguously grants Sun the right to test for the inclusion of its Java Native Interface (JNI) and to ensure through Sun’s Signature Test that Microsoft’s implementation of the java.* classes conforms to Sun’s specification of the AAPI. The TLDA is not reasonably susceptible to the interpretations Microsoft urges. Microsoft’s argument regarding JNI contravenes the express definitions of "AAPI," "Java Test Suite" and "Technology" which clearly permit Sun to test for JNI. Similarly, neither section 2.1, section 2.8, nor the balance of the TLDA supports Microsoft’s argument that it is free to modify the java.* classes and thereby eviscerate the objective of cross-platform compatibility so central to the TLDA.

The answer to Microsoft’s third issue is "yes" as well. Sun has more than met its burden of showing that Microsoft’s unauthorized use of Sun’s JAVA COMPATIBLE Logo has created a likelihood of confusion regarding whether its incompatible products were approved by Sun. Microsoft’s argument amounts to nothing more than a thinly disguised challenge, in violation of the Trademark License, to the validity of Sun’s JAVA COMPATIBLE Logo and Sun’s ownership in the logo. Sun has shown that Microsoft has used Sun’s JAVA COMPATIBLE Logo in connection with IE 4.0 and SDKJ 2.0, two products that do not pass the test suites required for use of the Logo, but which Microsoft advertised as implementing JDK 1.1. Sun has even submitted evidence, not required by law, that programmers associate the logo with Sun and Sun-approved implementations of its JavaÔ technology. Microsoft does not contest these indisputable facts. Rather, it demands evidence of actual confusion, even though the law clearly does not require such evidence.

Microsoft may not use Sun’s Logo, in contravention of its Trademark License, to represent that its products are something they are not. Sun is entitled to summary judgment that Microsoft violated the Lanham Act when it used Sun’s JAVA COMPATIBLE Logo to falsely describe its products and falsely imply that it had received Sun’s approval to do so.

2. Argument
1. JCK 1.1a Is The "Relevant Test Suite" For Microsoft’s Implementation Of JDK 1.1 In Internet Explorer 4.0 And SDKJ 2.0.

Microsoft does not dispute that it incorporated elements of Sun’s JDK 1.1 Upgrade in Internet Explorer 4.0 and the Software Development Kit for Java version 2.0. Microsoft does not dispute that it advertised these products as incorporating JDK 1.1. Ex. 17 (11/17/97 Schroer Decl. Ex. A); Ex. 29. Microsoft does not dispute that these products fail to pass the JCK 1.1a test suite. Microsoft does not dispute that it displayed Sun’s JAVA COMPATIBLE Logo in association with these products. Microsoft does not dispute that when it advertised these products as implementing JDK 1.1, and commercially distributed them displaying Sun’s JAVA COMPATIBLE Logo, it knew that they failed to pass Sun’s JCK 1.1a test suite, and therefore failed to qualify for use of the logo. Nor does Microsoft dispute that it persisted in displaying the logo on these products (see Ex. 29) even after Sun notified Microsoft that its use of the logo was unauthorized and demanded that Microsoft cease. Ex. 43.

Instead, Microsoft argues that its use of Sun’s logo on these JDK 1.1 Products was authorized. Specifically, Microsoft argues that the failure of these products to pass the JCK 1.1a test suite is irrelevant since JCK 1.1a is not the "Relevant Test Suite" for JDK 1.1 Products. According to Microsoft, the JDK 1.1 Upgrade allegedly did not satisfy the testing requirements of section 2.6(a)(iii) and therefore is not a "Significant Upgrade." Microsoft also argues that JCK 1.1a is not "publicly available" and therefore not properly a Java Test Suite. Based on these arguments, Microsoft contends that it is free to incorporate JDK 1.1 into its products, advertise them as compatible with JDK 1.1, and distribute them with the JAVA COMPATIBLE Logo, without having to pass the JCK 1.1a test suite that accompanied JDK 1.1. In other words, Microsoft contends that it may use Sun’s Logo in contravention of its Trademark License to designate its products as something they are not.

Microsoft’s arguments fail under both the plain language of the TLDA and the well-established principles of trademark law.

1. The TLDA Plainly Establishes JCK 1.1a As The "Relevant Test Suite" For Products Implementing JDK 1.1.

Section 2.6(a)(iv) provides:

"Subject to the satisfaction of Section 2.6(a)(iii), Licensee agrees that upon the earlier of (a) six (6) months after the date that SUN delivers to Licensee an Upgrade that SUN designates a significant Upgrade (each, a ‘Significant Upgrade’), or (b) the date that Licensee includes the Significant Upgrade of the Java Reference Implementation in the commercial release of any Product, Licensee shall deliver to SUN, in accordance with the terms of Section 3.3, an upgrade to the Java Reference Implementation (each, a ‘Compatible Implementation’) that passes the test suite that accompanied the Significant Upgrade (a ‘Relevant Test Suite’)." TLDA § 2.6(a)(iv) (emphasis added).

The language of section 2.6(a)(iv) is clear. The TLDA grants Sun the right to designate an Upgrade as a "Significant Upgrade." Sun may do so up to twice a year. TLDA § 2.6(a)(v). When Sun designates a Significant Upgrade, the "Relevant Test Suite" for products incorporating that Significant Upgrade is "the test suite that accompanied the Significant Upgrade." Thereafter, any new Product distributed after the "Compatibility Date" must contain only the "Compatible Implementation" that passes the Relevant Test Suite. TLDA § 2.6(a)(vi).

Microsoft does not dispute that Sun designated JDK 1.1 as a Significant Upgrade. Ex. 2 (1/26/99 Muglia Tr. 246:2-6). Microsoft does not dispute that the JCK 1.1a test suite, which contains many version specific tests. Ex. 12 (2/11/98 Hankinson Decl. ¶ 14); Ex. 11 (11/16/97 Hankinson Decl. ¶¶ 20, 22), accompanied JDK 1.1. Rather, Microsoft relies on the first clause of section 2.6(a)(iv) to argue that the JDK 1.1 Upgrade that Sun designated a "Significant Upgrade" could not have been a "Significant Upgrade" because, Microsoft contends, it did not pass the test suites that accompanied the prior two Upgrades, as required by section 2.6(a)(iii). Microsoft argues that Sun’s alleged breach of section 2.6(a)(iii) entitled Microsoft to ignore Sun’s designation of JDK 1.1 as a Significant Upgrade, incorporate JDK 1.1 into products that do not pass the accompanying test suite, and then distribute those products bearing Sun’s JAVA COMPATIBLE Logo without Sun’s consent.

Microsoft’s argument poses a legal issue: Under the TLDA, what are Microsoft’s remedies if Sun designates as a "Significant Upgrade" an Upgrade that allegedly does not satisfy the requirements of section 2.6(a)(iii)? Microsoft contends that it is entitled to the self-help remedy of infringing Sun’s trademark: Microsoft gets to decide what will be the "Relevant Test Suite" and apply Sun’s JAVA COMPATIBLE Logo in accordance with whatever level of compatibility or incompatibility Microsoft deems appropriate. Microsoft’s position flies in the face of the unambiguous language of the TLDA, its overarching goal of compatibility, and the well-established principles and underlying policies of federal trademark law.

As set forth above, TLDA sections 2.6(a)(iv) and (vi) establish beyond question that the Relevant Test Suite for any given product is "the test suite that accompanied the Significant Upgrade." Microsoft’s contrary interpretation would undermine the TLDA’s express objectives of "maintaining compatibility among JAVA language based products" and "protect[ing] and promot[ing] a compatibility logo used in connection with [Sun’s] JAVA technology." TLDA, First and Second Recital.

Furthermore, under federal trademark law, a breach by Sun would not entitle Microsoft to display Sun’s trademark on its products, thus falsely indicating that those products are approved by Sun as meeting the requirements for use of the logo. In Green River Bottling Co. v. Green River Corp., 997 F.2d 359, 362 (7^th Cir. 1993), the Seventh Circuit held that a breach of contract for the supply of syrup to be distributed under the "Green River" trademark did not give rise to a self-help remedy of use of the trademark on product that did not comport with the trademark owner’s standards. Rather, "If [the trademark owner] broke the contract when it stopped selling the product to Green River Corporation, the latter’s remedy was to sue for breach of contract, not to palm off a different product as the product it could no longer obtain." Id.

The holding in Green River safeguards the public’s interest in having trademarks properly designate origin and correctly describe goods. Permitting a trademark licensee to falsely designate "replacement" products as the real McCoy because the licensor had allegedly breached its agreement would undermine the public’s right to rely on trademarks as an accurate designation of source, sponsorship, or affiliation.

As Green River instructs, confronted with a Significant Upgrade that Microsoft believed did not satisfy section 2.6(a)(iii), Microsoft had two choices: (1) withhold incorporation of the Significant Upgrade into its products and sue Sun for damages; or (2) incorporate the Significant Upgrade into a Compatible Implementation that passed the JCK 1.1a test suite, incorporate that Compatible Implementation into its Products, distribute those Products with the JAVA COMPATIBLE Logo, and sue Sun for any damages arising from the alleged breach. The one choice Microsoft did not have under the TLDA or trademark law was to incorporate JDK 1.1 into its Products in a manner that did not pass the JCK 1.1a test suite, advertise those Products as incorporating JDK 1.1, and then ship those Products with the JAVA COMPATIBLE Logo. But that is exactly what Microsoft did.

JCK 1.1a is the Relevant Test Suite for any Microsoft Product that implements JDK 1.1. Both the TLDA and federal trademark law forbid Microsoft from misbranding its incompatible JDK 1.1 Products with Sun’s JAVA COMPATIBLE Logo.

2. Microsoft’s Argument Regarding The TLDA’s "Publicly Available" Requirement Contradicts Section 2.6(a) Of The TLDA And The Parties’ Course Of Dealing, And Denies All Compatibility Obligations In Connection With Microsoft Products Displaying The JAVA COMPATIBLE Logo.

The TLDA defines "Java Test Suite" and "Java Language Test Suites" in part as "Sun’s publicly available test suites." TLDA §§ 1.13, 1.15. Microsoft argues that there is a disputed factual issue about whether JCK 1.1a is a "publicly available" test suite, and thus whether Microsoft’s JDK 1.1 Products are authorized to bear the JAVA COMPATIBLE Logo without passing the JCK 1.1a test suite. Opp. Memo at 6:7-8. Microsoft claims that the importance of "publicly available" tests was to ensure "that all licensees be held to the same standard." Opp. Memo at 17:15-16. Microsoft asserts that "publicly available" means available for free and without restrictions (Opp. Memo at 6:11-23; 2/12/99 Giannini Decl. Ex. A), and contends that its argument compels the conclusion that JCK 1.0.2a is the Relevant Test Suite for Products implementing JDK 1.1. Opp. Memo at 15:17-18:17.

Microsoft’s interpretation of "publicly available" as "free" and "without restriction" is inconsistent with the restricted license expressly granted to Microsoft in section 2.6(a)(i) and 2.6(b)(i) to make, use and reproduce copies of the test suites for "internal use" only. It is also at odds with the express covenant by Sun to deliver test suites to Microsoft "at no cost." TLDA § 2.6(a)(ii). Microsoft fails to explain why it would have signed a license that restricted its use of the test suites to "internal use" if the test suites were to be available to the rest of the world without restriction. Microsoft also fails to explain why it bargained for the obligation of Sun to deliver the test suites for free if the "publicly available" test suites were to be free to everyone else. If, as Microsoft contends, the test suites were to be freely available without restriction, there would be no reason to provide them to Microsoft "pursuant to the TLDA." TLDA Trademark License § 3. Microsoft’s preferred interpretation is at odds with section 2.6(a)(i) of the TLDA and section 3 of the Trademark License, and renders section 2.6(a)(ii) superfluous.

To the extent there is any ambiguity about the meaning of "publicly available," that ambiguity is removed by the parties’ course of dealing over the term of the contract. See Universal Sales Corp. v. California Press Mfg. Co., 20 Cal. 2d 751, 760 (1942) (in interpreting ambiguous contract, court should give great weight to the parties’ conduct preceding dispute as to contract’s meaning). From the time the parties executed the TLDA, Microsoft accepted and used Sun’s JCT and JCK 1.0.2a test suites, neither of which were freely available without restriction. Microsoft never complained to Sun that these test suites were not "publicly available." Ex. 2 (2/12/98 Muglia Tr. 100:8-101:13). Furthermore, Microsoft accepted and used JCK 1.1a as the Relevant Test Suite on its JDK 1.1-based products, knowing full well that it was not available free to non-licensees. See, e.g., Ex. 5 (confirming that Microsoft knew it had to use the "8600+ tests" of JCK 1.1a). It was only after Microsoft failed Sun’s JCK 1.1a test suites that Microsoft first raised the "publicly available" issue. Ex. 2 (2/12/98 Muglia Tr. 100:8-101:13).

Finally, Microsoft’s assertion that JCK 1.0.2a is the "Relevant Test Suite" defies logic. Sun has never delivered to Microsoft any test suite (including JCK 1.0.2a) that meets Microsoft’s post-litigation definition of "publicly available." 2/26/99 Schroer Decl. ¶ 7-8. Yet, inexplicably, Microsoft argues that JCK 1.0.2a is the Relevant Test Suite for JDK 1.1 Products, even though it too would fail to meet Microsoft’s definition of "publicly available." Consistently applied, Microsoft’s interpretation of "publicly available" would lead to the absurd result that it is under no obligation to pass any test suite in order to display Sun’s JAVA COMPATIBLE Logo. Microsoft’s argument is contradicted by its own course of dealing and is implausible on its face. For these reasons alone it should be rejected.

Microsoft’s position cannot be reconciled with (1) the remainder of the TLDA and the Trademark License, (2) its own course of dealing, or (3) common sense.

2. The TLDA Clearly Authorizes Sun’s JNI Tests And Signature Test.

Microsoft next argues that the failure of its JDK 1.1 Products to pass the JCK 1.1a JNI tests and Signature Test did not render its use of the JAVA COMPATIBLE Logo unauthorized because these tests are invalid under the TLDA. Microsoft is wrong on both counts.

1. Sun May Test For JNI Because It Is A "Public Application Programming Interface" To The "Java Runtime Interpreter."

In support of its contention that Sun’s test suites may not test for JNI, Microsoft asserts the same argument, based on the same extrinsic evidence, that this Court has already twice rejected as contrary to the unambiguous provisions of the TLDA. Sun is entitled to test for JNI because:

1. Sun may test for compliance with Sun’s "specification of the AAPI as of the date of the test suites." TLDA § 1.15.
2. The TLDA defines "AAPI" in part as "the public application programming interface to the Java Applet Environment (JAE) reflected in the Technology as identified in Exhibit A. . ., as modified by Sun during the term of this Agreement." TLDA § 1.1(a).
3. Exhibit A defines "Technology: Java Applet Environment" to include "The Java Runtime Interpreter, which implements the Java Virtual Machine*."
4. The TLDA defines Technology to include "Upgrades" (TLDA § 1.25), and permits Sun to test for the specification of the AAPI implemented in those Upgrades "as of the date of the test suites." TLDA § 1.15.
5. JNI is an upgraded "public application programming interface" to the "Java Runtime Interpreter," as Microsoft now admits. Ex. 2 (2/26/99 Muglia Tr. 167:6-168:9).

Microsoft argues at length that summary judgment is barred by its assertion that the last clause of section 1.1 -- "as modified by SUN during the term of this Agreement" -- only applies to subsection (d) of section 1.1 (the OEM Java API Specification). Opp. Memo at 7-11. Besides being an unreasonable (and incomprehensible) interpretation of section 1.1, this argument is mooted by the dispositive TLDA provisions referenced above, establishing that "Technology" (as used in TLDA Exhibit A) includes "Upgrades" and that Sun is entitled to test for compliance with its specification of the AAPI "as of the date of the test suites." TLDA §§ 1.15, 1.25. See also Ex. 2 (1/26/99 Muglia Tr. 168:10-16; 194:2-12 [confirming that "Technology," as that word is used in TLDA Exhibit A, includes "Upgrades," and that a Sun test suite can test for compliance with Sun’s specifications of the AAPI "as of the date of the Sun test suite in question."]).

The language of the TLDA is clear and is not susceptible to the interpretation Microsoft urges. Accordingly, the extrinsic evidence Microsoft offers to alter the TLDA’s plain meaning is inadmissible. A. Kemp Fisheries, Inc. v. Castle & Cooke, Inc., 852 F.2d 493, 495 (9^th Cir. 1988) (extrinsic evidence inadmissible to prove meaning to which contract is not reasonably susceptible). Sun is entitled to test for compliance with JNI.

1. The Java.* Classes Are Essential For Cross-Platform Compatibility, And Sun’s Signature Test Properly Tests Whether They Are Implemented Without Improper Modification.

The JCK 1.1a "SignatureTest" checks whether the public "java.*" class libraries in a Product implementation conform to Sun’s specified set of public "java.*" class libraries. Any addition, deletion, or modification to the public elements of the specified set of "java" APIs can significantly impair the ability to achieve cross-platform compatible implementations of the JAVA technology. Ex. 33 (11/16/97 Deutsch Decl. ¶ 18); Ex. 11 (11/16/97 Hankinson Decl. ¶ 22).

Microsoft argues that the TLDA should be interpreted as expressly permitting Microsoft to modify the public methods to Sun’s java.* classes, citing sections 2.8(d) and 2.1(a). Opp. Memo at 22:3-10. Neither of these sections supports Microsoft’s interpretation.

Section 2.8 permits Microsoft to create additional classes known as "Value Added Open Packages" so long as Microsoft segregates the classes it creates in a separate directory named "COM.ms.*." TLDA §§ 1.28, 2.8(d). Not only does section 2.8(d) not authorize Microsoft to modify any java.* classes, it expressly prohibits Microsoft from doing so. Section 2.8(d) permits Microsoft to create additional classes so long as those classes are in a COM.ms directory, and are not implemented as modifications of the java.* classes or added into the java.* directory ("shall not modify or extend the names of public class or interface declarations whose names begin with ‘java’"). As this Court previously ruled in response to Microsoft’s identical argument, Microsoft’s interpretation of TLDA section 2.8(d)

Microsoft’s resort to section 2.1 is even less availing, as that section grants Microsoft only internal development rights, not distribution rights. Microsoft’s right to distribute products incorporating the JAVA technology is found in section 2.2, not 2.1. Section 2.2 permits distribution only of "Products," which are required under section 2.6 to have passed Sun’s test suites, including Signature Test.

1. Microsoft Can Offer No Evidence That Would Create A Genuine Issue Of Disputed Fact Regarding Likelihood Of Confusion Where Microsoft Is Branding Its Products With Sun’s Actual JAVA COMPATIBLE Logo.

Microsoft does not dispute that it displayed Sun’s JAVA COMPATIBLE Logo in association with IE 4.0 and SDKJ 2.0, both of which Microsoft trumpeted as implementing JDK 1.1, and neither of which passed the JCK 1.1a test suite. Instead, Microsoft contends that Sun did not meet its burden of establishing a likelihood of confusion because Sun offered no evidence of actual confusion, and because the JAVA COMPATIBLE Logo does not represent Sun’s "approval" in consumers’ eyes. Microsoft’s arguments are meritless.

1. Where A Licensee Uses The Licensed Mark Without Authorization, Confusion Is Inevitable.

Microsoft is using Sun’s JAVA COMPATIBLE Logo without Sun’s authorization. To avoid the legal consequences of this conduct, Microsoft tries to reframe the issue as a factual one in which Sun did not provide evidence of actual consumer confusion, and thus did not establish a likelihood of confusion. Opp. Memo at 23:14-16. To support its proposition that "likelihood of confusion" is predominantly factual in nature, Microsoft cites to a case in which the disputed issue was the similarity between animatrons placed in a "Cheers" bar and the character of "Norm," played by actor George Wendt. Wendt v. Host Int’l, Inc., 125 F.3d 806, 813 (9^th Cir. 1997).

Unlike Wendt, the case at this "bar" does not involve a factual question about the similarity of trademarks. It involves the unauthorized use by Microsoft of Sun’s JAVA COMPATIBLE Logo to indicate that Microsoft’s products are approved by Sun as fulfilling Sun’s requirements for use of the Logo.

Microsoft argues that Sun improperly relies on franchise cases for the proposition that likelihood of confusion is inevitable, because the holding of such cases "is inapplicable here, where the logo in question does not mark the products as belonging to any particular owner." Opp. Memo at 23:16-24:6. Microsoft appears to misunderstand the nature of a franchise relationship, in which the franchisee is the "owner" of the shop and the franchisor serves as a guarantor of the quality associated with its trademarks (and possibly a supplier of the raw goods). See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 3:10-3:11 (1996). For this reason, Sun’s reliance on franchise cases is perfectly appropriate: Sun is licensing its trademark to licensees who include Sun’s JAVA technology in their products and do so according to the standards set forth by Sun. The JAVA COMPATIBLE Logo is the symbol that Sun has approved of the labeled product as complying with its standards.

For the same reason that "common sense compels the conclusion that a strong risk of consumer confusion arises" when a former franchisee illicitly uses the franchisor’s mark (Burger King Corp. v. Mason, 710 F.2d 1480, 1492 (11^th Cir. 1983)), so too does common sense compel the conclusion that Microsoft’s unauthorized use of Sun’s logo gives rise to "a strong risk of consumer confusion" that Microsoft’s products are approved by Sun as meeting its requirements for use of its trademark.

Furthermore, contrary to Microsoft’s argument (Opp. Memo at 22-23), there is no requirement in the Ninth Circuit that a trademark owner offer proof of actual confusion in order to establish the element of likelihood of confusion. "[P]roof of actual confusion is only one factor to be weighed in determining likelihood of confusion." Eclipse Associates, Ltd. v. Data General Corp., 894 F.2d 1114, 1118 (9^th Cir. 1990). "[P]roof of specific instances of actual confusion is unnecessary" in cases involving the same mark displayed on similar goods. Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 159 & n.13 (9^th Cir. 1963). Since actual confusion is not required, the absence of proof of actual confusion does not weigh against a finding of likelihood of confusion. E. & J. Gallo Winery v. Consorzio Del Gallo Nero, 782 F. Supp. 457, 465 (N.D. Cal. 1991). See also 3 McCarthy on Trademarks § 23:12 ("The test of infringement is the likelihood of confusion, not the proof of actual confusion. The plaintiff is not required to prove any instances of actual confusion.") (emphasis in original).

In Eclipse Associates the Ninth Circuit affirmed summary judgment for plaintiff where no evidence of actual confusion was presented, holding that such evidence was unnecessary where the same mark was being used on the same class of goods. 894 F.2d at 1118-19. In Fleischmann Distilling, the Ninth Circuit reversed judgment for defendant, holding that evidence of actual confusion was unnecessary to prove likelihood of confusion where different companies used the same mark on the same category of products. 314 F.2d at 159-61 & n.13. Accord Lane Capital Management, Inc. v. Lane Capital Management, Inc., 15 F. Supp. 2d 389, 398 (S.D.N.Y. 1998) ("[T]he contested corporate names and marks are not merely similar, but identical. . . . This factor alone therefore not only strongly suggests a likelihood of consumer confusion, . . . but that such consumer mistake is inevitable."). Sun is entitled to no lesser finding given Microsoft’s unauthorized display of Sun’s JAVA COMPATIBLE Logo.

2. Microsoft’s Arguments Misstate Trademark Law And Contravene Microsoft’s Trademark License.

Microsoft asserts -- without any evidentiary basis -- that the JAVA COMPATIBLE Logo has no consistent significance, and that Sun has not shown that the logo isn’t viewed "as anything more than an indication that this particular virtual machine will run Java programs." Opp. Memo at 23:8-9. This argument is nothing but a thinly disguised attack on the validity and ownership of Sun’s JAVA COMPATIBLE Logo in direct violation of section 5 of the Trademark License.

First, there is no requirement that an owner of an arbitrary trademark such as Sun’s logo prove any particular or specific "secondary meaning." AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,

349 (9^th Cir. 1979); 1 McCarthy on Trademarks § 11:2. Microsoft’s attempt to raise a dispute over the secondary meaning of the mark is thus misguided and unsupported by law. See Standyne, Inc. v. Lins, 490 F.2d 1396, 1397 (C.C.P.A. 1974) ("we see no question of ‘secondary meaning’ … [where the] mark is an entirely arbitrary, origin-indicating design mark. It was error in our view, to think in terms of ‘secondary’ meaning for such a mark.").

Second, Microsoft’s argument subversively challenges the validity and ownership of Sun’s JAVA COMPATIBLE Logo, in breach of section 5 of the Trademark License:

Microsoft’s attempts to secure for itself the right to define the meaning of Sun’s JAVA COMPATIBLE Logo violates the Trademark License and is impermissible as a matter of law. See Seven-Up Bottling Co. v. Seven-Up Co., 561 F.2d 1275, 1279 (8^th Cir. 1977) (doctrine of licensee estoppel prevents licensee from challenging validity of trademark); Pacific Supply Co-op v. Farmers Union Cent. Exch., Inc., 318 F.2d 894, 908-09 (9^th Cir. 1963) (same); 2 McCarthy on Trademarks § 18.63 (same). At bottom, Microsoft is arguing that Microsoft gets to decide what Sun’s JAVA COMPATIBLE Logo means. Opp. Memo at 23:9. Clearly neither the TLDA nor federal trademark law grant Microsoft this right.

Sun has established a likelihood of confusion based onMicrosoft’s unauthorized display of Sun’s JAVA COMPATIBLELogo on products that do not meet the compatibility requirements setforth by Sun. Microsoft has offered no evidence to create a genuineissue of material fact, nor can it. The Court should find that thereis no genuine dispute of material fact that Microsoft’sintentional, unauthorized display of Sun’s logo was likely to doexactly what Microsoft intended: convey to consumers thatMicrosoft’s products had met with Sun’s approval so as towarrant display of Sun’s JAVA COMPATIBLE Logo.