Sun Cannot Avoid the Plain Language of the TLDA Through Artful Pleading

Suns Proffered "Interpretation" of the Compatibility Requirements as Limitations on Scope Improperly Disregards the Express Terms Agreed to by the Parties

Sun Incorrectly Contends that the Preliminary Injunction Could Be Affirmed Even if the District Court Applied the Wrong Standard

Even if Use of the Copyright Infringement Preliminary Injunction Standard Were Appropriate, the District Court Erred by Failing to Analyze the Claim as Required by Ninth Circuit Law

Sun Incorrectly Contends That Neither Sun Nor the District Court Was Afforded the Opportunity to Address Whether the TLDA Limits the Types of Relief Available

Sun Cannot Circumvent the Requirement That It Prove a Violation Was "Willful and Intentional" in Order to Invoke the Provisions of Section 11.2(b)

Sun Points to No Language in the TLDA That Supports Its Desired Interpretation of Section 2.6(b)(iv)

Suns Claim That Microsoft Must Comply With Statements in the Documentation Accompanying the Java Language Test Suite is Unsupported

Sun Cannot Avoid the Plain Language of the TLDA Through Artful Pleading.
Sun contends that because it styled its preliminary injunction motion as one for copyright infringement, the district court and this Court need not look to the TLDAs license grants to determine whether Suns claim alleges actions outside of the "scope" of the TLDA. See Brief of Appellee at 22. Sun would have this Court instead treat the scope of the licenses in the TLDA as an issue for Sun to unilaterally decide through "artful" pleading. Sun is wrong.

Each party to a license agreement is bound by the written terms and is not free to unilaterally recast them. See United States v. King Features Entertainment, Inc ., 843 F.2d 394, 398-99 (9th Cir. 1988) (disregarding partys subjective belief about the scope of license when grant language was not reasonably susceptible to partys subjective interpretation). The scope of the TLDAs license grants and their relationship to the compatibility requirements must be determined by interpretation of the relevant provisions. See, e.g., Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co. , 145 F.3d 481, 487 (2d Cir. 1998) (using "neutral principles of contract interpretation rather than solicitude for either party" to interpret whether specific terms in grant language included distribution of motion picture in video format).

Before applying the copyright preliminary injunction standard, the district court was obliged to first interpret whether the compatibility requirements in section 2.6 of the TLDA are limitations on the "scope" of its license grants. The district court abused its discretion by simply accepting Suns allegations that the compatibility requirements are limitations on the license grants.

As described in Microsofts opening brief, courts have repeatedly rejected arguments that a claimants choice in pleading controls the question of when claims involving a license agreement implicate the Copyright Act. See, e.g., Video Trip Corp. v. Lightning Video, Inc. , 866 F.2d 50, 52 (2d Cir. 1989); Topolos v. Caldewey , 698 F.2d 991, 993 (9th Cir. 1983). Sun attempts to distinguish this body of case law because the analysis in these cases was conducted in the context of assessing the existence of federal jurisdiction. This attempted distinction ignores the primary message of these cases. There is an "intimate relationship" between cases determining whether a party to a license agreement can assert a copyright claim and cases analyzing whether a federal court has subject matter jurisdiction under the Copyright Act. See Nimmer, supra , 10.15[A] at 10-121 n.5.2. As the Second Circuit in Video Trip explained, the cases "concerned with the question of jurisdiction, involve essentially what we are dealing with here," namely, the question of whether the contract or copyright preliminary injunction standard should apply. Video Trip , 866 F.2d at 52.

Having granted Microsoft a license, Sun is not free to disregard that license and resort directly to a claim for infringement under the Copyright Act. Consequently, the district court erred in simply accepting Suns allegations as determinative of the legal nature of their claim.

Suns Proffered "Interpretation" of the Compatibility Requirements as Limitations on Scope Improperly Disregards the Express Terms Agreed to by the Parties.
Implicitly recognizing that the Court is not bound to accept Suns allegations as binding, Sun argues that the TLDA supports its contentions. However, Sun points to no explicit language in the TLDA that would make Microsofts license disappear if compatibility tests are not passed. Rather, Sun urges the Court to ignore the explicit terms of the license grants and instead adopt a "holistic" approach based on language in the preamble and a sort of gestalt understanding of Suns subjective reasons in entering into the TLDA. See Brief of Appellee at 32-33. Suns arguments are contrary to the express terms of the TLDA, governing law, and the policies underlying the Copyright Act.

Sun Incorrectly Contends that the Preliminary Injunction Could Be Affirmed Even if the District Court Applied the Wrong Standard.
Sun argues in the alternative that even if the district court correctly applied the copyright preliminary injunction standard, the Court could nevertheless affirm because the district court found that the "balance of hardships tips sharply in Suns favor." See Brief of Appellee at 41. What Sun overlooks is that this "balance," which was conducted under the copyright preliminary injunction standard, expressly discounted as a matter of law the potential harm to the defendant. See Order (11/17/98), E.R. 1126-56, at 25. Under this standard, the district court was required to treat the potential harm to Microsoft as "a minor consideration." Id. Under the correct contract preliminary injunction standard, however, the district court would have to give full consideration to the potential harm Microsoft would suffer, and also to the irreparable injury that would result from restraining Microsofts first amendment right to publish software. See, e.g. , Bernstein v. U.S. Dept of State , 922 F. Supp. 1426, 1435-36 (N.D. Cal. 1996).

Even if Use of the Copyright Infringement Preliminary Injunction Standard Were Appropriate, the District Court Erred by Failing to Analyze the Claim as Required by Ninth Circuit Law
Even if the copyright standard were the correct one, the district court erred by ruling that Microsoft failed to rebut the presumption flowing from Suns certificate of copyright registration and by failing to conduct the analysis of Suns infringement claim required by this Court in copyright infringement cases. See Brief of Appellant at 37-38. Sun concedes that its work contained material unoriginal to Sun and, therefore, beyond the scope of its copyright. See Brief of Appellee at 26. The district court erroneously assumed that Sun could meet its burden of demonstrating copying of original, protected expression simply by presenting evidence that some of the source code at issue originated with Sun. See Order (11/17/98) at 14:8-12. This Court has made it clear that a finding of copyright infringement requires more:
Using analytic dissection [U]nprotectable ideas
Apple , 35 F.3d at 1443 (emphasis added). "As we made clear in Aliotti , the party claiming infringement may place no reliance upon any similarity in expression resulting from unprotectable elements." Id. at 1446 (quoting Aliotti v. R. Dakin & Co. , 831 F.2d 898, 901 (9th Cir. 1987) (emphasis in original)). The plaintiffs and defendants works are to be compared as a whole, but unprotectable elements have to be identified before works are compared. See id.

The district courts failure to undertake the required inquiry is material and reversible. The district court assumed that Suns source code contained protected expression, without conducting the required analytical dissection. At a minimum, this matter should be remanded with instructions to perform the required analysis. See Fogerty , 510 U.S. at 517-18.

In any event, this assumption about Suns source code was legally inadequate. Sun did not contend that Microsofts infringing material was source code. It contended that Microsofts distribution of object code was infringing: "[t]he object code for [Microsofts products] is simply compiled (translated) from Suns copyrighted source code. Since Suns JDK computer program is literally copied into Microsofts IE 4.0 and SDKJ 2.0 products, Microsoft is also distributing copies of Suns copyrighted work ." E.R. 259 (11:19-24). See Cadence Design Systems, Inc. v. Avant! Corp. , 125 F.3d 824, 826 n.2 (9th Cir. 1997), cert. denied , 118 S. Ct. 1795 (1998) (object code is readable by computers). Translation into highly functional and heavily constrained object code may not, necessarily, result in anything other than unprotectable idea and unprotected expression. Sun did not present evidence of protected expression in Microsofts object code and the district court made no such finding. Absent any factual record of substantial similarity of protected expression in the allegedly infringing object code between the two works, the district courts finding of likely success by Sun constitutes abuse of discretion.

Sun Incorrectly Contends That Neither Sun Nor the District Court Was Afforded the Opportunity to Address Whether the TLDA Limits the Types of Relief Available.
Sun is simply incorrect in its assertions that Microsoft is raising for the first time on appeal arguments regarding the TLDAs limitations on remedies and that "neither Sun nor the district court were afforded any opportunity to address the argument." Brief of Appellee at 52. Both parties fully briefed the issue in the context of Suns first motion for preliminary injunction and, in its March 24 Order ( see E.R. 146-64), the district court considered and rejected the interpretation proffered by Microsoft. See Order (3/24/98) at 9-11.

Sun appears to suggest that the district courts interpretation of sections 11.2(b) and 11.2(d) pertained only to trademark claims and might be different in the context of copyright infringement. See Brief of Appellee at 56. This suggestion is unsupported by even the most cursory review of the district courts March 24 Order. In analyzing sections 11.2(b) and (d), the district court looked only to the express terms of the TLDA and did not rely on extrinsic evidence. See Order (3/24/98) at 5-6. Indeed, the only reference to the fact that the issue arose in the trademark context was the district courts reference to the trademark context to "support" its conclusion. See id. at 9.

Once the district court ruled on the interpretation of sections 11.2(b) and (d) and their applicability to claims based on alleged violations of the compatibility requirements, Microsoft was not required to seek reconsideration of that interpretation when Sun brought subsequent preliminary injunction motions. "The law does not require litigants to run fools errands. Thus, a party who foregoes an obviously futile task will not ordinarily be held thereby to have waived substantial rights." In re Two Appeals Arising Out Of the San Juan Dupont Plaza Hotel Fire Litigation, 994 F.2d 956, 961 (1st Cir. 1993).

Even if Sun were correct that Microsoft should have challenged for a second time the district courts interpretation in its March 24th Order of sections 11.2(b) and (d), this Court has the discretionary power to consider the issue. Because the district court relied only on the plain language of sections 11.2(b) and (d) in its analysis, the interpretation of these provisions is a question of law, see Federal Deposit Ins. Corp. v. Garner , 125 F.3d 1272, 1276 (9th Cir. 1997), cert. denied , 118 S. Ct. 1299 (1998), which falls squarely within this Courts power to review.

Considerations of judicial economy and fundamental fairness also favor review of these issues. The limitation of remedy provisions go to the heart of the availability of injunctive relief (under Microsofts interpretation) and the specific pre-conditions for a grant of injunctive relief (under Sun and the district courts interpretation). Preliminary injunctions are extraordinary remedies. See Sierra Club v. Hickel , 433 F.2d 24, 33 (9th Cir. 1970). If the preliminary injunction in this case contravenes the express agreement of the parties to limit remedies, leaving the injunction in place will work a grave injustice. Correcting the district courts erroneous interpretation of these provisions in this appeal will avoid wasteful litigation and preclude a post-judgment appeal on the issue.

Sun Cannot Circumvent the Requirement That It Prove a Violation Was "Willful and Intentional" in Order to Invoke the Provisions of Section 11.2(b).
Sun attempts to cure the district courts failure to make a finding of "willful and intentional" by arguing that such a finding is essentially unnecessary because the term "willfulness" in the TLDA means the same as intentional or "freely." See Brief of Appellee at 58 (relying on 1948 case interpreting "willfulness" in statute relating to real estate forfeitures). In the TLDA, Sun and Microsoft used the term "willful and intentional" to demarcate the types of violations of the compatibility requirements that could trigger the provisions of section 11.2(b). Suns argument that "willful" is synonymous with, and redundant to, "intentional" is plainly contradicted by the parties use of the conjunctive, not the disjunctive, in linking the two terms. See In the Matter of Scalera , 466 N.Y.S.2d 698, 699 (1983). Moreover, interpreting "willful" to mean "intentional" would make the types of breaches described in section 11.2(b) indistinguishable from the general category of all other "material breaches" in section 11.2(d).

Sun Points to No Language in the TLDA That Supports Its Desired Interpretation of Section 2.6(b)(iv).
Section 2.6(b)(iv) of the TLDA provides that Microsofts Java compiler is compliant if it contains " a mode" that passes the most recent Java Language Test Suite. Sun argues that section 2.6(b)(iv) only authorizes Microsoft to include "modes for earlier versions of the JAVA Technology" in its compiler. See Brief of Appellee at 44-46. However, Sun never once quotes the TLDA or identifies contractual language that supports its interpretation. That is because no such language exists. Adopting Suns interpretation would add a new term to the TLDA based on extrinsic evidence, a result that California law forbids. See A. Kemp Fisheries, Inc. v. Castle & Cooke, Inc. , 852 F.2d 493, 495 (9th Cir. 1988); see also Curry v. Moody , 40 Cal. App. 4th 1547, 1552 (1995).

Sun relies on the district courts incorrect statement that "Microsofts asserted interpretation is antithetical to one of the stated purposes of the TLDA." See Brief of Appellee at 45. Even if true, this stated purpose would not justify adding a new term to the TLDA. See Cyrix , 77 F.3d at 1386-87. In any event, Microsofts interpretation is entirely consistent with the purposes of the TLDA, one of which is to give software developers a choice between writing cross-platform compatible programs and writing programs that use extra functionality available on individual platforms. See E.R. 84 ( 7); E.R. 327A ( 5); E.R. 327D-327E ( 11); E.R. 346 ( 16). This purpose is demonstrated by the fact that Sun allows software developers to write programs using both Java and "native" code, even though such programs work on only one platform -- a fact that is contrary to the "purpose" Sun ascribes to the TLDA. See E.R. 340-41 ( 12, 13); E.R. 348 ( 24); E.R. 389 ( 40). Microsofts compiler furthers the TLDAs goal of giving software developers freedom of choice because it contains one mode that compiles only 100 percent cross-platform compatible Java and one mode that gives Java developers access to additional Windows functionality. See E.R. 330 ( 2); E.R. 363-64 ( 30-32); E.R. 380 ( 11).

Sun also argues that the district court properly relied on the Java Language Specification in determining that the additional mode in Microsofts compiler is not permitted by section 2.6(b)(iv). See Brief of Appellee at 46-47. However, this reliance was misplaced because Microsofts sole duty with respect to its Java compiler is to pass the Java Language Test Suite, not comply with the Java Language Specification. See Brief of Appellant at 52. Sun argues that the TLDAs definition of "Java Language Test Suite" refers to the Java Language Specification, and that the district court therefore properly turned to the Java Language Specification in determining Microsofts compatibility obligations. See Brief of Appellee at 46-47. However, this reference to the Java Language Specification places a limitation on Sun, not Microsoft. It means that Sun may only use the Java Language Test Suite to test for compliance with the Java Language Specification. It does not mean that every mode in Microsofts compiler must comply with the Java Language Specification. The district court therefore erred in holding that the Java Language Specification conditions Microsofts right under section 2.6(b)(iv) to include additional modes in its Java compiler.

Suns Claim That Microsoft Must Comply With Statements in the Documentation Accompanying the Java Language Test Suite is Unsupported.
Sun contends that Microsofts Java compiler is non-compliant because it allegedly fails the so-called "Compiler Output Requirement," a statement in the documentation accompanying the Java Language Test Suite. See Brief of Appellee at 52-54. The TLDA, however, requires only that Microsofts compiler pass the test suite itself. See TLDA 1.13, 2.6(b)(iv); E.R. 268 ( 3-4). Thus, Microsoft had no duty to comply with the Compiler Output Requirement.

Sun challenges Microsofts claim that construing "Java Language Test Suite" to include written statements in the accompanying documentation would be inconsistent with section 2.9(f) of the TLDA. See Brief of Appellee at 47-48. Sun argues that section 2.9(f) does not apply to compiler compatibility and does not limit Suns right to promulgate test suites. See id. Suns argument misses the point. Section 2.9(f) sheds light on the nature of Suns "Test Suites." If Microsoft had to comply with written statements in the documentation accompanying the test suites, and not just with the tests themselves, section 2.9(f) would be unnecessary because a desired modification could always be "expressed through the Test Suites." Section 2.9(f) makes clear the parties intent that "Test Suite" only includes the computer programs provided by Sun that validate compliance with the Java specifications.