Sun Microsystems, Inc. asked a federal court last week to bar Microsoft Corp.'s use of the Java-compatible logo on Microsoft's Internet Explorer 4.0, but Microsoft argued that the licensing agreement between the two prohibits Sun from requiring such an injunction.
The judge is still considering the motion that Sun filed seeking a preliminary injunction asking that Microsoft be required to remove the Java-compatible logo from its Internet browser until a lawsuit Sun filed against the software giant is resolved. Microsoft also has filed a countersuit. Resolving those lawsuits is expected to take months, if not years. The next hearing in Sun's lawsuit is Sept. 4.
Sun told District Court Judge Ronald Whyte that Microsoft violated its licensing agreement because Explorer 4.0 and software development kit for Java do not comply with test suites that licensees must meet for compatibility. Microsoft argued that it passed tests with the "relevant" Java Developers Kit version required under its contract, which happened to be an earlier JDK version with fewer tests.
However, Sun attorney Lloyd Day Jr. said Microsoft is required not only to pass tests with the JDK that was available at the time the two signed their five-year agreement in March 1996, but also to pass tests for every significant upgrade.
Microsoft attorney David McDonald countered that Sun can only add new tests if they accompany a JDK version that is backward-compatible for two generations of technology, and he claimed that the upgraded version was incompatible with earlier versions. Day denied that the upgrade must be backward-compatible, saying only that "each upgrade shall pass test suites that accompany the prior two upgrades."
Day read an e-mail in court from Microsoft product managers acknowledging that they could not and did not pass all the tests with the upgraded JDK. Tom Burt, associated general counsel for Microsoft, said Microsoft had passed most of those tests - even though it wasn't required to because the upgraded JDK was not backward-compatible, and, therefore, not the version Microsoft has to pass tests for.
Day said Microsoft should have negotiated with Sun on the test versions rather than going ahead and using the Java logo.
"Under trademark law ... they have to have Sun's approval," Day said.
But Microsoft said licensing agreements give licensees the right to modify technology. "We have the right to make the changes [to the Java technology]," McDonald countered. "We're not constrained to use just what they sent us."
However, Sun said that by modifying Java as it has and then using the Java-compatible logo, Microsoft is misrepresenting its compliance with Sun's approved Java technology.
The two sides also disagree as to whether Sun can force Microsoft to stop using the logo if it is determined that the contract was breached. Microsoft claims that Sun waived the right to injunctive relief in the licensing agreement between the two companies. But Sun claims it has the right to protect the use of the Java logo under a broader trademark license.
RELATED LINKS
Microsoft articles and stock info.
Sun wants Microsoft to back away from the Java line
Network World Fusion, 11/19/97
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