Java suit hinges on seal of approval

Underlying the heated public rhetoric over Sun Microsystems' (SUNW) lawsuit against Microsoft (MSFT) is a simple question of whether Microsoft deserves the Java equivalent of a "Good Housekeeping" seal of approval, according to independent legal experts.

Sun sued Microsoft last week, alleging in a lengthy complaint that Microsoft's implementation of the cross-platform programming language violated the terms of a licensing agreement both companies signed. Yesterday, Sun filed an amended complaint seeking $35 million in damages based on allegations that Microsoft posted source code to the programming language on its Web site.

Despite the myriad facts and mountains of documents that inevitably will be entered as evidence, the case will likely boil down to a two-page trademark license Microsoft signed governing its use of Sun's Java-compatible logo, several attorneys said. Like the Underwriters Laboratories label that is ubiquitous on electrical products, Sun's Java mark serves to reassure consumers that a product has passed independent tests. If Sun demonstrates that Microsoft's use of Java does not pass these tests, it can theoretically yank Microsoft's right to use the certification mark.

"This is not really over money; $35 million isn't going to mean anything to Microsoft," said Jack Russo, an attorney specializing in computer law at Russo & Hale. "It's a classic case of how far will trademark rights go to protect Sun."

Although the outcome of the case is difficult to predict, several attorneys who read the contract told CNET's NEWS.COM that Sun is not likely to succeed in preventing Microsoft from implementing Java in its Internet Explorer browser. These attorneys add, however, that Sun stands a much higher chance of getting an injunction forbidding Microsoft from using Sun's Java logo.

Jay Spitzen, an attorney specializing in software contracting law with Gray, Cary, Ware, & Freidenrich, said that based on his reading of the contract, Microsoft will in the end be able to use the Java technology but may not be able to use the accompanying label. "Sun is going to have a hard time making Microsoft stop using the technology."

He explained that while the license agreement obligates Microsoft to make its Java implementation compatible with Sun's standards, the only recourse the document provides Sun in the event of a breach is monetary damages and a court order preventing Microsoft from using the Java logo.

"These guys agreed that if Microsoft violates this agreement by not being compatible...Sun can attack via monetary damages but can't make Microsoft pull its product," Spitzen added. Sun's complaint seeks both money and an injunction.

In another twist, G. Gervaise Davis III, an attorney at Davis & Schroeder, said: "If Microsoft makes the decision that it doesn't care if it [Microsoft software based on Java] is called Java, it could be settled overnight."

Java software developers need not fret over Sun's legal action, suggests Raymond L. Ocampo Jr., who retired in November as Oracle's general counsel.

"Most developers probably don't have a thing to worry about because the trademark owner [Sun] has the prerogative to decide whom to go after," said Ocampo, now executive director of the Berkeley Center for Law & Technology, which is affiliated with the University of California's Boalt School of Law.

Few legal experts expect the suit to be resolved anytime soon, but several suggest nonlegal elements in Sun's strategy. "It reads more like a publicity campaign than like a real lawsuit," Russo said. "It's really over who is the leader and who's the follower. Sun wants to be the leader and pope of the Java religion. It says, 'If you want to participate in the religion, you have to give us some homage.'

"Microsoft, in the name of doing its own innovations, is saying, 'We want to help define this religion; we are as sacred as Sun in this respect,'" adding that the issue is whether Sun can use trademark law to enforce its leadership.

The battle reminds Mark Lemley, a professor at the University of Texas School of Law, of another celebrated legal case involving Microsoft and a licenser.

In 1988, Apple Computer sued Microsoft, claiming that the software giant infringed its copyrights on its graphical interface software. The case dragged on for four years, and ultimately a judge ruled that a licensing agreement gave Microsoft permission to do exactly the things Apple was objecting to in its suit.

Noted Lemley: "Determining how much [each company] gave away in their license agreements is critical to both of these cases."

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