Best of 2011: Sun, Oracle, Microsoft, Google, trademark, patents, copyright and David Boies

First posted September 28, 2011.Eastern District of New York, Brooklyn

There’s a lot going on, conceptually, in this article entitled “The $800M question: What’s the difference between trademark and copyright?” in VentureBeat:

Ten years ago, when Sun sued Microsoft over Java, Sun alleged trademark infringement because Microsoft was not implementing Java according to Sun’s specification. Microsoft had entered into a license agreement with Sun — promising to follow the specification. When Microsoft deviated from the specification, Sun rightly claimed breach of contract and trademark infringement. Sun sought an injunction against Microsoft to stop using the Java logo and to remove the incompatible Microsoft code from the market. Sun ultimately prevailed, and received a large settlement, in part due to Microsoft’s anticompetitive conduct over Java.

Check.  A fine point in trademark licensing:  If you manufacture a widget and use my trademark, under a license, to tell the world that you’ve got my widget-juice running it, your willful failure to follow the specs is both a contract breach and a trademark infringement. Next:

Attorney David Boies . . . served as Special Trial Counsel for the United States Department of Justice in its antitrust suit against Microsoft. At the conclusion of that antitrust suit, U.S. District Court Judge Jackson found that Microsoft took actions “with the sole purpose of making it difficult for developers to write Java applications … that would allow them to be ported.” . . .

Boies now represents Oracle (which has since acquired Sun, including its rights to Java) in its case against Google for patent and copyright infringement of Java. He surely knows the differences between the issues in the prior lawsuits. Unlike Microsoft, Google never licensed Java from Sun. It never agreed with Sun to implement the Java specification, and it doesn’t call its product Java. It calls it Android and Android is not a candidate for an antitrust case. In fact, the Microsoft .NET Framework and Java are the two dominant middleware platforms.

In court pleadings, Oracle constantly argues that Google breaks the “write once, run anywhere” promise of Java. . . .

The problem for Oracle is that Google made no license promise, and doesn’t need to worry about Oracle’s “write once, run anywhere” registered trademark because that trademark has nothing to do with Android . . .

Following?  Not everyone is, according to author John Koenig:

Moreover, Oracle is suing Google for copyright infringement, not trademark infringement. Oracle never alleged any Java trademark claims, only harm by “fragmentation” of the Java “write once, run anywhere promise” and “creed.” But promise, creed and fragmentation are not copyright claims, they relate to trademarks. It’s a nice example of the adage that “if you repeat something often enough, people will believe it’s true.” Accordingly, on September 15, 2011, Judge William Alsup in his order regarding summary judgment says:

Android allegedly supports some, but not all, of the APIs defined for the Java platform… This so-called fragmentation undermines the “write once, run anywhere” concept underlying the Java system and supposedly damages Oracle by decreasing Java’s appeal to software developers.

I don’t know how “promise, creed or fragmentation . . . relate to trademarks,” and I thought I knew a thing about trademarks.  But to the extent that anyone buys this vague concept — which I would describe as reputational or goodwill (i.e., trademark-type) damage arising from copyright infringement — it doesn’t seem to include Judge Alsup.  Or, at least, he doesn’t see a copyright claim here, never mind the theory of damages. As his order states:

Words and short phrases such as names, titles, and slogans” are “not subject to copyright.” 37 C.F.R. 202.1(a); Planesi v. Peters, No. 04-16936, slip op. at *1 (9th Cir. Aug. 15, 2005). Google argues that “the names of the Java language API files, packages, classes, and methods are not protectable as a matter of law” (Br. 17). This order agrees. Because names and other short phrases are not subject to copyright, the names of the various items appearing in the disputed API package specifications are not protected.

So what was Oracle, and its oracular attorney, thinking?  As Koenig says:

Google could have long ago pointed out that Oracle is alleging trademark harm using copyright infringement claims. But why should Google help Oracle plead correctly? Google never agreed to the “write once, run anywhere” promise (in any license) from which Oracle claims to have suffered harm. Google calls its software Android, not Java. While Oracle could have argued that Google has confused the market by making references to Java in Android marketing and documentation, Oracle cannot now amend the complaint with a trademark infringement cause of action. It’s too late.

It’s hard to believe that Oracle’s legal team “missed” this one.  More likely, they determined that “promise, creed and fragmentation” are just not trademark claims, and decided not to make them.  In contrast, in the fluid world of copyright as applied to software, systems and programming, it probably seemed worth urging a unique theory of recovery to maximize the chance of a copyright verdict, which — damages notwithstanding — at least guarantees payment of attorneys’ fees and costs to the prevailing party.  Again, Koenig:

Oracle is not giving up however, and the API copyright issue isn’t the whole lawsuit. Oracle is also claiming patent infringement, and there are still questions of fact and law about the scope of Google’s alleged copying. But those don’t relate to the “write-once, run anywhere” promise from which Oracle claims to have suffered harm.

Nevertheless, Oracle’s latest alleged copyright damages and lost profits estimate is still in the neighborhood of a whopping $800 million.

Easy come, easy go.  I don’t think David Boies is losing a lot of sleep over this one.

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Author:Ron Coleman

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