On Sunday (April 22, 2012) afternoon, Oracle filed a "motion seeking a clarifying instruction [...] regarding Apache Harmony". Its lawyers see a "substantial risk of juror confusion and prejudice to Oracle" resulting from a combination of arguments that Google makes with respect to the Apache Harmony project on the one hand and the Apache license on the other hand:
"Google has repeatedly argued to the jury that Apache Harmony had used Sun’s Java APIs and that 'Sun said fine.'"
"Google has also repeatedly argued, and elicited evidence, that it took the 37 accused APIs from Harmony."
"Further, Google repeatedly refers to its distribution of Android under an 'Apache license,' which does not actually mean any license from Sun to Apache or Apache to Google, but instead confusingly refers to the standard Apache terms that Google imposes on Android licensees."
Oracle's lawyers don't want the jurors to think, as a result of the above, that Apache had rights to the Java technology that it gave to Google. That would mean that Google is indirectly licensed, but when the Apache Foundation resigned from the JCP Executive Committee in protest, it actually stated on the organization's official blog that the "Java specifications are proprietary technology that must be licensed directly from the spec lead under whatever terms the spec lead chooses."
In this regard, Oracle is also uncomfortable with Google's selective quoting from this May 2007 article by eWEEK's Chris Preimesberger. Google refers to a quote from then-Sun CEO Jonathan Schwartz ("there is no reason that Apache cannot ship Harmony today") and portrayed it to the jury as "an excerpt from a press release where Mr. Schwartz said you can ship as long as you don't call it Java". However, an eWEEK article is not a Sun press release -- otherwise eWEEK would belong to Oracle at this stage. Oracle points out that the very next sentence after the quote says: "That is technically true but Apache officials said that to do so with the TCK [Technology Compatibility Kit] restrictions in place would actually go against the Apache Software license."
Oracle wants a clear distinction to be made between
"Apache's use of Sun's Java specifications for Harmony;
Google's use of code from Apache Harmony; and
Google distribution of Android under the Apache license."
In particular, Oracle stresses that the license under which Apache distributes Harmony and Google distributes Android is irelevant to the question of whether Google has a license to Oracle's API specifications.
Oracle therefore proposes that the following text be read to the jury:
"You have heard testimony regarding a project called Apache Harmony, and you have also heard testimony regarding an Apache license. These are two separate issues, and I will provide some clarification on those two issues now.
Harmony was a project by the Apache Software Foundation to develop an independent implementation of Sun's Java specification. The parties do not dispute that the Apache Software Foundation used Sun's Java specifications for Harmony. There is also no dispute that the Apache Software Foundation sought a TCK license from Sun for Harmony, but Sun refused to grant one.
There has been evidence that Google used code from Harmony for Android. Because Sun never granted the Apache Software Foundation a TCK license for Harmony, you may not find that Google's use of Harmony conveyed to Google any rights to use Sun's Java specifications, or provides Google with any defense to copyright infringement, if you find that such infringement occurred.
You have also heard about the 'Apache license.' The Apache license is a type of open source license that Google chose for its distribution of Android. It is not a license under which Sun made Java intellectual property rights available. Google's distribution of Android under an Apache-type license is separate from the issue of Apache Harmony. The fact that Google distributes Android under an Apache license has nothing to do with Google's use of code from Harmony, and also does not provide Google with any defense to copyright infringement, if you find that such infringement occurred."
Google opposes this. In Google's words, Oracle "asks the Court to do the job of Oracle's lawyers" and "to make factual findings about Apache-related issues and impose them on the jury, rather than allowing the parties to present evidence and then argue the significance of that evidence to the jury, as should be done", and "to blunt the impact of the undisputed facts that Sun was aware of the Apache Software Foundation’s use and distribution of the same Java API packages at issue here for over five years, Sun was aware of the use of Harmony packages in Android, and Sun never asserted that Apache infringed its intellectual property".
Google says that Oracle has not sued Apache to this day. I don't think it's a good idea for a self-proclaimed good citizen of the open source community to tell Oracle that it's a mistake to refrain, for now, from suing the Apache Foundation.
According to the response brief, some of Google's witnesses including but not limited to Eric Schmidt and Andy Rubin "will testify about Google's use of the Harmony API packages and class libraries, and the fact that Sun not only sat by while Apache distributed Harmony but even welcomed Google into the Java community after Google announced its use of Harmony intellectual property in Android". Google also expects that Jonathan Schwartz will testify in ways that will be useful to Google.
The problem with Google's argument is that Oracle's and previously Sun's decision not to sue Apache for the time being doesn't constitute a grant of a license. Other companies in the industry also treat the infringement of intellectual property rights by certain open source projects with benign neglect as long as they don't see any negative commercial impact. It's the prerogative of right holders to decide whom to sue and when.
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