                                              Filed:   July 10, 2003

                    UNITED STATES COURT OF APPEALS

                        FOR THE FOURTH CIRCUIT


                              No. 03-1116
                   (CA-02-2739-JFM, CA-00-1332-MDL)



Sun Microsystems, etc.,

                                                  Plaintiff - Appellee,

          versus


Microsoft Corporation, etc.,

                                                 Defendant - Appellant.



                               O R D E R



     The court amends its opinion filed June 26, 2003, as follows:

     On page 2, section 1, line 18 -- “Stacy N. Lay” is corrected

to read “Stacia N. Lay.”

                                           For the Court - By Direction




                                           /s/ Patricia S. Connor
                                                    Clerk
                              PUBLISHED

             UNITED STATES COURT OF APPEALS

                  FOR THE FOURTH CIRCUIT
4444444444444444444444444444444444444444444444447
In Re: MICROSOFT CORPORATION
ANTITRUST LITIGATION
_________________________________________________________

SUN MICROSYSTEMS, INC., a Delaware
corporation,
      Plaintiff-Appellee,

      v.                                               No. 03-1116

MICROSOFT CORPORATION, a
Washington corporation,
     Defendant-Appellant.

WILDTANGENT, INCORPORATED,
    Amicus Supporting Appellant.
NETSCAPE COMMUNICATIONS
CORPORATION,
    Amicus Supporting Appellee.
4444444444444444444444444444444444444444444444448

            Appeal from the United States District Court
             for the District of Maryland, at Baltimore.
                  J. Frederick Motz, District Judge.
              (CA-02-2739-JFM, CA-00-1332-MDL)

                       Argued: April 3, 2003

                      Decided: June 26, 2003

 Before WIDENER, NIEMEYER, and GREGORY, Circuit Judges.

____________________________________________________________

Affirmed in part, vacated in part, and remanded by published opinion.
Judge Niemeyer wrote the opinion, in which Judge Widener and
Judge Gregory joined.
                            COUNSEL

ARGUED: David Bruce Tulchin, SULLIVAN & CROMWELL,
L.L.P., New York, New York, for Appellant. Lloyd R. Day, Jr., DAY,
CASEBEER, MADRID & BATCHELDER, L.L.P., Cupertino, Cali-
fornia, for Appellee. ON BRIEF: Steven L. Holley, Michael Laco-
vara, Marc De Leeuw, Brian T. Frawley, SULLIVAN &
CROMWELL, L.L.P., New York, New York; Michael F. Brock-
meyer, PIPER RUDNICK, L.L.P., Baltimore, Maryland; David T.
McDonald, Karl J. Quackenbush, PRESTON, GATES & ELLIS,
L.L.P., Seattle, Washington; Thomas W. Burt, Richard J. Wallis,
Linda K. Norman, MICROSOFT CORPORATION, Redmond, Wash-
ington; Matthew L. Larrabee, Darryl Snider, A. Mari Mazour,
HELLER, EHRMAN, WHITE & MCAULIFFE, L.L.P.,
San Francisco, California, for Appellant. James R. Batchelder, Robert
M. Galvin, DAY, CASEBEER, MADRID & BATCHELDER, L.L.P.,
Cupertino, California; Kevin J. Arquit, SIMPSON, THACHER &
BARTLETT, New York, New York; Thomas M. Wilson, John B.
Isbister, TYDINGS & ROSENBERG, L.L.P., Baltimore, Maryland,
for Appellee. O. Yale Lewis, Jr., Stacia N. Lay, HENDRICKS &
LEWIS, Seattle, Washington; Kenneth C. Bass, III, STERNE, KESS-
LER, GOLDSTEIN & FOX, P.L.L.C., Washington, D.C., for Amicus
WildTangent. Evan R. Chesler, Katherine B. Forrest, CRAVATH,
SWAINE & MOORE, New York, New York; Jeffrey A. Rosen, Rich-
ard A. Cordray, Elizabeth S. Petrela, KIRKLAND & ELLIS, Wash-
ington, D.C.; James P. Ulwick, KRAMON & GRAHAM, Baltimore,
Maryland, for Amicus Netscape.

____________________________________________________________

                             OPINION

NIEMEYER, Circuit Judge:

   Sun Microsystems, Inc. commenced this action against Microsoft
Corporation, alleging, among other things, that Microsoft illegally
maintained a monopoly in the "worldwide market for Intel-
compatible PC operating systems," in violation of § 2 of the Sherman
Act. Sun also complains that Microsoft infringed its copyrighted
"source code in the Java platform" by distributing the software out-

                                 2
side of a license that Microsoft received from Sun, in violation of
§ 501 of the Copyright Act. Sun seeks declaratory and permanent
injunctive relief, as well as treble damages and attorneys fees.

    On Sun's motion for a preliminary injunction pending trial and
judgment, the district court entered (1) a mandatory preliminary
injunction requiring Microsoft to incorporate in and distribute with
every copy of its Windows PC operating system and every copy of
its web browser Sun's Java software to operate as "middleware" on
top of Microsoft's operating system to accommodate a wide variety
of applications software, and (2) a preliminary injunction prohibiting
Microsoft from distributing any software developments of Java soft-
ware, other than products licensed to Microsoft by Sun in a 2001 set-
tlement agreement arising out of prior litigation over Microsoft's
alleged misuse of Java source code.

    In granting the mandatory injunction, the district court acknowl-
edged that its "must-carry" mandatory preliminary injunction was
unprecedented, but explained it was necessary in the extraordinary
circumstances of this case to prevent future "tipping"1 from Sun to
Microsoft in an emerging middleware market — a market for "gen-
eral purpose, Internet-enabled distributed computing platforms" that
is distinct from the PC operating systems market that Sun alleged was
being illegally monopolized by Microsoft. The court found that
Microsoft and Sun are the only competitors in this new emerging
market in which Sun currently "would appear dominant," as Micro-
soft has yet "virtually no present share of the market."

   To address the problem that the complaint alleges monopolization
____________________________________________________________
    1
      "Tipping" refers to a changing market share based on the economic
theory of a "feedback effect," which holds that the attractiveness of a
product to consumers increases with the number of persons using it. In
this case, Sun offered, and the district court accepted, the prediction that
the vast number of consumers using Microsoft's Windows PC operating
systems will prompt software developers to opt to write applications soft-
ware based on Microsoft's middleware with the effect that Microsoft's
brand of middleware will become entrenched in the emerging, albeit dis-
tinct, market for middleware — i.e., "general purpose, Internet-enabled
distributed computing platforms."

                                   3
in one market and the injunction was requested to protect Sun in a dif-
ferent market, the court relied on a monopoly leveraging theory under
which Microsoft is alleged to be "taking advantage of its past antitrust
violations to leverage its monopoly in the Intel-compatible PC market
into the market for general purpose, Internet-enabled distributed com-
puting platforms." The court found appropriate a remedy in the mid-
dleware market "designed to prevent Microsoft from obtaining future
advantage from its past wrongs" in the PC operating systems market.
But the court could only conclude (1) that it is not "inevitable" that
the new emerging middleware market will "tip" in favor of Microsoft,
(2) that it cannot say that "tipping" in favor of Microsoft in the mid-
dleware market will "more likely than not" occur, and (3) that it can-
not find "at this precise moment . . . an imminent threat that the
market for general purpose, Internet-enabled distributed computing
platforms will tip in favor of [Microsoft]."

   Because the district court was unable to find immediate irreparable
harm and because it entered a preliminary injunction that does not aid
or protect the court's ability to enter final relief on Sun's PC-
operating-systems monopolization claim, we vacate the mandatory
preliminary injunction. With respect to the preliminary injunction
prohibiting Microsoft from distributing products that infringe Sun's
copyright interests, however, we conclude that the district court did
not err in construing the scope of the license granted by Sun to Micro-
soft, nor did it abuse its discretion in entering the injunction. Accord-
ingly, we affirm that preliminary injunction.

                                   I

   Sun summarizes its complaint in this case, which includes 16
counts, as follows:

           This is an action brought pursuant to the antitrust laws of
          the United States as well as the laws of the State of Califor-
          nia to restrain anticompetitive conduct by [Microsoft], and
          to remedy the damage suffered by [Sun], as the result of
          Microsoft's illegal efforts to maintain and expand its
          monopoly power. In addition, this action seeks to enjoin
          Microsoft from infringing Sun's copyrights by unlawfully

                                   4
         distributing products outside the scope of the limited license
         that Sun granted to Microsoft.

Count 1, in connection with which the district court entered the man-
datory preliminary injunction, alleges that Microsoft has willfully and
illegally maintained its monopoly power in the worldwide market for
"Intel-compatible PC operating systems" by anticompetitive and
unreasonably exclusive conduct. Sun claims that it

         has been and will continue to be damaged by, without limi-
         tation, diminished licensing fees, lost computer workstation
         sales, lost server sales, lost software product sales, lost stor-
         age sales, lost sales of consulting services, and a diminution
         in value to Sun's trademarks, reputation, and goodwill in
         amounts to be proven at trial.

And for relief from "immediate and irreparable injury," it requests
injunctive relief.

    Sun's motion for a preliminary injunction relies in substantial part
on previous litigation in which Microsoft was found guilty of illegal
and anticompetitive conduct, particularly the District of Columbia liti-
gation in which Microsoft was found to have maintained an illegal
monopoly in the market for worldwide licensing of Intel-compatible
PC operating systems, see United States v. Microsoft Corp., 87 F.
Supp. 2d 30 (D.D.C. 2000), aff'd in part and rev'd in part, 253 F.3d
34 (D.C. Cir. 2001), cert. denied, 534 U.S. 952 (2001), and California
litigation involving Microsoft's allegedly illegal conduct aimed spe-
cifically at Sun, see Sun Microsystems, Inc. v. Microsoft Corp., 87 F.
Supp. 2d 992 (N.D. Cal. 2000). In its motion, Sun asked the district
court to enjoin Microsoft from

         (a) distributing its Windows operating system and web
         browser products unless Microsoft integrates and distributes
         Sun's binary implementation of the Java Plug-in for Win-
         dows XP [operating system] in those products and

         (b) distributing Microsoft's Virtual Machine for Java
         [often referred to as MSJVM, for Micro soft Java Virtual
         Machine] in an unlicensed manner.

                                   5
It asserted that:

          If Microsoft's conduct is left unchecked, there is a substan-
          tial threat that Microsoft will irreparably tip the market
          against the Java platform in favor of .NET. . . . [T]he Court
          should grant preliminary injunctive relief requiring Micro-
          soft to integrate and distribute Sun's Java Plug-in as part of
          [the] Windows [operating system] and [the Internet Explorer
          web browser] and cease standalone distribution of the old
          Microsoft VM [i.e., the MSJVM].

Sun's Java platform and Microsoft's .NET are "middleware" with
which Sun and Microsoft will compete in the emerging market for
Internet-enabled distributed computing platforms.

    Both Sun and the district court in this case adopted the District of
Columbia courts' definition of the relevant market — in which Micro-
soft was alleged to be illegally maintaining its monopoly power — as
the worldwide licensing of Intel-compatible PC operating systems,
and both agree that the market for "middleware" that is now emerging
is distinct from the market that Microsoft was found to have monopo-
lized in the District of Columbia litigation. It is undisputed that the
middleware market identified by the parties and the district court has
not yet been defined for antitrust purposes.

    Operating systems, such as Windows 2000, Windows XP, Mac OS,
and Sun's Solaris OS, function to implement instructions from appli-
cations software and enable computer hardware to operate, "including
allocating computer memory and controlling peripherals such as
printers and keyboards." United States v. Microsoft Corp., 253 F.3d
at 53. Because operating systems vary, such that applications-
software developers have to tailor their software to each separate
operating system, middleware has been conceived for placement
between applications software and the various operating systems with
the ultimate idea, in part, of creating cross-compatibility in applica-
tions software for the various operating systems. See id.; Sun
Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1118 (9th Cir.
1999).

   Sun developed the Java platform as middleware that would permit
software applications to be run on various operating systems. Pro-

                                  6
ceeding under the motto "write once, run anywhere," Sun developed
the Java platform to provide software developers with tools that
would enable them to write applications software for any computer
and operating system that includes Java middleware. Sun contends
that Java's promise of cross-platform compatibility posed a competi-
tive threat to Microsoft because of its potential to erode the require-
ment to tailor applications software to particular operating systems —
an applications-software barrier to entry that was protecting Micro-
soft's monopoly in the PC operating systems market. It alleges that
Microsoft responded to this threat with an "embrace and extend" strat-
egy, described by the California district court in Sun Microsystems,
Inc. v. Microsoft Corp., 87 F. Supp. 2d at 995, as follows:

         First, Microsoft "embraced" the Java technology by licens-
         ing from Sun the right to use its Java Technology to develop
         and distribute compatible Products. Second, Microsoft "ex-
         tended" the Java platform by developing strategic incompat-
         ibilities into its Java runtime and development tools
         products. According to Sun, these incompatibilities tied
         applications using Microsoft's Java development tools to
         Microsoft's virtual machine and the Windows platform.
         Third, Microsoft used its distribution channels to flood the
         market with its version of the Java Technology in [what Sun
         characterized as] an attempt to "hijack the Java Technology
         and transform it into a Microsoft proprietary programming
         and runtime environment."

   The so-called "embrace" took place when Microsoft and Sun
entered into a Technology License and Distribution Agreement
("License Agreement") on March 11, 1996, whereby Sun licensed
Microsoft to make and distribute Java-based products. This License
Agreement required Microsoft's implementations of the Java platform
to meet compatibility standards set by Sun (now by the "Java Com-
munity Process," an organization of licensees and developers to
whom Sun has turned over control of Java).

    Using its access to Sun's proprietary code granted under the
License Agreement, Microsoft allegedly developed a Java implemen-
tation — the primary component of which was the Microsoft Java
Virtual Machine (MSJVM) — that was incompatible with the core

                                  7
Java platform. Microsoft also allegedly interfered with Sun's distribu-
tion channels for Java by damaging the market for Netscape's Navi-
gator, a web browser that was at one time the principal vehicle for the
distribution of Java. Additionally, Microsoft allegedly stunted further
development of Java by preventing Intel Corporation from cooperat-
ing with Sun and Netscape in the development of a high-performance,
Windows-compatible Java product.

   Microsoft's alleged conduct prompted Sun to file suit against
Microsoft in the Northern District of California, alleging trademark
and copyright violations as well as unfair competition under Califor-
nia law. Following extensive litigation,2 Microsoft and Sun entered
into a Settlement Agreement dated January 23, 2001, that the district
court in this case summarized as follows:

          (1) [T]he original license and distribution agreement was
          terminated,

          (2) Microsoft was given the right, but not the obligation,
          to continue distribution of MSJVM incorporated in products
          (and their successors) with which it had been distributed
          under the original agreement,

          (3) Microsoft's distribution of MSJVM was required to be
          phased out over time,

          (4) [T]he MSJVM could be based only on the older Java
          technology,

          (5) Microsoft paid $20 million to Sun, and

        (6) Sun released all of its claims, except its antitrust
____________________________________________________________
   2
     The California litigation is described in part in Sun Microsystems, Inc.
v. Microsoft Corp., 999 F. Supp. 1301 (N.D. Cal. 1998); Sun
Microsystems, Inc. v. Microsoft Corp., 21 F. Supp. 2d 1109 (N.D. Cal.
1998); Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115 (9th
Cir. 1999); and Sun Microsystems, Inc. v. Microsoft Corp., 87 F. Supp.
2d 992 (N.D. Cal. 2000).

                                   8
          claims, arising out of the facts involved in the California liti-
          gation.

In re Microsoft Corp. Antitrust Litigation, 237 F. Supp. 2d 639, 643
(D. Md. 2003).

   Shortly after Microsoft began the commercial distribution in Febru-
ary 2002 of Visual Studio .NET, a programming product containing
Microsoft's own middleware — the .NET platform — to compete
with the Java platform, Sun commenced this action in the Northern
District of California. The suit was transferred to the District of Mary-
land for inclusion in ongoing multidistrict litigation.

    The district court held a three-day hearing on Sun's motion for a
preliminary injunction, and it followed with an opinion in December
2002 ruling that Sun was entitled to a mandatory preliminary injunc-
tion based on Count 1 of Sun's complaint and a prohibitory injunction
based on Count 16 of the complaint. In re Microsoft, 237 F. Supp. 2d
at 664. The court issued its actual order on January 21, 2003. In re
Microsoft Corp. Antitrust Litigation, 240 F. Supp. 2d 460 (D. Md.
2003). The mandatory preliminary injunction that issued under § 16
of the Clayton Act, based on alleged violations of § 2 of the Sherman
Act, requires that Microsoft incorporate and distribute with every
copy of its Windows operating system and web browser Java software
delivered to Microsoft by Sun. The prohibitory injunction that issued
under § 502 of the Copyright Act, based on alleged violations of
§ 501 of that Act, prohibits Microsoft from distributing any product
that includes a copy of Microsoft's MSJVM other than a licensed
product. From the district court's injunction, Microsoft filed this
interlocutory appeal.

   On appeal, Microsoft contends that both injunctions must be
vacated. With respect to the antitrust injunction, it argues (1) that Sun
did not make the requisite showing of "immediate irreparable harm,"
(2) that the district court improperly discounted the harm to Microsoft
resulting from the must-carry injunction, (3) that Sun has no likeli-
hood of success on the merits, and (4) that the district court failed to
consider the harm to the public interest resulting from "judicial inter-
ference in the free operation of markets." With respect to the copy-
right injunction, Microsoft contends that the district court improperly

                                    9
ignored evidence of "the parties' shared understanding" of the limited
license granted by Sun to Microsoft in the Settlement Agreement.

                                   II

    "[P]reliminary injunctions are extraordinary remedies involving the
exercise of very far-reaching power to be granted only sparingly and
in limited circumstances." MicroStrategy Inc. v. Motorola, Inc., 245
F.3d 335, 339 (4th Cir. 2001) (internal quotation marks omitted).
While we review the entry of such an interlocutory order for "abuse
of discretion," our cases are replete with references to the particularly
exacting application of standards that apply to that discretion. See,
e.g., Direx Israel, Ltd. v. Breakthrough Medical Corp., 952 F.2d 802,
814 (4th Cir. 1992) ("Particularly where the appeal is from a grant of
preliminary injunction, which represents the exercise of a very far-
reaching power, never to be indulged in except in a case clearly
demanding it[,] the standard of appellate review must not be reduced
to the largely meaningless ritual of the typical`abuse of discretion'
standard" (internal quotation marks omitted)); id. at 815 (stating that
the abuse of discretion standard "is not a rule of perfunctory appellate
review but one of careful scrutiny"); Blackwelder Furniture Co. v.
Seilig Mfg. Co., 550 F.2d 189, 193 (4th Cir. 1977) ("When the grant
or denial of interim injunctive relief is reviewed, it is simplistic to say
or imply, as we sometimes do, that it will be set aside only if an abuse
of discretion can be shown. . . . A judge's discretion is not boundless
and must be exercised within the applicable rules of law or equity").
Our application of this exacting standard of review is even more
searching when the preliminary injunctive relief ordered by the dis-
trict court is mandatory rather than prohibitory in nature. See Taylor
v. Freeman, 34 F.3d 266, 270 n.2 (4th Cir. 1994) ("Mandatory prelim-
inary injunctive relief in any circumstance is disfavored, and war-
ranted only in the most extraordinary circumstances"); cf. Communist
Party of Indiana v. Whitcomb, 409 U.S. 1235 (1972) (Rehnquist, J.,
opinion in chambers) ("While a Circuit Justice of this Court appar-
ently has authority under Supreme Court Rule 51 to grant such relief
in the form of a mandatory injunction, usage and practice suggest that
this extraordinary remedy be employed only in the most unusual case.
In order that it be available, the applicants' right to relief must be
indisputably clear").

                                   10
    The traditional office of a preliminary injunction is to protect the
status quo and to prevent irreparable harm during the pendency of a
lawsuit ultimately to preserve the court's ability to render a meaning-
ful judgment on the merits. See, e.g., Omega World Travel, Inc. v.
Trans World Airlines, 111 F.3d 14, 16 (4th Cir. 1997) ("The purpose
of interim equitable relief is to protect the movant, during the pen-
dency of the action, from being harmed or further harmed in the man-
ner in which the movant contends it was or will be harmed through
the illegality alleged in the complaint"). Indeed, the maintenance of
the status quo is justified only insofar as it aids the court in granting
final relief. Hazardous Waste Treatment Council v. South Carolina,
945 F.2d 781, 788 (4th Cir. 1991) ("`The rationale behind a grant of
a preliminary injunction has been explained as preserving the status
quo so that a court can render a meaningful decision after a trial on
the merits'" (quoting Rum Creek Coal Sales, Inc. v. Caperton, 926
F.2d 353, 359 (4th Cir. 1991))). Therefore, "[a] preliminary injunction
is always appropriate to grant intermediate relief of the same charac-
ter as that which may be granted finally," de Beers Consol. Mines,
Ltd. v. United States, 325 U.S. 212, 220 (1945), but conversely, pre-
liminary relief may never be granted that addresses matters "which in
no circumstances can be dealt with in any final injunction that may
be entered," id.See also United States ex rel. Rahman v. Oncology
Assocs., P.C., 198 F.3d 489, 498 (4th Cir. 1999) ("We now turn to the
preliminary injunction entered to determine whether it is a reasonable
measure to preserve the status quo in aid of the claims in suit, or
whether it grants interim relief of the same character as that which
may be granted finally" (internal citations omitted)); Fed. Leasing,
Inc. v. Underwriters at Lloyd's, 650 F.2d 495, 499 (4th Cir. 1981)
(approvingly quoting the district court's statement that the raison
d'etre of preliminary injunctive relief is "to preserve the status quo
during the course of a litigation in order to prevent irreparable injury
to the moving party and in order to preserve the ability of the court
to render complete relief").

    "Mandatory preliminary injunctions [generally] do not preserve the
status quo and normally should be granted only in those circum-
stances when the exigencies of the situation demand such relief." Wet-
zel v. Edwards, 635 F.2d 283, 286 (4th Cir. 1980). That is to say, a
mandatory preliminary injunction must be necessary both to protect
against irreparable harm in a deteriorating circumstance created by

                                  11
the defendant and to preserve the court's ability to enter ultimate
relief on the merits of the same kind.

    In sum, preliminary injunctions are extraordinary interlocutory
remedies that are granted in limited circumstances and then only spar-
ingly. The limited circumstances amount to the demonstration of a
need to protect the status quo and to prevent irreparable harm during
the pendency of the litigation to preserve the court's ability in the end
to render a meaningful judgment on the merits. If that need is not
presented, then a preliminary injunction should not be considered. But
if the need is demonstrated, then the entry of a preliminary injunction
rests in the discretion of the district court, which is informed by bal-
ancing factors under an analysis conducted pursuant to the familiar
four-part test described in Blackwelder, 550 F.2d at 194-96. Under
this test

          a court should consider (1) the likelihood of irreparable
          harm to the plaintiff if the preliminary injunction is denied;
          (2) the likelihood of harm to the defendant if the injunction
          is granted; (3) the likelihood that the plaintiff will succeed
          on the merits; and (4) the public interest.

Safety-Kleen, Inc. v. Wyche, 274 F.3d 846, 858-59 (4th Cir. 2001).3
"Further, the plaintiff bears the burden of establishing that each of
these factors supports granting the injunction." Direx, 952 F.2d at 812
(internal quotation marks omitted).

   In applying this four-factor test, "[t]he irreparable harm to the
plaintiff and the harm to the defendant are the two most important
____________________________________________________________
    3
      As a practical matter, the determination of whether the limited cir-
cumstances for considering a preliminary injunction have been demon-
strated and the analysis under the four-part Blackwelder analysis are
routinely combined in applying the Blackwelder test alone. But the con-
ceptual distinction between the appropriate circumstances justifying con-
sideration of a preliminary injunction and the factors informing the
exercise of discretion for its entry can be important, as it is in this case,
because if the circumstances justifying consideration of a preliminary
injunction are not present, then the discretion-informing balancing of fac-
tors need not be conducted.

                                  12
factors." Rum Creek Coal Sales, Inc., 926 F.2d at 359. Emphasis on
the balance of these first two factors results in a sliding scale that
demands less of a showing of likelihood of success on the merits
when the balance of hardships weighs strongly in favor of the plain-
tiff, and vice versa. See id. ("If, after balancing [the first] two factors,
the balance tips decidedly in favor of the plaintiff, a preliminary
injunction will be granted if the plaintiff has raised questions going
to the merits so serious, substantial, difficult and doubtful, as to make
them fair ground for litigation and thus for more deliberate investiga-
tion. As the balance tips away from the plaintiff, a stronger showing
on the merits is required" (internal citations and quotation marks omit-
ted)).4

   With these principles governing the entry of mandatory preliminary
injunctions in hand, we turn to the mandatory preliminary injunction
entered by the district court in this case, which requires Microsoft to
distribute Sun's Java software with every copy of Microsoft's Win-
dows PC operating system and web browser.

                                   III

   Addressing the condition precedent to the entry of any preliminary
injunction — that it be entered to prevent harm that is both irreparable
and immediate — the district court identified two types of irreparable
harm to Sun that it found necessitated the grant of a mandatory pre-
liminary injunction: (1) a future harm arising from the "serious risk"
that the market for general purpose, Internet-enabled distributed com-
puting platforms (the middleware market) would "tip" to Microsoft's
.NET product "in the near future," In re Microsoft, 237 F. Supp. 2d
____________________________________________________________
   4
     Although this circuit's emphasis on the balance of the hardships has
been criticized as inconsistent with Supreme Court precedent "by over-
valuing the inquiry into the relative equities of granting and denying a
requested injunction to an extent that essentially denies any value what-
soever to the inquiry into the likelihood of success on the merits," see
Safety-Kleen, 274 F.3d at 868 (Luttig, J., concurring), we remain bound
by the test as it has been consistently articulated and applied by prior
appeals, see The Scotts Co. v. United Indus. Corp., 315 F.3d 264, 271 n.2
(4th Cir. 2002) (addressing precisely this criticism of our hardship bal-
ancing test and concluding that the test must nonetheless be applied).

                                   13
at 651, and (2) a present harm to Sun's "right to compete, and [Sun's]
opportunity to prevail," in a market undistorted by Microsoft's past
antitrust violations, id. Neither harm, however, has been shown to be
legally sufficient to warrant the mandatory must-carry preliminary
relief ordered by the district court. The future harm of market tipping
was not sufficiently immediate and therefore too speculative, and the
present harm of market distortion was defined at too general a level
to warrant the relief ordered in a market that the court never defined
for purposes of antitrust analysis.

   The future harm alleged by Sun is "market tipping," which Sun's
expert, Dr. Dennis Carlton, described as the expected end-state of a
market that is subject to strong "feedback effects." According to Dr.
Carlton, the feedback effects in the incipient competition between
Java and .NET arise from the decisions of software developers to
write applications for a particular platform:

         As more applications written to one platform arise, that
         increases the demand to have that platform. As the presence
         of that platform increases, then that creates a heightened
         incentive for developers toward deciding what platform to
         write to, to write to the platform that is increasing . . . or
         [that] has the greater relative prevalence. And that is an
         effect that will feed back on itself because once there's a
         greater presence of a platform, it increases the incentives for
         more applications. The more applications there are, the more
         developers there are, it becomes more desirable to have the
         platform. And it will be a feedback like I described earlier,
         that will be mutually reinforcing.

The result of this cycle is what Sun and the district court refer to as
"market tipping," which Dr. Carlton testified is "what other people
would alternatively describe as a tendency for a dominant product or
a dominant standard to emerge." Sun's theory for preliminary relief
relied not only on the purported presence of these "feedback effects"
in the emerging market for middleware but also on the theory that the
feedback effects in this market would arise in the early stages of com-
petition and entrench one dominant standard as the winner of the
competition almost from the very beginning. Dr. Carlton testified:

                                  14
         It's in the early stages that feedback effects can get set up.
         And once they're set up, they can lead to a market tipping.
         And once it tips, or once these feedback effects get set up,
         they may be hard to undo. And therefore, the market struc-
         ture can be entrenched and the initial stages can be determi-
         native of these final outcomes. That's why the initial stages
         can be quite important.

   After canvassing the competing evidence offered by Sun and
Microsoft, which included not only the testimony of Dr. Carlton but
also the written and oral testimony of software developers, executives
from Sun and Microsoft, and Microsoft's own economics expert, the
district court observed:

         On this evidence I find there will be a substantial feedback
         effect in the market for general purpose, Internet-enabled
         distributed computing platforms as the competition between
         .NET and Java unfolds. I also find that, in accordance with
         the general economic principles cited by the D.C. Circuit in
         the Department of Justice case, .NET and Java will compete
         for the field rather than within the field. Microsoft, 253 F.3d
         at 49.

                                 ***

         Therefore, the genuine threat that market tipping presents
         cannot be dismissed on the ground that at the moment,
         before the competition has begun, a large number of soft-
         ware developers are still Java-oriented. Microsoft, Sun, and
         the developer community are all looking toward the future,
         and in order to determine whether a must-carry injunction
         is necessary and appropriate, a court must do so as well.
In re Microsoft, 237 F. Supp. 2d at 648, 650. But even as the court
accepted Sun's theory of relief, it limited the findings on which it
based the relief:

         I do not suggest, however, it is inevitable that the market
         will tip in favor of .NET. Dennis Carlton, Sun's expert

                                  15
          economist, has candidly acknowledged that he cannot deter-
          mine whether tipping away from Java is more likely than
          not. It is possible that .NET and Java will both survive as
          competing platforms and that the new market will be a het-
          erogeneous one.
Id. at 648-49 (internal citations omitted). The district court clarified
the limitation of its finding in its legal analysis, stating that it did "not
find that at this precise moment there is an imminent threat that the
market for general purpose, Internet-enabled distributed computing
platforms will tip in favor of .NET." Id. at 651 (emphasis added).
Rather, the court found that "unless Sun is given a fair opportunity to
compete in a market untainted by the effects of Microsoft's past anti-
trust violations, there is a serious risk that in the near future the mar-
ket will tip in favor of .NET, that it is impossible to ascertain when
such tipping might occur in time to prevent it from happening, and
that if the market does tip in favor of .NET, Sun could not be ade-
quately compensated in damages." Id. (emphasis added).

   It is against these findings — which, for purposes of our continuing
discussion at this stage of the proceedings, we accept as supported by
the evidence and not clearly erroneous — that we determine the legal
requirement of immediate or imminent harm.

   The requirement that harm to be forestalled by preliminary injunc-
tive relief be "immediate" or, stated alternatively, "imminent," as a
condition precedent to the issuance of such relief arises not only from
equity but also from Section 16 of the Clayton Act itself, which pro-
vides:

          Any person, firm, corporation, or association shall be enti-
          tled to sue for and have injunctive relief . . . against threat-
          ened loss or damage by a violation of the antitrust laws . . .
          when and under the same conditions and principles as
          injunctive relief against threatened conduct that will cause
          loss or damage is granted by courts of equity, under the
          rules governing such proceedings, and upon . . . a showing
          that the danger of irreparable loss or damage is immediate,
          a preliminary injunction may issue.

                                    16
15 U.S.C. § 26 (emphasis added). Indeed, as this provision has been
construed by the Supreme Court and this court, the Clayton Act's
explicit textual "immediacy" requirement for preliminary injunctive
relief is redundant because the "conditions and principles" of equity
incorporated by reference into the statute, see California v. American
Stores Co., 495 U.S. 271, 281 (1990) ("[T]he statutory language indi-
cates Congress' intention that traditional principles of equity govern
the grant of injunctive relief" (quotation marks and citation omitted)),
require immediacy of irreparable harm for all preliminary injunctions,
see Direx, 952 F.2d at 815 (requiring the plaintiff seeking a prelimi-
nary injunction to make a "`clear showing' that it will suffer an imme-
diate irreparable harm were such relief not granted it" (emphasis
added)). This redundancy is of merely theoretical interest because the
practical result is the same whether one views the "immediacy"
requirement for preliminary injunctive relief as arising from the statu-
tory text requiring "immediate" harm, the statutory text insofar as it
incorporates by reference the "conditions and principles" of equity, or
both. The practical result is that the plaintiff seeking a preliminary
injunction under Section 16 of the Clayton Act unquestionably must
show that the threatened loss or harm is "immediate" as a condition
precedent to a court's issuance of such equitable relief.

    The case law describing the immediacy requirement as a compo-
nent of the traditional principles of equity gives shape to the require-
ment. Our decision in Direx provides particularly clear guidance. In
that case, we reversed the district court's grant of preliminary injunc-
tive relief to a company that sought to enjoin the use of its alleged
trade secrets by a company that was developing and selling a medical
device that competed with the movant's version of that device. 952
F.2d at 804-05. We concluded that the plaintiff company failed to
demonstrate immediate irreparable harm in the absence of preliminary
injunctive relief because the defendant company was precluded from
selling its product in the United States (for lack of FDA approval) and
outside the United States (for lack of an export license). Id. at 815-16.
We reasoned, in language that bears quoting at some length, that:

          [T]he district court found present irreparable harm in favor
          of Direx, even though it recognized that there was no pres-
          ent threat of such harm, because maybe "at least a year
          down the road, maybe two or three years down the road,"

                                  17
          there will arise a possible need for a preliminary injunction.
          We are not persuaded by such reasoning that there is a pres-
          ent or immediate need for preliminary relief in favor of
          Direx. By the district court's own finding, any harm to
          Direx in this case is at this time problematical and uncertain.
          Remembering that preliminary injunctions are "extraordi-
          nary remedies" involving the exercise of "very far-reaching
          power" to be granted only "sparingly" and "in limited cir-
          cumstances," the grant of such relief in this case, where the
          harm is admittedly not present or immediate but merely
          problematic, conditioned on possible future events, would
          seem contrary to our stated rule: A plaintiff, seeking prelim-
          inary relief, must show the present threat of irreparable
          harm. The district court should have dismissed the motion
          for preliminary relief because the plaintiff failed to establish
          that the denial would result in present irreparable harm.

Id. at 816 (emphasis added) (internal citation omitted). The Direx
opinion traced its formulation of the immediacy requirement back to
our decision in Dan River, Inc. v. Icahn, 701 F.2d 278, 280 (4th Cir.
1983), in which we reversed the grant of a preliminary injunction that
prevented a group attempting a corporate takeover from exercising all
of its rights accompanying the shares that it bought. The takeover tar-
get argued that the injunction was necessary to prevent the company
from being "looted," but we discounted this harm as not likely to
occur imminently given the constraints imposed by state corporation
law. Id. at 283. We explained that "[m]anagement will have more
than adequate opportunity to petition a court for injunctive relief
when and if the fears mature into imminent danger." Id. Formulating
in Direx the principle applied in Dan River, we explained that "the
required irreparable harm must be neither remote nor speculative, but
actual and imminent." Direx, 952 F.2d at 812 (emphasis added)
(internal quotation marks omitted) (citing ECRI v. McGraw-Hill, Inc.,
809 F.2d 223, 226 (3d Cir. 1987) ("Establishing a risk of irreparable
harm is not enough. A plaintiff has the burden of proving a `clear
showing of immediate irreparable injury'" (emphasis added))).

    Sun failed to meet this immediacy requirement. Its own expert
stated, in testimony relied upon by the district court in its written
opinion, that even he could not be sure whether tipping was more

                                   18
likely than not. See In re Microsoft, 237 F. Supp. 2d at 648. And as
previously noted, the district court concluded that "I do not find that
at this precise moment there is an imminent threat that the market for
general purpose, Internet-enabled distributed computing platforms
will tip in favor of .NET." Id. at 651 (emphasis added). This conclu-
sion should have disposed of Sun's theory of relief premised on the
future harm of tipping in light of the principle articulated in the cases
discussed above.

    The district court's ruling to the contrary rested on its conclusion
that "there is a serious risk that in the near future the market will tip
in favor of .NET, that it is impossible to ascertain when such tipping
might occur in time to prevent it from happening, and that if the mar-
ket does tip in favor of .NET, Sun could not be adequately compen-
sated in damages." Id. The distinction apparent from this portion of
the district court's reasoning and our decisions in Direx and Dan
River is that in Direx and Dan River we reasoned that preliminary
relief was not appropriate because there would be some later point at
which the plaintiffs could seek preliminary relief that would satisfac-
torily forestall the occurrence of the expected harm. According to the
district court, Sun's circumstances differed materially because "it is
impossible to ascertain when such tipping might occur in time to pre-
vent it from happening." In re Microsoft, 237 F. Supp. 2d at 651. This
reasoning, however, is not persuasive. The very function served by
requiring a "clear showing of irreparable harm" that must be "actual
and imminent" rather than "remote [and] speculative," Direx, 952
F.2d at 812, is to limit the deployment of the heavy artillery of pre-
liminary injunctive relief to situations in which it is readily apparent
to the court that such relief is actually necessary to prevent a harm
from occurring. When the court concludes that it is impossible to
ascertain when such tipping might occur and that it cannot say with
confidence that the harm is more likely than not to occur at all, the
proper conclusion to draw is that the plaintiff has failed to make the
clear showing required.

    Also flawed was the district court's determination that preliminary
relief was necessary to remedy a present irreparable harm to Sun. The
court stated that "it is an absolute certainty that unless a preliminary
injunction is entered, Sun will have lost forever its right to compete,
and the opportunity to prevail, in a market undistorted by its competi-

                                   19
tor's antitrust violations." In re Microsoft, 237 F. Supp. 2d at 651.
This principle, however, is stated at too high a level of generality to
identify present irreparable harm justifying the grant of preliminary
injunctive relief. If this principle were recognized in the formulation
given by the district court, then each allegation of an antitrust viola-
tion would be accompanied with a corresponding allegation of resul-
tant market distortion, and preliminary injunctive relief in antitrust
cases would issue in the ordinary course rather than in the extraordi-
nary circumstances to which it has been limited by traditional princi-
ples of equity. This is not to say that the lingering effects of an
identified market distortion resulting from anticompetitive conduct
could not, in some other circumstance, provide the predicate for a
conclusion that a party is presently suffering irreparable harm. It is
certain, however, that a prerequisite to the identification of any mar-
ket distortion must be a clear market definition. And it is undisputed
that the market definition for antitrust purposes has not yet been made
in this case, at least with regard to the "distorted" middleware market
targeted by the must-carry injunction.

    Sun argues that "it is unnecessary for Sun to define and prove the
relevant antitrust market in which the .NET and Java platforms com-
pete. The only relevant inquiry at this time is whether Sun is likely
to suffer irreparable harm with respect to the competition between the
.NET and Java platforms." Although this argument may have some
purchase with regard to other types of alleged irreparable harm, the
argument cannot be correct inasmuch as the harm alleged is "market
distortion," a concept which simply makes no sense in relation to the
relief ordered absent a definition of the relevant market. This is a par-
ticularly serious failure when it is recognized the purpose of the anti-
trust laws is "the protection of competition, not competitors." Brown
Shoe Co. v. United States, 370 U.S. 294, 320 (1962).

   In sum, we conclude that the district court's findings are insuffi-
cient to support its conclusion that immediate irreparable harm will be
sustained if the mandatory preliminary injunction is not entered, and
accordingly that injunction must be vacated.

                                  IV

   Although the lack of evidence sufficient to prove immediate irrepa-
rable harm alone requires that the mandatory preliminary injunction

                                  20
entered by the district court be vacated, equally fatal is Sun's failure
to demonstrate that the mandatory preliminary injunction was neces-
sary to the prosecution of its claim in litigation. While this issue is rel-
evant to the third Blackwelder factor in determining whether the court
should exercise its discretion, it is more fundamental in that it goes
to the very purpose of and need for any preliminary injunction.

    As we have pointed out in greater detail in Part II above, a prelimi-
nary injunction serves the limited function during the course of litiga-
tion to protect the status quo and to prevent irreparable harm
ultimately to preserve the court's ability to render a meaningful judg-
ment on the merits. Count 1 of Sun's complaint, the count on which
Sun sought the preliminary injunction entered by the district court,
alleged that Microsoft monopolized the market defined by the world-
wide licensing of Intel-compatible PC operating systems, in violation
of § 2 of the Sherman Act, 15 U.S.C. § 2. While Sun competes with
Microsoft in that market through its licensing or sale of its Solaris
operating system, its target for the preliminary injunction was an
impending competition between the companies in the new emerging
market for "middleware," Internet-enabled distributed computing plat-
forms for applications software that are placed on operating systems
to enable them to function with a broad array of applications software.
Both the parties and the district court concluded that the middleware
market was distinct from the relevant market alleged in the complaint
— the market for worldwide licensing of Intel-compatible PC operat-
ing systems. In short, the market that Microsoft is alleged in the com-
plaint to have monopolized involves operating systems and the
market to which Sun focused its requested preliminary injunction
involves middleware. See United States v. Microsoft, 253 F.3d at 54
(D.C. Circuit court affirming the district court's exclusion of middle-
ware from the relevant market in which Microsoft possessed a
monopoly).

   The essential question arises therefore about how a preliminary
injunction entered to regulate conduct in an emerging and undefined
market preserves the court's ability to render meaningful judgment on
the merits of Sun's claim that Microsoft monopolized the market for
worldwide licensing of Intel-compatible PC operating systems, a mar-
ket that by definition does not involve middleware.

                                    21
    To resolve this two-market problem, the district court adopted
Sun's theory of "monopoly leveraging" which the court described as
follows:

          The theory underlying Sun's requested injunction is that
         Microsoft . . . is now taking advantage of its past antitrust
         violations to leverage its monopoly in the Intel-compatible
         PC market into the market for general purpose, Internet-
         enabled distributed computing platforms.

                                 ***

          For the reasons I will state later in this opinion, I find
         Sun's theory is sound and its proposed remedy appropriate.

In re Microsoft, 237 F. Supp. 2d at 645, 646.

    Yet the monopoly leveraging theory on which the district court
relied has not been recognized in this circuit nor has it received gen-
eral acceptance. See M & M Med. Supplies & Servs. v. Pleasant Val-
ley Hosp., 981 F.2d 160, 169 (4th Cir. 1992) (en banc) (stating that
"the law in this circuit does not clearly establish whether monopoly
leveraging is a cognizable claim under § 2"); Phillip E. Areeda &
Herbert Hovenkamp, Antitrust Law ¶ 652(b)(2) at 93 (1996) (observ-
ing that most circuit and district courts "reject most leveraging
claims"). Indeed, monopoly leveraging may have been seriously
undermined and perhaps been entirely foreclosed by the Supreme
Court's decision in Spectrum Sports, Inc. v. McQuillan, 506 U.S. 447
(1993). See id. at 459 ("[Section] 2 makes the conduct of a single firm
unlawful only when it actually monopolizes or dangerously threatens
to do so"); Virgin Atlantic Airways Ltd. v. British Airways PLC, 257
F.3d 256, 272 (2d Cir. 2001) ("[U]ncertainty exists as to the contin-
ued scope of a monopoly leveraging claim as an independent cause
of action in light of the Supreme Court's opinion in Spectrum
Sports"); 3 Areeda & Hovenkamp, Antitrust Law¶ 652(b), at 93
("[T]he Supreme Court's Spectrum Sports decision appears to rule out
`non-monopolistic leverage' claims under § 2 altogether"). Finally, it
is noteworthy that the leading treatise on antitrust law describes
monopoly leveraging as generally incompatible with the text of § 2 of
the Sherman Act and its underlying policies. See 3 Areeda &

                                 22
Hovenkamp, Antitrust Law ¶ 652(a), at 90 ("When there is no realis-
tic threat that the second market will become monopolized as a result
of the defendant's activity, [§ 2 of the Sherman Act] simply does not
apply"); id. ¶ 652(c), at 97 ("[A]ny monopoly leveraging claim must
be limited to circumstances where (1) the `target' . . . market is prop-
erly defined; and (2) the alleged conduct threatens the [`target'] mar-
ket with the higher prices or reduced output or quality associated with
the kind of monopoly that is ordinarily accompanied by large market
share").

    In addition, the monopoly leveraging theory leaves open the real
possibility that the causal connection needed between the conduct
enjoined and the conduct constituting a violation could be overlooked,
thereby undermining a basic requirement of the Clayton Act, 15
U.S.C. §§ 15 and 26: "A court . . . must base its relief on some clear
`indication of a significant causal connection between the conduct
enjoined or mandated and the violation found directed toward the
remedial goal intended.'" United States v. Microsoft Corp., 253 F.3d
at 105 (quoting 3 Areeda & Hovenkamp, Antitrust Law¶ 653(b), at
91-92); see also 15 U.S.C. § 26 (authorizing injunctive relief against
"threatened loss or damage by a violation of the antitrust laws"
(emphasis added)); Thompson Everett, Inc. v. Nat'l Cable Advertis-
ing, L.P., 57 F.3d 1317, 1325 (4th Cir. 1995) (relief under the anti-
trust laws "must flow from that conduct which is proscribed by the
antitrust laws").

    Given the rationale as well as the weight of authority against recog-
nition of the theory of monopoly leveraging as a basis for § 2 liability
and our failure yet to have recognized it, it is not surprising that Sun
disclaims reliance on monopoly leveraging on appeal, claiming that
although the district court's order "will prevent harm in an adjacent,
related market, it does not rest upon a `monopoly leveraging' theory
of liability." This statement, however, is flatly contradictory to the
district court's own characterization of the theory on which it rested
the mandatory preliminary injunction.

    Notwithstanding the district court's characterization of the substan-
tive theory underlying the relief ordered, Sun focuses this court's
attention on the portion of the district court's opinion in which the
court justified its resolution of the "two-market problem" by relying

                                  23
on the remedial principle that injunctive relief need not be limited "`to
prohibition of the proven means by which the evil was accomplished,
but may range broadly through practices connected with the acts actu-
ally found to be illegal.'" In re Microsoft, 237 F. Supp. 2d at 658
(quoting United States v. United States Gypsum Co., 340 U.S. 76, 88-
89 (1951)); see also Int'l Boxing Club of New York v. United States,
358 U.S. 242, 262 (1959)("[S]ometimes relief, to be effective, must
go beyond the narrow limits of the proven violation" (internal quota-
tion marks omitted)). The district court's articulation of this remedial
principle could not alone raise any objection. This is not, however, a
case in which the district court ordered injunctive relief to protect
competition in the relevant market. Rather, the court targeted its
injunction only toward an emerging and as yet undefined collateral
market without identifying any purpose that this injunction would
have to protect competition in the relevant market. As a result, the
district court's application of an otherwise sound remedial principle
in the context of this case served only to bolster a monopoly leverag-
ing theory. In the absence of monopoly leveraging, Sun is unable to
demonstrate that the preliminary relief ordered is necessary to the
prosecution of its claim in litigation as alleged in Count I of its com-
plaint.

    In the alternative, Sun argues that it has alleged in Count 8 of its
complaint a claim for attempted monopolization of the new emerging
market for middleware. While such a claim could theoretically sup-
port the entry of a preliminary injunction in the middleware market,
that theory was not pursued by Sun below nor discussed by the dis-
trict court; Sun did not bring its preliminary injunction motion under
Count 8 of its complaint but rather under Count 1 (which alleges ille-
gal monopoly maintenance of the PC operating systems market). That
decision by Sun was probably well considered, at least at this prelimi-
nary stage of the proceedings.

    "[T]o demonstrate attempted monopolization a plaintiff must prove
(1) that the defendant has engaged in predatory or anticompetitive
conduct with (2) a specific intent to monopolize and (3) a dangerous
probability of achieving monopoly power." Spectrum Sports, 506
U.S. at 456. And proof of these elements requires definition of the rel-
evant market that the defendant is allegedly attempting to monopo-
lize. Id. at 455 ("[T]he plaintiff charging attempted monopolization

                                  24
must prove a dangerous probability of actual monopolization, which
has generally required a definition of the relevant market and exami-
nation of market power"). Even though the district court never
defined for purposes of antitrust analysis the market it had in mind
with respect to middleware, it concluded that whatever market it had
in mind appeared to be dominated by Sun and that Microsoft has "vir-
tually no present share of the market." Accordingly, the court did not
find a dangerous probability that Microsoft would actually monopo-
lize that yet-undefined market in which Microsoft was just beginning
to provide competition. Indeed, the district court recognized that
Sun's expert could not assign any probability to the likelihood of
market tipping, much less a dangerous probability of actual monopo-
lization by Microsoft.

   In sum, the mandatory preliminary injunction aimed at preventing
"distortion" in the new emerging market for middleware has not been
linked in fact or by any established legal theory to the final relief that
Sun seeks in its claim that Microsoft has illegally maintained its
monopoly in the market for worldwide licensing of Intel-compatible
PC operating systems. And for this reason also the mandatory prelim-
inary injunction must be vacated.

                                   V

     The district court also entered a preliminary injunction in relation
to Sun's claim — Count 16 of its complaint — that Microsoft violated
Sun's copyright in the "source code for the Java Development Kit."
Sun alleges that some of Microsoft's distribution methods of the
Microsoft Java Virtual Machine (MSJVM) exceeded the limited
license granted Microsoft in the January 2001 Settlement Agreement.
The Settlement Agreement granted to Microsoft "[a] limited license
. . . to continue to distribute without modification in [specified] cur-
rently shipping commercial products" the MSJVM and a license to
"incorporate" the unmodified MSJVM "in successor versions of the
[specified] products." The district court held that Sun established a
prima facie case of copyright infringement based on its allegations
that Microsoft exceeded the limited license granted in the Settlement
Agreement by (1) permitting Original Equipment Manufacturers to
themselves choose whether to install or not install the MSJVM in
Windows and Internet Explorer, (2) distributing the MSJVM as part

                                   25
of a service pack for Windows XP, and (3) allowing downloads of the
MSJVM from the Internet by purchasers of licenses to Windows and
Internet Explorer. The district court enjoined Microsoft from distrib-
uting

          a. Any product that includes any copy of [the MSJVM]
          other than a Licensed Product; [and]

          b. Any copy of the MSJVM, except to the extent that such
          copy has . . . been incorporated by Microsoft into a Licensed
          Product prior to the distribution of such Licensed Product by
          Microsoft, so that all copies of such Licensed Product dis-
          tributed by Microsoft include a copy of such MSJVM . . . .

In re Microsoft, 240 F. Supp. 2d at 463.

    The parties do not dispute that Sun possesses valid copyrights that
protect the Java software and that Microsoft copied Sun's protected
works in creating the MSJVM. Microsoft does not dispute that, at
least in the past, it distributed the MSJVM using the methods com-
plained of by Sun. Furthermore, there is no dispute that the limited
license granted in the Settlement Agreement is the only potential
authorization that would allow the distribution by Microsoft of the
MSJVM in any form. The merits of Sun's copyright infringement
claim, then, turn exclusively on interpretation of the terms of the Set-
tlement Agreement, which we review de novo. See, e.g., Williams v.
Professional Transp. Inc., 294 F.3d 607, 613 (4th Cir. 2002).

   After an independent review of the terms of the Settlement Agree-
ment, including interpretation of its ambiguous terms in light of the
parol evidence submitted by the parties, we find no reason to disturb
the conclusions reached by the district court. We agree that Micro-
soft's alternative methods of distribution, which included permitting
parties other than Microsoft to "incorporate" the MSJVM into Win-
dows and Internet Explorer, exceeded the limited scope of the license
granted in the Settlement Agreement.

   Microsoft argues that "[t]he Settlement Agreement does not man-
date that the MSJVM be included in the default installation of Win-

                                  26
dows and in no way limits the mechanisms Microsoft can use to
distribute the MSJVM as an optional component of Windows XP."
This argument ignores the prefatory language of paragraph 7 of the
agreement, as well as the implication exclusion in paragraph 16. Para-
graph 7, titled "License Limitations," provides that "[t]he basic intent
of the licenses granted in paragraph 6 above is to permit Microsoft to
continue to distribute its current products `as is.'" (Emphasis added).
Paragraph 16 further provides that "[n]othing in this Settlement
Agreement grants any right or license . . . except as expressly pro-
vided . . . . (Emphasis added). Sun presented evidence to the district
court that "[a]t the time of the agreement, every copy of Windows 98
and Windows 2000 distributed by Microsoft was distributed with the
1.1.4 VM preinstalled by Microsoft." This fact, together with the
carefully circumscribed language of the Settlement Agreement that
granted Microsoft a limited license, establishes that Microsoft's distri-
bution of the MSJVM through alternative channels exceeded the
scope of the license granted.

    Microsoft points to the statement of its lead negotiator that he
informed the Sun negotiating team that Microsoft intended to distrib-
ute the MSJVM via Internet downloading and Sun never objected.
Yet this statement was contradicted by a Sun representative's testi-
mony that he "personally participated in every meeting and telephone
call . . . regarding our settlement and at no time did [he] ever hear any
Microsoft representative state whether or how Microsoft would incor-
porate its 1.1.4 VM in Windows XP or any other version of any other
Microsoft product." This same Sun representative also provided a
sensible interpretation of the agreement that Sun deliberately bar-
gained for certain words (such as "version" and "product") to limit the
license being granted to Microsoft. He accompanied this interpreta-
tion with the reasonable business explanation that Sun bargained for
language that would

          ensure that Microsoft's 1.1.4 VM would either be preinstal-
          led in each copy of a new product version, or not distributed
          for such products at all. If Microsoft's 1.1.4 VM were incor-
          porated in a successor version of a licensed product, then
          every customer who purchased that product version would
          receive the 1.1.4 VM preinstalled. If it were not incorpo-
          rated by Microsoft in that product version, then no purchaser

                                  27
          of that product could obtain it from Microsoft. Instead, those
          customers would be motivated to obtain a current, compati-
          ble [Java Runtime Environment, a Java component,] from
          Sun or its other licensees.

    Having concluded that the district court did not err in holding that
"Microsoft does not have the right under the settlement agreement to
take any of the actions about which Sun complains," In re Microsoft,
237 F. Supp. 2d at 664, we also affirm the district court's application
of the principle that Sun was "entitled to the presumption of irrepara-
ble harm and the protection against that harm which a preliminary
injunction affords," id.See Serv. & Training, Inc. v. Data Gen. Corp.,
963 F.2d 680, 690 (4th Cir. 1992) ("Once [the plaintiff] established
a prima facie claim of copyright infringement, the district court was
entitled to presume that [the plaintiff] could show both probable like-
lihood of success on the merits and irreparable harm").

   Armed with these legal and factual conclusions, the district court
did not abuse its discretion in entering the preliminary injunction
involving Microsoft's distribution of Java-based software. Accord-
ingly, we affirm the preliminary injunction entered by the district
court in respect to Sun's copyright claim.

                                  VI

   For the reasons given, we vacate the mandatory preliminary injunc-
tion entered in paragraphs 1-8, 12, and 13 of the district court's order
dated January 21, 2003, In re Microsoft Corp. Antitrust Litigation,
240 F. Supp. 2d 460 (D. Md. 2003), and we affirm the preliminary
injunction entered in paragraph 9. This case is remanded for further
proceedings.

                                       AFFIRMED IN PART, VACATED
                                         IN PART, AND REMANDED

                                  28
