971 F.3d 1042
9th Cir.2020Background
- Oracle owns the Solaris operating system and restricts access to Solaris patches to customers with a prepaid annual support contract via the My Oracle Support (MOS) portal.
- Hewlett Packard Enterprise (HPE) provided multi-vendor support for customers (including Solaris) both directly and indirectly by subcontracting to Terix, which obtained MOS credentials and downloaded patches for customers.
- Oracle sued Terix in 2013; Terix later stipulated to judgment on infringement/fraud claims. Oracle and HPE agreed on May 6, 2015 to toll the limitations period for claims Oracle might bring against HPE.
- Oracle sued HPE in 2016 for copyright infringement, intentional interference (IICR/IIPEA), and UCL violations, alleging HPE/Terix accessed, copied, and installed patches on servers not covered by Oracle support.
- The district court granted summary judgment for HPE; the Ninth Circuit affirmed in part (limitations-based rulings and some indirect-infringement aspects), reversed in part (pre-installation conduct and direct-installation issues), and remanded.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright statute of limitations (3 years) — accrual date | Oracle: lacked actual knowledge; could not reasonably have discovered infringement earlier | HPE: Oracle had constructive knowledge and therefore duty to investigate; claims before May 6, 2012 are time-barred | Court: Affirmed time-bar on pre-May 6, 2012 conduct; Oracle had constructive knowledge and failed to conduct a reasonable investigation (summary judgment appropriate for pre-2012 acts) |
| IIPEA statute of limitations (2 years) | Oracle: could not discover the broader scheme earlier; fraudulent concealment by defendants | HPE: Oracle knew enough (e.g., Comcast facts) to discover IIPEA claim before May 6, 2013 | Court: Affirmed time-bar for pre-May 6, 2013 IIPEA claims; Oracle was not ignorant and had constructive knowledge |
| Indirect infringement — whether license covers pre-installation acts (download/copy/distribution by Terix) | Oracle: Terix’s pre-installation downloads/copies were infringing and the licenses do not authorize one-to-many copying | HPE: customer licenses/agent status allowed downloads by customer agents; district court treated pre-installation conduct as licensed | Court: Reversed district court for failing to construe licenses under governing copyright principles and for excluding pre-installation conduct; remanded for proper license analysis and adjudication of pre-installation infringement claims |
| Direct infringement by HPE — non‑Symantec customers (unauthorized installations) | Oracle: HPE spreadsheets and expert analysis show installations after support lapses; circumstantial proof supports causation | HPE: Data ambiguous as to whether "Installed on Date" reflects real installs and whether HPE (vs. customer/third party) performed installs | Court: Reversed summary judgment; reasonable inferences permit a jury to find unauthorized installations by HPE for non‑Symantec customers |
| Direct infringement by HPE — Symantec customers | Oracle: testimony shows HPE had a practice of installing patches from Terix onto Symantec off‑contract servers | HPE: challenges protectability and specific proof of installed registered code | Court: Summary judgment improper; testimony permits inference that HPE installed patches on Symantec off‑contract servers; remand for factual resolution |
Key Cases Cited
- Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (copyright claim accrual and separate accruals for each violation)
- Pincay v. Andrews, 238 F.3d 1106 (9th Cir. 2001) (constructive knowledge warrants duty to investigate)
- Wood v. Santa Barbara Chamber of Commerce, Inc., 705 F.2d 1515 (9th Cir. 1983) (suspicion of infringement triggers duty to investigate; fraudulent concealment tolling limits)
- Media Rights Techs., Inc. v. Microsoft Corp., 922 F.3d 1014 (9th Cir. 2019) (discovery-rule accrual in copyright cases)
- In re Software Toolworks, Inc., 50 F.3d 615 (9th Cir. 1994) (summary judgment and reasonableness standard for investigation)
- Columbia Pictures Indus. v. Fung, 710 F.3d 1020 (9th Cir. 2013) (uploading and downloading are infringing acts)
- Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (licenses can authorize otherwise infringing uses)
- Great Minds v. Office Depot, Inc., 945 F.3d 1106 (9th Cir. 2019) (license scope defeats infringement and must be construed under copyright policy)
- Seven Arts Filmed Entm’t Ltd. v. Content Media Corp. PLC, 733 F.3d 1251 (9th Cir. 2013) (elements of direct infringement: ownership and copying)
- Gorman v. Wolpoff & Abramson, LLP, 584 F.3d 1147 (9th Cir. 2009) (summary judgment appropriate when only one reasonable conclusion on reasonableness exists)