Oracle USA, Inc. v. Rimini Street, Inc.
879 F.3d 948
| 9th Cir. | 2018Background
- Oracle licenses enterprise software (J.D. Edwards, Siebel, PeopleSoft, Database) and sells annual maintenance with updates via a support website; Rimini Street provided third-party maintenance to Oracle licensees and needed copies of Oracle software to build and test updates.
- Rimini copied Oracle software to create development ("sandbox") environments, sometimes using one customer’s license to build environments for other existing or prospective Rimini customers ("cross use").
- For PeopleSoft, Rimini performed "local hosting" by keeping copies on its own servers outside customers’ control; for Database the parties disputed the applicability of Oracle License and Service Agreements (OLSAs).
- Oracle amended its website Terms of Use to prohibit automated download tools after heavy automated access; Rimini later used automated tools in violation of those Terms to download large libraries of support files.
- District court: jury found Rimini liable for copyright infringement (and for state computer statutes); awarded substantial damages, prejudgment interest, attorneys’ fees, costs, and entered a permanent injunction; Rimini appealed.
- Ninth Circuit: affirmed copyright infringement findings and most remedies but vacated the injunction and fee award for reconsideration; reversed state computer statutes and related UCL finding; modified costs.
Issues
| Issue | Oracle's Argument | Rimini's Argument | Held |
|---|---|---|---|
| Scope of licenses — direct and cross use (J.D. Edwards, Siebel) | Licenses permit copies only to support the specific licensee; using one license to support other customers exceeds the license | Customers' licenses allow archival/support and outsourcing; any licensee (including future ones) would permit such copying, so cross use is allowed | Held for Oracle: copying under one customer’s license to support other customers exceeded scope and infringed copyrights |
| PeopleSoft — "local hosting" (copies on Rimini servers) | PeopleSoft licenses limit use to licensee’s facilities under the licensee's control; off-site Rimini hosting was unauthorized | "Facilities" can include hosted/leased capacity controlled by the licensee; thus Rimini's hosting was within license | Held for Oracle: off-site copies on Rimini’s servers were outside licensee control and thus unauthorized; summary judgment for Oracle affirmed |
| Copyright misuse defense | Oracle: license restrictions do not foreclose competition or improperly extend monopoly; conditions control use of copyrighted material | Rimini: enforcing limitations (esp. on cross use and pre-customer copying) is misuse that stifles aftermarket competition | Held for Oracle: misuse doctrine applies narrowly; restrictions here did not constitute misuse and do not bar infringement remedy |
| State computer statutes (CDAFA, NCCL) and UCL predicate | Oracle: Rimini’s automated downloads violated Terms of Use and thus constituted unauthorized access/taking under the statutes | Rimini & EFF: mere violation of website Terms of Use (when access otherwise permitted) should not be criminal/civil computer trespass | Held for Rimini: when taking/data use is otherwise authorized, using a method forbidden by Terms of Use does not make the taking "without permission" under CDAFA/NCCL; UCL predicate reversed |
| Remedies — injunctions, fees, prejudgment interest, costs | District court awarded permanent injunctions (copyright + CDAFA), fees, prejudgment interest using Treasury rate at infringement start, and substantial costs | Rimini challenged statutory/ equitable bases for injunction and fee awards and the prejudgment interest rate and some taxable costs | Held: CDAFA-based injunction and fee allocation to Ravin reversed; copyright injunction vacated and remanded for eBay-factor reassessment; prejudgment interest rate affirmed as within discretion; taxable costs reduced per parties’ agreement |
Key Cases Cited
- Sony Corp. of Am. v. Universal City Studios, 464 U.S. 417 (Sup. Ct.) (existence of license negates infringement for authorized uses)
- LGS Architects, Inc. v. Concordia Homes of Nev., 434 F.3d 1150 (9th Cir. 2006) (licensee exceeding license scope is liable for infringement)
- MDY Indus. v. Blizzard Entm't, 629 F.3d 928 (9th Cir. 2011) (distinguishing between conditions that give rise to infringement and covenants actionable in contract)
- Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (Sup. Ct.) (copyright holder’s right of first publication and related marketable subsidiary rights)
- Facebook, Inc. v. Power Ventures, Inc., 844 F.3d 1058 (9th Cir.) (CDAFA liability where defendant acted "without permission" in taking and using data)
- eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (Sup. Ct.) (four-factor test for permanent injunction)
- Twentieth Century Fox Film Corp. v. Entm't Distrib., 429 F.3d 869 (9th Cir. 2005) (Section 505 permits award of full costs beyond 28 U.S.C. § 1920)
- Marx v. Gen. Revenue Corp., 568 U.S. 371 (Sup. Ct.) (interpretation of costs statutes not inconsistent with Twentieth Century Fox)