6 F. Supp. 3d 1086
D. Nev.2014Background
- Oracle (owner/licensee of PeopleSoft, J.D. Edwards, Siebel enterprise software) sued Rimini for copying licensed software onto Rimini systems to build development environments used to provide support for Oracle customers (City of Flint; Pittsburgh Public Schools; Giant Cement; Novell).
- Rimini conceded it copied the software but asserted affirmative defenses: express license (relying on customer licenses), implied license/consent (Oracle shipped backup installation media to Rimini), and others; Oracle moved for partial summary judgment targeting copyright infringement and defenses of express license, consent, and implied license.
- The court found Oracle owns the registered copyrights and Rimini copied them, establishing a prima facie infringement case.
- The court evaluated customer license language separately: granted Oracle summary judgment rejecting Rimini’s express-license defense as to City of Flint and Pittsburgh Public Schools, but denied summary judgment on express-license for Giant Cement and Novell (fact disputes/contract language allowed defense).
- The court granted summary judgment for Oracle on Rimini’s implied-license and consent defenses, finding shipment of backup media to Rimini (often designated as customers’ off-site backup location) did not show Oracle knew of or consented to Rimini’s copying onto its systems.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Oracle established copyright infringement | Oracle: owns copyrights and Rimini copied protected software to its systems | Rimini: copying was authorized by customer licenses or by implied consent from Oracle shipments | Oracle established prima facie infringement; infringement claim remains but some license defenses resolved in Rimini’s favor for some customers |
| Whether customer licenses expressly authorized Rimini’s copies (express license) | Oracle: licenses restrict copying to customer facilities/authorized users; do not permit Rimini’s off-site copies | Rimini: license provisions (copying, modification, third-party access) permit Rimini to have copies to provide support | Court: express-license defense rejected as a matter of law for City of Flint and Pittsburgh Public Schools; denied summary judgment (i.e., defense survives) for Giant Cement and Novell due to factual/contract differences |
| Whether Oracle’s shipment of backup installation media created implied license or consent | Oracle: shipments (often at customers’ request designating Rimini as offsite backup) do not show Oracle knew or consented to Rimini’s use to build development environments | Rimini: Oracle knowingly shipped installation media to Rimini and therefore consented/created implied license | Court: granted summary judgment for Oracle; insufficient evidence Oracle knew Rimini was using shipped media to copy software onto its systems or encouraged that use |
| Whether development/archive distinctions affect license scope | Oracle: development/testing copies used by Rimini go beyond archival/backup rights in licenses | Rimini: some environments (Giant Cement, Novell) were used only for archival/back-up as allowed by license | Court: genuine factual disputes for Giant Cement and Novell (denied summary judgment on express-license there); archival use did not defeat Oracle’s claims for Flint/Pittsburgh where licenses limited off-site copies |
Key Cases Cited
- Range Road Music, Inc. v. East Coast Foods, Inc., 668 F.3d 1148 (9th Cir. 2012) (elements of copyright-infringement prima facie case)
- Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072 (9th Cir. 2006) (copying element in copyright cases)
- Triad Sys. Corp. v. Southeastern Express Co., 64 F.3d 1330 (9th Cir. 1995) (copying entire programs to provide competing support constitutes infringement)
- MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993) (affirming infringement where defendant copied plaintiff’s software onto its systems to provide maintenance services)
- LGS Architects, Inc. v. Concordia Homes, 434 F.3d 1150 (9th Cir. 2006) (license scope can be exceeded and thus not defeat infringement)
- S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081 (9th Cir. 1989) (contract interpretation governs license scope)
- Field v. Google, Inc., 412 F. Supp. 2d 1106 (D. Nev. 2006) (implied license requires owner’s knowledge and encouragement of the use)
- Stewart v. Abend, 495 U.S. 207 (1990) (derivative-work rights distinct from reproduction/distribution rights)