81 F.4th 843
9th Cir.2023Background:
- Oracle develops enterprise software (PeopleSoft, J.D. Edwards, Siebel, Oracle Database) and licenses it to customers; licensees may hire third-party support providers like Rimini.
- In earlier litigation (Rimini I), Oracle obtained a permanent injunction (narrowed on appeal) barring Rimini from reproducing, preparing derivative works from, or using licensed Oracle software except to support the specific licensee’s own systems; it also barred certain cross-use and Database copying.
- Rimini moved to Process 2.0 (remote, client-specific environments) after earlier findings of infringement; Rimini later sued for a declaratory judgment in a separate action (Rimini II).
- After extended discovery in Rimini I, the district court identified ten possible injunction violations, tried the contempt matter, and found contempt on five issues (Issues 1–4 and 8), imposing $630,000 in statutory sanctions plus fees.
- Rimini appealed; the Ninth Circuit affirmed contempt on Issues 1–4 (local hosting and cross-use), reversed on Issue 8 (Oracle Database copying as presented), vacated the injunction language insofar as it banned de minimis copying (Issues 7 & 9), and remanded the sanctions for recalculation.
Issues:
| Issue | Plaintiff's Argument (Oracle) | Defendant's Argument (Rimini) | Held |
|---|---|---|---|
| Issue 1 — Local hosting | Rimini retained copies of PeopleSoft on local systems contrary to Paragraph 5 of the injunction | Process 2.0 is materially different from earlier conduct; any local copies were incidental and handled under internal policy | Affirmed: contempt for three local-copy incidents; district court did not abuse discretion |
| Issues 2–4 — Cross-use of dev environments | Rimini used City of Eugene’s environment to develop/test fixes for other clients, violating Paragraphs 4 and 6 | Cross-use now involves remote, client-specific environments; clients’ licenses permit third-party support; TiVo “colorably different” test should apply | Affirmed: contempt; court rejects TiVo test and finds cross-use prohibited absent benefit to licensee |
| Issue 8 — Oracle Database copying | Rimini copied prvtsidx.pbl and used it, violating Paragraph 15 | Copying was authorized/covered by the client’s Oracle License and Service Agreement (OLSA); copying incidental to permitted use; previously waived defense not applicable here | Reversed: district court abused discretion; OLSA defense plausible and copying arose in permitted support context |
| Issues 7 & 9 — De minimis J.D. Edwards source-code snippets | Oracle contends injunction should bar any copying of its source code snippets | Rimini: snippets were nonfunctional, de minimis, used only as markers; de minimis copying is nonactionable under the Copyright Act | Vacated in part: district court erred to the extent it enjoined de minimis copying; de minimis copying not prohibited by Copyright Act |
| Sanctions — $630,000 statutory award and fees | Sanctions compensated Oracle under §504 statutory-damages framework; punitive character denied | Rimini says award is punitive and purgeable; challenges amount and process | Affirmed in principle as civil, compensatory sanctions within statutory ranges; vacated and remanded for recalculation consistent with reversal on Issue 8 |
Key Cases Cited
- TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) (Fed. Cir. colorably-different test for contempts in patent design-around context)
- Oracle USA, Inc. v. Rimini St., Inc., 879 F.3d 948 (9th Cir. 2018) (prior appeal resolving infringement and scope of remedies)
- Bell v. Wilmott Storage Servs., LLC, 12 F.4th 1065 (9th Cir. 2021) (de minimis copying doctrine in copyright law)
- Int'l Union, United Mine Workers v. Bagwell, 512 U.S. 821 (1994) (distinction between civil and criminal contempt and required protections)
- Columbia Pictures Indus., Inc. v. Fung, 710 F.3d 1020 (9th Cir. 2013) (injunctive relief must not be more burdensome than necessary)
- BMG Music v. Perez, 952 F.2d 318 (9th Cir. 1991) (statutory damages can be used in contempt proceedings)
- United States v. DAS Corp., 18 F.4th 1032 (9th Cir. 2021) (standards for denying contempt where good-faith interpretation or substantial compliance exists)