`
`
`
`
`
`
`APPENDIX
`APPENDIX
`
`
`
`
`
`
`
`
`
`1a
`
`APPENDIX A
`
`FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`ORACLE USA, INC., a Colorado
`corporation; ORACLE
`AMERICA, INC., a Delaware
`corporation; ORACLE
`INTERNATIONAL
`CORPORATION, a California
`corporation,
`
`Nos. 16-16832
`
` 16-16905
`
`D.C. No.
`2:10-cv-00106-
`LRH-VCF
`
`Plaintiffs-Appellees,
`
`OPINION
`
`v.
`
`RIMINI STREET, INC., a Nevada
`corporation; SETH RAVIN, an
`individual,
`Defendants-
`Appellants.
`
`Appeals from the United States District Court
`for the District of Nevada
`Larry R. Hicks, District Judge, Presiding
`Argued and Submitted July 13, 2017
`San Francisco, California
`Filed January 8, 2018
`
`
`
`
`
`
`
`
`2a
`
`Before: Susan P. Graber and Michelle T. Friedland,
`Circuit Judges, and Jeremy D. Fogel, District Judge.
`
`Opinion by Judge Fogel
`
`
`SUMMARY**
`
`
`Copyright
`The panel affirmed in part, reversed in part, and
`vacated in part the district court’s judgment after a
`jury trial in favor of Oracle USA, Inc., on its copy-
`right infringement and California and Nevada state
`law claims against Rimini Street, Inc., a provider of
`third-party support for Oracle’s enterprise software,
`and Seth Ravin, Rimini’s CEO.
`Oracle licenses its software and also sells its li-
`censees maintenance contracts. The maintenance
`work includes software updates. In order to compete
`effectively with Oracle’s direct maintenance services,
`Rimini needed to provide software updates to its cus-
`tomers. With Oracle’s knowledge, Rimini copied Ora-
`cle’s copyrighted software in order to provide the up-
`dates. Rimini obtained software from Oracle’s web-
`site with automated downloading tools in direct con-
`travention of the terms of the website.
`
`
` The Honorable Jeremy D. Fogel, United States District
`Judge for the Northern District of California, sitting by desig-
`nation.
` ** This summary constitutes no part of the opinion of the
`court. It has been prepared by court staff for the convenience of
`the reader.
`
`
`
`
`
`3a
`
`The panel affirmed the district court’s partial
`summary judgment and partial judgment after trial
`on Oracle’s claims that Rimini infringed its copyright
`by copying under the license of one customer for
`work performed for other existing customers or for
`unknown or future customers, rather than restrict-
`ing such copying to work for that particular custom-
`er. The panel concluded that Rimini’s activities were
`not permissible under the terms of the licenses Ora-
`cle granted to its customers. The panel rejected Ri-
`mini’s argument that holding it accountable for its
`alleged conduct would condone misuse of Oracle’s
`copyright.
`The panel reversed the district court’s judgment
`after trial with respect to Oracle’s claims under the
`California Comprehensive Data Access and Fraud
`Act, the Nevada Computer Crimes Law, and Califor-
`nia’s Unfair Competition Law. The panel held that
`taking data from a website, using a method prohibit-
`ed by the applicable terms of use, when the taking
`itself generally is permitted, does not violate the
`CDAFA or the NCCL. Accordingly, Rimini did not
`violate these computer abuse statutes by using au-
`tomated tools to take data in direct contravention of
`Oracle’s terms of use. Because the district court
`granted judgment in favor of Oracle on Oracle’s Un-
`fair Competition Law claim based on its finding that
`Rimini violated the CDAFA, the panel reversed the
`district court’s determination that Rimini violated
`California’s Unfair Competition Law.
`The panel reduced the district court’s award of
`damages by the amount based on Rimini’s alleged
`violation of the CDAFA and NCCL. The panel af-
`firmed the district court’s award of prejudgment in-
`terest on the copyright claims.
`
`
`
`
`
`4a
`
`The panel reversed the district court’s perma-
`nent injunction based on alleged violations of the
`CDAFA. The panel vacated the district court’s per-
`manent injunction based on copyright infringement
`because the district court assessed the relevant fac-
`tors by reference to both the copyright and the
`CDAFA claims, without considering separately the
`propriety of issuing an injunction as to the copyright
`claims alone.
`The panel reversed the district court’s judgment
`with respect to Ravin’s liability for attorneys’ fees. As
`to Rimini, the panel vacated the fee award and re-
`manded for reconsideration in light of Oracle’s more
`limited success at litigation in view of the panel’s
`conclusion that there was no violation of the state
`computer laws.
`The panel reduced the district court’s award of
`taxable costs and affirmed its award of non-taxable
`costs.
`
`
`COUNSEL
`Mark A. Perry (argued) and Jeremy M. Christiansen,
`Gibson Dunn & Crutcher LLP, Washington, D.C.;
`Blaine H. Evanson, Joseph A. Gorman, and Joseph
`C. Hansen, Gibson Dunn & Crutcher LLP, Los Ange-
`les, California; for Defendants-Appellants.
`Paul D. Clement (argued), Erin E. Murphy, and Mat-
`thew D. Rowen, Kirkland & Ellis LLP, Washington,
`D.C.; William A. Isaacson and Karen L. Dunn, Boies
`Schiller & Flexner LLP, Washington, D.C.; Thomas
`S. Hixson and John A. Polito, Morgan Lewis & Bock-
`ius LLP, San Francisco, California; David B. Salm-
`ons, Morgan Lewis & Bockius LLP, Washington,
`D.C.; for Plaintiffs-Appellees.
`
`
`
`
`
`5a
`
`Jamie Williams and Aileen Nguyen, San Francisco,
`California, as and for Amicus Curiae Electronic
`Frontier Foundation.
`
`
`OPINION
`FOGEL, District Judge:
`Oracle USA, Inc. and related entities (collective-
`ly, “Oracle”) licenses its proprietary enterprise soft-
`ware for a substantial one-time payment. Oracle also
`sells its licensees maintenance contracts for the
`software that are renewed on an annual basis. The
`maintenance work includes software updates, which
`Oracle makes available to purchasers of the con-
`tracts through its support website.
`At all relevant times, Rimini Street, Inc. (“Rimi-
`ni’) provided third-party support for Oracle’s enter-
`prise software, in lawful competition with Oracle’s
`direct maintenance services. But in order to compete
`effectively, Rimini also needed to provide software
`updates to its customers.1 Creating these software
`updates inherently required copying Oracle’s copy-
`righted software, which, unless allowed by license,
`would be copyright infringement. With Oracle’s
`knowledge, Rimini in fact did copy the software to
`provide the updates. At least from late 2006 to early
`2007, Rimini obtained software from Oracle’s website
`with automated downloading tools in direct contra-
`vention of the terms of use of the website.
`
` 1 All of Rimini’s customers pertinent to this dispute were li-
`censees of Oracle’s software, but not all licensees of Oracle’s
`software are Rimini’s customers. To avoid confusion, we will
`use the word “customers” to refer to the subset of Oracle’s licen-
`sees who did contract or might contract with Rimini for the
`maintenance of Oracle’s software.
`
`
`
`
`
`6a
`
`Oracle filed suit against Rimini and Rimini’s
`CEO, Seth Ravin (“Ravin”), in the District of Nevada
`in 2010. After lengthy and sometimes contentious
`discovery and motion practice, the district court
`granted partial summary judgment to Oracle on cer-
`tain aspects of Oracle’s copyright infringement claim,
`and a jury found in favor of Oracle on others after
`trial. The jury also found against both Rimini and
`Ravin with respect to Oracle’s claims under the Cali-
`fornia Comprehensive Data Access and Fraud Act
`(“CDAFA”) and the Nevada Computer Crimes Law
`(“NCCL”) (collectively, the “state computer laws”).
`Based on the jury’s determination with respect to the
`CDAFA claim, the district court entered judgment
`against Rimini and Ravin under California’s Unfair
`Competition Law (“UCL”). The jury awarded damag-
`es in the sum of $50,027,000 which, when prejudg-
`ment interest, attorneys’ fees and costs were added,
`resulted
`in a
`total monetary
`judgment of
`$124,291,396.82. The district court also issued an ex-
`tensive permanent injunction. Rimini subsequently
`filed this timely appeal. The Electronic Frontier
`Foundation (“EFF”) has filed an amicus brief with
`respect to the state computer law claims.
`The first principal dispute in this case is whether
`Rimini copied Oracle’s software in a manner that in-
`fringed Oracle’s copyright. It is undisputed that Ri-
`mini used Oracle’s software to develop and test up-
`dates for its customers and that the software licens-
`es, with certain restrictions, permitted Oracle’s li-
`censees to hire Rimini to perform such work for
`them. There are numerous subtleties involved but, at
`the highest level of generality, Rimini’s alleged copy-
`right infringement included copying under the li-
`cense of one customer for work for other existing cus-
`tomers or for unknown or future customers, rather
`
`
`
`
`
`7a
`
`than restricting such copying to work for that partic-
`ular customer. The second principal dispute is
`whether Rimini and Ravin violated applicable state
`laws intended to prevent computer-based fraud by
`flouting Oracle’s restrictions against the use of au-
`tomated tools to download software from its website.
`We also consider the appropriateness of the remedies
`awarded by the district court.
`As explained below, we affirm the judgment with
`respect to the copyright infringement claims. We also
`affirm the remedies with respect to those claims, ex-
`cept that we vacate the injunction and the award of
`attorneys’ fees and remand for reconsideration in
`light of this opinion. We modify the district court’s
`award of taxable costs as the parties have agreed.
`We reverse the judgment with respect to Oracle’s
`claims under the state computer laws and the UCL.
`I. Copyright Infringement Claims
`A. The Software in Suit2
`Four software products are at issue: J.D. Ed-
`wards, Siebel, PeopleSoft, and Database. The prod-
`ucts are related, but they do not perform identical
`functions. As the district court explained:
`Oracle’s Enterprise Software platforms
`have both an installed database compo-
`nent and an installed application com-
`ponent. The database component pro-
`vides a foundation for the application
`software which then uses, stores, and
`
`
` 2 The district court specifically distinguished between Ora-
`cle’s copyright in software and Oracle’s copyright in the soft-
`ware documentation. Rimini does not appeal the jury’s deter-
`mination that Rimini infringed the documentation copyright.
`
`
`
`
`
`8a
`
`retrieves data in the database for use
`across an entire organization. Oracle’s
`Enterprise Software application pro-
`grams— including its PeopleSoft, J.D.
`Edwards, and Siebel-branded prod-
`ucts—are run on Oracle’s Relational
`Database Management Software (“Ora-
`cle Database”) as the database compo-
`nent for the programs.
`Oracle USA, Inc. v. Rimini St., Inc., 6 F. Supp. 3d
`1108, 1113 (D. Nev. 2014) (“Oracle II”). J.D. Ed-
`wards, Siebel, and PeopleSoft were acquired by Ora-
`cle from other companies, while Oracle developed
`Database internally.
`Because of this history and because of the tech-
`nical differences among them, the licensing terms of
`the four products are not identical. We first address
`J.D. Edwards and Siebel. We next turn to PeopleSoft
`and, finally, to Database.
`B. J.D. Edwards and Siebel
`Oracle’s claims as to the J.D. Edwards and Siebel
`software were submitted to the jury. Rimini appeals
`the district court’s denial of its motion for judgment
`as a matter of law following the jury’s verdict. “We
`review de novo the district court’s denial of a motion
`for judgment as a matter of law. A renewed motion
`for judgment as a matter of law is properly granted
`only ‘if the evidence, construed in the light most fa-
`vorable to the nonmoving party, permits only one
`reasonable conclusion, and that conclusion is contra-
`ry to the jury’s verdict.” Castro v. Cty. of Los Angeles,
`833 F.3d 1060, 1066 (9th Cir. 2016) (en banc) (cita-
`tions omitted) (quoting Pavao v. Pagay, 307 F.3d 915,
`918 (9th Cir. 2002)) (internal quotation mark omit-
`
`
`
`
`
`9a
`
`ted), cert. denied, 137 S. Ct. 831 (2017). “A jury’s ver-
`dict must be upheld if it is supported by substantial
`evidence, which is evidence adequate to support the
`jury’s conclusion, even if it is also possible to draw a
`contrary conclusion.” Id. (quoting Pavao, 307 F.3d at
`918) (internal quotation marks omitted).
`Rimini challenges the jury’s finding of copyright
`infringement with respect to these products on two
`grounds. First, it argues that its activities were per-
`missible under the terms of the licenses Oracle
`granted to its customers. Second, it contends that
`holding it accountable for its alleged conduct would
`condone copyright misuse. Neither of these argu-
`ments is persuasive.
`
`1. Express License Defense
`As will be explained in further detail, there is no
`dispute that, absent an applicable license, Rimini’s
`accused acts violated the exclusive right Oracle en-
`joys as owner of the software copyright to copy or to
`modify the software. Rimini asserts as an affirmative
`defense that its accused acts were expressly licensed.
`The Supreme Court has explained the express li-
`cense defense as follows:
`“Anyone who violates any of the exclu-
`sive rights of the copyright owner,” that
`is, anyone who trespasses into his ex-
`clusive domain by using or authorizing
`the use of the copyrighted work in one
`of the five ways set forth in the statute,
`“is an infringer of the copyright.” Con-
`versely, anyone who is authorized by
`the copyright owner to use the copy-
`righted work in a way specified in the
`
`
`
`
`
`10a
`
`statute . . . is not an infringer of the
`copyright with respect to such use.”
`Sony Corp. of Am. v. Universal City Studios, Inc., 464
`U.S. 417, 433 (1984) (quoting 17 U.S.C. § 501(a)).
`Thus, “[t]he existence of a license creates an affirma-
`tive defense to a claim of copyright infringement.”
`Worldwide Church of God v. Phila. Church of God,
`Inc., 227 F.3d 1110, 1114 (9th Cir. 2000). However,
`“[w]hen a licensee exceeds the scope of the license
`granted by the copyright holder, the licensee is liable
`for infringement.” LGS Architects, Inc. v. Concordia
`Homes of Nev., 434 F.3d 1150, 1156 (9th Cir. 2006).
`As Rimini itself did not have a license to copy or
`to modify from Oracle, the success of Rimini’s af-
`firmative defense turns on whether Rimini’s accused
`acts came within the scope of licenses held by its cus-
`tomers.
`
`a) Software Licenses
`The pertinent provisions of the J.D. Edwards and
`Siebel licenses are excerpted below:
`Software License Language
`J.D.
`“Customer shall not, or cause anyone else
`Edwards
`to . . . (iii) copy the Documentation or
`Software except to the extent necessary
`for Customer’s archival needs and to
`support the Users.”
`“Customer” may “reproduce, exactly as
`provided by [Oracle], a reasonable num-
`ber of copies of the Programs and the An-
`cillary Programs solely for archive or
`emergency back-up purposes or disaster
`recovery and related testing.”
`
`Siebel
`
`
`
`
`
`11a
`
`Like the language of the licenses themselves, the
`district court’s constructions of the two licenses when
`instructing the jury were similar.
`The district court told the jury that it was per-
`missible for Rimini, as a third-party, to make copies
`of the Oracle software to support its customers by
`archiving, backup, and related testing. At the same
`time, the district court instructed that the licenses
`“do[] not mean that a third party like Rimini Street
`is authorized to make copies of the . . . software ap-
`plication . . . to use the customer’s software . . . to
`support other customers.”
`
`b) Accused Acts
`(1) Background
`Work produced by humans is rarely if ever per-
`fect, and computer software is no exception. Even
`casual users of computers are familiar with regular
`software patches and updates intended to correct
`glitches and to modify software in light of changing
`circumstances.
`However, unlike the off-the-shelf consumer soft-
`ware used by individuals in everyday life, enterprise
`software employed by large organizations is custom-
`ized around the organizations’ specific needs. While
`producers of consumer software generally design up-
`dates around standard use cases and make them
`available for end users to download and install di-
`rectly, updates to enterprise software must be tested
`and modified to fit with bespoke customizations be-
`fore being put to actual use.
`This testing process requires the creation of “de-
`velopment environments.” A “development environ-
`ment,” sometimes called a “sandbox,” is distinct from
`
`
`
`
`
`12a
`
`a “production environment,” which is the “live” ver-
`sion of the software that members of the enterprise
`ultimately deploy. As the district court explained:
`In order to develop and test software
`updates for Enterprise Software, sup-
`port service providers . . . create devel-
`opment environments of the software. A
`development environment is a software
`environment that contains a copy of the
`software program which is then modi-
`fied to develop and test software up-
`dates. Given the critical nature of En-
`terprise Software programs, updates to
`the software must be fully tested and
`verified in a development environment
`before they are provided to a customer.
`Oracle USA, Inc. v. Rimini St., Inc., 6 F. Supp. 3d
`1086, 1092 n.4 (D. Nev. 2014) (“Oracle I”).
`In other words, the very work of maintaining
`customized software requires copying the software,
`which without a license to do so is a violation of the
`exclusive right of the copyright owner. Here, it is un-
`disputed that the licenses generally permit Oracle’s
`licensees to maintain the software and make devel-
`opment environments for themselves. However, some
`licensees of the software, lacking either the capabil-
`ity or the interest, opt to outsource the work of
`maintenance to others, such as Rimini or even Ora-
`cle itself.
`
`(2) “Direct Use” and “Cross Use”
`Oracle alleges that Rimini engaged in two dis-
`tinct types of copyright infringement with respect to
`J.D. Edwards and Siebel. The first has to do with the
`way it created development environments, under col-
`
`
`
`
`
`13a
`
`or of a license held by these particular, identifiable
`customers of Rimini, for that specific customer. We
`refer to this as “direct use.”
`The second is “cross use.”3 “Cross use,” generally
`speaking, is the creation of development environ-
`ments, under color of a license of one customer, to
`support other customers. There are numerous forms
`of “cross use.” In its narrowest form, “cross use” is
`the making of development environments, under col-
`or of a license held by one identifiable customer of
`Rimini, for another identifiable customer of Rimini
`that also holds a license. It also may include the cre-
`ation of development environments under a given li-
`cense for other customers of Rimini that may them-
`selves hold licenses or even for licensees who have
`yet to become customers of Rimini. Rimini claims
`that “cross use” is not infringement, arguing that it
`may create environments without restriction because
`any organization that might hire Rimini to service
`its software would itself have a license to create de-
`velopment environments. Rimini’s counsel explained
`at oral argument that “cross use” enabled it to reduce
`expense by reusing work it had done for one custom-
`er in providing service to others.
`
`c) Analysis
`Rimini argues on appeal that the jury instruc-
`tions were erroneous because they suggested that
`
`
` 3 Rimini offered this description of its “cross use” in its clos-
`ing statement to the jury: “If we have multiple clients with the
`exact same release, the same rights, we would come up with
`one fix and then apply it to other customers that had the exact
`same rights. That’s the cross-use, the reusing of updates that
`you’ve heard about in this case.”
`
`
`
`
`
`14a
`
`certain direct uses and cross uses were prohibited
`while Rimini believes they were permitted.
`With respect to “direct use,” we may dispose
`quickly of Rimini’s claim that the district court con-
`strued “direct use” out of the licenses. Rimini suc-
`cessfully persuaded the district court to include the
`language, “to support the customer’s use,” in its jury
`instruction about the J.D. Edwards license. The in-
`struction concerning Siebel told the jury specifically
`that Rimini could hold copies of the Siebel software
`application “solely for customer’s archive or emer-
`gency back-up purposes or disaster recovery and re-
`lated testing.” Rimini did not object to that instruc-
`tion at trial, and, contrary to Rimini’s arguments on
`appeal, those instructions treated these forms of di-
`rect use as permitted.
`Rimini also argues, however, that the instruc-
`tions should have approved expressly of other forms
`of direct use. The district court had no reason or need
`to instruct the jury that the licenses permitted other
`types of direct use, because, as the district court’s or-
`der shows, Rimini had represented that the only
`forms of direct use it engaged in were those allowed
`by the instruction:
`Rimini has proffered evidence that the
`development environments associated
`with [specific Siebel licensee] are used
`exclusively for archival and back-up
`purposes, and related testing, as direct-
`ly contemplated by [the license].
`Oracle I, 6 F. Supp. 3d at 1105 n.20; see also id. at
`1103 (similar findings concerning J.D. Edwards).
`Had Rimini wanted a broader construction, Rimini
`should have said so in district court. Having failed to
`
`
`
`
`
`15a
`
`do that, Rimini cannot complain that the jury found
`that Rimini’s direct use with respect to J.D. Edwards
`and Siebel exceeded the scope of the licenses.
`With respect to “cross use,” Rimini’s assertion—
`made for the first time in its reply brief to us—that
`“cross use” is a contractual rather than a copyright
`issue is not properly before us. The principal case on
`which Rimini relies, MDY Industries, LLC v. Bliz-
`zard Entertainment, Inc., 629 F.3d 928 (9th Cir.
`2011), was not cited in Rimini’s opening brief, and
`“on appeal, arguments not raised by a party in its
`opening brief are deemed waived,” Smith v. Marsh,
`194 F.3d 1045, 1052 (9th Cir. 1999).4
`As to the substance of its position, Rimini argues
`that, contrary to the jury instructions, the licenses in
`fact permit “cross use.” It observes that: 1) each of
`Rimini’s customers had its own license; 2) each li-
`cense permits copies to be made for archival and
`support purposes; 3) the licenses authorize the cus-
`tomers to outsource the archival and support work to
`third parties; and 4) such archival and support work
`includes the creation of development environments.
`Rimini dismisses evidence showing that it created
`development environments for future customers us-
`ing the license of an existing customer on the basis
`that future customers presumably would have li-
`censes that would permit them to hire Rimini to cre-
`ate development environments.
`
`
` 4 Even if we were to consider the applicability of MDY Indus-
`tries, that case teaches specifically the distinction between
`“conditions,” “the breach of which constitute copyright in-
`fringement,” and “covenants,” “the breach of which is actionable
`only under contract law.” 629 F.3d at 939. Rimini has offered no
`analysis as to which terms of the licenses at issue are “condi-
`tions” and which are “covenants.”
`
`
`
`
`
`16a
`
`Oracle properly responds that each of the licens-
`es at issue here “pointedly limits copying and use to
`supporting the ‘Licensee.’” The licenses do not au-
`thorize Rimini to “develop products Rimini could sell
`for Rimini’s financial gain.” Any work that Rimini
`performs under color of a license held by a customer
`for other existing customers cannot be considered
`work in support of that particular customer. The
`same logic applies to work Rimini performs for un-
`known, future customers. The licensees may hire a
`third party such as Rimini to maintain their soft-
`ware for them, but nothing in the licenses permits
`them to grant a nonparty to the license a general
`right to copy proprietary software.
`
`2. Copyright Misuse
`We turn next to the question of copyright misuse,
`which Rimini asserts as a defense. The copyright
`misuse doctrine prevents holders of copyrights “from
`leveraging their limited monopoly to allow them con-
`trol of areas outside the monopoly.” Apple Inc. v.
`Psystar Corp., 658 F.3d 1150, 1157 (9th Cir. 2011).
`(quoting A&M Records v. Napster, Inc., 239 F.3d
`1004, 1026 (9th Cir. 2001)) (internal quotation marks
`omitted). To that end, while it “does prevent copy-
`right holders from using the conditions to stifle com-
`petition,” “[t]he copyright misuse doctrine does not
`prohibit using conditions to control use of copyright-
`ed material.” Id. at 1159. Accordingly, the doctrine is
`to be “applied . . . sparingly”; specifically, it operates
`when copyright holders attempt to impose license
`agreements that would “prevent[] . . . licensee[s]
`from using any other competing product.” Id. at 1157
`(emphasis added).
`
`
`
`
`
`17a
`
`Rimini claims that holding it liable for copyright
`infringement would condone misuse of Oracle’s copy-
`right. In Rimini’s view, the district court’s pretrial
`construction of the licensing terms, as embodied in
`the jury instructions, “would foreclose competition in
`the aftermarket for third-party maintenance” be-
`cause it would limit copies made by third parties to
`those made only for archival and emergency backup
`purposes and because the software could not be ser-
`viced simply by making exact copies. Oracle counters
`that the licenses “plainly do not preclude third par-
`ties from developing competing software or providing
`competing support services,” but instead “require
`third parties to do so in ways that do not disregard
`Oracle’s exclusive rights under copyright law.”
`We agree with Oracle. The district court did not
`construe the licenses to permit only archival and
`emergency backup purposes. For example, the jury
`instructions as to J.D. Edwards stated specifically:
`If you find that the copies of the J.D.
`Edwards software application
`.
`.
`.
`housed on Rimini Street’s servers were
`used solely for the customer’s archival
`needs and to support the customer’s use,
`then that use is authorized by the J.D.
`Edwards
`software
`license
`agree-
`ment . . . .
`The district court gave similar instructions as to
`Siebel. (“[Y]ou are informed that the court has ruled
`as a matter of law that the Siebel software license
`agreements authorized . . . Rimini Street to make a
`reasonable number of copies . . . solely for the cus-
`tomer’s archive or emergency back-up purposes or
`disaster recovery and related testing.” (emphasis
`added)). These constructions would not preclude Ri-
`
`
`
`
`
`18a
`
`mini from creating development environments for a
`licensee for various purposes after that licensee has
`become a customer of Rimini.
`The only remaining question is whether it would
`be copyright misuse to forbid Rimini from creating
`development environments for licensees before they
`have become customers or, in other words, whether it
`would contravene the policy of the Copyright Act to
`allow Oracle, as a copyright holder, to have a head
`start in making copies. The Supreme Court has held
`that “the right of first publication” is “an important
`marketable subsidiary right.” Harper & Row, Pub-
`lishers, Inc. v. Nation Enters., 471 U.S. 539, 549
`(1985). Just as a copyright holder has the “right of
`first publication,” it also must enjoy the right of “first
`copy.” Giving a head start to Oracle in creating de-
`velopment environments is entirely consistent with
`the Supreme Court’s teaching in Harper.
`C. PeopleSoft
`The district court granted summary judgment on
`Oracle’s copyright claim with respect to PeopleSoft.
`“This Court reviews a district court’s grant of sum-
`mary judgment de novo. The Court must ‘determine
`whether, viewing the evidence in the light most fa-
`vorable to the nonmoving party, there are any genu-
`ine issues of material fact and whether the district
`court correctly applied the relevant substantive
`law.’” Mitchell v. Washington, 818 F.3d 436, 441–42
`(9th Cir. 2016) (quoting Lopez v. Smith, 203 F.3d
`1122, 1131 (9th Cir. 2000) (en banc)).
`Rimini again asserts an express license defense
`and contends that it would be copyright misuse to
`hold it liable for infringement. Again, its arguments
`are without merit.
`
`
`
`
`
`19a
`
`1. Express License Defense
`The PeopleSoft license is similar to its J.D. Ed-
`wards and Siebel counterparts, but it contains an
`additional limitation about “[the licensee’s] facili-
`ties”:se Language
`Software
`License Language
`PeopleSoft5
`“Licensee may . . . make a reasonable
`number of copies of the Software, sole-
`ly for: (i) use in accordance with the
`terms set forth herein . . . ; (ii) archive
`or
`emergency back-up purposes;
`and/or (iii) disaster recovery testing
`purposes[.]” “PeopleSoft grants Licen-
`see a . . . license to use the licensed
`Software, solely for Licensee’s inter-
`nal data processing operations at its
`facilities[.]”
`Based on this limitation, the district court con-
`strued the PeopleSoft license more restrictively than
`the J.D. Edwards and Siebel licenses. Specifically, it
`stated that “[the PeopleSoft license] expressly limits
`copying the licensed software to only the [licensee’s]
`facilities.” Oracle I, 6 F. Supp. at 1097 (emphasis
`omitted).
`Because of the difference in the construction of
`the pertinent licenses, the nature of Oracle’s claim
`concerning PeopleSoft is somewhat different in char-
`
` 5 Two different PeopleSoft licenses are at issue here, one be-
`longing to the City of Flint and the other to the Pittsburgh Pub-
`lic Schools. The district court concluded that the two licenses
`have “similar” language. Oracle I, 6 F. Supp. 3d at 1100. On
`appeal, the parties make no distinction between the two licens-
`es; the language discussed here is drawn from the license held
`by the City of Flint.
`
`
`
`
`
`20a
`
`acter from those concerning J.D. Edwards and
`Siebel. Specifically, the accused act concerning Peo-
`pleSoft is the creation of development environments,
`whether for “direct use” or “cross use,” on Rimini’s
`own computers, as opposed to the licensees’ comput-
`ers. Rimini describes this practice as “local hosting,”
`a term that we adopt in this opinion. Rimini asserts
`that it does this to avoid transmission delays.
`In the words of the district court, “it is undisput-
`ed that Rimini made copies of the licensed software
`at its own facilities and outside the control of the
`[customers].” Id. at 1101 (emphasis added). The dis-
`trict court concluded that the PeopleSoft licenses of
`Rimini’s customers “do[] not authorize Rimini’s off-
`site copies of the licensed software,” and therefore
`granted summary judgment to Oracle on the copy-
`right infringement claims as to PeopleSoft. Id. at
`1097.
`On appeal, Rimini contends that “[a licensee’s]
`facilities” can span Rimini’s own servers. In its
`words:
`
`Sophisticated companies like Oracle’s
`customers (and Rimini’s clients) do not
`keep all their servers on the actual
`premises of their principal place of
`business . . . . They may own some,
`lease others, and contract with third
`parties for still more capacity. All are
`encompassed within the plain meaning
`of “facilities.”
`We agree with Oracle that “facilities under the
`control of a third party” could not qualify as “the li-
`censee’s facilities.” It was not only sensible but also
`necessary for the district court to read a requirement
`
`
`
`
`
`21a
`
`of “control” into the definition of “[a licensee’s] facili-
`ties.” The record supports the district court’s conclu-
`sion that the Rimini servers where the copying took
`place were “outside the control of the [customers].”
`Id. at 1101. Indeed, Rimini made no showing that its
`customers had even constructive control of the serv-
`ers.6
`
`2. Copyright Misuse
`As just explained, the district court concluded
`that Rimini infringed the PeopleSoft copyright by
`“local hosting,” that is, by maintaining copies of Peo-
`pleSoft on its own computers as opposed to its cus-
`tomers’ computers. Oracle I, 6 F. Supp. 3d at 1097.
`Rimini offers no argument as to why a restriction on
`the location of copies would stifle competition and
`run afoul of the copyright misuse doctrine. Id. Rimi-
`ni’s inability to “local host” may result in inconven-
`ience and expense on its part, but that
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
