`NO. 17-1625
`
`In the
`Supreme Court of the United States
`________________
`RIMINI STREET, INC., et al.,
`Petitioners,
`
`v.
`ORACLE USA, INC., et al.,
`Respondents.
`
`________________
`On Writ of Certiorari to the
`United States Court of Appeals
`for the Ninth Circuit
`________________
`BRIEF FOR RESPONDENTS
`________________
`
`WILLIAM A. ISSACSON
`KAREN L. DUNN
`BOIES, SCHILLER
` & FLEXNER LLP
`1401 New York
` Avenue, NW
`Washington, DC 20005
`(202) 237-2727
`
`PAUL D. CLEMENT
` Counsel of Record
`ERIN E. MURPHY
`MATTHEW D. ROWEN
`LAURA WOLK
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street, NW
`Washington, DC 20005
`(202) 879-5000
`paul.clement@kirkland.com
`Counsel for Respondents
`(Additional Counsel Listed on Inside Cover)
`
`December 13, 2018
`
`
`
`
`
`DAVID B. SALMONS
`MORGAN, LEWIS
` & BOCKIUS LLP
`2020 K Street, NW
`Washington, DC 20006
`(202) 373-6238
`
`
`
`
`
`DALE M. CENDALI
`JOSHUA L. SIMMONS
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`(212) 446-4800
`
`
`
`
`
`QUESTION PRESENTED
`The Copyright Act provides that a court “in its
`discretion may allow the recovery of full costs” to a
`prevailing party. 17 U.S.C. §505. That “full costs”
`language stands in contrast to the default federal cost-
`shifting statute, which would apply even in the
`absence of specific language in the Copyright Act, and
`under which courts may “tax as costs” only a subset of
`litigation expenses—generally known as “taxable
`costs.” See 28 U.S.C. §1920.
`The question presented is:
`Whether the Copyright Act, which gives courts
`“discretion” to award prevailing parties their “full
`costs,” authorizes recovery of the full range of
`litigation costs, or authorizes recovery of only the
`subset of costs that are taxable under 28 U.S.C. §1920.
`
`
`
`
`
`ii
`
`PARTIES TO THE PROCEEDING
`Petitioners, and defendants below, are Rimini
`Street, Inc., and Seth Ravin.
`Respondents, and plaintiffs below, are Oracle
`America, Inc., and Oracle International Corporation.
`Although Oracle USA, Inc., continues to be named in
`the case caption as a plaintiff, that entity no longer
`exists.
`
`
`
`
`
`
`
`
`iii
`
`CORPORATE DISCLOSURE STATEMENT
`Oracle Corporation
`is the ultimate parent
`company of Oracle America, Inc., and Oracle
`International Corporation. Oracle Corporation also
`was the ultimate parent of Oracle USA, Inc., but that
`entity no longer exists. Oracle Corporation wholly
`owns, through one or more of its privately-held,
`wholly-owned subsidiaries, Oracle America, Inc., and
`Oracle International Corporation. No other publicly
`held corporation owns 10% or more of the stock in
`Oracle America,
`Inc., or Oracle
`International
`Corporation.
`
`
`
`
`
`
`
`
`iv
`
`TABLE OF CONTENTS
`QUESTION PRESENTED .......................................... i
`PARTIES TO THE PROCEEDING ........................... ii
`CORPORATE DISCLOSURE STATEMENT ........... iii
`TABLE OF AUTHORITIES ...................................... vi
`INTRODUCTION ....................................................... 1
`STATEMENT OF THE CASE ................................... 1
`A. Statutory Background .................................. 1
`B. Proceedings Below ........................................ 7
`SUMMARY OF ARGUMENT .................................. 12
`ARGUMENT ............................................................. 16
`I. The Copyright Act’s “Full Costs” Provision
`Authorizes Recovery Of All Litigation Costs,
`Not Just A Subset .............................................. 16
`A. The Text of the Copyright Act Is Clear ..... 17
`B. Petitioners’ Effort to Read “Full Costs” as
`a Constraint on District Court Discretion
`Is Unavailing .............................................. 22
`C. “Costs,” “Expenses,” and “Fees” Are Not
`the Distinct Terms Petitioners Suggest .... 24
`D. Giving §505 its Plain Meaning Does Not
`Create Any Superfluity .............................. 29
`II. The Plain-Text Reading Of §505 Is Entirely
`Consistent With This Court’s Precedent .......... 32
`III. Historical Context Confirms That “Full
`Costs” Means Full Costs ................................... 36
`A. “Full Costs” Did Not Have Any of the
`Various Meanings Petitioners Try to
`Give it in 1831 ............................................ 37
`
`
`
`
`
`v
`
`B. “Full Costs” Was Not Limited to “Party
`and Party” Costs in England in 1831 ........ 43
`IV. Policy Considerations Support Interpreting
`“Full Costs” To Include All Forms Of Costs ..... 48
`CONCLUSION ......................................................... 57
`
`
`
`
`
`vi
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Alyeska Pipeline Serv. Co.
`v. Wilderness Soc’y,
`421 U.S. 240 (1975) ................................................ 39
`Arcambel v. Wiseman,
`3 U.S. (3 Dall.) 306 (1796) ..................................... 30
`Arlington Cent. Sch. Dist. Bd. of Educ.
`v. Murphy,
`548 U.S. 291 (2006) .......................................... 35, 36
`Avery v. Wood & Sons (1891)
`65 L.T. 122 (Eng.) .................................................. 47
`Baez v. U.S. Dep’t of Justice,
`684 F.2d 999 (D.C. Cir. 1982) ................................ 30
`Barnhart v. Sigmon Coal Co.,
`534 U.S. 438 (2002) ................................................ 16
`Bos. Mfg. Co. v. Fiske,
`3 F. Cas. 957 (C.C.D. Mass. 1820) ......................... 30
`Budinich v. Becton Dickinson & Co.,
`486 U.S. 196 (1988) .......................................... 24, 29
`Chambers v. NASCO, Inc.,
`501 U.S. 32 (1991) .................................................. 52
`Crawford Fitting Co. v. J. T. Gibbons, Inc.,
`482 U.S. 437 (1987) ................................ 5, 32, 33, 34
`Douglas v. Cunningham,
`294 U.S. 207 (1935) ................................................ 55
`F.W. Woolworth Co. v. Contemporary Arts,
`344 U.S. 228 (1952) ............................................ 7, 56
`
`
`
`
`
`vii
`
`Fink v. Gomez,
`239 F.3d 989 (9th Cir. 2001) .................................. 52
`Firstar Bank, N.A. v. Faul,
`253 F.3d 982 (7th Cir. 2001) .................................. 28
`Fogerty v. Fantasy, Inc.,
`510 U.S. 5171 (1994) .......................................... 6, 51
`Goodyear Tire & Rubber Co. v. Haeger,
`137 S. Ct. 1178 (2017) ............................................ 52
`Gross v. FBL Fin. Servs.,
`557 U.S. 167 (2009) ................................................ 17
`Husted v. A. Philip Randolph Inst.,
`138 S. Ct. 1833 (2018) ................................ 22, 23, 29
`In re Moore,
`739 F.3d 724 (5th Cir. 2014) .................................. 53
`In re Paoli R.R. Yard PCB Litig.,
`221 F.3d 449 (3d Cir. 2000) ................................... 44
`Irwine v. Reddish (1822),
`106 Eng. Rep. 1382 (K.B.) ..................................... 46
`Jamieson v. Trevelyan (1855)
`156 Eng. Rep. 642 (Exchequer) ............................. 47
`Kirtsaeng v. John Wiley & Sons, Inc.,
`136 S. Ct. 1979 (2016) ............................................ 54
`Loughrin v. United States,
`573 U.S. 351 (2014) ................................................ 18
`Marek v. Chesny,
`473 U.S. 1 (1985) .................................................... 24
`Marx v. Gen. Rev. Corp.,
`568 U.S. 371 (2013) .......................................... 23, 31
`Matal v. Tam,
`137 S. Ct. 1744 (2017) ............................................ 22
`
`
`
`
`
`viii
`
`Microsoft Corp. v. i4i Ltd. P’ship,
`564 U.S. 91 (2011) .................................................. 23
`Permanent Mission of India to the United
`Nations v. City of New York,
`551 U.S. 193 (2007) ................................................ 16
`Race Tires Am., Inc.
`v. Hoosier Racing Tire Corp.,
`674 F.3d 158 (3d Cir. 2012) ................................... 44
`Robinson v. Shell Oil Co.,
`519 U.S. 337 (1997) ................................................ 21
`Rodriguez-Garcia v. Davila,
`904 F.2d 90 (1st Cir. 1990) .................................... 52
`Sony Corp. of Am.
`v. Universal City Studios, Inc.,
`464 U.S. 417 (1984) ................................................ 50
`Sprague v. Ticonic Nat’l Bank,
`307 U.S. 161 (1939) ................................................ 39
`Taniguchi v. Kan Pac. Saipan, Ltd.,
`566 U.S. 560 (2012) .................................... 17, 18, 26
`The Appollon,
`22 U.S. (9 Wheat.) 362 (1824) ............................... 30
`Twentieth Century Fox Film Corp.
`v. Entm’t Distrib.,
`429 F.3d 869 (9th Cir. 2005) .................................. 18
`W. Va. Univ. Hospitals, Inc. v. Casey,
`499 U.S. 83 (1991) .................................................. 34
`White v. Reg’l Adjustment Bureau, Inc.,
`647 F. App’x 410 (5th Cir. 2016) ........................... 53
`Witham v. Hill (1759)
`95 Eng. Rep. 703 (K.B.) ..................................... 4, 44
`
`
`
`
`
`ix
`
`Zambrano v. City of Tustin,
`885 F.2d 1473 (9th Cir. 1989) ................................ 52
`Constitutional Provision
`U.S. Const. art. I, §8, cl. 8 ........................................ 36
`Statutes
`1 U.S.C. §§1-8 ........................................................... 18
`15 U.S.C. §1117 ............................................ 43, 54, 55
`17 U.S.C. §501 .......................................................... 21
`17 U.S.C. §502 .......................................................... 21
`17 U.S.C. §503 .......................................................... 21
`17 U.S.C. §504 ................................................ 7, 21, 49
`17 U.S.C. §505 .................................................. passim
`17 U.S.C. §911(f) ............................................. 7, 19, 23
`20 U.S.C. §1415(i)(3)(B) ............................................ 35
`28 U.S.C. §1821 .................................................. 18, 25
`28 U.S.C. §1828 ........................................................ 25
`28 U.S.C. §1912 ........................................................ 41
`28 U.S.C. §1920 ................................................ passim
`28 U.S.C. §1923 .............................................. 5, 25, 38
`28 U.S.C. §4001(g) .......................................... 7, 19, 23
`35 U.S.C. §284 .................................................... 43, 54
`35 U.S.C. §285 .......................................................... 54
`42 U.S.C. §1988 .................................................. 34, 35
`47 U.S.C. §553(c)(2) ........................................ 7, 19, 23
`47 U.S.C. §605(e)(3)(B)(iii) ................................... 7, 19
`Act of Sept. 29, 1789, ch. 21, 1 Stat. 93 ..................... 2
`Judiciary Act of 1789, ch. 20, 1 Stat. 73 .................. 41
`
`
`
`
`
`x
`
`Act of May 31, 1790, ch. 15, 1 Stat. 124 .................. 55
`Act of Mar. 1, 1793, ch. 20, 1 Stat. 332 .......... 2, 30, 37
`Act of Feb. 25, 1795, ch. 28, 1 Stat. 419 ......... 2, 30, 37
`Act of Mar. 31, 1796, ch. 11, 1 Stat. 451 ........ 2, 30, 37
`Act of Mar. 2, 1799, ch. 22, 1 Stat. 627 ...................... 3
`Copyright Act of 1831, ch. 16, 4 Stat. 436 ....... passim
`Act of Mar. 3, 1841, ch. 35, 5 Stat. 421 .................... 37
`Act of Feb. 26, 1853, ch. 80, 10 Stat. 161 ......... passim
`Act of July 8, 1870, ch. 230, 16 Stat. 198 ................... 2
`Copyright Act of 1909, ch. 320,
`35 Stat. 1075 .................................................. passim
`Copyright Act of 1976, Pub. L. No. 94-553,
`90 Stat. 2541 ............................................................ 2
`Rev. Stat. of N.Y., pt. III, ch. X, tit. I
`(1846-1848) ................................................. 30, 39, 40
`Rev. Stat. of the Commonwealth of Mass.,
`pt. III, tit. VI, ch. 121 (1836) ........................... 30, 40
`Rev. Stat. of the State of Mich., pt. III, tit. 5,
`ch. 1 (1837) ....................................................... 30, 41
`Rev. Stat. of the State of N.Y., pt. III, ch. X,
`tit. I (1829) ............................................................. 41
`Rev. Stat. of the State of Wisc., tit. XXIX,
`ch. 131 (1849) ......................................................... 41
`6 Edw. I., c. 1 (1275) (Eng.) .................................. 4, 43
`23 Hen. VIII, c. 15 (1531) (Eng.) .............................. 44
`8 Eliz., c. 2 (1566) (Eng.) .......................................... 44
`4 JAC. I, c. 3 (1607) (Eng.) ....................................... 44
`21 JAC. I, c. 16 (1623) (Eng.) ................................... 44
`
`
`
`
`
`xi
`
`8 Anne, c. 19 (1710) (Eng.) ................................... 4, 44
`5 & 6 Vict., c. 97 (1842) (Eng.) ................................. 46
`Rules
`Sup. Ct. R. 42.2 ......................................................... 41
`Fed. R. App. P. 38 ..................................................... 41
`Fed. R. Civ. P. 23(h) .................................................. 26
`Fed. R. Civ. P. 54(d) (1961) ...................................... 32
`Other Authorities
`30 Cong. Rec. S14286 (daily ed. Oct. 11,
`1984) (Statement of Sen. Robert W.
`Packwood, Chairman of Comm. on
`Commerce, Science, & Transp.) .............................. 7
`Admin. Office of the U.S. Courts, Judicial
`Business of the United States Courts: 2011
`Annual Report of the Director (2011) .................... 50
`Shyamkrishna Balganesh, Copyright
`Infringement Markets,
`113 Colum. L. Rev. 2277 (2013) ............................ 49
`Black’s Law Dictionary (10th ed. 2014) ................... 20
`Cambridge English Dictionary,
`https://bit.ly/2DLDx62
`(last visited Dec. 12, 2018) .................................... 17
`Sir Edward Coke, 2d Institutes (1681) ........... 4, 43, 47
`Comment, Distribution of Legal Expense
`Among Litigants, 49 Yale L.J. 699 (1940) ............ 30
`
`
`
`
`
`xii
`
`FBI Press Release, TomorrowNow, Inc.,
`Sentenced on Computer Intrusion and
`Copyright Infringement Charges
`(Sept. 14, 2011), http://bit.ly/2kVbc0j ..................... 8
`Jeanne C. Fromer, Expressive Incentives in
`Intellectual Property, 98 Va. L. Rev. 1745
`(2012) ........................................................................ 6
`John Gray, A Treatise on the Law of Costs
`(1853) .................................................................. 4, 45
` “Gray’s Law of Costs,” in Catalogue of Law
`Works Published by Messrs. Butterworth
`(1856) ...................................................................... 45
`John Leubsdorf, Toward a History of the
`American Rule on Attorney Fee Recovery,
`47 L. & Contemp. Probs. 9 (1984) ......................... 31
`Charles T. McCormick, Damages (1935) ....... 3, 44, 48
`Merriam-Webster’s Collegiate Dictionary
`(11th ed. 2003) ....................................................... 17
`III The Oxford English Dictionary (1989) ............... 17
`Antonin Scalia & Bryan A. Garner, Reading
`Law: The Interpretation of Legal Texts
`(2012) ...................................................................... 21
`Robert Spoo, Three Myths for Aging
`Copyrights: Tithonus, Dorian Gray,
`Ulysses, 31 Cardozo Arts & Ent. L.J. 77
`(2012) ...................................................................... 56
`Richard H. Stern, The Bundle of Rights
`Suited to New Technology,
`47 U. Pitt. L. Rev. 1229 (1986) .............................. 56
`Trial Stip., Oracle USA, Inc. v. SAP AG,
`No. 07-CV-1658 (N.D. Cal. Sept. 20, 2010) ............. 8
`
`
`
`
`
`xiii
`
`Samuel D. Warren & Louis D. Brandeis, The
`Right to Privacy, 4 Harv. L. Rev. 193 (1890) ........ 56
`1 Noah Webster, An American Dictionary of
`the English Language (1828) ................................. 17
`10 Charles A. Wright et al., Federal Practice
`& Procedure (3d ed. 1998) ......................... 17, 44, 52
`
`
`
`
`
`
`
`
`INTRODUCTION
`When the text of a statute is clear, judicial inquiry
`ends where it begins—with the text. That long-settled
`principle resolves this case. The Copyright Act
`provides that a court “in its discretion may allow the
`recovery of full costs” to a prevailing party. 17 U.S.C.
`§505. The statute means what it says: A prevailing
`party may receive his full costs, not just a subset of
`them. Petitioners’ contrary interpretation, under
`which “full costs” means “only those costs that may be
`independently taxed under 28 U.S.C. §1920,” cannot
`be reconciled with the plain terms of the statute, as it
`would render superfluous not just the word “full,” but
`the Copyright Act’s entire authorization for cost-
`shifting. Plain text and canons against superfluity
`and implied repeals all counsel against reading “full”
`to mean nothing at all. Neither this Court’s precedent
`nor petitioners’ flawed historical narrative remotely
`justifies reading §505’s grant of cost-shifting authority
`out of the U.S. Code. And sound copyright policy is
`served by giving §505 its plain meaning, rather than
`saddling prevailing parties with unreimbursable e-
`discovery costs that will leave valid copyrights
`unvindicated. The Court should give the text its plain
`meaning and hold that “full” means full, rather than
`nothing at all.
`STATEMENT OF THE CASE
`A. Statutory Background
`For nearly two centuries, the Copyright Act has
`expressly allowed prevailing parties to recover their
`“full costs” in copyright actions. Congress first
`established that rule in 1831, and it has maintained it
`ever since. See Copyright Act of 1831 (“1831 Act”), ch.
`
`
`
`2
`
`16, §12, 4 Stat. 436, 438-39; Act of July 8, 1870,
`ch. 230, §108, 16 Stat. 198, 215; Copyright Act of 1909
`(“1909 Act”), ch. 320, §40, 35 Stat. 1075, 1084;
`Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat.
`2541, 2586.
`in the
`The “full costs” approach reflected
`Copyright Act stands in marked contrast to how
`Congress addressed cost-shifting
`in other early
`statutes. In the 1789 Process Act, for instance,
`Congress expressly tied costs recovery to state law,
`providing that “rates of fees … in the circuit and
`district courts, in suits at common law, shall be the
`same in each state respectively as are now used or
`allowed in the supreme courts of the same.” Act of
`Sept. 29, 1789 (“Process Act”), ch. 21, §2, 1 Stat. 93,
`93. Congress took a similar approach in 1793,
`providing that in federal court cases other than
`admiralty and maritime (as to which the same Act
`established a separate regime), prevailing parties
`shall “be allowed … such compensation for their travel
`and attendance, and for attornies and counsellors’
`fees … as are allowed in the supreme or superior
`courts of the respective states.” Act of Mar. 1, 1793
`(“1793 Act”), ch. 20, §4, 1 Stat. 332, 333. The 1793 Act
`was twice extended before lapsing in 1799. See Act of
`Feb. 25, 1795 (“1795 Act”), ch. 28, 1 Stat. 419, 419; Act
`of Mar. 31, 1796 (“1796 Act”), ch. 11, 1 Stat. 451, 451-
`52.
`
`In other early provisions, Congress took a
`different approach, establishing an explicit federal
`rule for what costs may be recovered in particular
`causes of action or how much may be recovered for
`particular costs, rather than incorporating state law.
`
`
`
`
`
`3
`
`See, e.g., 1793 Act §§1-3 (establishing specific recovery
`rules for admiralty and maritime cases); Act of Mar. 2,
`1799, ch. 22, §71, 1 Stat. 627, 678 (specifying that a
`revenue officer prosecuted without sufficient cause
`was entitled to recover double costs).
`The 1831 Copyright Act adopted a copyright-
`specific approach to cost-shifting and took yet another
`tack. Unlike the Process Act and the general
`provisions of the 1793 Act, the Copyright Act did not
`incorporate state cost-shifting laws. Nor did it
`delineate specific categories and amounts of costs that
`may be recovered, like the admiralty and maritime
`provisions of the 1793 Act. Instead, the 1831
`Copyright Act provided that, in statutory copyright
`actions in federal court, “full costs shall be allowed.”
`1831 Act §12 (emphasis added). Making clear that
`this was a departure from its approach in other federal
`statutes, Congress added the express caveat “any
`thing
`in any
`former act
`to
`the
`contrary
`notwithstanding.” Id.
`While that “full costs” approach may have been a
`recognized departure
`from other early
`federal
`statutes, it was not an unprecedented approach in
`copyright law. “Full costs” is the language Parliament
`used in the Statute of Anne, the seminal English
`copyright act. When the Statute of Anne was enacted,
`it was well settled in England that a prevailing party
`could recover “not merely the fees which the party has
`had to pay to the officers of the court at the different
`stages of the litigation, but likewise the fees which he
`has had to pay to his own lawyers,” as well as various
`“other expenses of preparing his case for trial.”
`Charles T. McCormick, Damages 235 (1935). That
`
`
`
`
`
`4
`
`understanding developed out of the Statute of
`Gloucester, 6 Edw. I., c. 1 (1275) (Eng.), under which
`“costs” was liberally construed to include “all the legall
`cost of the suit,” except for the prevailing plaintiff’s
`expenses for “travell and losse of time.” Sir Edward
`Coke, 2d Institutes 288 (1681); see also Witham v. Hill
`(1759) 95 Eng. Rep. 703, 703 (K.B.) (Lord Chief Justice
`Willes) (Statute of Gloucester allowed recovery of the
`“whole costs of all the process in the cause”).1 Like
`other contemporaneous English statutes, the Statute
`of Anne took that then-settled rule one step further,
`specifying that not just a prevailing plaintiff, but also
`a prevailing defendant, could recover its “full costs.”
`See 8 Anne, c. 19, §8 (1710) (Eng.).
`About 20 years after Congress introduced the “full
`costs” rule into the Copyright Act, Congress adopted a
`default federal rule for taxing costs. Resolving
`disuniformity that had arisen after Congress’ initial
`cost-shifting statutes lapsed, Congress enacted the
`Fee Act of 1853, which established a uniform rule “in
`lieu of the compensation now allowed by law … in the
`several States.” Act of Feb. 26, 1853 (“Fee Act”),
`ch. 80, 10 Stat. 161, 161. While the Fee Act set rates
`of recovery for a wide variety of litigation expenses,
`including fees charged by attorneys, it made clear that
`
`1 England later shifted to a more restrictive cost-shifting
`regime. See infra pp.45-46. But (as petitioners conveniently
`neglect to mention) that shift did not crystalize until after the
`Statute of Anne and the 1831 Copyright Act were enacted.
`Indeed, as the very treatise upon which petitioners rely observes,
`the changes brought about in the mid-1800s so fundamentally
`altered costs jurisprudence as to render treatises written a few
`decades earlier “practically obsolete.” John Gray, A Treatise on
`the Law of Costs iii (1853).
`
`
`
`
`
`5
`
`it did not prevent attorneys from charging their clients
`reasonable compensation “in addition to the taxable
`costs.” Id.
`“The sweeping reforms of the 1853 [Fee] Act have
`been carried forward to today,” Crawford Fitting Co.
`v. J. T. Gibbons, Inc., 482 U.S. 437, 440 (1987), and are
`now embodied in the narrower range of taxable costs
`set forth in 28 U.S.C. §§1920 and 1821. In many cases,
`Congress
`carried
`forward provisions without
`adjustment for inflation. For example, while Congress
`provided for the recovery of $2.50 per deposition
`admitted into evidence in 1853, it provides the same
`amount today. See 28 U.S.C. §1923(a). Congress did
`not, however, carry its reforms through to the
`Copyright Act. While Congress acknowledged in the
`Fee Act that there were litigation costs “in addition to
`the taxable costs,” neither that Act nor any of its
`successors expressly mentioned the Copyright Act’s
`“full costs” provision, which pre-dated the Fee Act and
`was repeatedly re-enacted thereafter.
` Indeed,
`Congress repeatedly re-enacted the “full costs”
`language even as it dramatically overhauled other
`aspects of copyright law and made other changes to
`the cost-shifting provision.
`For instance, in 1909, after growing acceptance of
`the “American Rule” had created some uncertainty
`about whether attorneys’ fees could be recovered as
`costs, Congress amended the “full costs” provision to
`confirm that attorneys’ fees were available to the
`prevailing party. Congress did so, moreover, not by
`separately authorizing attorneys’
`fees, but by
`expressly including them in the “full costs” authorized
`by the Act: “[T]he court may award to the prevailing
`
`
`
`
`
`6
`
`party a reasonable attorney’s fee as part of the costs.”
`1909 Act §40.2
`More recently, in the 1976 Copyright Act, which
`was a soup-to-nuts “overhaul of copyright law,”
`Jeanne C. Fromer, Expressive
`Incentives
`in
`Intellectual Property, 98 Va. L. Rev. 1745, 1799 (2012),
`Congress amended the Act’s cost-shifting provision to
`change the “full costs” regime “from a mandatory one
`to one of discretion.” Fogerty v. Fantasy, Inc., 510 U.S.
`517, 524 n.11 (1994). In doing so, however, Congress
`(which was well aware of the distinction between
`taxable and nontaxable costs) once again retained the
`term “full costs,” producing the language now found at
`17 U.S.C. §505: “In any civil action under this title,
`the court in its discretion may allow the recovery of
`full costs by or against any party other than the
`United States or an officer thereof. Except as
`otherwise provided by this title, the court may also
`award a reasonable attorney’s fee to the prevailing
`party as part of the costs.”
`Congress’ reaffirmation of full reimbursement
`was no accident. Copyright law has long embraced the
`principle that copyrighted works merit full protection
`even if their value is difficult to prove or they lack
`commercial value. Congress recognizes that “a rule of
`liability which merely takes away the profits from an
`infringement would offer little discouragement to
`infringers,” and indeed, little incentive to bring
`
`2 Congress also at that time added language exempting the
`United States from the Act’s cost-shifting regime. See 1909 Act
`§40 (“in all actions, suits, or proceedings under this Act, except
`when brought by or against the United States or any officer
`amended, thereof”).
`
`
`
`
`
`7
`
` F.W.
`infringement actions in the first place.
`Woolworth Co. v. Contemporary Arts, 344 U.S. 228,
`233 (1952). To that end, the Copyright Act has long
`allowed for more robust recovery than is available in
`other intellectual property contexts. That is reflected
`in the long-standing availability of both statutory
`damages for copyright infringement, 17 U.S.C. §504,
`and the shifting of full costs, including attorneys’ fees,
`even in non-extraordinary cases.
`Notably, this is not the only context in which
`Congress has decided to make “full costs” available.
`On multiple recent occasions, Congress has included
`“full costs” provisions in federal statutes addressing a
`range of causes of action. See 17 U.S.C. §911(f); 28
`U.S.C. §4001(g); 47 U.S.C. §553(c)(2); 47 U.S.C.
`§605(e)(3)(B)(iii). In the case of 47 U.S.C. §605, which
`prohibits the unauthorized receipt or transmission of
`communications, the legislative history reflects a
`specific understanding that this term was not confined
`to taxable costs, but rather included recovery for
`categories of costs not taxable under §1920. See 130
`Cong. Rec. S14286 (daily ed. Oct. 11, 1984) (Statement
`of Sen. Robert W. Packwood, Chairman of Comm. on
`Commerce, Science, & Transp.), reprinted in 1984
`U.S.C.C.A.N. 4742, 4750 (1984) (“It is the intent of the
`Committee that the power to direct the recovery of all
`costs under 3(b)(iii) shall
`include reasonable
`investigative fees (related to the action brought) of an
`aggrieved party.”).
`B. Proceedings Below
`This case arises out of Rimini’s adjudicated serial
`infringement of Oracle’s copyrights. Oracle develops
`and licenses enterprise software programs that
`
`
`
`
`
`8
`
`customers use to perform critical business functions.
`As is typical in the industry, Oracle does not sell
`ownership
`rights
`to
`its enterprise
`software.
`Customers purchase licenses that enable them to use
`specific programs and to access sites containing
`support materials for those programs, while Oracle
`retains all intellectual property rights in its works.
`Those licenses impose strict limits on copying Oracle’s
`software and even stricter limits on access, use, or
`copying of the software and support materials by third
`parties, including third parties who provide software
`support.
`Rimini was founded in 2005 by Seth Ravin.
`Unlike Oracle, which spends billions of dollars on
`research and development and employs more than
`30,000 software engineers who write new programs as
`well as patches, fixes, and updates for Oracle’s
`existing software, Rimini does not develop or license
`its own enterprise software. Instead, Rimini competes
`with Oracle to provide support services to customers
`who use Oracle’s software. Pet.App.5a. Rimini is not
`the first such business of Ravin’s. Before starting
`Rimini, Ravin was president of another company that
`purported to legitimately service Oracle’s software,
`only to later stipulate to civil and criminal liability for
`infringing Oracle’s copyrights.3 Ravin’s new company
`proceeded down
`the
`same path,
`repeatedly
`downloading and copying Oracle’s copyrighted
`
`3 See Trial Stip. ¶¶15-16, Oracle USA, Inc. v. SAP AG, No. 07-
`CV-1658 (N.D. Cal. Sept. 20, 2010), Dkt.911; FBI Press Release,
`TomorrowNow, Inc., Sentenced on Computer Intrusion and
`(Sept.
`14,
`2011),
`Copyright
`Infringement Charges
`http://bit.ly/2kVbc0j.
`
`
`
`
`
`9
`
`software for the benefit of Rimini’s own customers,
`without obtaining Oracle’s permission or paying
`Oracle for its copyrighted material. The scale of
`Rimini’s unauthorized copying was massive. All told,
`Rimini developed a library of copies of Oracle software
`and support materials that was “approximately a
`couple times the size of … all of the books in the
`Library of Congress.” SER446.
`There was nothing ambiguous about the nature of
`this activity; even petitioners’ own lawyer told Ravin,
`“You have to admit this looks pretty bad.” ER474. Nor
`was there anything ambiguous about the reason for all
`this unauthorized copying: It enabled Rimini, in the
`words of its own witness, to “mak[e] a crap load of
`money from” selling services built around Oracle’s
`intellectual property. ER68-69. In short, as the
`district court found, “Rimini’s business model was
`built entirely on
`its
`infringement of Oracle’s
`copyrighted software and its improper access and
`downloading of data from Oracle’s website and
`computer systems, and Rimini would not have
`achieved its … market share and business growth
`without
`these
`infringing and
`illegal actions.”
`Pet.App.49a.
`Throughout the litigation, petitioners went to
`great lengths to prevent Oracle and the court from
`discovering this infringement. First, as the district
`court found, Rimini “affirmatively and irretrievably
`deleted” its massive library of intermingled copies of
`Oracle software and support materials. JA65; see also
`JA85 (“The court finds that Rimini spoliated evidence
`when it deleted the software library in January
`2010.”). That made it impossible to identify the source
`
`
`
`
`
`10
`
`of the thousands of copies that Rimini used to support
`its customers, which was critical since Rimini tried to
`defend itself by maintaining that it obtained those
`copies legitimately. JA87-88. The district court
`sanctioned Rimini for its spoliation by submitting an
`adverse-inference instruction to the jury. JA88-91.
`Second, petitioners repeatedly and adamantly
`lied about “cross-use”—i.e., using one licensee’s copy of
`Oracle’s software to provide support services to other
`customers—which Oracle’s licensing agreements do
`not authorize. Ravin insisted in the litigation against
`his former company that Rimini never cross-used
`Oracle’s software, and he did so again in his deposition
`in this case, stating emphatically that “[n]ever in the
`entire history of Rimini” did “it ever occur[] that one
`customer’s software environment ha[d] been used to
`develop a fix or update that was ultimately delivered
`to a different customer.” SER627, JA232-34. Rimini
`made the same representations in formal pleadings,
`repeatedly insisting that “each client is assigned a
`separate data
`‘silo’ where Oracle Software and
`Support Materials
`for only
`that
`client are
`maintained.” E.g., SER45, 54, 73-74.
`None of that was true. Notwithstanding Rimini’s
`spoliation—which deprived Oracle of straightforward
`evidence of cross-use, JA87-88—Oracle proved at trial
`that Rimini r
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