4 March 2019Copyright

SCOTUS sides with Rimini in Oracle copyright clash

The US Supreme Court today overturned a ruling which had awarded technology company Oracle more than $12 million in litigation costs, in its dispute against software business Rimini Street.

Today, March 4, in a  unanimous opinion by Justice Brett Kavanaugh, the US’s highest court held that the victorious party in a copyright case can’t collect expert witness fees and jury consultant costs.

Back in 2010, Oracle accused Rimini of copyright infringement over the download of Oracle's database support materials without a licence.

Fast-forward eight years and, in January 2018, the US Court of Appeals for the Ninth Circuit upheld a judgement that Rimini had infringed Oracle’s copyright, with Oracle being awarded damages and costs.

This included $12.8 million for litigation expenses such as expert witnesses, e-discovery, and jury consulting.

Rimini appealed against the decision and, in a petition for a writ of certiorari, asked the Supreme Court to clarify whether the Copyright Act (which gives courts discretion to award prevailing parties their full costs) authorises recovery of the full range of litigation costs or only those costs that are taxable.

In response, Oracle argued that the term ‘full costs’ in the Copyright Act means paying the full costs and nothing less.

The Supreme Court  granted certiorari in September last year and today sided with Rimini.

“The word ‘full’ operates in the phrase ‘full costs’ just as it operates in other common phrases: A ‘full moon’ means the moon, not Mars. A ‘full breakfast’ means breakfast, not lunch. A ‘full season ticket plan’ means tickets, not hot dogs. So too, the term ‘full costs’ means costs, not other expenses,” said Kavanaugh.

The court also took issue with Oracle’s argument that ‘full costs’ is a historical term of art that encompasses more than the costs listed in the relevant costs statute.

Oracle had claimed that English copyright statutes awarding ‘full costs’ allowed the transfer of all expenses of litigation beyond what was specified in any costs schedule and this meaning was imported into the Copyright Act in 1831.

“In any event, Oracle’s historical argument fails even on its own terms,” said the court. “Oracle has not persuasively demonstrated that as of 1831, the phrase ‘full costs’ had an established meaning in English or American law that covered more than the full amount of the costs listed in the applicable costs schedule.”

Case law since 1831 also refuted Oracle’s argument, according to the court.

“If Oracle’s account of the history were correct, federal courts starting in 1831 presumably would have interpreted the term ‘full costs’ in the Copyright Act to allow awards of litigation expenses that were not ordinarily available as costs under the applicable costs schedule,” said Kavanaugh.

Rimini had pointed out that none of the 800-plus available copyright decisions awarding costs from 1831 to 1976 (the year the term ‘full costs’ first appeared in the Copyright Act until the year that the Act was last significantly amended) awarded expenses other than those specified by the applicable state or federal law.

The court concluded that Oracle had not refuted Rimini’s argument here and remanded the case to the Ninth Circuit.

A spokesperson for Rimini said: “Today’s ruling corrects another significant legal error in the Oracle v Rimini Street case that was tried in 2015. Oracle ultimately lost 23 out of its 24 claims that were brought in the suit, and Rimini was found liable only for ‘innocent’ copyright infringement.”

Mark Perry of Gibson, Dunn & Crutcher, who argued the case for Rimini, added: “The Supreme Court unanimously agreed with the structural, grammatical, and historical arguments that we advanced on behalf of Rimini, and rejected the contrary positions put forth by Oracle. The court brought cost awards under the Copyright Act back into line with hundreds of other federal statutes.”

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More on this story

28 September 2018   The US Supreme Court yesterday said that it will hear a longstanding copyright dispute between technology company Oracle and software business Rimini Street.
6 August 2018   The term ‘full costs’ in the Copyright Act means paying the full costs and nothing less, Oracle has argued in a response to a writ of certiorari filed by Rimini Street.