Oracle Int'l Corp. v. Rimini St.

• Docket Number: 2:14-cv-01699-MMD-DJA
• Decision Date: 24 July 2023
• Parties: ORACLE INTERNATIONAL CORPORATION, et al., Plaintiffs, v. RIMINI STREET, INC., et al., Defendants.
• Court: U.S. District Court — District of Nevada

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ORACLE INTERNATIONAL CORPORATION, et al., Plaintiffs, v. RIMINI STREET, INC., et al., Defendants.

No. 2:14-cv-01699-MMD-DJA

United States District Court, D. Nevada

July 24, 2023

BENCH ORDER

MIRANDA M. DU, CHIEF UNITED STATES DISTRICT JUDGE.

I. SUMMARY

This is a software copyright and unfair competition dispute between Plaintiffs and Counter Defendants Oracle America, Inc., and Oracle International Corporation (collectively “Oracle”) and Defendants and Counter Claimants Rimini Street, Inc., and Seth Ravin (collectively “Rimini”) generally regarding Rimini's unauthorized copying of Oracle's enterprise software into and from development environments created by Rimini for its clients. (ECF Nos. 1253 at 2, 1305 at 12-13.) The Court presided over a bench trial. (ECF Nos. 1469, 1471, 1472, 1473, 1474, 1475, 1478, 1483, 1488, 1489, 1491, 1494.) These findings of fact and conclusions of law follow.

To preview, while there is some nuance further explained below, the Court finds Rimini infringed Oracle's copyrights as to PeopleSoft and Database, but not E-Business Suite or J.D. Edwards. But Rimini is only entitled to a declaration of non-infringement as to E-Business Suite. Rimini's remaining claim under the California Unfair Competition Law fails. Oracle also prevails on its claims under the Digital Millenium Copyright Act and the Lanham Act. The Court concurrently enters a permanent injunction tailored to the Court's findings herein. The permanent injunction imposes mandatory requirements on Rimini.

II. PROCEDURAL HISTORY

United States District Judge Larry R. Hicks presided over this case for approximately its first eight years. As the Court has noted in several orders since taking over this case, the Court treats-as it must-Judge Hicks' prior rulings as law of the case. Moreover, both Judge Hicks' pretrial rulings and various rulings the Court made before, during, and after trial constrain-or at least contextualize-the Court's findings of fact and conclusions of law provided below. The Court accordingly first describes the pertinent procedural history of this case, focusing on key rulings. In gist, and despite some of the parties' arguments at trial, much was already decided before the trial even began.

Moreover, this is the second, similar case between Oracle and Rimini. See Oracle USA, Inc., et al. v. Rimini Street, Inc., Case No. 2:10-cv-00106-LRH-VCF (D. Nev. Filed Jan. 25, 2010) (“Oracle I”). Judge Hicks also presided over-and continues to preside over-Oracle I. As of the date of entry of this order, the posture of Oracle I is that the United States Court of Appeals for the Ninth Circuit is presiding over-but has not yet issued an opinion in-an appeal of a contempt order Judge Hicks issued, finding Rimini violated the operative permanent injunction he had issued in that case (“Permanent Injunction”) in a few specific ways. To distinguish from Oracle I, the Court refers to this case using the shorthand Oracle II.

A. The Summary Judgment Order

Perhaps most notably, Judge Hicks has already adjudicated significant components of this case at summary judgment. (ECF No. 1253 (“September 2020 Order”).) He granted partial summary judgment to Oracle on many of Rimini's claims and some of Oracle's claims, leaving only specific claims predicated on specific theories for trial. He did not grant summary judgment to Rimini on any of its claims. The Court now briefly describes some of Judge Hicks' summary judgment rulings, roughly in the order he made them.

Judge Hicks first granted summary judgment to Oracle on several of Rimini's claims. Specifically, he granted summary judgment to Oracle on Rimini's claims under the Computer Fraud and Abuse Act, along with its California and Nevada state analogues. (Id. at 9-13.) Judge Hicks found that Oracle may terminate the access of anyone using Oracle's support website at any time, further finding that Rimini is not allowed to access Oracle's support website when Oracle has expressly forbidden it from doing so. (Id.) Judge Hicks next granted Oracle summary judgment on Rimini's claim for intentional interference with contractual relations to the extent that claim is premised on Oracle sending a cease and desist letter to Rimini telling Rimini to stop downloading any content from Oracle's website-finding that Oracle's sending of the letter is protected under the absolute right doctrine. (Id. at 13-17.) He similarly granted Oracle summary judgment on Rimini's claim under Ca. Bus. & Prof. Code § 17200 (“UCL”) based on the same conduct (sending the cease and desist letter). (Id. at 17-20.) Judge Hicks again reasoned that Oracle had an absolute right to send the cease and desist letter, so sending it was not unfair, nor was sending the letter unlawful because he had either previously dismissed (ECF No. 633) all of Rimini's claims for violations of particular laws, or granted summary judgment to Oracle on them in the summary judgment order.

In the next portion of his order, Judge Hicks granted summary judgment to Oracle on Oracle's copyright infringement claim based on Rimini violating the ‘facilities restriction' of 47 specified PeopleSoft licenses. (Id. at 21-31.) Judge Hicks correspondingly granted summary judgment to Oracle on Rimini's express and implied license defenses to this claim based on this theory. (Id.) Judge Hicks also specifically rejected Rimini's argument that Oracle had to individually establish infringement for each of the 47 licenses because Rimini did not demonstrate how any of them differed. (Id.) However, later in the order, Judge Hicks granted summary judgment to Oracle on what is essentially Rimini's counterclaim to Oracle's copyright infringement allegations-a claim for declaratory relief that its Process 2.0 does not infringe Oracle's copyrights-but only as to four copyrights specifically discussed in the order. (Id. at 65-66.) The four specific copyrights cover elements or versions of the PeopleSoft product. (Id.) But Judge Hicks noted, “[a]s Rimini's Third Amended Complaint specifies that it seeks declaratory rulings on each of Oracle's software copyrights as identified, dated, and numbered, the Court's summary judgment ruling for Oracle is limited to the four at issue copyrights.” (Id. at 66.) In sum, Judge Hicks found that Rimini violated Oracle's copyrights when it violated the facilities restriction in 47 PeopleSoft licenses, and found Rimini's Process 2.0 infringing as to four specific copyrights covering aspects of the PeopleSoft product.

Judge Hicks then addressed more of Rimini's affirmative defenses. (Id. at 31-38.) He denied Oracle's motion as to Rimini's statute of limitations defense, finding genuine disputes of material fact as to when Oracle should have investigated whether Rimini was infringing once Oracle learned Rimini had begun offering support for Oracle's E-Business Suite software, and what Oracle knew or should have known about any infringement before February 17, 2012. (Id. at 31-34.) However, Judge Hicks granted Oracle summary judgment on Rimini's affirmative defenses of laches, equitable estoppel, abandonment/waiver, and unclean hands as to Oracle's copyright infringement claim. (Id. at 34-38.)

In the next portion of the order, Judge Hicks turned back to Oracle's copyright infringement claim, granting Oracle summary judgment that Rimini infringed Oracle's copyright when it made RAM copies of PeopleSoft in the course of creating updates for Rimini's client Campbell Soup. (Id. at 39-48.) Judge Hicks made this finding first because Rimini developed the update in Campbell Soup's environment even though Campbell Soup did not want or need it, accordingly violating the ‘internal use' restriction in the license. (Id.) Judge Hicks further found Rimini also infringed Oracle's copyright by taking the update it developed in Campbell Soup's environment and giving it to another client, Toll Brothers. (Id.) Judge Hicks similarly, and additionally, found Rimini violated Oracle's copyright when it developed an update in Rimini client the City of Eugene's PeopleSoft environment and then gave that update outright to three other clients: Easter Seals New Hampshire, Inc., Shawnee Mission Schools, and the City of Glendale. (Id. at 49-63.) As to these instances of copyright infringement, Judge Hicks also specifically rejected Rimini's express license and fair use defenses. (Id.)

In contrast, Judge Hicks denied Oracle's summary judgment as to its claim that Rimini infringed Oracle's copyrights by using its Rimini-developed Automated Framework Tools because those tools constitute impermissible cross-use. (Id. at 63-65.) Judge Hicks found issues of material fact as to whether AFW Tools per se constitute copyright infringement and whether Rimini copies Oracle's protected expression through use of a ‘diff' file. (Id.)

Judge Hicks then returned to some of Rimini's claims.^[1] Judge Hicks granted summary judgment to Oracle on Rimini's claim for intentional interference with contractual relations to the extent based on Rimini's theories Judge Hicks had not already addressed-specifically that Oracle made misrepresentations to Rimini's clients regarding the legality of Rimini's services and that Oracle engaged in selective audits of Rimini's clients to harass them and drive them away from Rimini's services. (Id. at 66-71.) Judge Hicks also granted summary judgment to Oracle-based on extraterritoriality-on Rimini's claim for violation of the Nevada Deceptive Trade Practices Act. (Id. at 71-73.) But Judge Hicks permitted Rimini to proceed to trial-for injunctive relief only-on Rimini's UCL claim because Oracle did not discuss it the pertinent section of its briefing.^[2] (Id. at 73-74.)

Judge Hicks next addressed Oracle's motion as it relates to Rimini's decision...