Oracle United States, Inc. v. Rimini St., Inc.

• Decision Date: 13 August 2014
• Docket Number: No. 2:10–CV–00106–LRH–PAL.,2:10–CV–00106–LRH–PAL.
• Citation: 6 F.Supp.3d 1108
• Parties: ORACLE USA, INC.; et al., Plaintiffs, v. RIMINI STREET, INC., a Nevada corporation; Seth Ravin, an individual; Defendants.
• Court: U.S. District Court — District of Nevada

6 F.Supp.3d 1108

ORACLE USA, INC.; et al., Plaintiffs,

v.RIMINI STREET, INC., a Nevada corporation; Seth Ravin, an individual; Defendants.

No. 2:10–CV–00106–LRH–PAL.

United States District Court, D. Nevada.

Signed Aug. 12, 2014.

Filed Aug. 13, 2014.

Dorian E. Daley, James C. Maroulis, Deborah K. Miller, Oracle Corporation, Redwood City, CA, Gabrielle Hann, Geoffrey M. Howard, John A. Polito, Kristen A. Palumbo, Thomas S. Hixson, Bingham McCutchen LLP, San Francisco, CA, Kieran Ringgenberg, Steven Holtzman, Boies, Schiller & Flexner, LLP, Oakland, CA, Richard J. Pocker, Boies, Schiller & Flexner, LLP, Las Vegas, NV, for Plaintiffs.

Leslie A.S. Godfrey, Brandon E. Roos, Mark G. Tratos, Greenberg Traurig, LLP, W. West Allen, Lewis Roca Rothgerber LLP, Las Vegas, NV, B. Trent Webb, Shook, Hardy & Bacon L.L.P., Kansas City, MO, Robert H. Reckers, Shook, Hardy & Bacon LLP, Houston, TX, for Defendants.

ORDER

LARRY R. HICKS, District Judge.

Before the court is plaintiffs Oracle USA, Inc.; Oracle America, Inc.; and Oracle International Corporation's (collectively “Oracle”) second motion for partial summary judgment addressing their first cause of action for copyright infringement; defendant Rimini Street, Inc.'s (“Rimini”) second, eighth, and ninth affirmative defenses; and Rimini's first and third counterclaims. Doc. # 405.¹ Defendant Rimini filed an opposition to the motion (Doc. # 436), to which Oracle replied (Doc. # 450).

I. Facts and Procedural History

Oracle develops, manufacturers, and licenses computer software, including Enterprise Software platforms.² Oracle is the current owner and/or exclusive licensee for various PeopleSoft, J.D. Edwards, and Siebel-branded Enterprise Software products. Oracle's Enterprise Software platforms have both an installed database component and an installed application component. The database component provides a foundation for the application software which then uses, stores, and retrieves data in the database for use across an entire organization. Oracle's Enterprise Software application programs—including its PeopleSoft, J.D. Edwards, and Siebel-branded products—are run on Oracle's Relational Database Management Software (“Oracle Database”) as the database component for the programs.

Rather than sell Oracle Database outright, Oracle licenses the use of the database software to customers through software licensing agreements—known as Oracle License and Service Agreements (“OLSAs”)—and to other software developers through a Developer License. Oracle also provides support services to its customers through separate software support service contracts.

Defendant Rimini is a company that provides similar software support services to customers licensing Oracle's Enterprise Software programs and competes directly with Oracle to provide these services.

On January 25, 2010, Oracle filed a complaint alleging that Rimini copied several of Oracle's copyright-protected software programs onto its own computer systems in order to provide software support services to its customers. In its complaint, Oracle alleged thirteen causes of action against Rimini: (1) copyright infringement; (2) violation of the Federal Computer Fraud and Abuse Act (“CFAA”), 18 U.S.C. §§ 1030(a)(2)(C), (a)(4), & (a)(5); (3) violation of the California Computer Data Access and Fraud Act (“CDAFA”), Cal.Penal Code § 502; (4) violation of Nevada Revised Statutes (“NRS”) § 205.4765; (5) breach of contract; (6) inducement of breach of contract; (7) intentional interference with prospective economic advantage; (8) negligent interference with prospective economic advantage; (9) unfair competition; (10) trespass to chattels; (11) unjust enrichment; (12) unfair practices; and (13) accounting. Doc. # 1.

On March 29, 2010, Rimini filed an answer contesting Oracle's claims and alleging three counterclaims: (1) defamation, business disparagement, and trade libel; (2) copyright misuse; and (3) unfair competition in violation of California Business and Professional Code, Cal. BPC. § 17200. Doc. # 30. Rimini also raised eleven affirmative defenses to Oracle's claims: (1) invalid copyrights; (2) express license; (3) consent of use; (4) copyright misuse; (5) improper registration; (6) implied license; (7) merger; (8) statute of limitations; (9) laches; (10) fair use; and (11) limitations on exclusive rights of computer programs under 17 U.S.C. § 117. Id.

In April 2010, Oracle filed an amended complaint (Doc. # 36) to which Rimini filed an amended answer (Doc. # 46) and a motion to dismiss (Doc. # 48). On August 13, 2010, the court granted in-part and denied in-part Rimini's motion, dismissing Oracle's eighth cause of action for negligent interference with prospective economic advantage. Doc. # 78.

In response to Rimini's amended answer, Oracle filed a motion to dismiss Rimini's counterclaims and affirmative defenses. Doc. # 67. On October 29, 2010, the court granted in-part and denied in-part Oracle's motion, dismissing several defamation allegations from Rimini's first counterclaim for defamation, and dismissing the entirety of Rimini's second counterclaim and fourth affirmative defense for copyright misuse. Doc. # 111.

In June 2011, Oracle filed a second amended complaint. Doc. # 146. In response, Rimini filed its second amended answer raising six additional affirmative defenses: (12) contract defense; (13) privilege; (14) economic interest; (15) consent; (16) preemption; (17) lack of contract; and (18) mitigation of damages. Doc. # 153. After the filing of Rimini's second amended answer Oracle filed its initial motion for partial summary judgment addressing its first cause of action for copyright infringement as it related to Oracle's PeopleSoft, J.D. Edwards, and Siebel-branded Enterprise Software programs; and on Rimini's second, third, and sixth affirmative defenses. Doc. # 237. On February 13, 2014, the court granted in-part and denied in-part Oracle's initial motion for partial summary judgment. See Doc. # 474.

Subsequently, Oracle filed the present second motion for partial summary judgment addressing its first cause of action for copyright infringement; Rimini's second, eighth, and ninth affirmative defenses; and Rimini's first and third counterclaims. Doc. # 405.

II. Legal Standard

Summary judgment is appropriate only when the pleadings, depositions, answers to interrogatories, affidavits or declarations, stipulations, admissions, and other materials in the record show that “there is no genuine issue as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). In assessing a motion for summary judgment, the evidence, together with all inferences that can reasonably be drawn therefrom, must be read in the light most favorable to the party opposing the motion. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Cnty. of Tuolumne v. Sonora Cmty. Hosp., 236 F.3d 1148, 1154 (9th Cir.2001).

The moving party bears the initial burden of informing the court of the basis for its motion, along with evidence showing the absence of any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). On those issues for which it bears the burden of proof, the moving party must make a showing that is “sufficient for the court to hold that no reasonable trier of fact could find other than for the moving party.” Calderone v. United States, 799 F.2d 254, 259 (6th Cir.1986); see also Idema v. Dreamworks, Inc., 162 F.Supp.2d 1129, 1141 (C.D.Cal.2001).

To successfully rebut a motion for summary judgment, the non-moving party must point to facts supported by the record which demonstrate a genuine issue of material fact. Reese v. Jefferson Sch. Dist. No. 14J, 208 F.3d 736, 738 (9th Cir.2000). A “material fact” is a fact “that might affect the outcome of the suit under the governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Where reasonable minds could differ on the material facts at issue, summary judgment is not appropriate. See v. Durang, 711 F.2d 141, 143 (9th Cir.1983). A dispute regarding a material fact is considered genuine “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Liberty Lobby, 477 U.S. at 248, 106 S.Ct. 2505. The mere existence of a scintilla of evidence in support of the party's position is insufficient to establish a genuine dispute; there must be evidence on which a jury could reasonably find for the party. See id. at 252, 106 S.Ct. 2505.

III. Discussion

This motion concerns Oracle's first cause of action for copyright infringement as it relates to defendant Rimini's alleged copying of Oracle Database. See Doc. # 405. This motion also concerns Rimini's second affirmative defense for express license as it relates to Oracle Database; eighth affirmative defense for statute of limitations; ninth affirmative defense for laches; first counterclaim for defamation, business disparagement and trade libel; and third counterclaim for unfair competition in violation of California Business and Professional Code, Cal. BPC § 17200. Id. The court shall address each issue separately below.

A. Copyright Infringement (First Cause of Action)

To establish a prima facie case of copyright infringement, Oracle must show (1) ownership of the relevant copyrights, and (2) copying of protected expression by Rimini. Range Road Music, Inc. v. East Coast Foods, Inc., 668 F.3d 1148, 1153 (9th Cir.2012); Funky Films, Inc. v. Time Warner Entm't Co., 462 F.3d 1072, 1076 (9th Cir.2006).

Oracle's claim for copyright infringement, as it relates to the present motion, arises from Rimini's copying and use of six copyrighted versions of Oracle Database. It is undisputed that Oracle owns all six copyrights at issue. See Doc. # 400, Amended Stipulation Re: Copyright Registration and Copies, ¶ 8 (“For the...