INTELLECTUAL PROPERTY: Ninth Circuit Reverses, Vacates, And Remands Fee And Costs Awards In Favor Of Oracle On Copyright Infringement/Supplemental Claims Relating To Different Results On Appeal

Significant Non-Taxable Costs Under Copyright Statute Sustained Based On District Court Discretion Under 17 U.S.C. § 505. 

            The Ninth Circuit, in Oracle USA, Inc. v. Rimini Street, Inc., Nos. 16-16832/16-16905 (9^th Cir. Jan. 8, 2018) (published) had to deal with a contentious intellectual property battle in which the district court entered significant merits, fees, and costs award to Oracle under copyright infringement and related intellectual property claims.  The awards were entered against Rimini and Rimini’s CEO.  Based on the reversals and results on appeal, there were significant changes for the defense and Rimini’s CEO.

            First of all, Rimini’s liability for $28.5 million in fees to Oracle on the copyright claim got reversed because based on the appellate conclusion there was no copyright claim, but there might be liability based on the state law claims.  So, this one got remanded to gauge fees which were warranted based on Oracle’s more limited success.

            Second, as far as Rimini’s CEO, the entire fee award got vacated based on the determination he was not even liable under the computer statute claims.

            That brought the appellate court to the routine costs issues.  The problem with taxable costs was that the district court used the wrong number so, that the $4.95 million got reduced to $3.435 million when the right “math” was used.  With respect to non-taxable costs of $12.775 million granted to Oracle, this one got affirmed, given that the copyright statute (17 U.S.C. § 505) granted discretion to award these costs rather than the more general 28 U.S.C. § 1520 costs statute such that the copyright statute prevailed. 

            This one gets to go back, so stay tuned on what happens on remand – unless a settlement is reached.