Rimini Street and Oracle have litigated for over a decade regarding Rimini’s ability to service clients who use Oracle software programs. This copyright litigation has generated multiple appeals (including a trip to the U.S. Supreme Court), all argued by Mark A. Perry. In August 2023, following argument from Mark challenging the trial court’s finding that Rimini violated an injunction, the Ninth Circuit vacated the trial court’s $600K sanction award and remanded for further proceedings on the calculation of the award. Rimini later appealed the trial court’s final judgment in the underlying case, arguing that the district court erred by applying the wrong definition of “derivative work” under Section 101 of the Copyright Act; striking Rimini’s “essential step” defense under Section 117(a) of the Copyright Act; incorrectly construing licenses for two Oracle software programs; misapplying the Lanham Act to certain security-related statements; and ordering an impermissibly overbroad injunction. 

Mark argued this appeal on June 5, 2024. In an opinion issued on December 16, 2024, the Ninth Circuit vacated all material copyright rulings, reversed the district court’s Lanham Act judgment, and set aside the injunction. The Court rejected the interoperability test for derivative works proposed by Oracle adopted by the district court, and vacated the district court’s holding that Rimini created infringing derivative works. The Court vacated additional copyright rulings based on this erroneous definition of derivative works. The Court also vacated the district court’s order striking the “essential step” defense provided by Section 117(a) of the Copyright Act, instructing courts to look first and foremost at incidents of ownership—such as restrictions on transfer, restrictions on use, and consideration—and not only on the labeling of agreements between the copyright holder and its customers. As to the Lanham Act claims, the Ninth circuit found all but one statement regarding security to be nonactionable and therefore reversed the judgment and vacated the injunction as to the statements. The court also vacated the portions of the injunction appealed by Rimini and directed the district court to consider these arguments on remand if it finds any infringement.

The Weil team was led by the Co-Head of Weil’s Appeals and Strategic Counseling practice, Mark A. Perry, who argued the appeal, and included associate Camilla Brandfield-Harvey.