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Brinks Shareholder Brad Lane is Quoted in IPPRo Magazine
Published By IPPRo Magazine
February 05, 2019

On February 5, 2019, Brinks Shareholder Brad Lane was quoted in an IPPro Magazine article entitled, "Oracle v Rimini: The shifting sands of copyright." 

The focus of the high profile Oracle v Rimini Street has shifted more than quicksand. What started out as allegations of infringement has now become an argument over what the term ‘full costs’ means. The high profile and high stakes case has been rumbling since 2010, and may now be coming to an end at the US Supreme Court.

Rimini was found guilty of infringing Oracle’s copyright when it installed PeopleSoft, a human resources management system owned by Oracle, and ordered to pay $73.9 million to Oracle.

Following a stint at the US Court of Appeals for the Federal Circuit, the US Supreme Court agreed to hear the case in September of 2018. At the Supreme Court, Rimini Street questioned whether the US Copyright Act’s allowance of ‘full costs’ to a prevailing party is limited to taxable costs as the US Court of Appeals for the Eighth and Eleventh Circuit have held, or whether the act also authorises non-taxable costs. Oracle argued that full costs meant paying the full costs and no less.

During oral arguments in mid-January, the justices of the Supreme Court focused on working out the statutory interpretation of the term ‘full’, with the previously recused Samuel Alito arguing that the term meant nothing.

Brinks Gilson & Lione shareholder Brad Lane called justice Alito’s comments “interesting” and added that he could be arguing that ‘full’ means nothing to increase the universe of potential expense categories that could be compensated under the Copyright Act.

“In other words, he was tracking what the solicitor general and Rimini Street were saying, that ‘full’ is directed to the amount of each of the enumerated costs in §1920.”

Fowler White Burnett shareholder, Joe Englander, notes Alito’s use of surplusage in relation to Rimini Street’s arguments.

The idea of costs has turned a simple infringement case on its head, meaning what could happen in the future following a particular ruling in this case? Phillips Nizer partner Alan Behr remarked that the overall awarding of costs is “one of a very long list of problems that the current statute provides to practitioners and litigants”

He continued: “Problems like this one will continue to arise until we have a Copyright Act fit for the 21st century.”

His concerns were echoed by Lane, who suggests that there should be a mechanism to resolve copyright disputes in a more efficient way, rather than full-blown litigation. He suggests something like a small claims court of copyright disputes or “a different legislative fix” could address recovery of some of the expense items that are the subject of Oracle v Rimini Street.

The outcome of this case could have several impacts on the future of copyright litigation. If the Supreme Court opts to rule in favour of Rimini, then the consensus would likely remain. However, if Oracle descends the Supreme Court’s steps victorious, then an increase in copyright litigation could occur.

Lane warns that litigators would be able to seek the expenses of electronic discovery, consultants, contract attorneys who are not members of the firm, and more, in the bill of costs, after the merits have been determined.

“If there is an agreement with Oracle’s position, there could be a significant incentive for litigating copyright disputes going forward.”

The problem with such litigation, according to Behr, is the lack of “laudable clarity” in amendments to the Copyright Act, which is “in need of comprehensive revision or complete replacement”.

Rimini questioned the effectiveness of §505 of the Copyright Act, saying that it is a statute that “does not refer explicitly to witness fees and, under a plain application of Murphy, cannot authorise witness fees”.

Rimini’s counsel Mark Perry said he believed that the ‘full costs’ concept of the Copyright Act came from the English copyright statute, which he called “a historic artefact”.

But Englander contends that Perry “depended upon the fact that the fact that the text of the statute says ‘full costs’ and does not specifically say that those full costs include fees or expenses”.

In Lane’s opinion, the court was “looking favourably upon the argument that §505 of the copyright statute should not be utilised to almost turn a costs petition into a second litigation over what expenses are reasonable and what are recoverable under a broad interpretation of ‘full costs’”.

So, what is the likely outcome of the case? Englander states that many SCOTUS IP cases are either unanimous or decided by overwhelming majorities, but after reviewing the transcript of the oral hearing, he believes that “this decision will be decided much more closely”.

Chief justice John Roberts difficulty following Oracle’s arguments and questioning of its interpretation of the term full could indicate his voting intention, but Rimini had its own failings in court.

Rimini alleged that “no single case has ever read the statute the way the Ninth Circuit read it in the Twentieth Century Fox case” but failed to provide evidence of such. Justice Sonia Sotomayor’s questioning of this led to laughter in the court.

The ninth circuit’s split ruling opened up the type of reimbursed categories of expenses that can be granted as costs, as opposed to the eighth and eleventh circuit rulings that strictly adhere to particular categories enumerated in §1920 of the US Code on judicial procedure.

Predicting an outcome, Lane says the Supreme Court may have taken this case to “reign in the ninth circuit”. 

To read the full article, click here.

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