UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT ORACLE INTERNATIONAL No. 23-16038 CORPORATION; ORACLE AMERICA, INC., D.C. No. 2:14-cv-01699- Plaintiffs-counter- MMD-DJA defendants-Appellees,

v. OPINION RIMINI STREET, INC.; SETH RAVIN,

Defendants-counter- claimants-Appellants.

Appeal from the United States District Court for the District of Nevada Miranda M. Du, Chief District Judge, Presiding Argued and Submitted June 5, 2024 San Francisco, California Filed December 16, 2024

Before: Jay S. Bybee and Patrick J. Bumatay, Circuit Judges, and Richard D. Bennett, * District Judge. * The Honorable Richard D. Bennett, United States District Judge for the District of Maryland, sitting by designation. 2 ORACLE INT’L CORP. V. RIMINI ST., INC.

Opinion by Judge Bumatay; Partial Dissent by Judge Bybee

SUMMARY **

Copyright Law

In an action brought by software developer Oracle International Corporation against Rimini Street, Inc., under the Copyright Act and the Lanham Act, the panel vacated in part the district court’s permanent injunction against Rimini, a third-party provider and direct competitor with Oracle in the software support services market. After the district court found that Rimini infringed on Oracle’s copyrights, Rimini changed aspects of its business model and sought a declaratory judgment that its revised process did not infringe Oracle’s copyrights. Oracle counterclaimed for copyright infringement and violations of the Lanham Act. Following a bench trial, the district court entered a permanent injunction ordering Rimini to (1) delete various software files, and (2) issue a press release correcting alleged misstatements and prohibiting Rimini from making similar statements about its services again. The panel vacated the district court’s holding that Rimini created infringing derivative works based solely on Rimini’s programs’ interoperability with Oracle’s programs. The panel explained that a derivative work must actually

** This summary constitutes no part of the opinion of the court. It has been prepared by court staff for the convenience of the reader. ORACLE INT’L CORP. V. RIMINI ST., INC. 3

incorporate Oracle’s copyrighted work, either literally or nonliterally. The panel instructed that if the district court concludes on remand that Rimini created an infringing derivative work under the correct legal standard, the district court should then consider whether any of Oracle’s licensing agreements authorized the creation of the specific work. The panel vacated the district court’s ruling striking Rimini’s affirmative defense to copyright infringement under 17 U.S.C. § 117(a), which allows the owner of a copy of a computer program to make another copy for certain purposes, such as when it’s an essential step in using the program. The panel explained that the district court’s ruling seemingly relied only on the labeling of the agreements between Oracle and its customers as a “license,” but that is only one facet of a number of incidents of ownership. The panel vacated the district court’s ruling that Rimini’s creation of 18 “gap customer” environments on its systems containing Oracle’s Database program infringed Oracle’s copyright, because the plain language of the licensing agreement did not prohibit third-party support providers from possessing a copy of Oracle’s software to further a client’s internal business operations. The panel vacated the district court’s ruling that Rimini’s use of automated tools to delive