Oracle USA, Inc. v. Rimini Street, Inc.

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

ORACLE USA, INC.; ORACLE No. 22-15188

AMERICA, INC.; ORACLE

INTERNATIONAL CORPORATION, D.C. No.

2:10-cv-00106-

Plaintiffs-Appellees, LRH-VCF

v.

RIMINI STREET, INC., OPINION

Defendant-Appellant.

Appeal from the United States District Court

for the District of Nevada

Larry R. Hicks, District Judge, Presiding

Argued and Submitted February 6, 2023

San Francisco, California

Filed August 24, 2023

Before: Jay S. Bybee and Patrick J. Bumatay, Circuit

Judges, and Richard D. Bennett, * Senior District Judge.

Opinion by Judge Bumatay

*

The Honorable Richard D. Bennett, United States Senior District Judge

for the District of Maryland, sitting by designation.

2 ORACLE USA, INC. V. RIMINI STREET, INC.

SUMMARY **

Civil Contempt

The panel affirmed in part, reversed in part, and vacated

in part the district court’s order holding Rimini Street, Inc.,

in civil contempt and imposing sanctions for violations of a

permanent injunction in copyright infringement litigation

between Rimini and Oracle USA, Inc.

The permanent injunction generally prohibited Rimini

from reproducing, preparing derivative works from, or

distributing certain Oracle software. The district court

identified ten potential violations of the permanent

injunction (Issues 1–10), and held Rimini in contempt on

five (Issues 1-4, 8).

The panel affirmed the district court’s finding of

contempt on Issues 1-4. The panel held that the district court

did not abuse its discretion in holding Rimini in contempt for

hosting Oracle files on its computer systems (Issue 1). The

panel declined to adopt the test set in TiVo Inc. v. EchoStar

Corp., 646 F.3d 869 (Fed. Cir. 2011) (en banc) (holding that,

in a patent infringement case, the district court must

determine whether a company’s new devices were more than

colorably different from the original infringing ones before

deciding whether the company engaged in new infringing

activity in a contempt proceeding). The panel also held that

the district court did not abuse its discretion in finding

Rimini in contempt for violating the injunction against the

**

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 USA, INC. V. RIMINI STREET, INC. 3

“cross use” of development environments (Issues 2, 3, and

4).

Reversing the finding of contempt on Issue 8, the panel

held that the district court abused its discretion in holding

Rimini in contempt for creating copies of an Oracle

Database file on its systems.

On Issues 7 and 9, the district court concluded that

Rimini did not violate the permanent injunction but ruled

that Rimini was not permitted to copy even snippets or

partial segments of Oracle source code. The panel vacated

the district court’s order on Issues 7 and 9 to the extent it

read the permanent injunction to enjoin de minimis copying.

The panel held that the district court did not abuse its

discretion or impose an impermissibly punitive sanctions

award for each of six willful and one non-willful contempt

findings. Given the reversal on Issue 8, however, the panel

vacated and remanded the sanctions award for recalculation.

4 ORACLE USA, INC. V. RIMINI STREET, INC.

COUNSEL

Mark A. Perry (argued), Weil Gotshal & Manges LLP,

Washington, D.C.; Jeremy M. Christiansen, Gibson Dunn &

Crutcher LLP, Washington, D.C.; Samuel G. Liversidge,

Ilissa S. Samplin, and Casey J. McCracken, Gibson Dunn &

Crutcher LLP, Los Angeles, California; Blaine H. Evanson,

Gibson Dunn & Crutcher LLP, Irvine, California; Joseph A.

Gorman, Gibson Dunn & Crutcher LLP, San Francisco,

California; West Allen, Howard & Howard, Las Vegas,

Nevada; Eric D. Vandevelde; United States Attorney’s

Office, Los Angeles, California; for Defendant-Appellant.

Raechel K. Kummer (argued) and David B. Salmons,

Morgan Lewis & Bockius LLP, Washington, D.C.;

Benjamin P. Smith and Sharon R. Smith, Morgan Lewis &

Bockius LLP, San Francisco, California; Dorian E. Daley,

Peggy Bruggman, and James C. Maroulis, Oracle

Corporation, Redwood City, California; Paul D. Clement,

Erin E. Murphy, and Matthew Rowen, Clement & Murphy

PLLC, Alexandria, Virginia; Karen L. Dunn and William A.

Isaacson, Paul Weiss Rifkind Wharton & Garrison LLP,

Washington, D.C.; Richard J. Pocker, Boies Schiller &

Flexner LLP, Las Vegas, Nevada; Beko O. Reblitz-

Richardson, Boies Schiller & Flexner LLP, San Francisco,

California; for Plaintiffs-Appellees.

ORACLE USA, INC. V. RIMINI STREET, INC. 5

OPINION

BUMATAY, Circuit Judge:

This civil contempt dispute is fallout from the protracted

copyright infringement litigation between Oracle USA, Inc.

and Rimini Street, Inc.—now in its thirteenth year. In the

underlying case, the district court entered a permanent

injunction that enjoined Rimini from various infringing

practices. Years later, the district court identified ten

potential violations of the permanent injunction (“Issues 1–

10”), and ultimately held Rimini in contempt on five. Rimini

was ordered to pay $630,000 in statutory sanctions, plus

attorneys’ fees. On appeal, Rimini argues that the contempt

order should be reversed and that the sanctions should be

vacated.

We affirm the district court’s finding of contempt on

Issues 1–4, reverse on Issue 8, and vacate the district court’s

order on Issues 7 and 9 to the extent it reads the permanent

injunction to enjoin de minimis copying. We vacate and

remand the sanctions award to Oracle for recalculation.

I.

Oracle owns and develops copyrighted software for large

organizations. Oracle’s enterprise software products help

organizations perform various business functions, such as

human resources, payroll, taxes, shipping, and customer

relations. Businesses and organizations purchase licenses to

use specific programs and the products can be customized to

accommodate their needs. At issue here are four of Oracle’s

software programs: PeopleSoft, Siebel, J.D. Edwards, and

Oracle Database.

6 ORACLE USA, INC. V. RIMINI STREET, INC.

Oracle’s enterprise software products require ongoing

updates and technical support. For example, an update may

reflect changes to regulations or the tax code. So along with

a licensing fee, Oracle’s licensees may pay an additional fee

for software upgrades and support. They may also outsource

support services to third parties, like Rimini.

Rimini is Oracle’s largest competitor for its software

support services. Rimini supports and maintains Oracle-

licensed software products for thousands of clients. Rimini’s

clients include many Fortune 500 companies, universities,

governments, and hospitals. Co-defendant Seth Ravin

serves as the CEO of Rimini.

A.

Process 1.0 and Rimini I

In 2010, Oracle sued Rimini for copyright infringement

of its PeopleSoft, J.D. Edwards, Siebel, and Oracle Database

software. Oracle alleged that Rimini’s support process for

its clients, known as Process 1.0, violated Oracle’s

copyrights by “local hosting” and “cross using” Oracle’s

products. “Local hosting” refers to Rimini creating

“generic” Oracle software development environments on

Rimini’s local computer systems to develop and test

software updates and fixes for clients’ Oracle products.

Once perfected, Rimini would then deliver the updates and

fixes to a client’s “live” environment, run on the client’s

systems. “Cross use” refers to Rimini creating a

development environment under the license of one client to

support other clients.

In response to Oracle’s suit, Rimini argued that each of

its clients held a valid Oracle license and no client received

a benefit it wasn’t entitled to. But in Oracle’s view, even

ORACLE USA, INC. V. RIMINI STREET, INC. 7

when clients hold identical licenses, cross use isn’t

permitted. Generally, Oracle believed its licenses required

Rimini to perform work for each client only in the

development environment for that client.

In 2014, the district court granted partial summary

judgment to Oracle on aspects of the copyright claims. See

Oracle USA, Inc. v. Rimini St., Inc., 6 F. Supp. 3d 1086, 1107

(D. Nev. 2014). And in 2015, a jury sided with Oracle on the

rest of its copyright infringement claims against Rimini. The

jury awarded Oracle $35.6 million in damages on a

hypothetical license theory. The jury also found for Oracle

on two state-law claims. The district court further assessed

costs, attorneys’ fees, and prejudgment interest against

Rimini. And the district court entered a permanent

injunction against Rimini based on the copyright and state-

law claims, enjoining the company from infringing Oracle’s

PeopleSoft, J.D. Edwards, Siebel, and Oracle Database

copyrights.

The Ninth Circuit affirmed the judgment on the

copyright infringement claims and the costs award. Oracle

USA, Inc. v. Rimini St., Inc., 879 F.3d 948, 953 (9th Cir.

2018) (“Rimini I”). We reversed the state-law claims,

however, and vacated the injunction for reconsideration

under only the copyright claims. Id. at 964. The Supreme

Court later reversed on the meaning of “costs.” Rimini St.,

Inc. v. Oracle USA, Inc., 139 S. Ct. 873, 875–76 (2019).

B.

The Permanent Injunction

After that appeal, the district court granted Oracle’s

renewed motion for a permanent injunction in 2018. Rimini

appealed the issuance of the permanent injunction. In an

8 ORACLE USA, INC. V. RIMINI STREET, INC.

unpublished decision, we affirmed the grant of the

permanent injunction except as to two aspects of the order,

which we held were overbroad. See Oracle USA, Inc. v.

Rimini St., Inc., 783 F. App’x 707, 710 (9th Cir. 2019)

(unpublished) (“Rimini Injunction Appeal”). We first struck

the provision enjoining “local hosting” of the J.D. Edwards

and Siebel software programs because those products’

licenses did not prohibit it. Id. at 710–11. We also struck

the provision enjoining “access” to Oracle’s source code

because “accessing” copyrighted work is not infringing

activity under the Copyright Act. Id. at 711 (citing 17 U.S.C.

§ 106 (2002)).

Generally, the operative permanent injunction provides

that “Rimini Street shall not reproduce, prepare derivative

works from, or distribute PeopleSoft, J.D. Edwards, or

Siebel software . . . unless solely in connection with work for

a specific customer that holds a valid, written license

agreement for the particular PeopleSoft, J.D. Edwards, or

Siebel software . . . authorizing Rimini Street’s specific

conduct.” Permanent Injunction ¶ 2a.

The permanent injunction has three relevant provisions

related to PeopleSoft:

• “Rimini Street shall not reproduce,

prepare derivative works from, or use a

specific licensee’s PeopleSoft software or

documentation other than to support the

specific licensee’s own internal data

processing operations[.]” Id. ¶ 4.

• “Rimini Street shall not reproduce,

prepare derivative works from, or use

PeopleSoft software or documentation

ORACLE USA, INC. V. RIMINI STREET, INC. 9

on, with, or to any computer systems

other than a specific licensee’s own

computer systems[.]” Id. ¶ 5.

• “Rimini Street shall not reproduce,

prepare derivative works from, or use

PeopleSoft software or documentation on

one licensee’s computer systems to

support, troubleshoot, or perform

development or testing for any other

licensee, including specifically, that

Rimini Street shall not use a specific

licensee’s PeopleSoft environment to

develop or test software updates or

modifications for the benefit of any other

licensee[.]” Id. ¶ 6.

As for J.D. Edwards, the permanent injunction states that

“Rimini Street shall not copy or access J.D. Edwards

software source code to carry out development and testing

of software updates[.]” Id. ¶ 8.

As for Oracle Database, the permanent injunction

provides that “Rimini Street shall not reproduce, prepare

derivative works from, or distribute Oracle Database

software.” Id. ¶ 15.

C.

Process 2.0 and Rimini II

In response to the district court’s 2014 summary

judgment ruling, Rimini transitioned its client support

process to “Process 2.0.” The transition involved two major

changes: (1) switching from local-hosting to remote-hosting,

and (2) switching from cross-used generic development

10 ORACLE USA, INC. V. RIMINI STREET, INC.

environments to client-specific development environments.

Process 2.0 requires Rimini’s clients to host development

environments on their own systems, which Rimini can

access remotely. Moreover, under Process 2.0, Rimini no

longer locally hosts any Oracle environment on its own

systems. The transition to Process 2.0 was completed before

the 2015 trial in Rimini I.

Rimini filed a new suit seeking a declaratory judgment

that Process 2.0 was non-infringing on Oracle’s copyrights.

See Complaint for Declaratory Judgment, Rimini St., Inc. v.

Oracle Int’l Corp., No. 2:14-cv-01699 (D. Nev. Oct. 15,

2014) (“Rimini II”). Although Rimini sought to consolidate

Rimini II with Rimini I, the district court denied the motion

and the litigation proceeded on separate tracks. Rimini II is

currently on appeal in our court.

D.

Contempt Proceedings in Rimini I

In 2019, Oracle sought permission to conduct discovery

to determine whether Rimini was complying with the

permanent injunction. After 18 months of discovery, the

district court identified ten potential violations and ordered

Rimini to show cause why it should not be held in contempt

for violating the permanent injunction.

Following a seven-day bench trial, the district court held

Rimini in contempt on five of the ten issues:

Issue 1: Rimini possessed copies of

copyrighted PeopleSoft files on

Rimini’s local systems in three

circumstances.

ORACLE USA, INC. V. RIMINI STREET, INC. 11

Issues 2, 4: Rimini developed and tested a

PeopleSoft update in a

development environment for

its client, City of Eugene, which

was later delivered to clients

Matheson Trucking, Spherion,

and Smead.

Issue 3: Rimini cross used the City of

Eugene environment to solve a

PeopleSoft bug related to the

printing of W-2 forms for client

Johnson Controls.

Issue 8: Rimini copied an Oracle

Database file received from its

client, the Australian Bureau of

Statistics.

Oracle USA, Inc. v. Rimini St., Inc., No. 10-cv-00106, 2022

WL 112187, at *17–19, *25–26, *29–30, *48–49 (D. Nev.

Jan. 12, 2022) (“Rimini Contempt Order”). For Issues 2, 3,

4, and 8, the district court found that Rimini “willfully”

violated the permanent injunction. Id. at *34. On Issue 1,

the district court found two willful violations and one non-

willful violation. Id.

On two more issues, Issue 7 and Issue 9, the district

court concluded that Rimini did not violate the permanent

injunction by copying “snippets” of Oracle source code from

J.D. Edwards files because “de minimis copying” isn’t

prohibited by the Copyright Act. Id. at *29–30. Even so, the

district court ruled that “Rimini is not permitted to copy even

snippets or partial segments of Oracle source code” and

made clear that “[f]uture copying of this nature will result in

12 ORACLE USA, INC. V. RIMINI STREET, INC.

the Court finding Rimini willfully violated the Permanent

Injunction.” Id. at *30.

For the sustained contempt charges, the district court

ordered Rimini to pay Oracle $630,000 in sanctions. This

represented $100,000 for each willful violation and $30,000

for the non-willful violation. The district court based these

amounts on the statutory damages available under the

Copyright Act. See 17 U.S.C. § 504(c). The district court

also imposed attorneys’ fees and costs on Rimini.

Rimini now appeals the contempt findings and the award

of sanctions.

II.

We start by reviewing the five findings of contempt,

which we group into three categories—local hosting (Issue

1), cross use (Issues 2–4), and Oracle Database copying

(Issue 8). We then consider whether the district court

properly enjoined Rimini from de minimis copying, even if

it did not hold Rimini in contempt for such conduct (Issues

7 and 9). And finally, we examine the district court’s

imposition of sanctions against Rimini.

We review these issues for abuse of discretion. United

States v. Washington, 761 F.2d 1419, 1421 (9th Cir. 1985);

United States v. Bright, 596 F.3d 683, 694 (9th Cir. 2010).

We accept the district court’s factual findings unless they are

clearly erroneous. Dolman v. Agee, 157 F.3d 708, 715 (9th

Cir. 1998).

ORACLE USA, INC. V. RIMINI STREET, INC. 13

A.

Contempt Findings

1.

Issue 1: Local Hosting

The district court did not abuse its discretion in holding

Rimini in contempt for hosting Oracle files on its computer

systems—Issue 1. The district court’s contempt finding

turned on three instances in which Rimini possessed

copyrighted PeopleSoft files on its local systems. In each

case, Rimini’s clients emailed the PeopleSoft files to Rimini

employees. In two instances, the Rimini client sent the

copyrighted files unsolicited; in the third case, the client did

not follow instructions to place files in a shared folder. In

each case, Rimini employees did not immediately quarantine

or report the files to Rimini’s security or compliance

departments, as required by Rimini’s internal policies. In

two cases, Rimini employees forwarded the copyrighted

material to other employees and further saved the files on

shared drives on Rimini’s computers. These two instances

prompted the district court’s finding of a willful violation of

the permanent injunction. The district court also noted three

other incidents of copying of PeopleSoft files on Rimini’s

local systems, but did not find them to be independent

violations.

The plain language of the permanent injunction prohibits

Rimini from locally hosting PeopleSoft software on its

systems. Paragraph 5 of the permanent injunction provides

that “Rimini Street shall not reproduce, prepare derivative

works from, or use PeopleSoft software or documentation

on, with, or to any computer systems other than a specific

licensee’s own computer systems[.]” The district court

14 ORACLE USA, INC. V. RIMINI STREET, INC.

found that Rimini violated this part of the permanent

injunction by “reproducing” PeopleSoft files on its local

computer systems in these three circumstances.

Rimini does not contest that it hosted PeopleSoft’s

software on its computer systems, but asks this court to adopt

the test set in TiVo Inc. v. EchoStar Corp., 646 F.3d 869

(Fed. Cir. 2011) (en banc), to reverse the contempt finding.

There, the Federal Circuit held that, in a patent infringement

case, the district court must determine whether a company’s

“new devices [were] more than colorably different from the

original [infringing] ones” before deciding whether a

company engaged in new infringing activity in a contempt

proceeding. Id. at 884. If there were “more than colorable

differences between the two devices,” the Federal Circuit

concluded that any challenge to the company’s new

infringing product must be in a “new infringement

proceeding”—not contempt proceedings. Id. Rimini argues

that we should follow this out-of-circuit case and apply it to

copyright law. Thus, Rimini contends that we should require

the district court to determine whether Rimini’s Process 2.0

was “more than colorably different” from its prior Process

1.0 before holding Rimini in contempt.

Notwithstanding the “historic kinship between patent

law and copyright law,” Sony Corp. of Am. v. Universal City

Studios, Inc., 464 U.S. 417, 439 (1984), we see no reason to

apply TiVo to the facts presented here. As we understand it,

the Federal Circuit’s motivation in adopting the Tivo test was

to protect against the overuse of the “severe remedy” of

contempt and ensure that it is not “resorted to where there is

a fair ground of doubt as to the wrongfulness of the

defendant’s conduct.” Tivo, 646 F.3d at 881–82 (quoting

Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609,

618 (1885)). But our caselaw on contempt already provides

ORACLE USA, INC. V. RIMINI STREET, INC. 15

robust safeguards for those accused of violating a copyright

injunction. We forbid contempt sanctions when the

contested action was “based on a good faith and reasonable

interpretation” of the court’s order, when the contested

action was in “substantial compliance” with the order, or

when there was only a “technical violation” of the order.

United States v. DAS Corp., 18 F.4th 1032, 1039 (9th Cir.

2021) (simplified).

Moreover, the Federal Circuit adopted the TiVo test for

the design of products, which that court held are subject to

the “policy that legitimate design-around efforts should

always be encouraged as a path to spur further innovation.”

TiVo, 646 F.3d at 883. Here, it’s Rimini’s conduct that is

subject to the district court’s permanent injunction. Such an

injunction is proper if it restrains “acts which are of the same

type or class as unlawful acts which the court has found to

have been committed.” Orantes-Hernandez v. Thornburgh,

919 F.2d 549, 564 (9th Cir. 1990) (quoting NLRB v. Express

Publ’g Co., 312 U.S. 426, 435 (1941)).

Rimini contends that the type of local hosting here is

different from the local hosting that compelled the

permanent injunction—which involved copying “thousands

of PeopleSoft files” onto Rimini’s systems as part of the

standard support process for its clients. While the volume of

copying at issue here is far less egregious than the original

offending activity, we do not think the district court abused

its discretion in finding a lack of substantial compliance with

Paragraph 5 given the pattern of local-hosting incidents, the

internal forwarding of copyrighted material, the lack of

internal training, the failure to adequately warn its clients of

the copying prohibition, the delays in quarantining the

copyrighted software, and the general failure to follow its

16 ORACLE USA, INC. V. RIMINI STREET, INC.

own internal policies. We thus affirm the contempt finding

on Issue 1.

2.

Issues 2–4: Cross Use

The district court did not abuse its discretion in finding

Rimini in contempt for violating the injunction against the

“cross use” of development environments—Issues 2, 3, and

4.

For Issues 2 and 4, the district court found that Rimini

employees had modified and tested a PeopleSoft tax form

update known as “rsi940a.sqr” in the development

environment for its client, the City of Eugene, even though

the update was only sent to three other clients—Spherion,

Smead, and Matheson Trucking. At the time Spherion and

Smead reported problems with the tax program, Rimini

could not access their development environments. Instead,

a Rimini employee used the City of Eugene’s environment

to modify and fix “rsi940a.sqr” despite nothing showing that

the City had reported a problem with the program or that it

otherwise needed the update. Rimini later sent the update to

another client, Matheson Trucking, with no evidence

showing that it was developed or tested in Matheson’s

specific environment.

For Issue 3, Rimini sought to fix a bug in its PeopleSoft

W-2 tax software reported by its client, Johnson Controls.

Rather than using Johnson Controls’ development

environment, Rimini again used the City of Eugene’s

environment to find a solution to the bug. According to the

district court, Rimini then sent the W-2 fix only to Johnson

Controls that year—not to any other client at the time,

including the City of Eugene.

ORACLE USA, INC. V. RIMINI STREET, INC. 17

The permanent injunction prohibits the “cross use” of the

PeopleSoft program. Paragraph 4 requires that Rimini “not

reproduce, prepare derivative works from, or use a specific

licensee’s PeopleSoft software or documentation other than

to support the specific licensee’s own internal data

processing operations.” Paragraph 6 likewise prohibits

Rimini from using the “PeopleSoft software or

documentation on one licensee’s computer systems to

support, troubleshoot, or perform development or testing for

any other licensee.” It specifically establishes that “Rimini

Street shall not use a specific licensee’s PeopleSoft

environment to develop or test software updates or

modifications for the benefit of any other licensee.”

Rimini makes three arguments for why its conduct did

not violate these provisions of the permanent injunction.

None succeed.

First, Rimini claims the use of the City of Eugene’s

development environment to develop the two PeopleSoft

updates did not constitute “cross use” as litigated in Rimini

I. Rimini asserts that “cross use” in Rimini I involved

Rimini’s use of a generic development environment hosted

in its computer systems to support multiple clients. In

contrast, the “cross use” in Issues 2–4 refers to using a

remote-hosted, client-specific environment to support

multiple other clients.

But even if Rimini’s characterization of Rimini I is

accurate, we had already broadly criticized “[a]ny work that

Rimini performs under color of a license held by a customer

for other existing customers.” Rimini I, 879 F.3d at 957. In

such cases, we said that such work “cannot be considered

work in support of that particular customer.” Id. And we

said that prohibition would apply prospectively—“[t]he

18 ORACLE USA, INC. V. RIMINI STREET, INC.

same logic applies to work Rimini performs for unknown,

future customers.” Id. Indeed, we did not define “cross use”

as myopically as Rimini in the first appeal to our court; we

said that “cross use” is “the creation of development

environments, under color of a license of one customer, to

support other customers.” Id. at 956. Thus, it makes no

difference whether the development environment was

generic and locally hosted as in Rimini I or client-specific

and remotely accessed as here. As the Supreme Court has

instructed, a party cannot escape “civil contempt because the

plan . . . which they adopted was not specifically enjoined.”

McComb v. Jacksonville Paper Co., 336 U.S. 187, 192

(1949). Under our prior definition of “cross use” and the

plain terms of the permanent injunction, Rimini violated the

prohibition against the cross use of development

environments.

Second, Rimini argues that its conduct was covered by

the licenses of each individual client. Take the City of

Eugene. According to Rimini, the City has a license with

Oracle that allows the City to provide access to and use of

the PeopleSoft program to third parties. Rimini also claims

its contract with the City requires it to provide regular

PeopleSoft updates. From this, Rimini asserts it can use the

City’s development environment for any client as long as it

also uses it for the benefit of the City. Whatever the merit of

this argument, there’s a problem with its application here:

The district court found no evidence that Rimini created the

two software updates for the City’s benefit. Indeed, it’s

uncontested that the City never complained of the problems

reported in Issues 2–4. While Rimini claims that it believed

that the City would need the “rsi940a.sqr” update and that it

was only an “accident of history” that the City didn’t

ultimately need either update, the district court disbelieved

ORACLE USA, INC. V. RIMINI STREET, INC. 19

that explanation. The district court found that, by the time

Rimini created the “rsi940a.sqr” update in the City’s

development environment, the company knew that the

update was only required for clients operating in the U.S.

Virgin Islands—not its clients nationwide like the City.

Rimini Contempt Order, 2022 WL 112187, at *16. And the

district court concluded that the record did not support that

Rimini believed that the City would need the W-2 fix it

developed for Johnson Controls. Id. at *18. Without any

finding that Rimini used the City’s development

environment for the benefit of the City, the City’s license

doesn’t protect Rimini’s cross use.

Finally, Rimini asserts that the district court’s contempt

findings don’t meet the “clear and convincing” standard. See

Ahearn ex rel. NLRB v. Int’l Longshore & Warehouse Union,

Locs. 21 & 4, 721 F.3d 1122, 1129 (9th Cir. 2013) (holding

that a contempt finding must be supported by “clear and

convincing evidence”). But we don’t reverse a district

court’s finding of contempt “unless [we have] a definite and

firm conviction that the district court committed a clear error

of judgment after weighing the relevant factors.” Peterson

v. Highland Music, Inc., 140 F.3d 1313, 1323 (9th Cir. 1998)

(simplified). Here, the record doesn’t show that the district

court’s view of the facts was clearly erroneous. Instead, the

record shows that Rimini repeatedly chose to access the City

of Eugene’s development environment to modify PeopleSoft

when other clients reported problems with the program.

So we affirm the district court’s finding of contempt on

Issues 2–4.

20 ORACLE USA, INC. V. RIMINI STREET, INC.

3.

Issue 8: Oracle Database Copying

On Issue 8, we do find an abuse of discretion. The

district court held Rimini in contempt for creating copies of

the Oracle Database file known as “prvtsidx.pbl” on its

systems. This time, one of Rimini’s clients, the Australian

Bureau of Statistics, sent the file to Rimini for help

troubleshooting a technical problem. The Bureau uploaded

the file to the SalesForce system, which created a copy of the

file on Rimini’s system. A Rimini employee then clicked on

the .zip file and opened the “prvtsidx.pbl” file, which then

created additional copies of the Database file on Rimini’s

systems. Rimini then used the file to diagnose the Bureau’s

problem.

The permanent injunction does not clearly prohibit

Rimini’s copying of the Oracle Database file under the

circumstances here. Paragraph 15 of the permanent

injunction provides that “Rimini Street shall not reproduce,

prepare derivative works from, or distribute Oracle Database

software.” But, as the district court noted, “Paragraph

15 . . . does not prohibit all copying of Oracle Database,

specifically, when copying of Oracle Database is necessarily

done while Rimini is making permitted copies of other

Oracle Enterprise Software.” Rimini Contempt Order, 2022

WL 112187, at *30. Thus, if Rimini’s actions were

authorized by one of Oracle’s software licenses, it cannot be

held in contempt.

In this case, the Bureau holds an Oracle Database

license, which was governed by the Oracle License and

Service Agreement (“OLSA”). The OLSA permits the

Bureau to allow its agents and contractors “to use” the

program in “the furtherance of [its] internal business

ORACLE USA, INC. V. RIMINI STREET, INC. 21

operations.” Another section of the OLSA permits the

Bureau to make “copies” of the program, but it does not

expressly allow the Bureau’s agents and contractors to make

copies.

Although the district court found that Rimini only used

the “prvtsidx.pbl” file to “support” the Bureau’s “sole

internal data processing operations,” it still held that Rimini

acted outside the plain meaning of the OLSA. Rimini

Contempt Order, 2022 WL 112187, at *31. The district court

reasoned that, while the OLSA allowed the Bureau’s “third-

party support providers,” like Rimini, to use the Database

file, the agreement only allowed the Bureau to make copies

of the software. Thus, the district court concluded that

Rimini violated the OLSA by obtaining a copy of the

“prvtsidx.pbl” file.

We disagree. Rimini reasonably explains that the

distinction between using the software and copying the

software makes little sense in this context. Simply, one

cannot “use” the Database software without also “copying”

it, Rimini says. That’s because the very act of running an

Oracle program necessarily creates a copy of the program.

Evidence supports this view. As Oracle’s expert testified in

a related context,

Each time Rimini use[s]

a[n] . . . environment, this use result[s] in the

creation of ephemeral copies of Oracle

software in the computer’s RAM. Such

copies are necessarily created when software

is used, because a computer-readable version

of the software is loaded into the computer’s

22 ORACLE USA, INC. V. RIMINI STREET, INC.

memory so that its instructions can be

interpreted and acted upon by the computer.

Rimini St., Inc. v. Oracle Int’l Corp., 473 F. Supp. 3d 1158,

1203 (D. Nev. 2020); see also id. at 1217 (“[I]t is impossible

to use the software or create and test Rimini’s updates

without making RAM copies of Oracle’s software.”).

In contrast, Oracle offers no clear and convincing

evidence that Rimini is wrong about how third-party

software support works. And while Oracle now suggests

that Rimini “could ‘use’ the software on its clients’ systems,”

it is not apparent from the OLSA’s plain language that this

location restriction was intended. Indeed, Oracle points to

no location restriction in the OLSA. And a “restriction on

the location of copies,” or “use” of “the software on its

clients’ systems” does not avoid the creation of copies

inherent with any “use.” Thus, we are not confident that the

district court’s interpretation of the OLSA satisfies the

standard for finding contempt. See DAS Corp., 18 F.4th at

1039 (no contempt “based on a good faith and reasonable

interpretation” of the court’s order) (simplified).

Oracle’s waiver argument similarly fails. Oracle

contends that Rimini should be precluded from raising the

OLSA defense to the contempt charge because it waived this

point on appeal of the district court’s summary judgment

ruling. Once again, we disagree. Previously, the district

court granted Oracle summary judgment on its copyright

infringement claim that “Rimini copied Oracle’s copyright

protected software when it built

development . . . environments for a number of Rimini

customers using Oracle Database.” Rimini I, 879 F.3d at

960. On appeal, we held that Rimini waived the defense that

the OLSA authorized Rimini’s actions. Id. But the contempt

ORACLE USA, INC. V. RIMINI STREET, INC. 23

holding at issue is based on a different situation—here,

Rimini’s client sent Rimini a copy of the Database for help

in troubleshooting the program. As the district court

acknowledged, this “situation . . . [was] strikingly different

from that held unlawful on summary judgment.” Rimini

Contempt Order, 2022 WL 112187, at *31. The district court

also didn’t consider the OLSA defense argument precluded;

the district court instead analyzed the OLSA issue anew.

Under these facts, we see no waiver or preclusion of the

OLSA defense.

We thus reverse the district court’s finding of contempt

on Issue 8.

B.

Interpretation of the Injunction

Issues 7 and 9: De Minimis Copying

We next address the district court’s resolution of Issues

7 and 9 even though the district court ultimately found no

violation of the permanent injunction.

For Issues 7 and 9, the district court analyzed Rimini’s

copying of J.D. Edwards source code when it provided its

clients tax and regulatory updates. For example, to provide

client support for one J.D. Edwards update, Rimini created a

“Technical Design Specification” document that contained

“snippets” of Oracle source code. These “snippets” served

as a “reference” to show where in the Oracle product Rimini

developers should insert Rimini-created code when working

for a particular client. In other words, the snippets of Oracle

source code were markers used to identify where to place

Rimini code. Often these markers contained elided

portions—i.e., “……”—to avoid reproducing Oracle code.

So in the end, the source code copied by Rimini was no more

24 ORACLE USA, INC. V. RIMINI STREET, INC.

than a handful of letters, numbers, and symbols, as shown in

bold below:

VArpt_mnOrigRoth457b…………TH0=”0”

Math N……….c To String

...

** Add code lines before the “If $CT3 <> $T3

OR” conditional block **

...

** Add code before the “Write F06767

RECRCU code line **

All parties agree that these snippets of source code cannot be

used to run the J.D. Edwards program and are not functional.

All also agree that this source-code copying was “de

minimis.”

The district court concluded that this de minimis copying

of J.D. Edwards source code implicated Paragraph 8 of the

permanent injunction which instructs that “Rimini Street

shall not copy J.D. Edwards software source code to carry

out development and testing of software updates[.]”

Although the district court found that Rimini violated the

permanent injunction, it ultimately did not hold the company

in contempt for Issues 7 and 9 because of the de minimis

nature of the copying. It held that, because the Copyright

Act does not prohibit de minimis copying, Rimini “could

have had a good faith and reasonable belief that copying

such a small amount of source code was permitted.” Rimini

Contempt Order, 2022 WL 112187, at *30. Yet the district

court then went further and warned Rimini that it could no

ORACLE USA, INC. V. RIMINI STREET, INC. 25

longer copy de minimis portions of J.D. Edwards’ source

code:

The Court now makes clear that Rimini is not

permitted to copy even snippets or partial

segments of Oracle source code into a

Technical Design Specification document.

Future copying of this nature will result in the

Court finding Rimini willfully violated the

Permanent Injunction and sanctions of the

highest order.

Id.

Rimini now challenges the district court’s reading of the

permanent injunction to preclude de minimis copying of

Oracle source code.

1.

Before turning to the merits of this issue, we first address

Oracle’s jurisdictional arguments. To begin, Oracle

contends that Rimini cannot appeal the district court’s order

on this issue because the court did not hold Rimini in

contempt on Issues 7 and 9 and thus Rimini prevailed below.

At first blush, Oracle makes a good point. We rarely review

an appeal brought by the prevailing party. See United States

v. Good Samaritan Church, 29 F.3d 487, 488 (1994) (“A

party may not appeal from a judgment or decree in his favor,

for the purpose of obtaining a review of findings he deems

erroneous which are not necessary to support the decree.”).

But that general rule has no force when an “adverse ruling

can serve as the basis for collateral estoppel in subsequent

litigation,” Ruvalcaba v. City of Los Angeles, 167 F.3d 514,

520 (9th Cir. 1999), or when the district court’s order may

26 ORACLE USA, INC. V. RIMINI STREET, INC.

“bind [the appellant] in subsequent litigation,” Good

Samaritan Church, 29 F.3d at 489. Here, the district court’s

ruling would bind Rimini in future litigation and opens it up

to sanctions if left unchallenged now. So the lack of a

contempt finding does not preclude our review.

Oracle also asserts that we lack appellate jurisdiction

because the denial of contempt means there was no “final

decision” under 28 U.S.C. § 1291. That is incorrect. As we

have noted, “[m]ost post-judgment orders are final decisions

within the ambit of 28 U.S.C. § 1291 as long as the district

court has completely disposed of the [underlying] matter.”

United States v. Ray, 375 F.3d 980, 987 (9th Cir. 2004)

(quoting Sportmart, Inc. v. Wolverine World Wide, Inc., 601

F.2d 313, 316 (7th Cir. 1979)). Thus, “[i]f a motion for civil

contempt is denied after the entry of the judgment which was

the subject of the contempt, the denial is final and reviewable

because no further district court action is necessary to give

life to the denial.” DAS Corp., 18 F.4th at 1039 (quoting

Sanders v. Monsanto Co., 574 F.2d 198, 199 (5th Cir. 1978)).

And because the contempt order disposed of the only matter

left before the district court, it is “final” under § 1291—even

if it denied a finding of contempt on Issues 7 and 9.

Because § 1291 confers our jurisdiction, we do not

address the parties’ arguments under 28 U.S.C. § 1292(a)(1).

2.

On the merits, we agree with Rimini that the district

court’s interpretation of the permanent injunction was

improper because Rimini’s de minimis copying here is not

prohibited by the Copyright Act. As we’ve said, “[a]n

overbroad injunction is an abuse of discretion.” Boardman

v. Pac. Seafood Grp., 822 F.3d 1011, 1024 (9th Cir. 2016)

(simplified). On direct appeal of the permanent injunction,

ORACLE USA, INC. V. RIMINI STREET, INC. 27

we had struck a provision of the order enjoining actions that

were not “an infringing activity under the Copyright Act.”

Rimini Injunction Appeal, 783 F. App’x at 711 (striking a

provision enjoining accessing source code because the

Copyright Right permits “access”); see also 17 U.S.C.

§ 502(a) (injunctions may be granted “to prevent or restrain

infringement of a copyright”). We follow the same path

here.

In this case, de minimis copying does not violate the

Copyright Act. See, e.g., Bell v. Wilmott Storage Servs.,

LLC, 12 F.4th 1065, 1074 (9th Cir. 2021) (“[I]f the degree of

copying is merely de minimis, then it is non-actionable”

under the Copyright Act.); see also 4 Nimmer on Copyright

§ 13.03[A] (“[E]ven where the fact of copying is conceded,

no legal consequences will follow from that fact unless the

copying is substantial.” (quoting Newton v. Diamond, 388

F.3d 1189, 1193 (9th Cir. 2004))). Because the district court

read the permanent injunction to prohibit Rimini from

prospectively copying any de minimis portions of Oracle’s

source code (which would not offend the Copyright Act), we

vacate that part of the district court’s order.

Oracle responds that injunctions may prohibit otherwise-

legal conduct. See United States v. U.S. Gypsum Co., 340

U.S. 76, 88–89 (1950) (injunctions may cover acts “entirely

proper when viewed alone” if doing so will prevent future

violations). That may be true, but “‘[i]njunctive relief

should be no more burdensome to the defendant than

necessary to provide complete relief to the plaintiffs’ before

the court.” Columbia Pictures Indus., Inc. v. Fung, 710 F.3d

1020, 1049 (9th Cir. 2013) (simplified). Here, it is hard to

see the necessity in preventing Rimini from using non-

functional snippets of source code solely as markers to

identify where Rimini employees should work. Enjoining

28 ORACLE USA, INC. V. RIMINI STREET, INC.

that conduct would be overly burdensome, hamstringing

Rimini’s ability to perform its authorized third-party support

services. Prohibiting de minimis copying like this would be

like asking lawyers to conduct legal research without using

pincites. Indeed, Oracle hasn’t argued that this type of de

minimis copying is the harm that was previously adjudicated

illegal, and it hasn’t provided clear and convincing evidence

that using snippets of source code in this way will lead to

future copyright violations.

We thus vacate the portions of the district court’s order

enjoining de minimis copying of the J.D. Edwards source

code in Rimini’s “Technical Design Specification”

documents.

C.

Sanctions

Having affirmed four of five contempt findings, we now

turn to the district court’s award of $630,000 in sanctions to

Oracle. Recall the district court imposed the sanction of

$100,000 for each of the six willful contempt findings and

$30,000 for the one non-willful finding. Rimini argues that

the sanctions award was impermissibly punitive and asks for

it to be vacated. Under controlling case law, the district court

didn’t abuse its discretion.

“A court’s contempt powers are broadly divided into two

categories: civil contempt and criminal contempt.” Shell

Offshore Inc. v. Greenpeace, Inc., 815 F.3d 623, 628 (9th Cir.

2016). The main distinction between the two categories is

their “character and purpose.” Id. at 629 (quoting Int’l

Union, United Mine Workers v. Bagwell, 512 U.S. 821, 827

(1994)). Criminal contempt sanctions are “punitive”—

meant to punish prior offenses. Id. (simplified). Generally,

ORACLE USA, INC. V. RIMINI STREET, INC. 29

these punitive sanctions may not be imposed without the

constitutional protections afforded ordinary criminal

proceedings. See Int’l Union, 512 U.S. at 826–27 (listing

“rights to notice of charges,” “assistance of counsel,” and in

cases involving lengthy incarceration, “right to jury trial”).

In contrast, the purpose of civil sanctions is to “coerce”

compliance with a court order or to “compensate” the

aggrieved party for sustained losses. Shell Offshore Inc., 815

F.3d at 629 (quoting United States v. United Mine Workers,

330 U.S. 258, 303–04 (1947)); see also Ahearn ex rel. NLRB,

721 F.3d at 1128 (“[C]ivil contempt proceedings serve two

purposes: (1) coercing compliance with a court order; and

(2) compensating the prevailing party.”). Unlike criminal

contempt sanctions, generally “civil contempt sanctions are

viewed as nonpunitive and avoidable, [and] fewer

procedural protections for such sanctions have been

required.” Int’l Union, 512 U.S. at 831.

We find no abuse of discretion in the district court’s

sanctions award. The district court expressly observed that

the purpose of the $630,000 fine was “compensatory” and

was “appropriate” to “sufficiently compensate Oracle for

Rimini’s contemptuous conduct.” Rimini Contempt Order,

2022 WL 112187, at *34. So the district court’s findings

track civil sanctions’ compensatory purpose. See Shell

Offshore Inc., 815 F.3d at 629. The district court then based

the sanctions amount on the statutory damages available

under the Copyright Act, 17 U.S.C. § 504. We have already

approved of the award of statutory damages in copyright

contempt proceedings. See BMG Music v. Perez, 952 F.2d

318, 320 (9th Cir. 1991) (affirming a contempt sanction

based on the statutory damages provision of § 504, noting

the district court’s “wide discretion” in setting the amount of

damages within the statutory range). The district court then

30 ORACLE USA, INC. V. RIMINI STREET, INC.

correctly observed that § 504 permits statutory damages of

not “more than $30,000” for a non-willful infringement and

“not more than $150,000” for an infringement “committed

willfully.” 17 U.S.C. § 504(c)(1)–(2). Thus, the $100,000

sanction for each willful violation and the $30,000 sanction

for the non-willful violation fit acceptable statutory

damages.

Rimini argues the $630,000 award cannot be considered

a civil contempt sanction because the district court did not

give it a chance to “purge” the sanctions through

compliance. Rimini fails to appreciate the two purposes of

civil contempt sanctions—compensation and coercion. It is

true that for sanctions meant solely to cajole compliance

with a district court’s order, the sanctions may be “purged”

once the contemnor has come into compliance. Shell

Offshore Inc., 815 F.3d at 629. But civil compensatory

sanctions are different; they are “remedial”—“typically

tak[ing] the form of unconditional monetary sanctions” paid

to the aggrieved party. Id. So the mere fact that the sanctions

award here cannot be purged doesn’t make it punitive. And

while the district court noted that the “sizable statutory

sanction” along with the attorneys’ fees and cost would also

compel Rimini’s compliance with its orders, the district

court made it clear that the primary purpose of the sanctions

was to compensate Oracle for its losses from Rimini’s

infringing activity. Rimini Contempt Order, 2022 WL

112187, at *34.

Under these facts, we find no abuse of discretion in the

award and calculation of sanctions. We vacate and remand

the sanctions award, however, given our reversal on Issue 8.

We decline to address Rimini’s arguments related to

attorneys’ fees and costs as they are premature.

ORACLE USA, INC. V. RIMINI STREET, INC. 31

III.

The contempt findings for Issues 1–4 are AFFIRMED.

The contempt finding for Issue 8 is REVERSED. The

district court’s order regarding Issues 7 and 9 is VACATED

to the extent it enjoins de minimis copying not prohibited by

the Copyright Act. The imposition of sanctions is

VACATED and REMANDED for recalculation consistent

with this opinion.