Amicus Curiae Brief — Rimini Street, Inc., Petitioner v. Oracle USA, Inc., et al.

Supreme Court briefDec 6, 2019

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No. 19-589

IN THE

impreme Court of tbe Zilittiteb 6tate5

RIMINI STREET, INC.,

Petitioner,

ORACLE USA, INC, ET AL.,

Respondents.

On Petition for a Writ of Certiorari to the United States

Court of Appeals for the Ninth Circuit

BRIEF OF AMICI CURIAE THE REPAIR ASSOCIATION

IN SUPPORT OF PETITION

JAMES C. PHILLIPS

KIRTON I MCCONKIE

36 South State Street

Suite 1900

Salt Lake City, UT 84111

ALEKSANDER J. GORANIN

Counsel of Record

MICHAEL R. GOTTFRIED

DUANE MORRIS LLP

30 South 17th Street

Philadelphia, PA 19103

(215) 979-1868

agoranin@duanemorris.com

TABLE OF CONTENTS

TABLE OF AUTHORITIES

iii

INTERESTS OF AMICUS CURIAE

SUMMARY OF ARGUMENT

ARGUMENT

THIS COURT AND THE COURTS OF

APPEAL HAVE LONG RECOGNIZED

A RIGHT TO REPAIR

AMBIGUOUS SOFTWARE LICENSE

TERMS

COUPLED

WITH

INDISCRIMINATE

PERMANENT

INJUNCTIONS

PRESENT

PROFOUND THREATS TO

CUSTOMERS' RIGHT TO REPAIR

AND TO THIRD-PARTY SUPPORT

LEGITIMATE

PROVIDERS'

BEHAVIOR

The ambiguity of many software license agreements creates challenges

to individual customers and their independent rep air and support

providers

Customers and their support providers must be permitted to rely on the

innocence of their conduct to the fullest extent allowed in a copyright

infringement action

The solution to the dilemma facing

support providers and their customers is to ensure that jury findings of

innocent behavior are weighed in the

decision to grant a permanent injunction

The district court's and court of appeals' injunctive rule threatens harsh

consequences beyond the market for

software service and maintenance

CONCLUSION

111

TABLE OF AUTHORITIES

Cases:

Aro Mfg. Co. v.

Convertible Top Replacement Co.,

365 U.S. 336 (1961)

Eastman Kodak Co. v.

Image Technical Services,

504 U.S. 451 (1992)

Fromberg, Inc. v. Gross Mfg. Co.,

328 F.2d 803 (9th Cir. 1964)

High Voltage Eng'g Corp. v.

Potentials, Inc.,

519 F.2d 1375 (5th Cir. 1975)

Jazz Photo Corp. v. Int'l Trade Comm'n,

264 F.3d 1094 (Fed. Cir. 2001)

MDY Indus., LLC v. Blizzard Entm't, Inc.,

629 F.3d 928 (9th Cir. 2010)

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

879 F.3d 948 (9th Cir. 2018)

Sage Prods., Inc. v. Devon Indus., Inc.,

45 F.3d 1575 (Fed. Cir. 1995)

Wilson v. Simpson,

50 U.S. 109 (1850)

Statutes and Other Authorities:

17 U.S.C. § 504(c)(2)

Dan Woods, Why Third-Party

Software Support is Possible and

a Good Idea, Forbes, Apr. 18, 2016

Department of Commerce Internet Policy

Task Force, White Paper on Remixes,

First Sale, and Statutory Damages 57

(Jan. 2016)

12, 17

Marc Andreesen, Why Software is Eating

the World, Wall St. J. (Aug. 20, 2011) 18

Oracle, Corporate Facts, https://www.oracle.com/corporate/corporate-facts.html

(last visited Dec. 2, 2019)

Sup. Ct. R. 37.2

Sup. Ct. R. 37.6

U.S. Copyright Office, Software-Enabled

Consumer Products:

A Report to the Register of Copyrights

12, 17

(Dec. 2016)

INTERESTS OF AMICUS CURIAE'

Amicus curiae The Repair Association, officially the

Digital Right to Repair Coalition, is a 501(c) trade association founded in 2013 to represent multiple

stakeholders involved in the repair and reuse of technology—from do-it-yourself "DIY" hobbyists and

independent repair technicians to environmental organizations and businesses involved in the

aftermarkets for computer equipment and consumer

electronics. Founding members of The Repair Association include the Service Industry Association (SIA),

the Association of Computer Dealers Inc. (ASCDI), the

National Association of Telecommunications Dealers

(NATD), the Electronic Frontier Foundation (EFF),

and iFixit.org.

Through its activities, The Repair Association supports a long tradition of American consumers buying

and selling products without worrying about whether

they have the ability to repair or reuse those products.

The Repair Association's animating principle is that a

free, independent market for repair and reuse of all

goods and services—from mobile phones to cars to

medical devices to software—is more efficient, more

competitive, and better overall for consumers, local

job growth, and the environment.

The Repair Association defends and promotes consumers' right to repair by, among other things,

1 Pursuant to Supreme Court Rule 37.6, amici state that no

counsel for any party authored this brief in whole or in part and

that no entity or person, aside from amici, their members, and

their counsel, made any monetary contribution toward the preparation or submission of this brief. Pursuant to Supreme Court

Rule 37.2, amici certify that counsel of record for all parties received notice of the intent to file this brief at least 10 days before

it was due and have consented to this filing.

working to introduce "fair repair" bills in states like

South Dakota, New York, Minnesota, and Nebraska;

assisting in the passage of the Unlocking Consumer

Choice and Wireless Competition Act signed into law

by President Barack Obama in 2014; and advocating

for the interests of consumer and independent repair

technician rights before the Copyright Office and the

Federal Trade Commission.

The Repair Association respectfully submits this

amicu,s brief to explain the consequences and anticompetitive risks that the underlying court rulings—

upholding the entry of a permanent injunction notwithstanding a jury's finding of innocent conduct—

poses to consumers, end users, and the service and repair providers they engage to act on their behalf.

SUMMARY OF ARGUMENT

Ours is a society of stuff. From the cars that

transport us, to the phones in our pockets and purses,

to the refrigerators and air conditioners that make life

comfortable—we rely heavily on machines in nearly

every part of modern American life. But machines

break and need maintenance, so we take our cars to

the mechanic or call the AC repairperson when the air

conditioner dies on a sweltering August day.

Mindful of this economic reality, this Court and the

Courts of Appeals below have long recognized consumers' right to repair the products they buy and use

every day. In the domains of intellectual property and

antitrust law, the courts for decades have defended

"the lawful right of the owner to repair his property."

Aro Mfg. Co. v. Convertible Top Replacement Co., 365

U.S. 336, 346 (1961).

The district court's and Court of Appeals' rulings on

the permanent injunction below strike at the heart of

this vital, well-settled right to repair. As ably explained in Rimini Street's petition for writ of certiorari

(Pet. at 4-8), the core of the copyright dispute at trial

was over the reasonableness of Rimini Street's interpretation of ambiguous language in Oracle's software

license agreements with its end users. Importantly,

such license ambiguity is not an idiosyncratic accident

limited to the underlying dispute between Oracle and

Rimini Street. Rather, it is an unfortunate endemic

reality that end users—and the third-party repair

providers they hire to act on their behalf—must bear

all too often. Both the Department of Commerce and

the Copyright Office, in reports issued over the past

few years, have grappled with the issue of vague enduser license agreements and the pressures they impose on consumers seeking simply to repair and

service the products they bought or licensed.

The court rulings here only exacerbate the problem.

Even though Rimini Street's reading of the Oracle's

license agreement was ultimately rejected—and Rimini Street was found to infringe because the basic

there is no dispute that the jury found Rimini Street's

infringement to be "innocent"—an honest mistake in

the reading of the scope of Oracle's license restrictions. Pet. at 6; Pet. App. at 108a-109a. Nor is

there a debate that the Rimini Street paid in full the

monetary damages the jury and district court assessed to be the consequence of that infringement.

Pet. at 6. But by then also granting a permanent injunction—and, in so doing, explicitly ignoring the

adjudicated finding of "innocent" infringement—the

courts below imposed an additional penalty on the repair provider out of proportion to the underlying

offense.

Negating the ability to defend against an injunction

by pointing to an innocent mental state—e.g., an honest mistake in construing the scope of a vendor's

license—would profoundly chill the ability of customers and their service providers to exercise their longestablished right to repair.

Consider the server repair technician who is hired

by a company to repair company servers located

across multiple satellite offices. Repairing those servers requires making copies of the software, but the

copying of that software may be limited by a license

agreement. There is no question that the client company has the right to repair its servers, or to make the

copies of the software necessary to effect that repair,

but the specific manner in which those copies are

made may be limited by the software vendor's license.

But assume the vendor's license requires that the

software be copied only at the licensee's "principal

place of business." In that case, the repair technician

who visits a satellite office and makes a software copy

necessary to repair at that location is technically in

violation of the "principal place of business" license restriction and could therefore be found to infringe. That

is not bad faith conduct by the technician. In fact, the

technician most likely would not have had access to

the license agreement itself, because in such scenarios

in the real world, the technician typically relies on his

or her client's assurances (often memorialized in the

service agreement between the technician and the client) that the client has the right to copy the software.

Nonetheless, in this example, the repair technician—

operating in good faith—could be found liable for copyright infringement, a strict liability offense.

Because of this violation, the technician could be required to pay compensatory damages under the

unlikely event the licensor suffered lost profits or the

technician received profits directly attribute to the infringement, actual damages. But the damages in such

a scenario would be minimal and—importantly—

would not have a dramatic impact on competition in

the repair market. That is decidedly not the case were

the repairman, having engaged in innocent infringement, is also subject to a broad and punitive

permanent injunction, like the one upheld in the proceedings below. The unfortunate consequence of

entering such permanent injunctive relief against innocently infringing repairpersons would be to force

independent rep airpersons out of the market and

thereby chill effective and client-beneficial competition.

Moreover, such risks of innocent infringement are

common throughout the repair industry. Repair businesses and their employees often operate as

subcontractors to original equipment manufacturers

(OEMs) but also offer their services directly in competition with OEMs, and are often engaged directly by

the OEMs' licensees to perform repair on the licensees' behalf. As a result, repair businesses must rely

upon the licensees' own assurances that their license

status vis-à-vis the OEMs is correct, rather than examining the upstream OEM-to-licensee agreement

itself.

It would be impractical, if not impossible, for a repair business to scrutinize all the upstream contracts

between its clients and such clients' vendors. Indeed,

most corporate clients of repair businesses operate

multi-vendor information technology environments

with upwards of 50 different types of hardware and

software products, each of which commonly carries its

own specific license agreement. And many of these license agreements also include confidentiality or nondisclosure clauses, which only further restrict the

ability of third-party repair businesses from examining or assessing the scope of their clients' license.

Lastly, even if the license agreements themselves

could be examined, they often include ambiguous

terms and can change over time, as explained further

in Section II.A. infra. Thus, from the repair businesses' perspective, the scope of license restrictions

may be uncertain from the outset or may even change

over time, without the repair business' knowledge, as

OEMs and other vendors amend license agreement

terms. In that circumstance, a repair business or its

customer could easily find itself inadvertently acting

outside the scope of license, and thereby be subject to

mistakes or innocent conduct. To punish such conduct

with a permanent injunction—or even to allow the

threat of such an injunction to loom over a repair business—serves no beneficial, remedial, or procompetitive purpose.

These problems are likely to cross over to the consumer goods sphere as well. With the proliferation of

"smart" (i.e., computer-, software-, and networkingenabled) televisions, doorbells, refrigerators, and personal voice assistants, end-user license agreements

are only becoming more prevalent. In our modern

marketplace, where software and accompanying end-

user license agreements are embedded in all manner

of products, it is all the more urgent to protect consumers and repair providers from any encroachment

on the fundamental right to repair such products—

and from the threat of punitive injunctions arising

from innocent readings of ambiguous license terms.

ARGUMENT

I. THIS COURT AND THE COURTS OF

APPEAL HAVE LONG RECOGNIZED A

RIGHT TO REPAIR

First identified over a century and a half ago, see

Wilson v. Simpson, 50 U.S. 109, 123 (1850), this Court

has long safeguarded "the lawful right of the owner to

repair his property." Aro Mfg. Co., 365 U.S. at 346.

This patent law doctrine observes that a license to use

a patented item includes the right "to preserve its fitness for use so far as it may be affected by wear or

breakage." Id. at 345-46.

Similarly, in Eastman Kodak Co. v. Image Technical

Services, 504 U.S. 451 (1992), this Court, in the antirust context, sought to protect aftermarkets for repair

parts and services—chiefly the domain of third-party

"independent service organizations." Id. at 455. The

Court held that a manufacturer could be found to possess market power in the secondary repair market,

even if it lacked such power in the primary market for

its equipment. Id. at 469-71.

In the wake of this Court's Aro decision, lower courts

recognized the importance of the right to repair in a

host of scenarios. Thus, when a manufacturer bundled

and sold kits, which included another company's patented device and the manufacturer's own

replacement parts for that device, the Ninth Circuit

ruled in favor of the manufacturer in the patent infringement suit under the right-to-repair doctrine.

See Fromberg, Inc. v. Gross Mfg. Co., 328 F.2d 803,

804-05, 808 (9th Cir. 1964). Likewise, the Fifth Circuit

found no patent infringement under the right-to-repair doctrine regarding a company that cleaned,

resurfaced, and reassembled patented tubes that had

become unusable due to grime deposits. See High

Voltage Eng'g Corp. v. Potentials, Inc., 519 F.2d 1375

(5th Cir. 1975).

Similarly, the Federal Circuit concluded that a company that replaced the removable inner container of a

surgical disposal system was not infringing a patent

under the right-to-repair doctrine. See Sage Prods.,

Inc. v. Devon Indus., Inc., 45 F.3d 1575, 1579 (Fed.

Cir. 1995). Moreover, the court noted that by suing the

defendant, the patent holder was seeking to monopolize the market for that replacement part and

illegitimately extend its patent rights to an unpatented component. Ibid. See also Jazz Photo Corp. v.

Int'l Trade Comin'n, 264 F.3d 1094, 1098, 1110-11

(Fed. Cir. 2001) (holding that refurbishing patented

single-use, disposable cameras, which included removing the camera's cover, cutting open plastic

casing, installing new film, replacing the film's winding wheel, replacing the camera's battery, resetting

the film counter, resealing the case, and adding a new

cover, did not constitute patent infringement because

of the right to repair).

Although not explicitly raised in Rimini Street's petition for certiorari, the court rulings on permanent

injunctive relief below present an extension of the issues raised in the long line of right-to-repair cases

summarized above. If allowed to stand, the rulings

pose grave threats to this important customer right.

II. AMBIGUOUS SOFTWARE LICENSE

TERMS

COUPLED

WITH

INDISCRIMINATE

PERMANENT

INJUNCTIONS PRESENT PROFOUND

THREATS TO CUSTOMERS' RIGHT TO

REPAIR AND TO THIRD-PARTY SUPPORT

PROVIDERS' LEGITIMATE BEHAVIOR

End users seeking to repair the products they

bought—and the independent third-party support

providers they hire to act on their behalf—often face a

substantial dilemma. On the one hand, there is no

question that customers' conduct and the providers'

business model is legitimate. Indeed, as the Ninth Circuit observed below, Rimini Street "[alt all relevant

times * * * provided third-party support for Oracle's

enterprise software, in lawful competition with Oracle's direct maintenance services." Oracle USA Inc. v.

Rimini Street, Inc., 879 F.3d 948, 952 (9th Cir. 2018)

(emphasis added). Even the Oracle respondents in

their briefing to the Court of Appeals stressed that

"[n]othing in Oracle's licenses prohibits Oracle's customers from using other products, or from using third

parties to service Oracle's products. Third parties remain free to offer their own software and their own

support services for Oracle's software."2

On the other hand, commercial enterprise-software

relationships are inevitably defined by software license agreements—and these agreements, like many'

end-user license agreements, can include ambiguous

license terms that ex post can be interpreted by certain vendors in aggressive and unilaterally

2 Answering Brief for Appellee at 41, Dkt. 50 in Oracle USA

Inc. et al. v. Rimini Street, Inc., Case Nos. 16-16832, 16-16905

(9th Cir.).

advantageous fashion to in fact prevent or substantially impede the use of such third-party services.

Customers and their support providers thus run the

risk that a vendor will later dispute their honest,

good-faith reading of the relevant license agreements

and institute copyright infringement litigation. 3

In the ordinary case, copyright law provides a balanced solution to this dilemma. If the vendor's reading

of the license is held to be correct, a customer or support provider may be subject to liability for

infringement, and be required to pay typical compensatory copyright damages. Moreover, in assessing

those damages, a defendant's innocent state of mind

can be considered. For instance, in calculating statutory damages, the Copyright Act explicitly grants the

district court the discretion to "reduce the award of

statutory damages to a sum of not less than $200"

upon a finding that the "infringer was not aware and

had no reason to believe that his or her acts constituted an infringement." 17 U.S.C. § 504(c)(2). An

honest mistake in the interpretation of the scope of a

license does not immunize a defendant from liability-

3 Cf. Dan Woods, Why Third-Party Software Support is Possible and a Good Idea, Forbes, Apr. 18, 2016,

https://www.forbes.com/sites/danwoods/2016/04/18/why-thirdparty-software-support-is-possible-and-a-goodidea/n9e7371f6c77 ("Needless to say, Oracle isn't exactly happy

with customers successfully moving to third-party support options. After all, annual support fees provide a profit margin of

90% or more for them[.] * * * Third-party support vendors such

as Rimini Street and others have clearly proved third party support is not only possible for Oracle customers, but that they are

enabling organizations to reduce costs, obtain improved support

and position themselves for new initiatives. While Oracle doesn't

think this is such a good idea, an increasing number of organizations are finding the model works for them.")

and requires the defendant to fairly compensate the

penalize the defendant either, or, worse still, threaten

to keep the defendant out of the repair or service market altogether.

The twin rulings of the district court and the Ninth

Circuit in the case below upset this important balance. The district court issued a permanent injunction

by, among other things, relying on what it characterized as Rimini's "conscious disregard for Oracle's

software copyrights," Pet. App. 21a, notwithstanding

the fact that a jury had determined at trial that Rimini's conduct—including its interpretation of

ambiguous terms in Oracle's license agreements—

was "innocent," Pet. App. 108a-110a. The Ninth Circuit then compounded that error by holding that the

district court's failure to consider the innocence finding before issuing the injunction was "harmless" and

that considering Rimini's adjudicated "mental state

was not necessary" to the injunction determination.

Pet. App. 3a-4a.

A. The ambiguity of many software license

agreements creates challenges to individual customers and their independent

repair and support providers

Ambiguity in license agreements is often inescapable. In 2016, for instance, the Department of

Commerce's Internet Policy Task Force acknowledged

concerns that end-user license agreements (EULAs)

for digital goods had grown to be lengthy and confusing: "commentators and participants on all sides

agreed that consumers are entitled to clarity and that

more should be done to communicate what rights they

are or are not getting."4 The Department of Commerce

therefore recommended "the creation of a multistakeholder process" to "establish best practices on how to

inform consumers clearly and succinctly about the

terms of EULAs regarding whether they 'own' the copies provided and what they may do with them."5

The Copyright Office reached similar conclusions

later that year in its own report on "Software-Enabled

Consumer Products."6 The Office noted a "common

theme raised by commentators regarding the practice

of software licensing"—"the use of complex and

opaque EULAs to frustrate reasonable consumer expectations."7 Like the Department of Commerce, the

process *

to establish best practices for EULAs in

the context of software-enabled consumer products,"

concluding that "it would be beneficial if manufacturers * * * made clear what rights consumers had in the

goods they were buying, including the right to resell,

repair, and improve the device."

4 Department of Commerce Internet Policy Task Force, White

Paper on Remixes, First Sale, and Statutory Damages 57 (Jan.

2016), http s://www.usp to. gov/site s/default/files/docu me nts/copyrightwhitepaper.pdf [hereinafter Internet Policy Task Force

White Paper].

5 Internet Policy Task Force White Paper, at 69.

6 U. S. Copyright Office, Software-Enabled Consumer Products:

A Report to the Register of Copyrights (Dec. 2016),

http s://www.copyright. gov/p olicy/software/software -full-re port.pdf [hereinafter Copyright Office Report].

7 Copyright Office Report, at 67

8 Copyright Office Report, at 68-69.

As desirable as the Department of Commerce's and

the Copyright Office's recommendations may be, individual customers and their independent support

providers ,do not yet have recourse to a "multistakeholder process" to disambiguate software license

agreements. Instead, like Rimini Street in the underlying litigation, support providers often find

themselves as defendants in copyright infringement

suits brought by motivated software vendors like Oracle. In that adversarial, high-stakes context, it is

imperative that support providers—and their customers—be permitted to establish the honesty of any

mistaken reading of the scope of a vendor's license

agreement, including, as equity requires, during any

proceedings on the issuance of an injunction.

B. Customers and their support providers

must be permitted to rely on the innocence of their conduct to the fullest

extent allowed in a copyright infringement action

Because of the often-unavoidable ambiguity in license language, it is essential that customers and

their support providers be permitted to have the entirety of their conduct weighed in any copyright

infringement trial, including during any injunctive

phase. Rimini Street's petition establishes well the

historical, doctrinal, and equitable reasons why an accused infringer's state of mind must be considered

prior to the issuance of an injunction—and why a

jury's finding of innocent infringement cannot be

simply disregarded as a matter of law. But practical

concerns have equal force.

In copyright infringement cases premised on a theory that the defendant infringed by acting outside the

scope of its license, the accused infringer often seeks

to establish the innocence of its conduct by demonstrating the reasonableness of its reading of

ambiguous license terms. To render this defense irrelevant, as the district court and Ninth Circuit did

below, would grant vendors free reign to insist on onesided, sweeping license readings that would chill legitimate conduct. Ironically, in an earlier decision

arising in a related licensing context, the Ninth Circuit recognized that very danger, observing that to

permit a vendor to use licensing terms to "designate

any disfavored conduct during software use as copyright infringement * * * would allow software

generally conferred on copyright owners." MDY Indus., LLC v. Blizzard Entm't, Inc., 629 F.3d 928, 941

(9th Cir. 2010).

That concern is all the more acute when the vendor

does not simply "designate any disfavored conduct" explicitly in the license but instead does so implicitly

through after-the-fact interpretation of ambiguous

terms in aggressive enforcement and litigation proceedings. Customers and their support providers are

not well served by having to guess as to how expansively and one-sidedly a vendor will interpret its

license agreements—and by having to assume the significant risk that a mistaken, view, even if honest and

reasonable, will carry dramatic consequences, like the

entry of a permanent injunction.

C. The solution to the dilemma facing support providers and their customers is to

ensure that jury findings of innocent behavior are weighed in the decision to

grant a permanent injunction

As Rimini Street's petition makes clear, the solution

here is straightforward: The innocence of a defendant's conduct must be adjudicated by the jury and,

consistent with longstanding equitable practice, any

finding of innocence must be considered as part of the

weighing of factors before granting injunctive relief.

In the proceedings below, the district court's contravention of the jury's innocence finding was not

"harmless," as the Ninth Circuit held. In fact, it created three related consequential harms impacting not

just Rimini Street but all independent third-party

support providers and their customers.

1. The courts' rulings would allow vendors to leverage ambiguous licensing terms into threats of

litigation—and threats of prohibitive injunctions during and resulting from the litigation—that would

drastically chill customers' willingness to engage in legitimate repair, as well as support providers' ability

to compete in the service and repair market. As noted,

no "multistakeholder process" or other objective mechanism currently exists by which licensees or their

third-party support providers can obtain any reasonable degree of ex ante certainty about whether their

conduct will run afoul of vendors' ambiguous licensing

restrictions. Support providers and their customers

must instead treat the issue as a business risk, but

one in which the ultimate consequences of accepting

that risk are highly uncertain and not truly amenable

to adequate risk mitigation.

Unlike most business risks, however, the approach followed by the district court and Court of

Appeals below imposes a punitive consequence out of

all proportion to the actual harm. All entrepreneurs

take on risk, including legal or regulatory risk, but in

the ordinary case the consequence of an incorrect

business judgment call is a monetary fine at least

roughly commensurate with the harm caused. Such a

fine was, for instance, imposed in the case below, in

the form of damages for copyright infringement, and

there is no question that Rimini Street paid the compensatory amount owed to Oracle in full. Pet. at 6. But

to add a prohibitory permanent injunction on top of

that damages award—even in the face of a jury finding of innocent infringement—imposes a grossly

disproportionate penalty. The unfortunate result is

that for support providers and their customers, the

risk that their interpretation of the scope of a license

is mistaken no longer remains a straightforward business-judgment risk. Rather, it has transformed into

an existential and potentially business-ending threat.

Finally, this threat—of an indiscriminate permanent injunction, even on conduct adjudicated to have

been innocent—has a drastic impact on the lawful

marketplace for third-party repair and support services. Any reasonable entrepreneur facing the twin

threat of (a) ambiguous license terms and (b) the real

prospect of a permanent injunction would surely think

twice before accepting that systemic risk and entering

the market—if they are brave enough to enter the

market at all. And the lamentable though predictable

consequence of fewer third-party support offerings is

lessened competition in the market for maintenance

and repair, with accompanying higher prices and

lower-quality service. That state of affairs may advantage Oracle, but certainly not the hundreds of

thousands of Oracle users deprived of competitive

choice.9

D. The district court's and Court of Appeals' injunctive rule threatens harsh

consequences beyond the market for

software service and maintenance

Most problematic of all is that, if allowed to stand,

the impact of the courts' permanent-injunction rulings

below will be felt in multiple industries. As noted

above, software is at the heart of the digital economy

of the 21St century, which encompasses a vast marketplace of goods and services, from cars to mobile

phones to electronic books to "smart" air conditioners.

Even if Oracle is not a player in those markets, the

threat of aggressive vendors dictating and enforcing

ambiguous license terms under the threat of punitive

permanent injunctive relief is no less present. Indeed,

it is that very real and profound concern that motivated the Department of Commerce and Copyright

Office to question the increasing use of ambiguous and

string EULAs now found in virtually "all digital goods,

including software, books, and music."10

Nothing in the district court's or the Court of Appeals' opinion cabins their rule or rationale to the

enterprise-software support market in which Oracle

and Rimini Street participate. In an economy where

9 See Oracle, Corporate Facts, https://www.oracle.com/corporate/corporate-facts.html (last visited Dec. 2, 2019) (reporting

that Oracle has "430,000 customers in 175 countries").

io Copyright Office Report, at 68; Internet Policy Task Force

White Paper, at 55-58, 68-69.

"software is eating the world,"H the consequences of

those decisions are too severe to permit the courts' rulings below on permanent injunctive relief. Innocent

infringers must be afforded the opportunity to have

their adjudicated innocence appropriately weighted

before any permanent injunction issues.

CONCLUSION

For the foregoing reasons, this Court should grant

the petition for certiorari.

Respectfully submitted,

JAMES C. PHILLIPS

KIRTON MCCONKIE

36 South State Street

Suite 1900

Salt Lake City, UT 84111

ALEKSANDER J. GORANIN

Counsel of Record

MICHAEL R. GOTTFRIED

DUANE MORRIS LLP

30 South 17th Street

Philadelphia, PA 19103

(215) 979-1868

agoranin@duanemorris.com

Counsel for Amici Curiae

December 6, 2019

11 Marc Andreesen, Why Software is Eating the World, Wall St.

https://www.wsj.com/arti(Aug.

20,

2011),

cles/SB10001424053111903480904576512250915629460.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.