On March 4, 2019, the U.S. Supreme Court held that the Ninth Circuit’s expanded view of “full costs” in copyright cases was improper, going beyond the “costs” typically available to litigants in federal court. Rimini Street, Inc. et al., v. Oracle USA, Inc., et al., No. 17-1625, slip op. (U.S. Mar. 4, 2019.) This ruling overturns a $12.8 million award granted to Oracle USA Inc. for its “nontaxable costs,” which included expert witness fees, jury consulting fees and electronic discovery expenses.
Rimini Street, a third-party software maintenance provider for users of Oracle software, competes directly with Oracle’s software maintenance services. Oracle sued Rimini for copyright infringement and other violations in Federal District Court in Nevada and Rimini was found to have infringed various copyrights owned by Oracle. Oracle was awarded $50 million in damages and over $30 million in attorneys’ fees and costs. The District Court also ordered Rimini to pay Oracle an additional $12.8 million for litigation expenses such as expert witnesses, e-discovery and jury consulting.
The Ninth Circuit affirmed this $12.8 million award and recognized that under federal law, there are six general categories of costs that may be awarded against the losing party. However, in its award to Oracle, the Ninth Circuit admittedly went beyond these six categories because Section 505 of the Copyright Act provides for the discretionary recovery of “full costs.” The Ninth Circuit believed that Section 505 permitted the recovery of costs beyond the six categories previously defined under federal law.
The Supreme Court clarified that the term “full costs” in Section 505 of the Copyright Act does not entitle a plaintiff to collect anything outside of the six categories of costs specified under federal law. The six categories in the general costs statute include fees for the clerk and marshal, docket fees, fees for printed or electronically recorded transcripts, fees for copies, printing, witnesses, witness mileage and other similar fees. Oracle argued that the term “full” before “costs” authorizes courts to award costs that go beyond the costs specified under federal law. The Supreme Court disagreed and provided that “full” is defined as a “quantity or amount.” (Rimini Street at 6). “The word ‘full’ operates in the phrase ‘full costs’ just as it operates in other common phrases: A ‘full moon’ means the moon, not Mars. A ‘full breakfast’ means breakfast, not lunch. A ‘full season ticket plan’ means tickets, not hot dogs. So too, the term ‘full costs’ means costs, not other expenses.” (Rimini Street at 7).
This ruling clarifies that while attorneys’ fees and court costs can be awarded in litigation, copyright claims do not provide for the recovery of additional types of expenses in any court. The benefit of this case is that it brings awards of costs in copyright cases in all jurisdictions back in line with other types of cases, increasing uniformity and predictability in awards for costs nationwide.