Washington , D.C., (March 12, 2019) – On March 4, 2019, the Supreme Court issued a unanimous decision overturning the Ninth Circuit Court's award of $12.8 million in costs in the copyright infringement matter Rimini Street, Inc. et al v. Oracle USA, Inc. et al. No. 17-1625, slip op. (U.S. Mar. 4, 2019.). Newly confirmed Justice Kavanaugh penned the opinion for the Court, holding that the Ninth Circuit's expanded view of "full costs" set forth in 28 U.S.C. §§ 1920 and 1821 was improper, going beyond the "costs" typically available to copyright litigants. This decision will impact the assessment of potential costs afforded to copyright claimants going forward.
As background, Oracle initiated an action in 2010 against Rimini in a Nevada federal court, alleging that Rimini infringed Oracle's copyrights without a license to offer tech support services to Oracle customers1. Rimini, an unaffiliated direct competitor of Oracle's software maintenance services, is a third-party software maintenance provider for users of Oracle software. Id., slip op. at 2. After a jury awarded Oracle $50 million in damages, the U.S. District Court for Nevada then ordered defendants to pay an additional $28.5 million in attorney's fees, $3.4 million in costs, and $12.8 million for litigation expenses. Id., slip op. at 7. Given the national significance of the high court's potential ruling, there were ten amicus briefs filed in the case.
The Supreme Court held that because the Copyright Act already spells out the types of costs that can be awarded in a copyright lawsuit, the large cost award for litigation expenses was inappropriate. Justice Kavanaugh noted that Section 505 of the Copyright Act does not afford federal district courts the authority to award additional costs not otherwise identified in the statute. Id., slip op. at 2.
The term "full" is a term of quantity or amount; it does not expand the categories or kinds of expenses that may be awarded as "costs" under the general costs statute . . . full costs are all the costs otherwise available under the relevant law. Id.
Justice Kavanaugh adopted a rather colorful analogy in making his point:
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. Id.
So why does this decision matter? It matters because the Court's ruling clarifies that while certain costs can be awarded in litigation, copyright claimants may not obtain recovery for costs beyond what is statutorily provided.
As illustrated in the Rimini decision, the Copyright Act does not explicitly authorize the award of litigation expenses beyond the six categories specified in §§ 1821 and 1920. To this end, although Rimini lost its copyright infringement case to Oracle, its successful appeal of the Ninth Circuit's allowance of litigation expenses saved it $12.8 million, counting its lucky stars that while Oracle may have been granted a "full moon", it was at least denied in its reach for "Mars".
The decision reminds copyright claimants of the costs available to a prevailing copyright litigant, and to be wary of overreach in efforts to recoup costs.
 Those costs consist only of the six categories specified in 28 U.S.C. §§ 1821 and 1920, essentially (1) clerk and marshal fees, (2) transcript fees, (3) printing and witness fees and costs, (4) exemplification and copying fees, (5) docket fees, and (6) compensation of court-appointed experts and interpreters.
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