Scarinci Hollenbeck, LLC, LLCScarinci Hollenbeck, LLC, LLC

Firm Insights

U.S. Supreme Court Clarifies Meaning of “Full Costs” Under Copyright Law

Author: Scarinci Hollenbeck, LLC

Date: April 4, 2019

Key Contacts

Back

In Rimini Street, Inc. v. Oracle USA, Inc., the U.S. Supreme Court Clarified the Meaning of “Full Costs” Under Copyright Law

In Rimini Street, Inc. v. Oracle USA, Inc., 586 U.S. ___ (2019), the U.S. Supreme Court clarified that the award of “full costs” to a party in copyright litigation under 17 U.S.C. § 505 of the Copyright Act, does not expand the categories of expenses that may be awarded as “costs” as enumerated in the general federal cost statute.

Recouping Costs in a Copyright Infringement Suit

Under 17 U.S.C. § 505 of the Copyright Act, a court may allow the recovery of “full costs” by or against any party, other than the United States or its officers, including an award of reasonable attorneys’ fees.

Generally, there are six discrete categories of “taxable costs” that are available to prevailing parties under federal statutory fee-shifting provisions: (1) fees for the clerk and marshal; (2) transcript fees; (3) disbursements for printing and witnesses; (4) fees for making copies; (5) docketing fees; and (6) the compensation of court-appointed experts and certain special interpretation services.  See 28 U.S.C. § 1920.  Another federal statute, Section 1821, delineates witness attendance rates ($40-per-day), as well as per diem rules for witness travel expenses.  All other cost categories or amounts in excess of the fixed rates are considered “non-taxable.”

Facts of Rimini Street

In Rimini Street, Inc. v. Oracle USA, Inc., Oracle, a computer software developer, sued Rimini, a software maintenance provider, under the Copyright Act.  Oracle claimed that Rimini, in the course of providing software support services to Oracle customers, copied Oracle’s software without licensing it.

A jury found for Oracle, determining that Rimini violated the Copyright Act by infringing on various Oracle copyrights.  After judgment, the District Court ordered the defendant to pay various amounts of costs and attorneys’ fees, including $12.8 million for litigation expenses, such as expert witnesses, e-discovery, and jury consulting.

Despite the fact that fees for expert witnesses, e-discovery, and jury consulting are not included in the six categories of fees delineated in the general federal statutes, 28 U.S.C. §§1821 and 1920, the Ninth Circuit Court of Appeals affirmed the $12.8 million award.  The Ninth Circuit determined the award was appropriate because the language of the Copyright Act gives federal district courts discretion to award “full costs,” a term that is not confined to the six categories identified above.

Supreme Court’s Decision in Rimini Street

The U.S. Supreme Court reversed the Ninth Circuit in a unanimous decision.  In coming to its decision, the Court analyzed prior case law interpreting the general federal statutes regarding fee-shifting and defined the meaning of the term “full costs.”

Initially, the Court recognized that while 28 U.S.C. §§1821 and 1920 created a “default rule” for the awarding of litigation expenses, Congress may, if it deems appropriate, authorize awards beyond the six categories of expenses.  The Court cited several cases in which an award of fees beyond the six categories was reversed because the specific fee-shifting provision did not expressly authorize fees beyond the categories set forth in 28 U.S.C. §§1821 and 1920.  See Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 441 (1987); Arlington Central Sch. Dist. Bd. of Educ. v. Murphy, 548 U.S. 291, 297 (2006).

The Court concluded that these cases set forth a clear standard: “A statute awarding ‘costs’ will not be construed as authorizing an award of litigation expenses beyond the six categories,” unless there is explicit statutory instruction otherwise.  As the Copyright Act does not expressly call for the awarding of fees for expert witnesses, e-discovery, and jury consulting, this award cannot stand.

Next, the Court rejected Oracle’s argument that the word “full” authorizes courts to award expenses beyond the costs specified in §§1821 and 1920.  As Justice Kavanaugh noted, the term “full” is an adjective that means the complete measure of the noun it modifies.  In this case, “full” modifies the term “costs,” which refers to all of the “costs” otherwise available under the federal cost statutes—§§1821 and 1920.  Thus, “full costs” only refers to the full measure of fees available within the six categories of fees.

The Court also found no merit to Oracle’s argument that the term “full costs” in the Copyright Act is a historical term of art that encompasses more than the “costs” listed in §§1821 and 1920.  Citing the Court’s decision in Crawford Fitting, Justice Kavanaugh explained that courts should not undertake extensive historical excavation to determine the meaning of costs statutes and that §§1821 and 1920 apply regardless of when individual subject-specific costs statutes were enacted.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Nicholas Pellegrino, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Scarinci Hollenbeck, LLC, LLC

Related Posts

See all
How to Dissolve a Corporation in New Jersey: A Step-by-Step Guide post image

How to Dissolve a Corporation in New Jersey: A Step-by-Step Guide

Closing your business can be a difficult and challenging task. For corporations, the process includes formal approval of the dissolution, winding up operations, resolving tax liabilities, and filing all required paperwork. Whether you need to understand how to dissolve a corporation in New York or New Jersey, it’s imperative to take all of the proper […]

Author: Christopher D. Warren

Link to post with title - "How to Dissolve a Corporation in New Jersey: A Step-by-Step Guide"
Gross Lease vs. Net Lease: Understanding the Key Differences post image

Gross Lease vs. Net Lease: Understanding the Key Differences

Commercial leases can take a variety of forms, which is often confusing for both landlords and tenants. Understanding the different types, especially the gross lease structure, is important when selecting the lease that best suits your needs. One key distinction between lease types is how rent is calculated and paid. This article addresses the two […]

Author: Robert L. Baker, Jr.

Link to post with title - "Gross Lease vs. Net Lease: Understanding the Key Differences"
What to Do If You Are Impacted by a Retailer Bankruptcy Part 2 post image

What to Do If You Are Impacted by a Retailer Bankruptcy Part 2

Over the past year, brick-and-mortar stores have closed their doors at a record pace. Fluctuating consumer preferences, the rise of online shopping platforms, and ongoing economic uncertainty continue to put pressure on the retail industry. When a retailer seeks bankruptcy protection, a myriad of other businesses are often impacted. Whether you are a supplier, customer, […]

Author: Brian D. Spector

Link to post with title - "What to Do If You Are Impacted by a Retailer Bankruptcy Part 2"
The Current Administration's Proposals for the Financial Services and Banking Industries Will Affect Your Business post image

The Current Administration's Proposals for the Financial Services and Banking Industries Will Affect Your Business

Since his inauguration two months ago, Donald Trump’s administration and the Congress it controls have indicated important upcoming policy changes. These changes will impact financial services policies and priorities. The changes will particularly affect cryptocurrency, as well as banking rules and regulations. Key Regulatory Changes in Cryptocurrency For example, in the burgeoning cryptocurrency business environment, […]

Author: Dan Brecher

Link to post with title - "The Current Administration's Proposals for the Financial Services and Banking Industries Will Affect Your Business"
Tips for Commercial Landlords Impacted by Wave of Retailer Bankruptcies Part 1 post image

Tips for Commercial Landlords Impacted by Wave of Retailer Bankruptcies Part 1

The retail sector has experienced a wave of bankruptcy filings over the last year. Brick-and-mortar businesses in financial distress include big-name brands like Big Lots, Party City, The Container Store, and Vitamin Shoppe. When large retailers seek bankruptcy protection, they are not the only businesses impacted. Landlords can be particularly hard hit. While commercial landlords […]

Author: Brian D. Spector

Link to post with title - "Tips for Commercial Landlords Impacted by Wave of Retailer Bankruptcies Part 1"

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Sign up to get the latest from our attorneys!

Explore What Matters Most to You.

Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.

Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.

Let`s get in touch!

* The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!

Please select a category(s) below: