By: Pam Fulmer
Oracle America, Inc. and Oracle International Corporation (collectively “Oracle”) have filed a new lawsuit for copyright infringement against Oracle customer Envisage Technologies, LLC (“Envisage”) in the Northern District of California. The case was brought by the Norton Law Firm, a boutique law firm in Oakland, California, whose lawyers have a long history of representing Oracle in its IP litigation cases, including in Oracle’s cases against SAP, Google and Rimini Street to name just a few. Readers of this blog will remember that the Norton Firm represented Oracle in the short lived Oracle v. Perry Johnson & Associates litigation, which was dismissed by Oracle a little less than two months after it was filed, likely in this author’s view due to a settlement. Like this new case, Perry also involved hosting, which is an area that seems to be getting lots of attention from Oracle lately, and the Norton Firm appears to be Oracle’s “go to” firm for litigation on hosting related issues.
Oracle essentially contends that Envisage has not bought enough licenses from Oracle to cover its use of Oracle database software that it uses for cloud hosting of its Acadis Readiness Suite on Amazon’s RDS platform. According to the Complaint, “Envisage develops software directed to the needs of public safety leaders. Its Acadis Readiness Suite software is advertised as providing software solutions for training, compliance, internal affairs case management, professional development, legal defensibility, and public accountability.” Oracle uses public facing documents found on Envisage’s own website along with documents that may have been posted by governmental entities or acquired under the Freedom of Information Act, which Oracle contends show that Envisage’s use of Oracle database software is well in excess of the number of licenses it has purchased from Oracle. Oracle claims that Envisage’s infringement is willful and seeks at lease $3 million in damages.
For example, Oracle pleads on information and belief that Envisage obtains “subscription revenue from its customers” and that to provide the software and services that it advertises, “Envisage is running Oracle Database on eight or more processors as an Amazon RDS customer.” Oracle claims that it contacted Envisage in March of 2021 to engage in discussions about properly licensing the Oracle software, and that Envisage initially agreed to enter into discussions, but later changed its mind. According to the Complaint:
“Because Envisage has refused to engage in discussions, Oracle does not yet know the
details of Envisage’s software architecture. On information and belief, given the magnitude of its customer base and the hosting services it provides through Amazon RDS, Envisage’s use of the Oracle Database exceeds the scope of the license that Envisage purchased in 2006 to use Database SE1, a license planned for use for one account as a pilot. On information and belief, the scope and nature of Envisage’s use requires a license for at least Oracle Database SE2 and, more likely, for Oracle Database EE. Envisage, however, never obtained a license or authorization from Oracle directly or indirectly to use either Oracle Database SE2 or EE. Upon information and belief, Envisage’s 2006 Database SE1 license does not authorize its current use of Oracle Database through Amazon RDS.”
It appears from Oracle activity that we are seeing that Oracle may be investing significant resources in investigating both Oracle customers that use the AWS Bring Your Own License model for using Oracle software as well as the AWS License Included model, and that these hosting issues will continue to attract Oracle’s attention and perhaps spawn further lawsuits.
If you have been approached by Oracle about a hosting issue on Amazon RDS and Oracle is requesting information about your usage, you need to proceed with caution and have a game plan in place. Or if you are thinking about using Amazon RDS to host your application, make sure that you understand the potential licensing traps. Tactical Law advises companies on these and similar issues and can help.
The case is Oracle America, Inc. et al v. Envisage Technologies, LLC., Case No. 3:21-cv-03540, Northern District of California. We will continue to monitor the case. Check back for updates.
By Tactical Law Attorneys and From Time to Time Their Guests