Oracle Corporation et al v. SAP AG et al

Filing 1022

Declaration of Tharan Gregory Lanier in Support of 1021 Response filed by SAP AG, SAP America Inc, Tomorrownow Inc. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16, # 17 Exhibit 17, # 18 Exhibit 18, # 19 Exhibit 19, # 20 Exhibit 20, # 21 Exhibit 21)(Related document(s) 1021 ) (Froyd, Jane) (Filed on 12/23/2010) Modified on 12/27/2010 (kc, COURT STAFF).

Oracle Corporation et al v. SAP AG et al

Doc. 1022 Att. 8

EXHIBIT 8

Dockets.Justia.com

Page 1

LEXSEE 2006 U.S. DIST. LEXIS 13718 WAYNE BERRY, a Hawaii citizen, Plaintiff, vs. HAWAII EXPRESS SERVICE, INC., a California corporation; et al., Defendants. Civ. No. 03-00385 SOM/LEK UNITED STATES DISTRICT COURT FOR THE DISTRICT OF HAWAII 2006 U.S. Dist. LEXIS 13718; Copy. L. Rep. (CCH) P29,159

March 9, 2006, Decided SUBSEQUENT HISTORY: Motion denied by Berry v. Haw. Express Serv., Inc., 2006 U.S. Dist. LEXIS 35043 (D. Haw., May 24, 2006) Reconsideration denied by, Motion for new trial denied by Berry v. Haw. Express Serv., 2006 U.S. Dist. LEXIS 36621 (D. Haw., June 5, 2006) PRIOR HISTORY: Berry v. Haw. Express Serv., 2006 U.S. Dist. LEXIS 11536 (D. Haw., Feb. 27, 2006) CASE SUMMARY: OUTCOME: The district court denied the individual's motions. PROCEDURAL POSTURE: Plaintiff individual moved for an order per 17 U.S.C.S. § 502 prohibiting defendants, a corporation, a post-confirmation trust, a wholesale grocer and its employees, internet service providers, defendants' attorneys, and others from using, reproducing, and transferring its computer software and any copies or derivatives thereof. He also sought 17 U.S.C.S. § 503 relief directing the return, destruction, or other reasonable disposition of copies. OVERVIEW: The district court declined to enjoin the grocer, internet service providers, attorneys, or other people who had not been found liable for infringement. While the corporation and employees were found to have infringed, the district court declined to issue a permanent injunction against them because the individual failed to establish a threat that they were continuing or would continue to infringe. Moreover, the individual failed to LexisNexis(R) Headnotes establish that the corporation, employees, or grocer had any copies or derivatives. Although the attorneys might have possessed copies, the individual did not present any argument as to how those copies were likely to be used in the future for infringement by the attorneys, the parties, or anyone else. In any event, the individual excluded from his motion copies that were retained for litigation purposes. Further, if the case was appealed, the attorneys would need to have access to the materials produced in the litigation.

Civil Procedure > Remedies > Injunctions > Permanent Injunctions Civil Procedure > Remedies > Injunctions > Preliminary & Temporary Injunctions Copyright Law > Civil Infringement Actions > Presumptions & Requirements > General Overview Copyright Law > Civil Infringement Actions > Remedies > Injunctive Relief Evidence > Procedural Considerations > Burdens of Proof > Allocation [HN1] The standards for a permanent injunction are the same as a preliminary injunction, except the moving

Page 2 2006 U.S. Dist. LEXIS 13718, *; Copy. L. Rep. (CCH) P29,159

party must show actual success on the merits, instead of probable success on the merits. The U.S. Court of Appeals for the Ninth Circuit has set forth the standard for granting a preliminary injunction. Traditionally, it considers: (1) the likelihood of the moving party's success on the merits; (2) the possibility of irreparable injury to the moving party if relief is not granted; (3) the extent to which the balance of hardships favors the respective parties; and (4) in certain cases, whether the public interest will be advanced by granting the preliminary relief. A copyright holder seeking a permanent injunction need not make a showing of irreparable harm independent of the harm presumed from actual success on the merits. A copyright holder seeking a preliminary injunction is therefore not required to make an independent demonstration of irreparable harm. Civil Procedure > Remedies > Injunctions > Permanent Injunctions Copyright Law > Civil Infringement Actions > Remedies > Injunctive Relief [HN2] Section 502(a) of the Copyright Act authorizes a district court to grant final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright. 17 U.S.C.S. § 502(a). Regarding copyright infringement, the U.S. Court of Appeals for the Ninth Circuit says that a permanent injunction will be granted when liability has been established and there is a threat of continuing violations. Injunctive relief ordinarily will not be granted when there is no probability or threat of continuing or additional infringements. Copyright Law > Civil Infringement Actions > General Overview Copyright Law > Civil Infringement Actions > Remedies > Writs of Seizure [HN3] Section 503(b) of the Copyright Act provides that, as part of a final judgment or decree, a district court may order the destruction or other reasonable disposition of all copies or phonorecords found to have been made or used in violation of the copyright owner's exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies of phonorecords may be reproduced. Pursuant to this statutory provision, the district court could order the infringing articles sold, delivered to the plaintiff, or disposed of in some other way that would avoid needless waste and best serve the ends of justice. 17 U.S.C.S. § 503(b). Before the remedy in § 503(b) may be invoked, it

is, of course, necessary that the infringement first be judicially established. COUNSEL: [*1] For Wayne Berry, Plaintiff: Timothy J. Hogan, Lynch Ichida Thompson Kim & Hirota, Honolulu, HI. For Mark Dillon, Teresa Noa, Defendants: Christopher T. Chun, Lyle S. Hosoda, Raina P. Mead, Shelley M Tamekazu, Lyle S. Hosoda & Associates, LLC, Honolulu, HI. For Brian Christensen, Defendant: Lyle S. Hosoda, Raina P. Mead, Shelley M Tamekazu, Lyle S. Hosoda & Associates, LLC, Honolulu, HI. For Fleming Companies, Inc., an Oklahoma Corporation, Defendant: Ann C. Teranishi, Anne E. Lopez, Lex R. Smith, Thomas H.Y.P. Yee, Kobayashi Sugita & Goda, Honolulu, HI; Damian Capozzola, Eric C. Liebeler, Melissa M. Dulac, Michael E. Baumann, R. Olivia Samad, Kirkland & Ellis, Los Angeles, CA. For C & S Logistics of Hawaii, LLC., a Delaware LLC, C & S Wholesale Grocers, Inc., a Vermont Corporation, C & S Acquisitions, LLC, Defendants: Ann C. Teranishi, Anne E. Lopez, Lex R. Smith, Thomas H.Y.P. Yee, Kobayashi Sugita & Goda, Honolulu, HI. For Foodland Super Market, Ltd., a Hawaii Corporation, Defendant: Andrew V. Beaman, Iver N. Larson, Leroy E. Colombe, Chun Kerr Dodd Beaman & Wong, Honolulu, HI. For Hawaii Transfer Company, Limited, a Hawaii Corporation, Defendant: Julia [*2] M. Morgan, Wesley H.H. Ching, Fukunaga Matayoshi Hershey & Ching, Honolulu, Hi; Peter T. Kashiwa, Goodsill Anderson Quinn & Stifel LLLP, Honolulu, HI. For Richard Cohen, a New Hampshire citizen, ES3 LLC, a Delaware Limited Liability Company, Defendants: Thomas H.Y.P. Yee, Kobayashi Sugita & Goda, Honolulu, HI. For Melvin Ponce, Hawaii citizen, Sonia Purdy, Hawaii citizen, Justin Fukumoto, Hawaii citizen, Afredda Waiolama, Hawaii citizen, Jacqueline Rio, Hawaii citizen, Defendants: Christopher T. Chun, Lyle S. Hosoda, Raina P. Mead, Lyle S. Hosoda & Associates, LLC, Honolulu, HI.

Page 3 2006 U.S. Dist. LEXIS 13718, *2; Copy. L. Rep. (CCH) P29,159

For Guidance Software, LLC, a California, LLC, Michael Gurzi, a California citizen, Defendants: John Patzakis, Victor Limongelli, Guidance Software Inc, Pasadena, CA; Margery S. Bronster, Rex Y. Fujichaku, Bronster Crabtree & Hoshibata, Honolulu, HI. For Richard Cohen, ES3 LLC, Movants: Ann C. Teranishi, Anne E. Lopez, Lex R. Smith, Kobayashi Sugita & Goda, Honolulu, HI. For Clyde Wm. Matsui, Special Master, Pro se, Matsui Chung Sumida & Tsuchiyama, Honolulu, HI. JUDGES: Susan Oki Mollway, United States District Judge. OPINION BY: Susan Oki Mollway OPINION ORDER DENYING PLAINTIFF'S MOTION FOR ISSUANCE [*3] OF PERMANENT INJUNCTION AND FOR ORDER DIRECTING RETURN, DESTRUCTION OR OTHER REASONABLE DISPOSITION OF ALL COPIES OF FREIGHT CONTROL SYSTEM ORDER DENYING PLAINTIFF'S MOTION FOR ISSUANCE OF PERMANENT INJUNCTION AND FOR ORDER DIRECTING RETURN, DESTRUCTION OR OTHER REASONABLE DISPOSITION OF ALL COPIES OF FREIGHT CONTROL SYSTEM I. INTRODUCTION. Plaintiff Wayne Berry moves for an order prohibiting Fleming Companies, Inc. ("Fleming"); the Post Confirmation Trust ("PCT"); C&S Wholesale Grocers, Inc. ("C&S"), their affiliates, officers, agents, servants and employees; Mark Dillon, Teresa Noa, Melvin Ponce, Alfredda Waiolama, Jacqueline Rio, and Justin Fukumoto (collectively, "Employees"); internet service providers; Defendants' attorneys; and "any other person in active concert with them who receives actual notice of the order" from using, reproducing, and transferring Berry's 1993 Freight Control System ("FCS") and any copies or derivatives thereof. Berry also moves for an order "directing the return, destruction or other reasonable disposition of all copies of the [FCS] computer software including any derivatives." Berry excludes from this motion "copies properly preserved [*4] for litigation

purposes under Court order." The court denies Berry's motion. II. PERMANENT INJUNCTION STANDARD. [HN1] "The standards for a permanent injunction are the same as a preliminary injunction, except the moving party must show actual success on the merits, instead of probable success on the merits." Amoco Prod. Co. v. Village of Gambell, 480 U.S. 531, 546 n.12, 107 S. Ct. 1396, 94 L. Ed. 2d 542 (1987). In Miller v. Cal. Pac. Med. Ctr, 19 F.3d 449, 456 (9th Cir. 1994), the Ninth Circuit set forth the standard for granting a preliminary injunction: Traditionally we consider (1) the likelihood of the moving party's success on the merits; (2) the possibility of irreparable injury to the moving party if relief is not granted; (3) the extent to which the balance of hardships favors the respective parties; and (4) in certain cases, whether the public interest will be advanced by granting the preliminary relief. Id. at 456 (citing United States v. Odessa Union Warehouse Co-op, 833 F.2d 172, 174 (9th Cir. 1987)). A copyright holder seeking a permanent injunction need not make a showing of irreparable harm independent of the harm [*5] presumed from actual success on the merits. Cf. LGS Architects, Inc. v. Concordia Homes of Nev., 434 F.3d 1150, 1155-56 (9th Cir. 2006) ("In a copyright infringement action, . . . a showing of a reasonable likelihood of success on the merits raises a presumption of irreparable harm. A copyright holder seeking a preliminary injunction is therefore not required to make an independent demonstration of irreparable harm." (citing 4 Nimmer on Copyright § 14.06[A] (2004))). III. ANALYSIS. A. Permanent Injunction Under 17 U.S.C. § 502(a). Berry seeks to permanently enjoin Fleming, the PCT, C&S, Employees, internet service providers, Defendants' attorneys, and others from using, reproducing, and

Page 4 2006 U.S. Dist. LEXIS 13718, *5; Copy. L. Rep. (CCH) P29,159

transferring Berry's FCS and any copies or derivative works. This court declines to enjoin those who have not been found to have infringed Berry's copyright. Thus, the court does not enjoin C&S, internet service providers, Defendants' attorneys, or other people who were not found liable for infringement. While Fleming and Employees were indeed found to have infringed, the court declines to issue a permanent injunction [*6] against them because Berry fails to establish a threat that they are continuing or will continue infringe. 1. C&S, Internet Service Providers, Attorneys and Other Unnamed Defendants. Defendants'

infringements Id.; cf. MAI Sys. Corp., 991 F.2d at 520. In its order of June 27, 2005, this court granted summary judgement in favor of C&S on Berry's copyright infringement claim. C&S, like internet service providers, counsel in this case, or "other [*8] persons," is not liable for infringing Berry's copyright. See MAI Sys. Corp., 991 F.2d at 520. In arguing that C&S can be enjoined even though it did not infringe Berry's copyright, Berry assumes that C&S currently has copies of Berry's FCS or derivatives thereof on its network. Berry argues that, "when the copies remaining on the C&S server and client stations are backed up as the routine function of the logistics network by Mark Dillon or anyone else, an infringing copy is made." Motion at 14. However, Berry fails to convince the court that infringing copies were on the computers purchased by C&S from Fleming or that infringing copies are currently on C&S's network and therefore can be backed up. As support for his allegation that Fleming transferred copies to C&S, Berry points to this court's order of June 27, 2005, and a report Berry generated from the Guidance After Image listings. See Ex. A (attached to Motion); Declaration of Wayne Berry ("1/18/2006 Berry Decl.") (1/18/2006) P1; Ex. A (attached to 1/18/2006 Berry Decl.). In its June 2005 order, the court stated: As noted above, Berry alleges that Fleming impermissibly retained 16 copies of FCS on its [*9] computers after claiming it had purged the software from its system. . . . Fleming had a right to retain the 16 FCS files for litigation purposes under the fair use doctrine. The transfer of the computers containing these files, as well as all other user files for Dillon, Noa, and the other Employees, was also permissible under the fair use doctrine, as Employees had a right to retain the files for their own litigation purposes. Id. at 26. The court did not find, as Berry urges, that Fleming transferred copies of the FCS to C&S, but concluded only that Fleming and Employees were entitled to retain copies of the program for litigation purposes.

Berry seeks to permanently enjoin C&S, internet service providers, Defendants' attorneys, and other unnamed persons from further infringing his copyright. This court previously determined that C&S is not liable for copyright infringement, and no internet service provider, counsel in this case, or unnamed person has been found liable for infringing Berry's copyright. The court denies Berry's request to issue a permanent injunction against them. [HN2] Section 502(a) of the Copyright Act authorizes the court to grant "final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright." 17 U.S.C. § 502(a). Regarding copyright infringement, the Ninth Circuit says, "a permanent injunction will be granted when liability has been established and there is a threat of continuing violations." MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 520 (9th Cir. 1993) (citing Nat'l Football League v. McBee & Bruno's, Inc., 792 F.2d 726, 732 (8th Cir. 1986); [*7] 3 Nimmer on Copyright § 14.06[B] at 14-88 (1983)). Because a showing of success on the merits raises a presumption of irreparable harm, a copyright holder seeking a permanent injunction need not make an independent showing of such harm. Cf. LGS Architects, Inc., 434 F.3d at 1155-56 (noting that a copyright holder seeking a preliminary injunction need not make an independent showing of irreparable harm because a showing of a reasonable likelihood of success on the merits raises a presumption of such harm); see also 4 Nimmer on Copyright § 14.06[B] at 14-142 (2006) ("Because a permanent injunction is issued only after liability is established, its issuance probably does not require a showing of irreparable injury."). Injunctive relief ordinarily will not be granted when there is no probability or threat of continuing or additional

Page 5 2006 U.S. Dist. LEXIS 13718, *9; Copy. L. Rep. (CCH) P29,159

Similarly, the report Berry generated from the Guidance After Image listings does not establish that Fleming transferred any copies of Berry's software program to C&S. Ex. A (attached to 1/18/2006 Berry Decl.); Reply to Employees at 6. Berry says the report "contains the names and file locations of numerous copies or derivatives of my FCS Logistics Data.mdb that were transferred to C&S on the Fleming computers." 1/18/2006 Berry Decl. P2. The report does contain the names, sizes, and locations of various files, but nothing in the [*10] report shows that those files are "copies or derivatives of" Berry's FCS. See Ex. A (attached to 1/18/2006 Berry Decl.). Berry fails to show that Fleming transferred any copies or derivatives of the FCS to C&S. Even if such a transfer did occur, Berry does not show that C&S now has such copies. Without establishing that C&S has any copies on its network, Berry's argument that C&S "will necessarily infringe" when it creates backup copies of its logistics files fails. No permanent injunction issues against C&S. Nor does Berry establish that Fleming's counsel should be enjoined. Berry does not show that counsel has any copies of Berry's software at this time other than what may be held for purposes of defending against the present lawsuit. As post-trial proceedings remain, and as there may be an appeal from the judgment, an injunction against counsel at this time would be patently unfair. This court fully understands that Berry is viewing Fleming's attorneys as Fleming's agents. Attorneys, however, are not the kind of agents through whom a corporation conducts freight tracking. Berry presents no basis for any concern that the attorneys will infringe on Fleming's behalf. 2. Fleming [*11] and the PCT. Berry asks the court to issue a permanent injunction against both Fleming and the PCT. Berry presents no argument regarding the PCT 1 but, as to Fleming, Berry argues that, although Fleming says it no longer exists, "Fleming continues to do business [in Hawaii] by continuing to sell 'Best Yet' products." Motion at 6. Berry says that, "because the evidence proves that Fleming continues to sell, Fleming must concede that it therefore can infringe." Motion at 6. Berry argues that a permanent injunction should issue against Fleming because it transferred copies of Berry's FCS to C&S and because it was found to have twice infringed Berry's copyright. The court is unpersuaded.

1 The PCT represented Fleming's interest during its bankruptcy and continues to represent Fleming's interest in this case. Berry appears to treat the PCT and Fleming as one entity, as the court has done throughout this case. In its order of June 27, 2005, this court found Fleming liable for directly infringing Berry's copyright, [*12] but Berry must establish a threat of continuing infringement to obtain a permanent injunction against Fleming. See MAI Sys. Corp., 991 F.2d at 520. Berry argues that Fleming can infringe his copyright because it "continues to do business [in Hawaii] by continuing to sell 'Best Yet' products." As evidence that Fleming continues to distribute grocery items in Hawaii, Berry points to product labels on a carton of milk and a box of cereal that he purchased from Foodland in October 2005. Declaration of Wayne Berry (10/24/2005) ("Berry Decl.") PP10-12; Exs. C-D (attached to Berry Decl.). Each product label states: "Distributed by Fleming Companies, Inc." See Exs. C-D (attached to Berry Decl.). Berry argues that these product labels prove that Fleming continues to operate in Hawaii. Brian Christensen, the president of C&S Wholesale Grocers, Inc.'s Hawaii division and former sales manager for Fleming's Hawaii division, explains that, in April 2003, Fleming entered into an agreement with Meadow Gold, whereby Meadow Gold sold products under the "Best Yet" label. Declaration of Brian Christensen ("Christensen Decl.") 1/12/2006 P3. At that time, Meadow Gold printed and [*13] used product labels based on then-accurate information that Fleming distributed the items. Christensen Decl. P5. After C&S purchased Fleming in August 2003, C&S distributed the Meadow Gold items in Fleming's stead. When Christensen learned in March 2005 that Meadow Gold was still using product labels with Fleming's name on it, he contacted Meadow Gold's sales manager to have Meadow Gold remove Fleming's name from the labels and replace it with C&S's name. Christensen Decl. P7. Christensen explains that "products sold in 2005 bearing labels with Fleming's information are simply mistakes." Christensen Decl. P7. As Berry does not rebut Christensen's explanation, Berry is unconvincing in contending that the labels prove that Fleming continues to operate in Hawaii. Regarding the copies of Berry's FCS allegedly transferred to C&S by Fleming, as discussed above,

Page 6 2006 U.S. Dist. LEXIS 13718, *13; Copy. L. Rep. (CCH) P29,159

Berry fails to point to any evidence showing that Fleming transferred such copies to C&S or that C&S currently has such copies on its network. It is true, as Berry notes, that Fleming has twice been found to have infringed. The second infringement, however, was inadvertent. It resulted from Fleming's attempt to comply with the jury [*14] verdict containing the finding of the first infringement. In other words, although Fleming infringed Berry's copyright twice, the second act of infringement was an attempt to halt the first act. Fleming's second infringement shows that it diligently (but incompletely) tried to stop infringing, not that Fleming is likely to infringe again. Berry has not met his burden to show a threat of continuing infringement by Fleming. 3. Former Fleming Employees. Berry also seeks to permanently enjoin Employees from further infringing his copyright. As noted above, Berry argues that C&S has infringing copies of the FCS on its network and, therefore, that Employees formerly employed by Fleming but now working for C&S will continue to infringe his work every time they access and use C&S's network. Berry also argues that Dillon in particular should be enjoined because he continued to "link" to Berry's FCS after June 9, 2003, and because he "maintained during relevant periods a Berry derivative on his home computers." Motion at 4, 7. The court rejects Berry's arguments. As discussed above, Berry does not point to any evidence establishing that copies of his FCS were on computers bought by C&S [*15] or that C&S's network currently has copies on it. Thus, Berry's argument that Employees will infringe by accessing and using C&S's network lacks merit. Moreover, as Justin Fukumoto and Melvin Ponce no longer work for C&S, they cannot access or use C&S's network. 2 See Affidavit of Justin Fukumoto (2/23/2005) P1. 2 At the hearing on this motion, counsel for Employees informed the court that Melvin Ponce quit working for C&S as of February 26, 2006. With respect to Dillon, Berry contends that "Dillon was 'linking' to derivatives as late as July 2003." Motion at 7. However, when Berry previously made this contention, this court concluded that "there is no evidence that having links between files means that Fleming

copied Berry's work or otherwise violated his copyright." 8/10/2005 Order at 3-4. Berry's mere allegation of links between files establishes no threat of continuing infringement. Berry also says that "Dillon maintained during relevant periods a Berry derivative on his home computers," pointing to [*16] Dillon's October 16, 2003, deposition testimony. Motion at 4. During Dillon's deposition, the following exchange occurred: Q [Berry's counsel] Have you ever had copies of what was known as the Berry Freight Control System on your PC clone at home? A [Dillon] I think I had a copy of it when I was working at [Atlantic Pacific International, Inc. ("API")]. Q Now, have you told Guidance Software -- I believe his name is Michael Gurzi, G-u-r-z-z-i (sic), I believe. Have you told him you had previously had copies of Mr. Berry's software on your home computer when he came here to perform his work in July of this year? A I don't think I did. I think he said that his scope of work did not include my home computer based on his conversation with the discovery master. Ex. F (attached to Motion) at 12. Even if Dillon may have had a copy of the FCS on his home computer when he worked at API from February 1997 until October 1999, see Ex. D (attached to Employee Opp. PP3-4), there is no evidence that Dillon now has a copy or that he intends to infringe. To the contrary, Dillon says he "want[s] nothing to do with Plaintiff or his software." Id. P37. The [*17] court denies Berry's request to permanently enjoin Employees. B. Permanent Injunction Under 17 U.S.C. § 503(b). Berry also seeks an order directing Fleming, the PCT, C&S, Employees, and others to return, destroy, or otherwise reasonably dispose of Berry's FCS and any copies or derivatives thereof pursuant to 17 U.S.C. § 503(b). The court denies Berry's request.

Page 7 2006 U.S. Dist. LEXIS 13718, *17; Copy. L. Rep. (CCH) P29,159

[HN3] Section 503 (b) of the Copyright Act provides: As part of a final judgment or decree, the court may order the destruction or other reasonable disposition of all copies or phonorecords found to have been made or used in violation of the copyright owner's exclusive rights, and of all plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies of phonorecords may be reproduced. Pursuant to this statutory provision, "the court could order the infringing articles sold, delivered to the plaintiff, or disposed of in some other way that would avoid needless waste and best serve the ends of justice." 17 U.S.C. § 503(b) Historical and Statutory Notes. Furthermore, "before [the remedy in section 503(b)] [*18] may be invoked, it is, of course, necessary that the infringement first be judicially established." 4 Nimmer on Copyright § 14.08 at 14-168-69. As noted above, only Fleming and Employees were found to have infringed Berry's copyright. However, Berry has not established that Fleming or Employees have any copies or derivatives of Berry's FCS, or that C&S has such items. Neither Fleming, Employees, nor C&S currently uses the outdated FCS. Although Defendants' attorneys may possess copies, Berry does not

present any argument as to how those copies are likely to be used in the future for infringement by the attorneys, the parties, or anyone else. In any event, Berry excludes from his motion copies retained for litigation purposes, which necessarily includes what Fleming's and Employees' attorneys have. If this case is appealed, Defendants' attorneys will need to have access to the materials produced in this litigation. The court therefore denies Berry's request under 17 U.S.C. § 503(b). IV. CONCLUSION. In light of the foregoing, the court denies Berry's motion for permanent injunction. IT IS SO ORDERED. DATED: Honolulu, [*19] Hawaii, March 9, 2006. Susan Oki Mollway United States District Judge Berry v. Hawaiian Express Service, Inc., et al., Civ. No. 03-00385 SOM/LEK; ORDER DENYING PLAINTIFF'S MOTION FOR ISSUANCE OF PERMANENT INJUNCTION AND FOR ORDER DIRECTING RETURN, DESTRUCTION OR OTHER REASONABLE DISPOSITION OF ALL COPIES OF FREIGHT CONTROL SYSTEM.