Oracle Corporation et al v. SAP AG et al

Filing 793

Declaration of Chad Russell in Support of 790 Memorandum in Opposition, to Defendants' Motions in Limine filed byOracle EMEA Limited, Oracle International Corporation, Oracle USA Inc., Siebel Systems, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R, # 19 Exhibit S, # 20 Exhibit T, # 21 Exhibit U, # 22 Exhibit V, # 23 Exhibit W, # 24 Exhibit X, # 25 Exhibit Y, # 26 Exhibit Z, # 27 Exhibit AA, # 28 Exhibit BB, # 29 Exhibit CC, # 30 Exhibit DD, # 31 Exhibit EE, # 32 Exhibit FF, # 33 Exhibit GG, # 34 Exhibit HH, # 35 Exhibit II, # 36 Exhibit JJ, # 37 Exhibit KK, # 38 Exhibit LL, # 39 Exhibit MM, # 40 Exhibit NN, # 41 Exhibit OO, # 42 Exhibit PP, # 43 Exhibit QQ, # 44 Exhibit RR, # 45 Exhibit SS, # 46 Exhibit TT)(Related document(s) 790 ) (Howard, Geoffrey) (Filed on 8/19/2010)

Oracle Corporation et al v. SAP AG et al

Doc. 793 Att. 35

EXHIBIT II
Dockets.Justia.com

JONES D A Y
Hon. Charles A. Legge (Ret.) January 28, 2008 Page 6 The third-party support market is also relevant to the issue o f damages. Oracle alleges that it lost customers as a result o f improper downloads and "cross-use" o f its intellectual property. That puts into issue the extent to which Oracle lost business to other third-party service providers and derivatively how those companies were doing business. I t would be misleading and artificial for Oracle to pretend that it only lost customers to TN and only because o f the allegedly excessive downloading by TN. Evidence that Oracle lost business to other thirdparty support providers will be directly relevant to prevent Oracle from taking that misleading position. I t is also relevant to determine whether Oracle would have lost some or all o f those customers to some other support vendor regardless o f whether TN was in business Under the Copyright Act, actual damages represent the injury to the market value o f the copyrighted work at the time o f infringement. 4 Nimmer on Copyright § 14.02(a) at 14-13 to 1414. In appropriate circumstances, this amount is computed by determining what profits would have accrued to plaintiff b u t f o r the infringement. Nimmer §14.02(a)(I) at 14-14. Therefore, a plaintiff bears the burden o f proving a causal connection between the infringement and actual damages, a requirement which is "akin to tort principles o f causation and damages." Polar Bear Productions, Inc. v. Timex Corp., 384 F.3d 700, 708 (9th Cir. 2004).9 Thus, evidence that T N ' s customers could have or would have left Oracle with or without T N ' s activities presents a defense and discovery must be permitted into that area. In searching for responsive documents, Oracle should be required, among other things, to search files related to United States v. Oracle, 31 F. Supp. 2d 1098 (N.D. Cal. 2004), which was the action by the Department o f Justice seeking to prevent O r a c l e ' s acquisition o f PeopleSoft on antitrust grounds. I t stands to reason that Oracle would have collected and created documents concerning the market for third-party support in connection with that matter.

3.

C o p y r i g h t s (Requests Nos. 61, 63 & 87)

At its core, this is a copyright case premised on Oracle's "registered copyrights on the Software and Support Materials" allegedly infringed by TN. See, e.g., Complaint, ~ 83. Oracle has failed to produce discovery that will permit defendants to test the bona f i d e s o f Oracle's copyright claims. Request No. 61 seeks documents that have any tendency to support or refute any o f the facts set forth in the federal copyright registrations for Oracle's alleged Registered Works. Oracle has refused to produce any documents in response to this request. This is a very finite request. If, for example, Oracle has documents that question the validity o f its copyrights or contradict any representation it made to the Copyright Office in connection with its copyright applications, they are indisputably relevant and important, and Oracle has no legitimate basis to r e s i s t t h e i r production.

9 In Polar Bear, p l a i n t i f f granted defendant a license to use their video footage o f extreme kayakers. Defendant exceeded the scope o f the license, and plaintiff brought a §504(b) action. Plaintiff argued that but for d e f e n d a n t ' s infringement, it would have earned the necessary funds to produce other outdoor adventure videos which would have yielded profits. The court rejected this theory o f liability as " t o o pie-in-the-sky" and found that plaintiffs failed to establish a legally sufficient causal link between infringement and damages.