Interoperability Is Not Infringement: The Ninth Circuit Rewires Derivative-Works Law in Oracle v. Rimini Street

The Ninth Circuit's December 2024 decision holds that software built to interoperate with a copyrighted program is not a derivative work without 'something more' — actual copying of protected expression.

On December 16, 2024, the U.S. Court of Appeals for the Ninth Circuit decided Oracle International Corp. v. Rimini Street, Inc., No. 23-16038, the latest chapter in a copyright war that has run for more than a decade. Writing for a unanimous panel, the court vacated the district court’s finding that Rimini’s third-party support software constituted infringing derivative works of Oracle’s enterprise programs, dissolved the sweeping permanent injunction that had been entered in the District of Nevada, and trimmed Oracle’s Lanham Act false-advertising victory down to a single surviving claim. The opinion is the most consequential statement on software derivative works in years, and it lands squarely on a question that the AI and interoperability debates have made urgent: when does building software to work with someone else’s copyrighted code become building from it?

At a glance

Case: Oracle International Corp. v. Rimini Street, Inc., U.S. Court of Appeals for the Ninth Circuit, No. 23-16038.
Decision date: December 16, 2024 (appeal from the U.S. District Court for the District of Nevada).
Core holding: Designing software to interoperate with a copyrighted program does not, without more, create an infringing derivative work; the plaintiff must show that protected expression was actually incorporated, by literal or non-literal copying.
Injunction: Vacated, because it rested on the erroneous derivative-works analysis.
Lanham Act: One false-advertising claim affirmed (“holistic security” messaging); eight “more secure” claims reversed as non-actionable puffery; additional patch-related statements held too vague.
Why it matters: The decision protects the third-party software-support and interoperability markets by demanding proof of copying rather than mere functional compatibility.

Background: a support business built around a license

Oracle licenses complex enterprise software — PeopleSoft, JD Edwards, Oracle Database — under agreements that govern how licensees may copy the code, including for maintenance and the development of fixes. Rimini Street provides third-party support for those products at a fraction of Oracle’s own fees, which requires Rimini to develop and deliver updates, tax patches, and bug fixes that function alongside the licensed Oracle environments its customers already run.

That business model has generated two waves of litigation. In the first (Rimini I), Oracle established that Rimini’s earlier support practices infringed by making unauthorized copies of Oracle software on Rimini’s own systems; that dispute reached the Supreme Court in 2019 on a narrow question about recoverable litigation costs. Rimini then redesigned its processes and sought a declaratory judgment that the new approach was lawful. Oracle counterclaimed. The District of Nevada largely sided with Oracle, finding numerous derivative-works violations and entering a broad permanent injunction. The 2024 appeal tested that judgment — and the legal theory under it.

The derivative-works holding: “something more” than interoperability

The heart of the opinion is the Copyright Act’s definition of a derivative work, 17 U.S.C. § 101 — “a work based upon one or more preexisting works.” The district court had treated software that was designed to call, reference, or operate within Oracle’s environment as “based upon” Oracle’s code. The Ninth Circuit rejected that reasoning as a category error. Interoperability, the panel held, is not incorporation. A program that is engineered to talk to another program does not thereby contain that other program’s protected expression.

To find a derivative work, the court explained, there must be “something more”: the accused work must actually incorporate the copyrighted work, either through literal copying of code or through non-literal appropriation of protected, creative elements of structure, sequence, and organization. Functional compatibility — the capacity to interoperate — is exactly the kind of thing copyright does not reach, because it lives on the idea-and-function side of the idea/expression divide.

The panel illustrated the line with video-game precedent. Unauthorized add-ons that import a game’s audiovisual story elements can infringe because they carry the protected expression with them; tools that merely interact with a game while copying none of its protected material do not. Translated to enterprise software, a Rimini update that reproduced Oracle’s protected code would infringe, but an update authored to run in an Oracle environment without copying that code would not. Because the district court had not held Oracle to that incorporation requirement, the derivative-works findings could not stand, and the injunction built on them fell with them.

The Lanham Act recalibration: puffery versus measurable claims

The appeal also revisited Oracle’s false-advertising verdict. The Ninth Circuit affirmed liability on one theme — Rimini’s marketing suggesting it offered “holistic security” — but reversed the bulk of the judgment. Eight statements asserting that Rimini’s support made systems more secure than Oracle’s were held non-actionable puffery, because software “security” has no “objective, quantifiable metric” against which a superiority claim could be proven true or false. Several patch-related statements were deemed too vague to support liability. The result narrows false advertising in technical-marketing disputes: comparative claims survive only when they assert something measurable, not when they trade in generalized confidence.

Open questions

What counts as non-literal incorporation? The court reaffirmed that protected structure, sequence, and organization can be copied, but lower courts will still need the abstraction-style tools to separate protectable expression from unprotectable function in enterprise codebases.
License scope versus copyright scope. The decision rejects the derivative-works theory, but Oracle’s license terms independently constrain how licensees and their agents may copy software. Future fights may shift from “is this a derivative work?” to “did this breach the license?”
Spillover to AI training. Commentators immediately read the opinion as relevant to generative-AI disputes, where defendants argue their models interoperate with or learn from works without incorporating protected expression. How far the “something more” framing travels is unsettled.
Remand consequences. With the injunction vacated, what relief, if any, Oracle can still obtain on a properly framed record remains to be seen.

Implications

Third-party support and interoperability vendors gain breathing room: plaintiffs cannot equate “works with my software” to “is a derivative of my software.”
Copyright owners must prove copying: the burden is incorporation of protected expression, not functional dependence — a meaningful evidentiary lift.
Injunctions inherit their theory’s defects: an injunction grounded on a flawed liability theory is vulnerable on appeal in its entirety.
Technical marketing gets safer for puffery, riskier for metrics: vague security superiority claims are likely non-actionable, but anything framed as measurable invites Lanham Act exposure.
License drafting matters more, copyright theory less: rightsholders may increasingly police behavior through contract terms rather than derivative-works doctrine.

Frequently asked questions

Did Rimini Street “win” the case? Rimini won the most important issues on this appeal: the derivative-works findings were vacated and the permanent injunction was dissolved. But the litigation is long-running and multi-phase; earlier rulings established that some of Rimini’s prior practices infringed, and disputes over Rimini’s conduct and Oracle’s license terms continue.

What is the practical test for a software derivative work after this decision? Look for actual incorporation of the copyrighted program’s protected expression — literal code copying or non-literal copying of creative structure. Mere interoperability, compatibility, or designing software to run in another vendor’s environment is not enough.

Why does the case attract attention from the AI world? Generative-AI defendants often argue their systems interact with or are informed by copyrighted works without reproducing protected expression. The Ninth Circuit’s insistence on “something more” than functional connection gives those arguments a useful, recent appellate anchor — though the court did not decide any AI question.