Experian Information Solutions v. Nationwide Marketing Services
893 F.3d 1176
| 9th Cir. | 2018Background
- Experian compiles the ConsumerView Database (CVD), including ~250 million name–address pairings developed from ~2,200 sources using validation tests and thousands of business rules; it spends substantial resources and licenses the data to mail marketers.
- Natimark purchased a ~200 million-record database (NCL) in 2011; a sample showed a ~94–97% match with Experian’s pairings, prompting Experian to sue for copyright infringement and later add a trade-secret claim.
- The District Court granted summary judgment to Natimark, holding Experian’s name–address compilations were not copyrightable and were not protected trade secrets (and that Natimark lacked knowledge of any misappropriation).
- On appeal, the Ninth Circuit held Experian’s pairings are copyrightable compilations (thin protection) but concluded Experian failed to prove infringement (no evidence of substantial verbatim/bodily appropriation).
- The Ninth Circuit reversed the grant of summary judgment on the trade-secret claim, finding triable issues that Natimark knew or had reason to know the data were obtained improperly and that Experian’s compilation could qualify as a trade secret under Arizona law.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyrightability of name–address pairings as compilations | Experian: its selective sourcing, exclusion rules, conflict-resolution business rules, and validation testing confer minimal creativity and originality | Natimark: Experian’s process is mere industrious collection/discovery of facts, like Feist/telephone directory | Held: Copyrightable as compilations — Experian’s selections and rules meet the minimal creativity standard (thin protection) |
| Copyright infringement (copying) | Experian: high match rates (expert testimony) show copying from Experian to Natimark | Natimark: databases differ in size and content; no side-by-side proof of substantial verbatim copying | Held: No infringement — Experian failed to show bodily appropriation or virtually identical works; an 80% maximum match is insufficient |
| Trade-secret status of compiled pairings (Arizona law) | Experian: compilation derives independent economic value from accuracy and is kept under protective licensing and security agreements | Natimark: names and addresses are public or readily ascertainable; thus not secret | Held: Triable issues exist — Experian presented evidence of secrecy, economic value, and differences from competitors sufficient to avoid summary judgment |
| Misappropriation / Natimark's knowledge of improper acquisition or use | Experian: low purchase price, unusual acquisition terms (invoice/ownership), and Natimark president’s background provide at least constructive notice of improper sourcing | Natimark: lacked knowledge or reason to know data were stolen or protected | Held: Triable issues exist as to Natimark’s knowledge/reason-to-know; summary judgment on this element was erroneous |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (compilations require minimal creativity; facts not copyrightable)
- CDN, Inc. v. Kapes, 197 F.3d 1256 (9th Cir.) (estimates and curated data can be copyrightable)
- Key Publications, Inc. v. Chinatown Today Publ’g Enters., Inc., 945 F.2d 509 (2d Cir.) (selective exclusion and categorization supported protection)
- Kregos v. Associated Press, 937 F.2d 700 (2d Cir.) (form/selection protected; relief narrow)
- Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir.) (selective choice from conflicting public records can be original)
- Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197 (9th Cir.) (factual compilations require bodily appropriation/virtual identity for infringement)
- Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir.) (for compilations, infringement demands near identity)
- Schoolhouse, Inc. v. Anderson, 275 F.3d 726 (8th Cir.) (percentage matches like 74% insufficient to show infringement)
- Ross, Brovins & Oehmke, P.C. v. Lexis Nexis Grp., 463 F.3d 478 (6th Cir.) (61% match insufficient to establish infringement)