Fair Isaac Corp. v. Experian Information Solutions, Inc.
650 F.3d 1139
8th Cir.2011Background
- FICO sued Experian, Equifax, TransUnion, and VantageScore for antitrust, trademark, and false-advertising claims; district court granted summary judgment on antitrust and false-advertising and held the mark merely descriptive; jury found no secondary meaning and fraud on the PTO; FICO appealed and district court denied attorneys’ fees to Experian and VantageScore; VantageScore is jointly owned by the bureaus; FICO’s score range 300-850 is central to its claimed trademark rights and competition with VantageScore.
- The tri-bureau data and FICO’s proprietary scoring algorithm underpin the market for credit scores; VantageScore launched in 2006 using data common to all three bureaus and was priced to entice lenders.
- The district court’s rulings shaped the appellate issues, including whether FICO suffered antitrust injury and had standing, whether 300-850 is descriptive and invalid, and whether fraud on the PTO occurred.
- The jury found no secondary meaning for 300-850 and supported a finding of fraud on the PTO; the district court later denied fee awards for Experian and VantageScore.
- FICO argues it has antitrust injuries in both the credit-scoring and data markets and seeks damages and injunctive relief; the court reviews summary judgment on antitrust de novo.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Antitrust injury and standing | FICO suffered antitrust injury as target and as data-market customer | No cognizable antitrust injury or standing shown | FICO failed to prove antitrust injury or standing |
| Trademark descriptiveness | 300-850 is a protectable mark with acquired secondary meaning | Mark is merely descriptive, lacking secondary meaning | District court did not err in finding 300-850 merely descriptive |
| Fraud on the PTO | Statements were not knowingly false or material | Evidence supports intentional deception affecting PTO registration | Jury findings of fraud sustained; sufficient evidentiary support |
| Licensee estoppel | VantageScore estopped due to licensee relationship | VantageScore not a licensee; no alter ego relationship established | VantageScore not estopped; licensee estoppel does not bar challenge |
| False advertising | Experian PLUS Score misleadingly markets as lender-used score | Advertised range refers to score type, not lenders’ usage; not false | Summary judgment on false-advertising claims affirmed |
Key Cases Cited
- Atlantic Richfield Co. v. USA Petroleum Co., 495 F.2d 328 (U.S. 1990) (antitrust injury requires injury of the type antitrust laws prevent)
- In re Canadian Import Antitrust Litig., 470 F.3d 785 (8th Cir. 2006) (private plaintiffs must show antitrust injury and standing)
- Brunswick Corp. v. Pueblo Bowl-O-Mat, Inc., 429 U.S. 477 (U.S. 1977) (antitrust injury flows from unlawful acts; injury must be related to illegal conduct)
- Anheuser-Busch Inc. v. Stroh Brewery Co., 750 F.2d 631 (8th Cir. 1984) (descriptiveness depends on how consumers view the term)
- In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) (fraud in procuring registration requires clear and convincing intent)
- Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006) (descriptiveness and consumer perception evidence)
- Frosty Treats, Inc. v. Sony Computer Entm't Am., Inc., 426 F.3d 1001 (8th Cir. 2005) (descriptive terms may be protectable if they are inherently distinctive)
- Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863 (8th Cir. 1994) (presumption of validity can be rebutted; descriptiveness analysis)