from wait what? department
The 9th Circuit is back with copyright. For some reason, when the 9th Circuit receives a copyright case, it often seems to screw up on it. This latter case – Experian v. Nationwide Marketing Services – is no exception. One of the most famous and important copyright cases to come before the Supreme Court was the Feist Case. We have mentioned it many times before. The brief summary is that a publisher of telephone directories had inserted some “fake” names and numbers in his book to try to catch imitators. He found one and sued for copyright infringement. The Supreme Court rejected it, noting that copyright does not apply to facts, and clearly rejecting any idea that mere “sweat of the brow” in fact-gathering gives you copyright.
It was good. But…there was a part of the decision that still left open the possibility of wrongdoing, and appellate courts have been wrongdoing in that loophole ever since. Here’s the problem: 17 USC 103 permits copyright in “compilations”, although it notes that such copyright “extends only to” the creative contribution to the making of the compilation, and not to the underlying works (whether copyrighted or not). the common sense the explanation for this is that if, say, you put together (with the appropriate licenses) a “best of…” CD (say “Best of the 70’s”), then you may have a copyright in that compilation . Not in the underlying songs, which you properly licensed, but in the creativity to choose the 7, 12, 15 or any number of songs, and the order in which you placed them. It takes some creativity, and that may be enough to get a fairly narrow copyright.
In Feist, the issue was whether or not the compilation of all phone numbers and names was covered by this compilation configuration, and the Supreme Court said no. A mere collection of facts contains no creative element and therefore cannot be considered a compilation for the purposes of establishing new copyright. It’s good. But opinion has bent over backwards to suggest that many other data compilations could have the required creativity. And… far too many courts have taken up the Supreme Court on this proposition, potentially eviscerating Feist’s precious promises.
This brings us to this case. Here, Experian, as you probably know, is one of the massive consumer data services, and one of its databases, the ConsumerView database, has about 250 million records on individual consumers. , associating their names and addresses. Names and addresses. Sounds pretty darn similar to Feist’s names and phone numbers, doesn’t it? Well, an upstart data collection company, Nationwide Marketing Services (or Natimark) somehow got their hands on a database called the National Consumer List, with around 200 million records. At one point he tried to sell this database to Experian (apparently the whole market is somewhat incestuous in passing and selling data between them, using different databases to mix and match and keep things up to date).
Experian analyzed the Natimark NCL listing data and found that it was far too close to its own ConsumerView Database (CVD), finding it 97% identical (later analysis indicated 94%). So this trial. To me, this seems like a pretty straightforward app from Feist. Names and addresses are factual information, there is no copyright in the compilation, discard the case. And that’s what the district court initially found. Experian tried again, now using trade secrets. Once again the district court said “nuh-uh”. The case was then appealed to the 9th Circuit Court of Appeals…which really screwed it up and ruled that, yes, Experian can copyright the compilation.
The advisory goes through a long list of other data-gathering cases, with rulings on either side, and finally says there is enough creativity in the gathering. Why? For two main reasons. First, Experian’s database excluded certain people, such as the elderly. By not including “every relevant universe known to her,” the court concludes that he made creative choices about what not to include. Second, Experian employees had to make decisions about which address goes with which people. Specifically, by compiling these databases from multiple sources, they can see that there are multiple possible addresses for an individual, and Experian employees had to choose which address to record. And that, in the spirit of the 9th Circuit, is the level of creativity needed to secure a copyright.
Experian’s selection process of selecting data from multiple sources and selecting the appropriate pairing of addresses with names before entering them into the database involves a process of at least minimal creativity. Lists are compiled by first collecting and comparing multiple sources, then sorting conflicting information through the creation of business rules created by Experian to select among conflicts. As the Fifth Circuit said in Mason, selection is creative enough when the compiler makes “choices”. . . independently. . . select information from numerous and sometimes contradictory sources. ?
But… that sounds an awful lot like bringing back the “sweat of the brow” argument. It’s not Creative the choices that are made here. It is a question of choosing which information is correct, that is to say factual.
The exclusion of the elderly also appears as a bizarre factor in judging “creativity”.
Experian employees, such as the compiler of Key Publications, also exclude information that they believe is not relevant to the interests of Experian’s marketing clients, information such as business addresses and the names and addresses of the very elderly and incarcerated. See 945 F.2d at 513. Such exclusions indicate some “thought and creativity in selection”. of names and addresses to be included in the database, id., which indicates the “minimum of creativity necessary to transform a simple selection into a copyrighted expression”.
But, by that standard, it would seem that Feist himself was decided incorrectly. Remember, the reason Feist became a case in the first place was because the original phone book added fake names and numbers. How is it different from choosing to exclude the names of older people? Indeed, you could argue that adding bogus numbers requires more creativity than to exclude factual data on the elderly.
By that standard, it seems fairly easy to completely eliminate Feist. If you want to copyright your large collection of purely factual data, drop a few entries that nobody needs and pretend it was your creative choice.
In this case, Experian probably still isn’t thrilled with the outcome, because after establishing that Experian may have a copyright in the compilation, it then says that Experian has failed to prove infringement. The court notes that to prove infringement of a compilation, you must show that the entire compilation was copied. But, here, it has not been shown.
In this case, the allegedly infringing Experian database was updated to September 2011. Neither this entire database nor the allegedly infringing Natimark database was tendered into evidence, and perhaps in practice it could not have been. Nevertheless, there must be enough content evidence to make a fair comparison….
Experian argues that it has established a justifiable copying issue by offering an expert opinion that the match rate between the Experian files and the allegedly infringing Natimark files is higher than the match rate between the files of Experian and one of its lawful licensees. Experian asks us to hold that it presented sufficient circumstantial copying evidence to send the case to a jury. It does not cite any authority in this circuit or elsewhere to establish the infringement on the basis of circumstantial evidence, and in the absence of any direct comparison.
He also points out that Experian’s own evidence shows that the Natimark database was only 80% the size of Experian, and that is not enough to show that the entire compilation was copied. This therefore condemns Experian’s copyright argument. But, still, the ruling that copyright exists in the first place is quite troubling and could create all sorts of problems. This will allow for a false straight “forehead sweat”, which should be of concern. All of this could have been avoided if everyone recognized that compilation copyrights shouldn’t just be for collecting giant boxes of factual data, but compilations of copyrighted material. Unfortunately, Congress (perhaps foolishly) included the term “data” in its definition of compilation. It would be nice if Congress rectified this mess by removing that word from the definition, but that’s unlikely to happen anytime soon…
As we just discussed, the lack of a “database right” in the United States, as found in Europe, has actually been a huge boon to innovation, especially on the Internet. This decision could create problems for this by establishing a de facto database right, if the initial compiler takes some foolish steps to establish the minimum “creativeness” necessary to satisfy the court here. And, of course, it’s still unclear why adding false information isn’t permissible, while deleting a few entries is.
For what it’s worth, the court also overturned the lower court’s ruling on trade secrets, saying there’s enough evidence to say a jury should determine whether or not Experian’s database is covered by trade secrets law. It’s…also bad, but wading through the massive mess that is trade secret law is something that’s probably going to start me banging my head against the wall repeatedly, and I really don’t no desire to do so at the moment. Maybe another time.
Filed Under: 9th Circuit, compilations, copyright, creativity, data, database rights, facts, feist
Companies: experian, natimark