United States District Court, D. Nebraska
MEMORANDUM AND ORDER
M. GERRARD CHIEF UNITED STATES DISTRICT JUDGE
matter is before the Court on the parties' post-trial
motions. DatabaseUSA.com and Vinod Gupta (collectively,
DatabaseUSA) move for renewed judgment as a matter of law
(filing 507) and alternatively, for a new trial (filing 510).
Both parties have also filed motions to amend the judgment
(filing 473, filing 498, filing 510), and Infogroup has moved
for attorney's fees (filing 495). The Court will grant
those motions in part, and deny those motions in part as set
seeds of this litigation were planted nearly five years ago
when Infogroup found nine of its own seeds in a sample of
DatabaseUSA's database. Since then, there have been
numerous substantive disputes, various written and oral
decisions by this Court, and a seven-day jury trial where the
parties zealously presented their best evidence and arguments
to a jury of their peers. After careful deliberation, the
jury returned a verdict in favor of Infogroup on all seven of
its claims: (1) False Advertising; (2) Copyright
Infringement; (3) Mark Infringement; (4) Unfair Competition;
(5) Breach of the 2008 Separation Agreement; (6) Breach of
the 2012 Settlement Agreement; and (7) Unjust Enrichment.
See generally filing 464. The jury awarded Infogroup
$53, 600, 000.00 in damages. Filing 464.
DatabaseUSA argues that the jury's verdict cannot stand
as a matter of law. Filing 508 at 4. Alternatively,
DatabaseUSA moves for a new trial arguing various errors by
the Court--including instructional errors and improper
admissions. See filing 511 at 2. Infogroup opposes
both motions, arguing that the Court's instructions were
correct and that the jury's verdict is sound.
Seefiling 518 at 6; filing 520 at 1.
STANDARD OF REVIEW
considering a motion for judgment as a matter of law, a court
must determine whether or not the evidence was sufficient to
create an issue of fact for the jury. Lane v.
Chowning, 610 F.2d 1385, 1388 (8th Cir. 1979). The Court
will grant a motion for judgment as a matter of law when all
the evidence points one way and is susceptible of no
reasonable inferences sustaining the position of the
nonmoving party. Ehrhardt v. Penn. Mut. Life Ins.
Co., 21 F.3d 266, 269 (8th Cir. 1994). In considering
the motion, the Court views the record in the light most
favorable to the prevailing party. Wash Solutions, Inc.
v. PDQ Mfg., Inc., 395 F.3d 888, 892 (8th Cir. 2005).
The Court must also assume that all conflicts in the evidence
were resolved in favor of the prevailing party, and the Court
must assume as proved all facts that the prevailing
party's evidence tended to prove. E.E.O.C. v. Kohler
Co., 335 F.3d 766, 772 (8th Cir. 2003). The motion
should be denied unless the Court concludes that no
reasonable juror could have returned a verdict for the
nonmoving party. Billingsley v. City of Omaha, 277
F.3d 990, 995 (8th Cir. 2002).
motion for new trial is governed by Federal Rule of Civil
Procedure 59. The standard for granting a new trial is
whether the verdict is against the great weight of the
evidence. Butler v. French, 83 F.3d 942, 944 (8th
Cir. 1996). In evaluating a motion for a new trial pursuant
to Rule 59(a), the key question is whether a new trial should
have been granted to avoid a miscarriage of justice.
McKnight By & Through Ludwig v. Johnson Controls,
Inc., 36 F.3d 1396, 1400 (8th Cir. 1994).
reaching the merits of the parties' arguments, the Court
must briefly address three underlying contentions that form
the foundation for DatabaseUSA's post-trial briefing: (1)
copyright preemption; (2) exclusion of testimony; and (3) the
spoliation instruction given by the Court. Seefiling
508 at 29-30; see also filing 511 at 14-15; 21-25.
The Court will consider those arguments in turn below.
to DatabaseUSA, two of Infogroup's state law
claims--unfair competition and unjust enrichment--are
preempted by Infogroup's copyright claim. That argument
is based on a core principle of federal copyright law: that
the Copyright Act preempts "all legal or equitable
rights that are equivalent to any of the exclusive rights
within the general scope of copyright . . . in works of
authorship that are fixed in a tangible medium of expression
and come within the subject matter of copyright." 17
U.S.C. § 301(a); Dryer v. Nat'l Football
League, 814 F.3d 938, 942 (8th Cir. 2016).
determining whether federal copyright law preempts a cause of
action under state law, the Court's analysis is twofold:
(1) whether the work at issue is within the subject matter of
copyright as defined in §§ 102 and 103 of the
Copyright Act; and (2) whether the state-law-created right is
equivalent to any of the exclusive rights within the general
scope of copyright as specified in § 106. Id.
But section 301 preempts only those state law rights that
"may be abridged by an act which, in and of itself,
would infringe one of the exclusive rights provided by
federal copyright law." Nat'l Car Rental Sys.,
Inc. v. Computer Assocs. Int'l, Inc., 991 F.2d 426,
431 (8th Cir. 1993) (quoting Computer Assocs. Int'l,
Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992)).
So, if an extra element is required to constitute a
state-created cause of action-- instead of or in addition to
the acts of reproduction, performance, distribution or
display protected by the Copyright Act--then the claim does
not lie within the general scope of copyright and there is no
preemption. Id. (citing 1 Nimmer on Copyright §
1.01[B], at 1-14-15)). Stated differently, the state law
claims must be qualitatively different from Infogroup's
copyright claim. See generally id.
establish a claim of unfair competition, Infogroup is
required to demonstrate that DatabaseUSA attempted to pass
off its goods or services (i.e., its database) as
Infogroup's product. See Restatement (Third) of
Unfair Competition, §§ 2-4 (1995); John Markel
Ford, Inc. v. Auto-Owners Ins. Co., 543 N.W.2d 173, 178
(Neb. 1996) (using the Restatement). It is well-established
that a state law unfair competition claim that alleges the
tort of passing off is not preempted because such a claim
alleges an extra element of deception or misrepresentation
that is not necessary for copyright infringement. Donald
Frederick Evans & Assocs., Inc. v. Cont'l Homes,
Inc., 785 F.2d 897, 914 (11th Cir. 1986); Warner
Bros. Inc. v. Am. Broad. Cos., Inc., 720 F.2d 231, 247
(2nd Cir. 1983); Nicassio v. Viacom Int'l, Inc.,
309 F.Supp.3d 381, 397 (W.D. Pa. 2018); Kitchen &
Bath Concepts of Pittsburgh, LLC v. Eddy Homes, Inc.,
2016 WL 7404559, *5 (W.D. Pa. 2016); Kindergartners
Count, Inc. v. Demoulin, 171 F.Supp.2d 1183, 1191 (D.
Kan. 2001); cf. Take-Two Interactive Software,
Inc. v. Zipperer, No. 18-CV-2608, 2018 WL 4347796, at *7
(S.D.N.Y. Aug. 16, 2018).
similar reasons, Infogroup's unjust enrichment claim is
not preempted by the Copyright Act. To prove an unjust
enrichment claim, Infogroup must show that DatabaseUSA
obtained and benefitted from something of value that it was
not entitled to. Kalkowski v. Neb. Nat'l Trails
Museum Found., Inc., 862 N.W.2d 294, 301-02 (Neb. 2015)
(emphasis added) (quoting Restatement (Third) of Restitution
and Unjust Enrichment § 2, comment a. (2011)). That
"something of value," the jury could determine, was
obtained through DatabaseUSA's deception or
misrepresentation. And as discussed above, the element of
deception or misrepresentation is not necessary for a
copyright cause of action. Accordingly, the Court concludes
that neither Infogroup's unfair competition or unjust
enrichment claim is preempted by its copyright claim--and as
such, DatabaseUSA's Rule 50 motion will be denied on
those grounds. Seefiling 508 at 29-31.
Motion to Exclude Testimony
also claims the testimony of two witnesses should have been
excluded. See filing 511 at 14. Specifically,
DatabaseUSA claims that John Hofmann and Amit Khanna were
allowed to testify over several foundational objections on
topics upon which they were not qualified to render an
opinion. SeeFiling 511 at 14.
DatabaseUSA claims that John Hofmann's testimony was
erroneously admitted. In support of that contention,
DatabaseUSA makes two arguments: (1) DatabaseUSA claims that
Hofmann's damage model was "unreliable, illogical,
inconsistent with the evidence, and otherwise flawed;"
and (2) DatabaseUSA claims that because there was no way for
the jury to disaggregate what portion of damages was
attributable to what claims, his testimony was inherently
speculative. Filing 511 at 14.
respect to DatabaseUSA's latter contention,
DatabaseUSA's specifically claims that because the jury
had no way to "disaggregate damages" between
Infogroup's copyright claim and the remaining causes of
action, Hofmann's testimony should have been excluded.
Seefiling 511 at 15-18. This argument is based, in
large part, on various antitrust decisions. See
Concord Boat Corp. v. Brunswick Corp., 207 F.3d
1039, 1057 (8th Cir. 2000); Amerinet, Inc. v. Xerox
Corp., 972 F.2d 1483, 1494 (8th Cir. 1992); Farley
Transp. Co. v. Santa Fe Trail Transp. Co., 786 F.2d
1342, 1352 (9th Cir. 1985). Those decisions, very generally,
require a damage expert to separate lawful from
unlawful conduct to ensure the expert's testimony is
not speculative or based on conjecture. Concord Boat
Corp., 207 F.3d at 1057 (emphasis supplied).
those cases, the problem is not, as DatabaseUSA suggests,
that the jury was unable to parse out the amount of damage
associated with each allegation of unlawful conduct. Rather,
the problem is that there was "no evidence on
the amount of damages attributable only to the
unlawful conduct." Farley Transp. Co., 786 F.2d
at 1352 (9th Cir. 1985) (emphasis in original); see
also Amerinet, Inc., 972 F.2d at 1494. Stated
differently, the critical flaw in the antitrust context was
the lack of evidence linking the defendant's profits to
the customer's own motivations (i.e., a lower
price point) and the unlawful conduct of the defendant
(i.e., anti-trust violations). Id. That is,
there was nothing to suggest what portions of the claimed
profits were attributable to unlawful conduct, and what
portions of the claimed profits are attributable to lawful
however, Hofmann's testimony specifically separated $39.6
million of DatabaseUSA's revenue attributable to unlawful
conduct--as a result of DatabaseUSA's copyright
infringement, false advertising, and other misconduct--from
its overall revenue of $46.6 million. Filing 479 at 37; E114.
In other words, according to Hofmann, at least $7 million of
DatabaseUSA's overall profits were not linked to any of
DatabaseUSA's unlawful conduct, but rather, profits it
obtained fair and square.
more simply, DatabaseUSA's perceived issues with
Hofmann's testimony are not whether the jury could
determine the amount of damages attributable to
DatabaseUSA's unlawful conduct. Rather, the problem is
precisely what unlawful conduct (i.e., copyright
infringement, false advertising, mark infringement, or some
combination of that conduct) caused a specific portion of
that harm. And although that might prove to be a
causation issue on some of Infogroup's claims,
as discussed in more detail below, that does not mean that
the jury had no basis to make a reasonable and principled
estimate of the amount of damage attributable to
DatabaseUSA's unlawful conduct. Cf.
Farley, 786 F.2d at 1352; Amerinet, Inc.,
972 F.2d at 1494. Thus, Hofmann's testimony was properly
admitted on those grounds.
alternative contention, that Hofmann's damages model is
flawed in various respects, does not fare any better.
Specifically, DatabaseUSA takes issue with several aspects of
Hofmann's testimony, including his lack of in-depth
knowledge about how the "overlap" factor was
calculated, the fact that a high match rate is not
"statistically significant", and the fact that
Hofmann failed to account for several other factors in
addition to the overlap factor he used to form his overall
opinion. Filing 511 at 11.
those arguments go to weight, not admissibility. Bonner
v. ISP Tech., Inc., 259 F.3d 924, 929-30 (8th Cir.
2001). Only when an expert's opinion "is so
fundamentally unsupported that it can offer no assistance to
the jury must such testimony be excluded." Id.
That is not the case here. In fact, there is little doubt
that the specialized knowledge of Hofmann--someone with over
twenty years of experience in the finance industry and the
sole damages expert presented by either party--would be
helpful in determining the portion of DatabaseUSA's
profits attributable to its unlawful conduct.
not to say that DatabaseUSA's attacks on Hofmann's
testimony do not make some valid points, but those points
were presented to the jury through a rigorous cross
examination--and the jury disagreed. Seefiling 479 at
44-57. And DatabaseUSA's arguments, while they raise
valid concerns, are insufficient to render the expert's
testimony inadmissible or so unreliable as to remove all
support for the jury's findings. See Frank Music
Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d
505, 514 (9th Cir. 1985).Accordingly, the Court will
deny DatabaseUSA's Rule 59 motion with respect to
Hofmann's damages model in its entirety.
DatabaseUSA claims that two separate, but related, areas of
the testimony of Amit Khanna--president of Local Marketing
Solutions at Infogroup--were not admissible. Filing 511 at
18. First, DatabaseUSA claims there was not sufficient
foundation for Khanna to opine on what Infogroup's 2011
database looked like or how it was compiled. Filing 511 at
19. Second, DatabaseUSA claims that Khanna did not possess
the requisite personal knowledge to testify about the 2011
seeding. Filing 511 at 19.
support of its former contention, DatabaseUSA points out that
Khanna did not work at Infogroup at the time the 2011
database was in play. Filing 511 at 19. But that argument
ignores the fact that Khanna also testified that he began
working at Infogroup as a developer in 1997. Filing 476 at
249. And in that role, Khanna had significant involvement in
the technical aspects of Infogroup's database.
Seefiling 476 at 178-83. Specifically, Khanna
testified that he "headed up [Infogroup's] database
compilation group which was obviously responsible for
compiling information and collecting all the -- the data from
all the sources." Filing 476 at 181. And around 2006,
Khanna was involved in managing data compilation in
accordance with technological advancements. Filing 476 at
although it is true that Khanna was not involved in compiling
the 2011 database itself, that does not mean he has no
knowledge of how Infogroup generally gathered, selected, and
arranged that information. And there is no evidence to
suggest that the way Infogroup compiled its database
meaningfully changed from 2006 until 2011. In other words,
Khanna, who has over fifteen years of experience in data
compilation techniques and database maintenance, demonstrated
the requisite foundation to opine on how Infogroup generally
arranged and compiled its 2011 database.
more fundamentally, Khanna specifically testified that
following his return to Infogroup in 2013, he reviewed and
analyzed the 2011 database for purposes of obtaining a valid
copyright. Filing 476 at 241. In doing so, he identified and
separated the portions of Infogroup's database that were
original and deleted third-party work (i.e.,
non-copyrightable material). Filing 476 at 2421-2. And that
necessarily required Khanna to review Infogroup's 2011
database, determine how its selection and arrangement process
was original, and determine what portions should be excluded.
So, contrary to DatabaseUSA's assertions, Khanna
did have first-hand knowledge of what
Infogroup's 2011 Database looked like, how it was
compiled, and how that information was originally arranged.
second argument fares no better. Specifically, DatabaseUSA
claims that Khanna had "no basis to testify as to the
creation of Infogroup's 2011 'seeds' or the
results of Infogroup's data 'audits.'"
Filing 511 at 19. But those arguments miss the mark. Indeed,
Khanna testified that he routinely works closely with the
audit team because it is his responsibility to first identify
issues before the audit team gets involved. Filing 476 at
199. And in that role, he reviewed the 2011 seeds with the
team who did the audit, and used the 2011 seed list to
conduct his own audit. Filing 476 at 203-04. The purpose of
reviewing that information, Khanna said, was to be able to
identify if any of those seeds were present in the portion of
DatabaseUSA's database purchased by Infogroup. Filing 476
at 211. Thus, there was sufficient foundation for Khanna to
testify to the 2011 seeds and results of the audit. And
DatabaseUSA's Rule 59 motion will be denied on those
DatabaseUSA claims that the spoliation instruction was
improper. Filing 511 at 21. That argument is based on
DatabaseUSA's contention that it did not intentionally
destroy its database. Filing 511. DatabaseUSA raises several
arguments that, it says, supports that contention. To begin,
DatabaseUSA argues its 2014 database (and all previous
versions) was lost due to its document retention
policy--rather than the result of deliberate destruction.
Filing 511 at 22. And because the information was innocently
lost, DatabaseUSA claims the "information was [not] lost
with the intent to prevent its use in litigation" as
required under Fed.R.Civ.P. 37.
Court has, at this point, considered that same argument on
several occasions. Seefiling 343, filing 400. And
the Court is still not convinced that DatabaseUSA's
database was deleted by accident. At the time this litigation
was commenced, DatabaseUSA had copies of its business
database dating back to at least February 2012. Filing 343 at
5. And that was expected because, as Gupta testified,
DatabaseUSA generally retains copies of its database for at
least two years. Filing 287-1 at 160-1. Yet, by the time
Infogroup began setting its plan to perform a complete audit
of DatabaseUSA's databases in motion, only a 2015 version
of the database (and subsequent versions of that database)
existed. It is difficult to imagine a scenario where the
database's destruction was a result of anything other
than "the intent to prevent its use in litigation."
Fed.R.Civ.P. 37 (advisory committee's note to 2015
even if the Court were persuaded that the missing database
was "accidentally" destroyed, that still would not
alleviate the underlying problems of its absence. That brings
the Court to DatabaseUSA's remaining arguments-each of
which are equally unavailing. First, DatabaseUSA claims that
the Court's reliance on Lewy v. Remington Arms Co.,
Inc., 836 F.2d 1104 (8th Cir. 1988) is misguided. And
second, DatabaseUSA claims that Infogroup was not harmed by
the absence of its entire 2014 database.
first argument is easily disposed of, so the Court will begin
there. Specifically, DatabaseUSA insinuates that the Court
plucked one "isolated" quote out of a "more
nuanced" decision. Filing 511 at 22. And as a result of
the Court's oversight, DatabaseUSA claims that the Court
completely missed the underlying premise of
Lewy--instructions to the lower court to
"examine whether the defendant's document retention
policy was instituted in bad faith." Filing 511 at 23.
To that end, DatabaseUSA argues there is nothing in the
record to suggest that DatabaseUSA's "routine
deletion of data" was "instituted in bad
faith," and as such, DatabaseUSA contends that the
adverse instruction is improper under Lewy. Filing
511 at 23 (emphasis in original).
that argument does exactly what DatabaseUSA claims the Court
did--it plucks one "isolated quote" from a decision
while ignoring the remainder. Had DatabaseUSA continued to
refer the Court to related portions of the opinion, it would
have cited the following:
In cases where a document retention policy is instituted in
order to limit damaging evidence available to potential
plaintiffs, it may be proper to give an instruction similar
to the one requested by the [plaintiffs]. Similarly, even if
the court finds the [instituted retention] policy to be
reasonable given the nature of the documents subject to the
policy, the court may find that under the particular
circumstances certain documents should have been retained
notwithstanding the policy. For example, if the corporation
knew or should have known that the documents would become
material at some point in the future then such documents
should have been preserved. Thus, a corporation cannot
blindly destroy documents and expect to be shielded by a
seemingly innocuous document retention policy.
Lewy, 836 F.2d at 1112 (citations omitted); see
also Stevenson v. Union Pac. R. Co., 354 F.3d
739, 747 (8th Cir. 2004) (although retention policy was not
unreasonable or instituted in bad faith, it was unreasonable
and amounted to bad faith conduct for defendant to adhere to
the principle in the circumstances of this case).
other words, Lewy specifically provided guidance for
a scenario where despite the reasonableness of the instituted
policy, the destruction of documents gives rise to an
unfavorable inference. And that scenario is nearly identical
to this litigation: DatabaseUSA was sued in February 2014,
but following the initiation of this lawsuit, it destroyed
the database knowing it would be highly relevant to
this particular litigation. Simply put, even if DatabaseUSA
destroyed the database pursuant to its routine retention
policy, the post-litigation destruction-and circumstances
surrounding its destruction-create a sufficiently strong
inference of an intent to destroy it for purpose of
suppressing evidence. Stevenson, 354 F.3d at 748.
second argument is peculiar at best. Indeed, that argument
hinges on DatabaseUSA's contention that even without
access to the 2014 database in its entirety, "Infogroup
 had sufficient access to DatabaseUSA's database to
test its copyright claim." Filing 511 at 24. That is
true, DatabaseUSA claims, because "there was absolutely
nothing stopping Infogroup from using this data (or
purchasing more) to conduct the necessary comparison."
Filing 511 at 24. Yet, DatabaseUSA's entire
argument--as discussed in more detail below--as to why, in
its view, Infogroup's copyright claim fails as a matter
of law, is premised on DatabaseUSA's contention that
Infogroup was required to enter its entire database
into evidence. Filing 508 at 7-8. That is required,
DatabaseUSA argues, because to prove copyright infringement
Infogroup must demonstrate "extensive verbatim
copying" of the complete database. Filing 508 at 7-8.
So, by DatabaseUSA's own logic, the Court is unsure how
"Infogroup had sufficient access to DatabaseUSA's
database to test its copyright claim" without the
ability to forensically analyze the database.
DatabaseUSA's Rule 50 motion will be denied on those
final matter, DatabaseUSA also argues that the adverse
inference was too broad because it "should have been
tailored to Infogroup's (single) copyright claim."
Filing 511 at 25. But in making that argument, DatabaseUSA
has failed to point the Court to any, much less persuasive,
authority requiring the adverse inference to be attached to a
particular claim. See filing 511 at 25-26. For
instance, it's common in any case presenting multiple
claims for relief for particular evidence to be relevant to
some claims, but not others. It would, however, be uncommon
to give a limiting instruction for such evidence, in the
absence of any suggestion that the evidence could be
misused-and DatabaseUSA is in effect saying that such a
limiting instruction should have been given here. Instead,
Infogroup was entitled to press the adverse inference with
respect to any claim to which the 2014 database would have
been relevant, had it not been destroyed. So, the Court
concludes the instruction was proper under Eighth Circuit
precedent, and the Court will deny DatabaseUSA's motions
on those grounds. Stevenson, 354 F.3d at 750.
DatabaseUSA's Rule 50/59 Motions
those preliminary matters decided, the Court will address the
substance of DatabaseUSA's Rule 50/59 motions.
DatabaseUSA's Rule 50 motion generally alleges that there
is no legally sufficient basis for the jury's verdict on
the following categories of claims: (1) copyright
infringement; (2) false advertising and mark infringement;
(3) unjust enrichment and unfair competition; and (4) breach
of the 2008 separation agreement. Filing 508 at 4.
DatabaseUSA's Rule 59 motions similarly suggest that the
jury's findings on each of those categories of claims is
either excessive or against the clear weight of the evidence.
SeeFiling 510 at 1. Because many of the arguments in
support of those motions are based on similar issues of fact
and law, the Court will generally consider those motions
arguments underlying each of those claims generally fall into
one of two categories--liability or damages. The Court will
first consider whether the jury's finding that
DatabaseUSA is liable to Infogroup on each of the above
claims is supported by the evidence presented at trial. From
there, the Court will determine if DatabaseUSA's
arguments surrounding Infogroup's damages model have any
jury was asked to determine whether Infogroup owns a valid
copyright in its 2011 database, and whether DatabaseUSA's
2014 database copied protected expression in Infogroup's
copyrighted work. Taylor Corp. v. Four Seasons Greetings,
LLC, 315 F.3d 1039, 1042 (8th Cir. 2003); Moore v.
Columbia Pictures Indus., Inc., 972 F.2d 939,
941 (8th Cir. 1992); seefiling 462 at 15. The jury
determined that it did, and for the reasons set forth below,
the Court finds that conclusion is supported by sufficient
evidence. Filing 467.
parameters of copyright law are clear--original works are
copyrightable, but facts are not. Feist Publ'ns, Inc.
v. Rural Tel. Serv., Co., 499 U.S. 340, 344-45, (1991);
Experian Info. Sols., Inc. v. Nationwide Mktg. Servs.
Inc., 893 F.3d 1176, 1185 (9th Cir. 2018);
Schoolhouse, Inc. v. Anderson, 275 F.3d 726, 729-30
(8th Cir. 2002). At trial, the parties' arguments
generally fell on opposite ends of that spectrum. That is,
according to Infogroup, its database is not composed of
facts--it is made of unique judgments. Filing 476 at 89;
filing 477 at 171. And according to DatabaseUSA, Infogroup
only sells facts-- not unique or creative judgments. Filing
476 at 149. But in reality, this case lies somewhere in
between: Infogroup sells a selection and arrangement of facts
that may be subject to copyright protection if there
is evidence that the information is selected, coordinated, or
arranged in a creative way. 17 U.S.C. § 101; see
also Feist, 499 U.S. at 357.
begin, the kind of creativity that sufficiently establishes
copyright protection in factual compilations is minimal.
Feist, 499 U.S. at 348; Key Publ'ns, Inc. v.
Chinatown Today Publ'g Enters., Inc., 945
F.2d 509, 512-13 (2d Cir. 1991); see Experian, 893
F.3d 1176, 1185. By way of example, the compilation of
business names, addresses, and phone numbers of interest to
the New York City Chinese-American community would be
sufficiently creative to warrant copyright protection of a
directory. Key Publ'ns, 945 F.2d at 512-13. And
the compilation of data from a variety of sources, including
catalogue purchase data, cable company records, real estate
deeds, and warranty cards signed by consumers at retail
stores is also sufficiently creative to warrant copyright
protection. Experian, 893 F.3d at 1185.
such compilations of factual information receive only limited
protection. 17 U.S.C. § 103(b); Feist, 499 U.S.
at 359. That means that a compiler may freely use the facts
contained in a compilation when preparing a competing work,
as long as the competing work does not exhibit the same
selection or arrangement. See Feist, 499
U.S. at 349, see also Kregos, 937 F.2d at
702, 709. So, the question is whether there was sufficient
evidence from which a jury could conclude that
Infogroup's compilation of factual information was
sufficiently creative to warrant copyright protection.
Feist, 499 U.S. at 357.
to DatabaseUSA, there was no way for the jury to determine
whether the same selection or arrangement was used by both
compilation companies. That is true, DatabaseUSA alleges,
because Infogroup failed to introduce evidence of what its
database actually looked like in November, 2011.
Seefiling 508 at 7-13. And that oversight,
DatabaseUSA argues, is not insignificant because the jury had
no way to determine how, if at all, the database was
creatively arranged. See filing 508 at 7. In support
of that argument, DatabaseUSA extensively relies on the Ninth
Circuit's decision in Experian. 893 F.3d at
that argument is misplaced. The Experian court
determined that the database in that case was
entitled to copyright protection. Experian, 893 F.3d
at 1176. More specifically, the court noted that
"Experian's selection process in culling data from
multiple sources and selecting the appropriate paring of
addresses with names before entering them in the database
involves a process of at least minimal creativity."
Id. at 1185.
that process is nearly identical to the way Mike Iaccarino
and Amit Khanna described Infogroup's selection process.
Iaccarino, Infogroup's CEO, testified to Infogroup's
"merge/purge" process. Specifically, he explained,
if you think about a business record, we might get that from
multiple sources. We might get it from the Yellow Pages. We
do not accept that as fact, okay? We do not accept any
particular source as fact because we're going to get - we
could get Acme Plumbing and -- on Main Street in Omaha. That
could show up 50 different times when we compile all those
sources before what we do -- what we call the merge/purge. We
take all that data, we merge it and then we purge bad
records. . .
475 at 60. In other words, according to Iaccarino, once
Infogroup obtains factual information, that information is
verified--either by making a phone call to the business or by
comparing it to other information, and Infogroup's
employees choose to include or exclude that information from
the database. Filing 475 at 60; 745 at 61. To that end,
Iaccarino also testified that:
[m]ost - particularly small businesses, their websites are
inaccurate and their information is wrong. So, you know, just
taking information from a website is not considered best
practices. So we have several different ways we can verify
it. Re-calling, looking at -- looking at the website, looking
at other pieces of information we might have and then we make
a decision ...