• by Ray Schultz , Columnist, June 26, 2020

The issue of whether you can copyright a database is likely to be litigated again with Infogroup as the plaintiff.

Infogroup filed a lawsuit against Office Depot in March, alleging that the retailer used Infogroup’s business database -- which lists 15 million companies -- for its mapping program without permission. 

In the complaint, on file with the U.S. District Court for the District of Nebraska, Infogroup states that it transferred “full electronic copies” of its business database to Office Depot between February 2018 and April 2019, presumably for marketing. 

But Office Depot used the data for its mapping program, which is designed to help the firm “understand small and medium business opportunities near its current business locations and identify new potential business locations,” without consent, the complaint continues. And Office Depot did not cease when asked, it adds.  

Infogroup is asking for an injunction to stop Office Depot from using its database “pursuant to Federal Copyright Act, 17 U.S.C. § 502.” And it demands monetary judgment to be determined at trial and an order requiring the impounding of all copies of the database. 

Office Depot counters in a legal filing that Infogroup "granted Office Depot an express license to use the database pursuant a series of written contracts" executed over a decade. 

It adds that "this is not a copyright case, continuing that " Infogroup does not allege copying of any kind or that any of the six explicit federal rights protected by the Copyright Act were violated."

This filing also states that "Infogroup consented and authorized Office Depot’s use by way of reinstating the contract in May of 2017, via an amended and restated agreement." And it challenges the venue. 

In a previous case, Infogroup won a copyright infringement case — and an $11.2 million judgment — against DatabaseUSA, the firm started by its founder and former CEO Vin Gupta. As reported, the verdict was upheld by the U.S. Court of Appeals for the Eighth Circuit, earlier this year. 

We would have thought that a database was hardly like a novel that you could copyright. The DatabaseUSA decision brought us up short. 

First, the usual disclaimers. Office Depot had not commented at deadline, and Infogroup said it was does not comment on litigation.

In addition, Email Insider was unable to independently confirm the truth of the allegations. In some ways, this looks like a routine contract dispute, and a court could well determine that the defendant was entitled to use the database for mapping. Or it could be settled.   

Yet there are two lessons for email marketers in this action. 

One, be careful when you’re using big information suppliers like Infogroup to enhance the data you have on customers and/or inquirers. Any use of data beyond the precise terms of the contract will get you into trouble. And, clearly, what the contract states may be open to interpretation. 

Disputes like this occasionally popped up in the old mailing list business. There was little outright list theft—most violations involved exceeding the terms of a contract.

But be aware that any unauthorized use of data can constitute a data breach. And that can draw the attention of the GDPR and CCPA enforcers.

As for copyrights, Infogroup states in the Office Depot case that its “highly selective and creative business judgments” include (and we quote):

• Predicted market preferences.
• Resolution of often-conflicting and incomplete data from multiple sources, including through use of a unique hierarchy of sources.”
• Proprietary modeling of unavailable business information. 

Given all that, it clearly is useless to rely on the Supreme Court’s 1991 Feist decision, which states that you cannot copyright mere facts. That case involved the copy of names and phone numbers out of a White Pages directory. 

Things have changed since then. 

Two, maybe you should think of copyrighting your own database, if you haven’t done so already. Surely, the effort and creativity that goes into building an email list — the content offers, the sign-up forms, the CTAs, the algorithms — qualifies as “sweat of the brow,” and is worthy of copyright protection. 

In the interest of full disclosure, this reporter did some writing work for an Infogroup subsidiary, Edith Roman, roughly a decade ago.