FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

EXPERIAN INFORMATION

SOLUTIONS, INC.,

Plaintiff-Appellant,

v.

NATIONWIDE MARKETING SERVICES

INCORPORATED,

Defendant-Appellee.

No. 16-16987

D.C. No.

2:13-cv-00618-

SPL

OPINION

Appeal from the United States District Court

for the District of Arizona

Steven Paul Logan, District Judge, Presiding

Argued and Submitted December 6, 2017

San Francisco, California

Filed June 27, 2018

Before: Mary M. Schroeder and William A. Fletcher,

Circuit Judges, and Sara Lee Ellis,* District Judge.

Opinion by Judge Schroeder

*

 The Honorable Sara Lee Ellis, United States District Judge for the

Northern District of Illinois, sitting by designation.
2 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

SUMMARY**

Copyright

The panel affirmed in part and reversed in part the district

court’s summary judgment in favor of the defendant in a

copyright case.

Plaintiff Experian Information Systems, Inc., compiled

the ConsumerView Database, which contains more than 250

million records, each pertaining to an individual consumer. 

The database includes compiled pairings of names and

addresses.

Affirming in part, the panel held that the name and

address pairings were copyrightable as compilations but were

entitled only to limited protection under the copyright laws. 

The panel held that Experian failed to show that its copyright

was infringed because it did not establish a bodily

appropriation of its work.

Reversing the district court’s grant of summary judgment

on a state law trade secret claim, the panel held that, if proper

safeguards were maintained, then Experian’s lists could be

protected as trade secrets under Arizona law. The panel

concluded that there were triable issues of fact as to the

defendant’s knowledge of misappropriation. The panel

remanded for further proceedings on the trade secret claim.

** This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 3

COUNSEL

Robert Unikel (argued), Arnold & Porter Kaye Scholer LLP,

Chicago, Illinois; Max Gavron, Oscar Ramallo, and Rhonda

R. Trotter, Arnold & Porter Kaye Scholer LLP, Los Angeles,

California; for Plaintiff-Appellant.

Mark A. Fuller (argued) and Christopher W. Thompson,

Gallagher &KennedyP.A., Phoenix, Arizona, for DefendantAppellee.

Marcella Ballard, Venable LLP, New York, New York;

Emilio W. Cividanes, Venable LLP, Washington, D.C.; for

Amicus Curiae The Direct Marketing Association Inc.,

D/B/A The Data & Marketing Association.

OPINION

SCHROEDER, Circuit Judge:

The novel federal question in this appeal is whether lists

of names with addresses are copyrightable when they are the

product of a sophisticated process to ensure accuracy and

utility. In other words, whether such lists are more like a

telephone book, that the Supreme Court has held lacks any

creative spark, or more like Joyce’s Ulysses that changed the

course of 20th century literature. The answer, it turns out,

lies somewhere in between, but closer to a telephone book. 

The name and address pairings are only entitled to limited

protection under the copyright laws. If proper safeguards are

maintained, the lists may also be protected as trade secrets. 

We hold in this case that the Plaintiff, Experian Information

Solutions, Inc., (“Experian”), established that its lists were
4 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

copyrightable but failed to establish that its copyright had

been infringed. We therefore affirm the District Court’s

summary judgment in favor of the Defendant, Nationwide

Marketing Services, Inc., (“Natimark”), on the copyright

infringement claim, but reverse the state law trade secret

claim and remand it for further proceedings.

Factual and Procedural Background

Experian is in the business of compiling databases and

licensing portions of them to companies for use in their

marketing campaigns. Since 1998, it has compiled what is

now known as the ConsumerView Database (“CVD”) that

has a copyright registration for the “selection, coordination,

arrangement and compilation of data . . . .” The CVD

contains more than 250 million records, each pertaining to an

individual consumer, and includes hundreds of “fields,” each

denoting a particular attribute of the consumer, such as age,

earnings, or purchase habits, as well as behavior predictions. 

This litigation concerns compiled pairings of names and

addresses. These represent one of the most lucrative

components of the CVD, because mail marketers pay

substantial amounts for licenses to utilize Experian’s name

and address pairings. The value, according to Experian,

results from the process by which Experian determines the

accuracy of its pairings and the utility of the selection of the

pairings it includes in the CVD for its marketing clients.

Experian obtains its name and address data from a variety

of sources, such as catalogue purchase data, cable company

records, real estate deeds, and warranty cards signed by

consumers at retail stores. For its database, Experian picks

from roughly 2,200 public and proprietary sources that it

believes have reliable, value-adding data. In determining
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 5

whether to include a new source in its database, Experian

runs the source through tests to measure the potential new

data’s quality and to identify the differences between the new

source’s data and existing data in the CVD. Experian’s

employees review the test results and do not add any data to

the CVD until they approve the source. Even if a source is

validated, however, not all name and address data are added

to the CVD. Experian excludes name and address pairings it

believes are not valuable to its clients. Excluded are business

addresses and addresses of individuals in prison and the very

elderly.

Experian also resolves conflicts between data sources. 

Such conflicts are resolved utilizing thousands of “business

rules” or algorithms to analyze data from each source and

determine which name and address pairing should be

included in the CVD. The data must be kept current, and the

business rules are regularly updated on the basis of client

feedback. Experian estimates that it expends more than

$10 million annually to compile and update the CVD.

Experian is not alone in the database compiling industry. 

There are at least four other major compilers. Their

respective methodologies also yield lists, but according to

Experian, the lists have material differences in content.

Defendant Natimark is a smaller and more recent addition

to the consumer database compilation industry. It is located

in Phoenix, Arizona. In 2011 it acquired a database, the

National Consumer List (“NCL”) in order to resell the data. 

The NCL has data for approximately 200 million consumers.

The seeds of this litigation were sown in April 2012 when

a data broker acting on behalf of Natimark attempted to sell
6 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

Experian a data compilation of children’s birthdays, coupled

with the name and address pairings of their parents. When

Experian tested the name and address pairings in the sample

the data broker provided, and compared them with Experian’s

own CVD pairings, Experian found a match rate of more than

97%, leading it to suspect that the data had been stolen. 

Experian’s expert later compared Natimark’s pairings with

Experian’s and found similar match rates of approximately

94%. Also suggesting stolen data was the price Natimark

paid for the data which, according to Experian, was unusually

low and unaccompanied by a customary written agreement

with industry-standard restrictions on maintenance and use.

After confronting Natimark with its conclusion that the

data had been copied, Experian filed this action in March

2013 in the U.S. District Court for the District of Arizona

claiming copyright infringement. When the District Court

ruled that the allegedly-infringed pairings were not

copyrightable, Experian added a claim for trade secret

misappropriation, and argued that the pairings were trade

secrets that had been stolen. The District Court granted

summary judgment for Natimark, holding that Experian did

not have a valid copyright or trade secret in its compilation of

names and addresses. The court held that the compilation of

pairings lacked sufficient creativity or originality to merit

copyright protection. It similarly held that the pairings of

names and addresses could not constitute trade secrets and,

even if they could, Experian had not established a triable

issue with respect to its claim that Natimark knew or had

reason to know that the pairings were either secret or stolen.

Experian filed a timely appeal with respect to both the

copyright and trade secret claims.
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 7

Discussion

I. Copyright infringement claim

A. Copyrightability of the pairings as compilations

The boundaries of copyright protection are by now wellsettled. Facts are not copyrightable and original works are. 

See Feist Publ’ns, Inc. v. Rural Tel. Serv., Co., 499 U.S. 340,

344–45 (1991) (Feist). In between, however, are to be found

a variety of works, including lists, compilations, directories,

and guides that include facts, but demonstrate varying

degrees of creativity in their selection, arrangement, or

coordination. This case is about the area in between.

Our Constitution provides the basis for copyright

protection, and authorizes Congress to “secur[e] for limited

[t]imes to [a]uthors . . . the exclusive [r]ight to their

respective [w]ritings.” U.S. Const. art. I, § 8, cl. 8. Under

this authority, Congress enacted the Copyright Act to protect

“original works of authorship.” 17 U.S.C. § 102(a). The

term “original” indicates “that the work was independently

created by the author (as opposed to copied from other

works), and that it possesses at least some minimal degree of

creativity.” Feist, 499 U.S. at 345 (citing 1 M. Nimmer & D.

Nimmer, Copyright §§ 2.01[A], [B] (1990)). Originality is

thus not an exacting standard, since it requires only minimal

creativity. “[I]t does not require that facts be presented in an

innovative or surprising way.” Id. at 362.

Facts are not copyrightable, because they lack any degree

of creativity. This is so whether facts stand alone or as part

of a compilation. Id. at 350; see also 17 U.S.C. §§ 101–03. 

Facts exist and are not created. Thus, there is a distinction
8 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

between creating a work and discovering a fact. As the

Supreme Court put it in Feist, “[t]he first person to find and

report a particular fact has not created the fact; he or she has

merely discovered its existence.” 499 U.S. at 347.

Even though facts themselves are not copyrightable, the

Copyright Act recognizes that collections or compilations of

facts may possess the originality necessary for copyright

protection. 17 U.S.C. §§ 101–03; see also Feist, 499 U.S. at

348. A “compilation” is defined under the Copyright Act as

“[1] a work formed by the collection and assembling of

preexisting materials or of data [2] that are selected,

coordinated, or arranged in such a way that [3] the resulting

work as a whole constitutes an original work of authorship.” 

17 U.S.C. § 101; see also Feist, 499 U.S. at 357. The

Copyright Act makes clear, however, that when a collection

of facts is copyrightable, the underlying facts themselves are

not protected. Copyright protection “extends only to the

material contributed by the author of such work, as

distinguished from the preexisting material employed in the

work, and does not imply any exclusive right in the

preexisting material.” 17 U.S.C. § 103(b). The Supreme

Court stated this principle in Feist as follows: “[C]hoices as

to selection and arrangement, so long as they are made

independently by the compiler and entail a minimal degree of

creativity, are sufficiently original that Congress may protect

such compilations through the copyright laws.” 499 U.S. at

348 (citations omitted).

The Supreme Court authoritatively set the boundaries in

Feist when it held that a telephone book fell below the

creative limit. Id. at 362. The Court held that a telephone

company’s alphabetical list of the names, addresses, and

telephone numbers of its subscribers in a directory was not
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 9

copyrightable. Id. at 361–62. There was no creativity in the

selection or arrangement of the listings, because the telephone

company’s subscribers were persons desiring telephone

service in the company’s service area. Id. at 362. When the

subscribers filled out an application, the company issued

them a telephone number. Id. The company therefore did not

select its subscribers or the data listed in its telephone book. 

Id. In preparing the directory, the company simply took the

data that its subscribers provided to it and listed the

subscribers alphabetically by surname. Id.

The Supreme Court in Feist went on to recognize that a

little creativity in the selection or arrangement of facts would

make a big difference. The compilation of facts could be

copyrightable if the company “selected, coordinated, or

arranged these uncopyrightable facts in an original way.” Id.

The company’s mere replication of the names, addresses, and

telephone numbers that each subscriber provided was not

enough. It lacked “the modicum of creativity necessary to

transform mere selection into copyrightable expression.” Id.

The arrangement of names did not help, because the company

did “nothing more than list [its] subscribers in alphabetical

order,” which is an “age-old practice, firmly rooted in

tradition and so commonplace that it has come to be expected

as a matter of course.” Id. at 363.

The Court also recognized that hard work is not

necessarily creative, and so the investment of time and effort

in a project does not necessarily make it copyrightable. Feist

rejected the “sweat of the brow” or “industrious collection”

doctrine, which the Court described as the notion that the

Copyright Act should “hand[] out proprietary interests in

facts” simply because some authors spend considerable time

and effort compiling facts in their works. Id. at 352–60. 
10 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

Instead, the Supreme Court held that whether a factual

compilation is an original work depends upon “the manner in

which the collected facts have been selected, coordinated, and

arranged.” Id. at 358. The selection or arrangement need not

be novel; rather, the selection or arrangement need only be

made independently and “display some minimal level of

creativity.” Id.

After Feist, there has been a considerable amount of

federal litigation concerning when compilations of facts are

copyrightable. Such litigation, not surprisingly, has served to

illustrate that not a great deal of creativity in selection or

arrangement is required. We briefly review the principal

circuit court decisions.

Our Court has decided two significant cases since Feist. 

In CDN Inc. v. Kapes, 197 F.3d 1256, 1257, 1262 (9th Cir.

1999), we held that published lists of wholesale prices for

collectible coins contained sufficient originality to sustain

copyright protection. This was because the prices were not

facts, but were estimates based on empirical research. They

were “wholly the product of [CDN’s] creativity.” CDN,

197 F.3d at 1260. They were therefore “not mere listings of

actual prices paid; rather, they [were] CDN’s best estimate of

the fair value of [each] coin.” Id. For that reason, the lists

were copyrightable.

More recently, we decided Bikram’s Yoga College of

India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th Cir.

2015) (Bikram’s Yoga). There, we considered a book

containing depictions of a sequence of yoga poses and

breathing exercises. The sequence itself was not

copyrightable, because it was an idea or process under the

Copyright Act. Bikram’s Yoga, 803 F.3d at 1042, 1044; see
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 11

also 17 U.S.C. § 102(b) (“In no case does copyright

protection for an original work of authorship extend to any

idea . . . [or] process, . . . regardless of the form in which it is

described, explained, illustrated, or embodied in such

work.”). The depiction of the sequence in the book, however,

was protected by copyright, because the depiction was the

expression of the idea, i.e., the words and pictures that

described the sequence. Bikram’s Yoga, 803 F.3d at

1038–39. The book was thus entitled to copyright protection. 

Id.

Other circuit decisions have more directly considered

compilations of factual or other non-copyrightable elements. 

The Second Circuit has addressed the copyrightability of

compilations in two cases in which it found fairly minimal

creativity sufficient for protection. In Key Publications, Inc.

v. Chinatown Today Publishing Enterprises, Inc., 945 F.2d

509, 511 (2d Cir. 1991), the court considered a directory

intended for the New York City Chinese-American

community. The directory consisted of business names,

addresses, and phone numbers, which were arranged into

separate descriptive categories. Key Publ’ns, 945 F.2d at

512–13. The court held this was a sufficiently creative

factual compilation to warrant copyright protection. Id.

Similar to Experian in this case, the compiler in Key

Publications excluded information that she thought would not

be useful for her customers. Id. at 513. She excluded

businesses that would not remain open long, including

“certain insurance brokers, take-out restaurants, and

traditional Chinese medical practitioners.” Id. The court held

that this process of exclusion “indicate[d] thought and

creativity in the selection of businesses,” and that the work

was copyrightable. Id.
12 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

In Kregos v. Associated Press, 937 F.2d 700, 702 (2d Cir.

1991), the Second Circuit dealt with a form or chart that

conveyed information about the past performances of the

opposing baseball pitchers scheduled to start each day’s

game. The form was protected because, similar to Experian’s

compilation, there were no other pitching forms that were

identical or nearly identical to the plaintiff’s. Kregos,

937 F.2d at 705. The form included nine items of

information about each pitcher’s past performance, grouped

into three categories. Id. at 702. The protection was for the

form itself, not for the daily factual statistics it contained. Id.

The court also cautioned that any relief would be extremely

limited because the plaintiff could prevail only against those

who used forms that exactly copied his selection of

information. Id. at 709–10. Nevertheless, the statistical

compilation was entitled to some protection.

The Second Circuit reached a different result when

considering publications of judicial opinions. In Matthew

Bender & Co. v. West Publishing Co., 158 F.3d 674, 677 (2d

Cir. 1998), the court held that West’s publications of judicial

opinions did not merit copyright protection. Although West

claimed it had demonstrated sufficient creativity in several

respects, including its arrangement of information about

parties, courts, and dates of decisions and its addition of

certain information concerning counsel, the court concluded

that West’s selection and arrangement were “obvious, typical,

and lack[ed] even minimal creativity.” Matthew Bender &

Co., 158 F.3d at 677. Creativitywas lacking because industry

conventions, such as those in the legal profession, made the

choices obvious. Such conventions, the court stated, “so

dictate selection that any person composing a compilation of

the type at issue would necessarily select the same categories

of information,” and that “creativity inheres in making non-
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 13

obvious choices from among more than a few options.” Id.

at 677, 682. In this case, Experian’s choices are not obvious,

as illustrated by Experian’s evidence that the content in its

database differs materially from the content in other

compilations of consumer data.

Closer to our case are two Eleventh Circuit decisions

involving directories. Warren Publishing, Inc. v. Microdos

Data Corp., 115 F.3d 1509, 1511–12 (11th Cir. 1997) (en

banc), involved a compilation of information about cable

system operators. The information was printed in a directory

that included “the name, address, and telephone number of

the cable system operator, the number of subscribers, the

channels offered, the price of service, and the types of

equipment used.” Warren Publ’g, 115 F.3d at 1512. The

compiler used whatever information the cable companies

provided in response to the compiler’s request for

information. Id. at 1519. The compilation was not

copyrightable under Feist because there was no selectivity;

unlike in this case, the compiler included the “entire relevant

universe known to it” in the directory. Id. at 1518, 1520.

In BellSouth Advertising &Publishing Corp. v. Donnelley

Information Publishing, Inc., 999 F.2d 1436, 1439, 1442

(11th Cir. 1993) (en banc) (BellSouth), the Eleventh Circuit

similarly held that the plaintiff’s Miami yellow page business

directory was not sufficiently original to merit copyright

protection because the contents involved no more creativity

than the telephone book in Feist. Unlike this case, the listed

businesses in BellSouth chose whether to be listed and the

information to be included. 999 F.2d at 1441.

A Fifth Circuit case involved a process of data selection

similar to the one in this case. The underlying information
14 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

conveyed was factual, but the manner of selecting and

displaying the information involved originality. Mason v.

Montgomery Data, Inc., 967 F.2d 135, 141–42 (5th Cir.

1992). In Mason, the plaintiff selected real estate ownership

information and displayed it on maps. Id. at 136. The court

held that this was sufficiently creative in selection to warrant

copyright protection, because the compiler made “choices . . .

independently . . . to select information from numerous and

sometimes conflicting sources,” including from factual public

records, and combined that information to make “an effective

pictorial expression of those locations.” Id. at 136 n.3, 140,

141. The same is true here.

From this survey of circuit decisions since Feist, we draw

three general principles. First, although facts are not entitled

to copyright protection, factual compilations are entitled to

some protection as long as there is creativity in the selection,

arrangement, or coordination of the facts. Feist, 499 U.S. at

358; Warren Publ’g, 115 F.3d at 1515; Mason, 967 F.2d at

141. Second, the creativity that suffices to establish

copyright protection in factual compilations is minimal. 

Feist, 499 U.S. at 348; Key Publ’ns, 945 F.2d at 512–13. For

illustration, the compilation of business names, addresses,

and phone numbers of interest to the New York CityChineseAmerican community was sufficiently creative to warrant

copyright protection of a directory in Key Publications. 

945 F.2d at 512–13; see also Kregos, 937 F.2d at 701–02. 

Third, such compilations of factual information receive only

limited protection. 17 U.S.C. § 103(b); Feist, 499 U.S. at

359; Kregos, 937 F.2d at 702, 709. This 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.
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 15

Applying these principles to this case leads to the

conclusion that Experian’s lists are entitled to limited

protection. Experian’s selection process in culling data from

multiple sources and selecting the appropriate pairing of

addresses with names before entering them in the database

involves a process of at least minimal creativity. The listings

are compiled by first collecting and comparing multiple

sources, and then sorting conflicting information through the

creation of business rules that Experian created to select from

among the conflicts. As the Fifth Circuit said in Mason,

selection is sufficiently creative when the compiler makes

“choices . . . independently . . . to select information from

numerous and sometimes conflicting sources.” 967 F.2d at

141. Experian’s process more than meets that standard. 

Much like the compilers in Mason and Key Publications,

Experian’s employees choose from multiple and sometimes

conflicting sources, and they use their judgment in selecting

which names and addresses to include in the database. See

Mason, 967 F.2d at 141; Key Publ’ns, 945 F.2d at 512–13.

Experian’s employees, like the compiler in Key

Publications, also exclude information they deem irrelevant

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 the

selection” of names and addresses to include in the database,

id., which indicates the “modicum of creativity necessary to

transform mere selection into copyrightable expression.” 

Feist, 499 U.S. at 362. The name and address pairings in

Experian’s database are also materially different from those

in other databases. With respect to the baseball pitching form

in Kregos, the Second Circuit observed that “[t]here is no

prior form that is identical . . . nor one from which [it] varies
16 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

in only a trivial degree.” 937 F.2d at 705. The same

observation can be made here.

Natimark asserts that Experian’s selectivity cannot be

creative, because it is no more than a lengthy process to

discover facts, which are not copyrightable. Natimark

attempts to match Experian’s process to the Supreme Court’s

discussion in Feist of “industrious collection,” i.e., the hard

work that a compiler exerts in gathering facts that lacks

creativity to warrant copyright protection. 499 U.S. at

352–53.

Experian’s methods, however, do not entail simple

replication of the data that Experian receives, as was the

situation in Feist. 499 U.S. at 362; see also Warren Publ’g,

115 F.3d at 1517–20; BellSouth, 999 F.2d at 1441. In all

those cases, the directory compilers were simply fed the data. 

See Feist, 499 U.S. at 362 (“In preparing its white pages, [the

telephone company] simply t[ook] the data provided by its

subscribers and list[ed] it alphabetically by surname.”);

Warren Publ’g, 115 F.3d at 1519–20 (holding that directory

of cable operator information was not copyrightable when the

selection was not the compiler’s “own, but rather that of the

cable operators”); BellSouth, 999 F.2d at 1438, 1441

(involving a yellow pages directory containing information

entirely provided by others). Experian does not include the

“entire relevant universe known to it,” as in Warren

Publishing. 115 F.3d at 1518. Rather, Experian’s selection

process produces different, and at least accordingto Experian,

more reliable data than the other four largest database

compilers in the United States.

On the basis of our review of the decisions in this and

other circuits, we must conclude that the name and address
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 17

pairings in this case are copyrightable as compilations under

post-Feist standards.

That does not end the copyright claim inquiry, however. 

To establish copyright infringement, the plaintiff must prove

not only ownership of a valid copyright, but copying by the

alleged infringer of constituent elements of the protected

work. Feist, 499 U.S. at 361; Unicolors, Inc. v. Urban

Outfitters, Inc., 853 F.3d 980, 984 (9th Cir. 2017). We

therefore must consider whether Experian has shown that

Natimark infringed, i.e., copied the material. Although this

issue was not reached by the District Court as it found the

material was not copyrightable, we may affirm the District

Court on any ground supported by the record. See, e.g.,

Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612,

615 (9th Cir. 2010) (citation omitted).

B. Whether Experian established infringement

Even though the factual compilation at issue here is

entitled to some protection, “the scope of protection in factbased works” is severely limited. Feist, 499 U.S. at 350; see

also BellSouth, 999 F.2d at 1445. The facts themselves can

be copied at will. As the Supreme Court said in Feist, “This

result is neither unfair nor unfortunate. It is the means by

which copyright advances the progress of science.” 499 U.S.

at 350. The Sixth Circuit said it well, “Given that the

copyright protection of a factual compilation is ‘thin,’ a

competitor’s taking the bulk of the factual material from a

preexisting compilation without infringement of the author’s

copyright is not surprising.” BellSouth, 999 F.2d at 1445

(quoting Feist, 499 U.S. at 349).
18 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

For this reason, we have repeatedly recognized in this

circuit that when dealing with factual compilations,

infringement cannot be based on a showing that only a part of

the work has been copied. In the context of factual

compilations, we have held that infringement should not be

found in the absence of “bodily appropriation of expression,”

or “unauthorized use of substantially the entire item.” Harper

House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 205 (9th

Cir. 1989) (citations omitted). As we said in Apple

Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1446 (9th

Cir. 1994), “Under Harper House . . . there can be no

infringement unless the works are virtually identical.” It is

not enough to compare the allegedly infringing compilation

with only a portion of the copyrighted work.

The bodily appropriation principle is consistent with our

more general rule that to establish that a work has been

copied, the two works must be compared side-by-side. See

Antonick v. Elec. Arts, Inc., 841 F.3d 1062, 1066 (9th Cir.

2016); Seiler v. Lucasfilm, Ltd., 808 F.2d 1316, 1319 (9th Cir.

1986). In Antonick, neither the copyrighted work nor the

alleged infringing work was introduced into evidence, so no

side-by-side comparison was possible. 841 F.3d at 1066. We

held that the plaintiff had not established infringement. This

was because, without such a comparison, it could not be

determined whether the two works were substantially similar. 

Id. In Seiler, we reached a similar result, saying that the

plaintiff could not show infringement because “[t]here

[could] be no proof of . . . copyright infringement unless [the

plaintiff’s] works [were] juxtaposed with [the defendant’s]

and their contents compared.” 808 F.3d at 1319.

In this case, the Experian database that was allegedly

infringed was one updated through September 2011. Neither
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 19

that entire database nor Natimark’s entire, allegedly

infringing database was introduced into evidence, and

perhaps as a practical matter could not have been. 

Nevertheless, there must be sufficient evidence of content to

make a fair comparison. See Data E. USA, Inc. v. Epyx, Inc.,

862 F.2d 204, 207 (9th Cir. 1988).

Experian contends that it has established a triable issue as

to copying by offering the opinion of an expert that the match

rate between Experian files and the allegedly infringing

Natimark files is higher than the match rate between the files

of Experian and one of its legitimate licensees. Experian asks

us to hold that it has presented circumstantial evidence of

copying sufficient to send the case to a jury. It fails to cite

any authority from this circuit or elsewhere permitting

infringement to be established on the basis of circumstantial

evidence, and in the absence of any direct comparisons.

We need not reach this issue, however, as we may affirm

the District Court on any ground supported by the record. See

Cosmetic Ideas, 606 F.3d at 615 (citation omitted). It is

undisputed that Natimark’s database was materially smaller

than Experian’s. While Experian’s database at the relevant

time included approximately250million pairings, Natimark’s

database contained name and address pairings for only

200 million consumers. Even assuming Natimark’s pairings

were exact copies of their counterparts in the Experian

database, the match rate would only be 80% and insufficient

to establish a bodily appropriation of Experian’s work.

Decisions of our sister circuits bear this out. For example,

the Eighth Circuit found that a ratio of 74% of the same items

in both the copyrighted work and the infringing work was

insufficient to establish infringement of a factual compilation
20 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

under Feist. See Schoolhouse, Inc. v. Anderson, 275 F.3d

726, 729–30 (8th Cir. 2002). Similarly, the Sixth Circuit held

that a match rate of 61% of the same items found in both a

copyrighted and an infringing work was also insufficient to

establish infringement. See Ross, Brovins &Oehmke, P.C. v.

Lexis Nexis Grp., 463 F.3d 478, 483 (6th Cir. 2006). The

court said that a 61% match rate between the two

compilations could “hardly be considered the ‘same’

selection.” Id. (citation omitted). If we are to afford “thin”

protection to Experian’s factual compilation, as the Supreme

Court has directed under Feist, 499 U.S. at 349, we must find

substantial verbatim copying in the infringing work. See

Apple Comput., 35 F.3d at 1446; Key Publ’ns, 945 F.2d at

514. An 80% match rate between two compilations of names

and addresses in databases is insufficient to establish bodily

appropriation.

Because Experian has not introduced the version of its

database that it claimed was copied, it cannot establish

infringement. Even if Experian could establish a triable issue

as to copying by comparing later versions of its database with

the alleged infringing database, however, the undisputed

evidence shows that Experian could not establish bodily

appropriation of expression. It can at best show a match rate

of 80%. Experian therefore cannot establish infringement. 

For that reason, we must affirm the District Court’s grant of

summary judgment to Natimark on the copyright claim.

II. Trade secret claim

The District Court granted Natimark summary judgment

on the state law trade secret claim as well, holding that

Experian did not have a valid trade secret in its compilation

of names and addresses because the names and addresses
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 21

were public knowledge and Experian did not explain how it

derived economic value from its compilation. The court also

held that even if there were a valid trade secret, there were no

triable issues of fact as to whether Natimark knew or had

reason to know that the data were either secret or stolen when

Natimark acquired the data.

Arizona has adopted the Uniform Trade Secret Act, which

defines a trade secret as information that “[d]erives

independent economic value” from not being known or

readily ascertainable by the plaintiff’s competitors and is the

subject of reasonable efforts to maintain secrecy. A.R.S.

§ 44-401(4). A trade secret does not consist of “matters of

public knowledge.” Calisi v. Unified Fin. Servs., LLC,

302 P.3d 628, 631 (Ariz. Ct. App. 2013) (citing Enter.

Leasing Co. v. Ehmke, 3 P.3d 1064, 1069 (Ariz. Ct. App.

1999)). The subject matter of trade secrets “must be

sufficiently novel, unique, or original that it is not readily

ascertainable to competitors.” Id. (citing Ehmke, 3 P.3d at

1069). Arizona courts have considered customer lists and

have held that a trade secret cannot ordinarily consist of

matters of public knowledge. See id. at 632 (“[T]o be

protected as [a] trade secret, [a] customer list must be more

than a listing of firms or individuals which could be compiled

from directories or other generally available sources.”)

(citations and internal quotation marks omitted). 

Nonetheless, if a business spends considerable effort and

resources in developing its trade secret, the trade secret may

be protected. Id. (citations omitted).

Although the subject matter of Experian’s compilation

may be gathered from generally available sources that are

matters of public knowledge, Experian spends a considerable

amount of money and effort in developing the compilation,
22 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

and its compilation may therefore be protected under Arizona

law. See id. Experian has at least shown triable issues that its

database has economic value as a secret not readily

ascertainable by its competitors, and that its database differs

materially from other major compilers. See A.R.S. § 44-

401(4). According to Experian, the name and address

information is the most important of the data fields and is the

foundation of its database because of the data’s reliability and

accuracy. And Experian asserts that it receives its business

due to the high accuracy of its name and address pairings. As

the Arizona Court of Appeals has recognized, “[v]alue will be

inferred if the owner can show that the information confers

upon it an economic advantage over others in the industry.” 

Ehmke, 3 P.3d at 1070 (citation omitted). Experian contends

it maintains the secrecy of its database as well. Even though

it licenses the use of the database to others, it enters strict

security agreements with licensees to maintain the database’s

secrecy. Experian has made a prima facie showing that its

compilation of name and address pairings is a trade secret.

Under Arizona law, misappropriation means either

acquisition or use of a trade secret with knowledge of

misappropriation. Misappropriation is defined as either:

(a) Acquisition of a trade secret of another by

a person who knows or has reason to know

that the trade secret was acquired by improper

means [OR]

(b) Disclosure or use of a trade secret of

another without express or implied consent by

a person who either:
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 23

(i) Used improper means to acquire

knowledge of the trade secret.

(ii) At the time of disclosure or use, knew or

had reason to know that his knowledge of the

trade secret was derived from or through a

person who had utilized improper means to

acquire it, was acquired under circumstances

giving rise to a duty to maintain its secrecy or

limit its use or was derived from or through a

person who owed a duty to the person seeking

relief to maintain its secrecy or limit its use.

(iii) Before a material change of his position,

knew or had reason to know that it was a trade

secret and that knowledge of it had been

acquired by accident or mistake.

A.R.S. § 44-401(2).

Experian asserts that the District Court erred in holding

that there were no triable issues of fact as to whether

Natimark knew or had reason to know when it acquired the

data that the data were obtained through improper means. 

Experian also argues that the District Court erred in focusing

solely on Natimark’s knowledge with respect to its

acquisition of a trade secret, as opposed to use, in granting

Natimark summary judgment.

The evidence of Natimark’s knowledge in this case is

sufficient to survive summary judgment. Experian has

established triable issues of fact as to whether Natimark knew

or had reason to know that it acquired and used a trade secret

that was obtained through improper means. See id. In
24 EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS.

JustMed, Inc. v. Byce, 600 F.3d 1118, 1129–30 (9th Cir.

2010), we considered a similar provision of Idaho law, and

recognized that improper acquisition and improper use of

protected works are independent bases for trade secret

liability.

Here, evidence of the low price that Natimark paid for the

data goes to whether Natimark had constructive knowledge

that the data it obtained were acquired through improper

means. According to Experian, Natimark paid less than 1%

of the market rate for a one-time license to obtain actual

ownership of data, and this would indicate knowledge. See

Syntex Ophthalmics, Inc. v. Novicky, No. 80 C 6257, 1982

WL 63797, at *2, *11 (N.D. Ill. May 6, 1982) (holding

$20,000 payment for technology that cost $1 million to

develop demonstrated constructive knowledge for trade secret

claim). Natimark’s obtaining ownership of data through an

invoice, which Experian argues is unusual in the industry, as

opposed to obtaining limited use rights in the data through a

written agreement, is further evidence of constructive

knowledge. Experian also submitted evidence of Natimark’s

President’s prior experience that should have put him on

notice of an improper acquisition. Experian therefore

submitted sufficient evidence to withstand summary

judgment on the issue of whether Natimark knew or had

reason to know that it acquired and used a trade secret that

was obtained through improper means. See A.R.S. § 44-

401(2). The District Court erred in granting summary

judgment to Natimark on the trade secret claim.

Conclusion

The District Court correctly granted Natimark summary

judgment on Experian’s copyright claim. Experian’s name
EXPERIAN INFO. SOLS. V. NATIONWIDE MKTG. SERVS. 25

and address pairings are factual compilations entitled to only

thin copyright protection. Experian failed to establish

infringement. The District Court erred in granting Natimark

summary judgment on the trade secret claim, because there

are triable issues of fact as to Natimark’s knowledge of

misappropriation. We reverse and remand for further

proceedings on that claim.

AFFIRMED in part and REVERSED in part and

REMANDED.