Ho v. Taflove
Encyclopedia
Ho v. Taflove was a ruling by the United States Court of Appeals for the Seventh Circuit
in 2011 that affirmed a 2009 decision of the United States District Court for the Northern District of Illinois
: the expression of ideas (the idea-expression divide
) can be copyrighted but not the ideas themselves.
The plaintiff
s alleged that the defendants violated the copyright law of the United States by publishing equations, figures, and text from research materials that the plaintiffs had produced. They also alleged that Illinois
state laws were violated by publication of the materials. The district court granted summary judgment
against the plaintiffs. The appeals court confirmed the judgment, concluding that the research materials were unprotectable ideas under the merger doctrine of copyright law, and that the claims of state law violations had no merit and were superseded by the Copyright Act.
were professors of engineering at Northwestern University
, where Yingyan Huang and Shi-Hui Chang were graduate students. The plaintiffs, Ho and Huang, alleged that in 1998 Ho formulated a "4-level, 2-electron atomic model with the Pauli exclusion principle
for simulating the dynamics of active media in a photonic device
." Within a year Ho had completed the mathematical derivations of his model, notes and equations of which were hand-written in about sixty-nine pages. With permission from Ho, Huang briefly mentioned some results from the research in a conference paper published in 2001, and published the results in full in her 2002 master's thesis.
The plaintiffs alleged that Ho gave another of his graduate students, Shi-Hui Chang, the task of creating a computer simulation
of the model, giving him both access to Ho's handwritten texts and experience working with the model. Due to programming errors, Chang could not simulate the model. In 2002, Chang left Ho's research group and joined that of Taflove. In 2003 and 2004, Taflove and Chang submitted, and subsequently published, two articles directly related to the model. Some figures in Huang's master's thesis were included in these publications. The defendants did not attribute any published content to plaintiffs.
The plaintiffs alleged that when Ho attempted to publish a paper about the model in 2004, his submission was rejected on the basis that the work had already been published, i.e., the articles published by Taflove and Chang. In 2007 the plaintiffs received certificates of copyright for Ho's notes describing the model and Huang's master's thesis and a visual presentation of the thesis. The defendants, Taflove and Chang, denied many of these facts, and denied that Chang had copied from Ho or Huang.
, Eastern Division. They alleged copyright
infringement and state law claims of false designation of origin, unfair competition, conversion, fraud and misappropriation of trade secret
s involving six documents published by the defendants.
The defendants' counter argument states that the model and equations are ineligible for copyright protections under the merger doctrine
because there are so few different ways to express a mathematical concept. The Copyright Act
states that "in no case does copyright protection extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery regardless of the form in which it is described, explained illustrated or embodied in such work" 17 U.S.C. 102(b). The plaintiffs argued that their model was not a fact and more like the cartoon character Mickey Mouse
, claiming that the model was only an expression of reality like Mickey is to a mouse
. However, under the copyright act and merger doctrine the plaintiffs failed to show legitimate infringement.
The district court granted summary judgement in favor of the defendants, asserting that the model was indeed an idea and therefore not eligible for copyright protection. The model is not like Mickey Mouse
because it is intended to describe reality in the form of an idea but is not an expression in and of itself.
under the Lanham Act
, and unfair competition
because they failed to properly give credit to the plaintiffs and used it to further their own careers. The defendants argued that Dastar Corp. v. Twentieth Century Fox Film Corp.
nullifies the argument. Judge Murphy agreed and asserted that under Dastar the defendants were the properly designated origin regardless of whether or not the plaintiffs had any ownership over the Model because in the Lanham Act the "origin of goods" refers to the producer of the tangible good and not the author of any idea or concept contained within or on the goods. In regards to their unfair competition claims, because their claims under the Lanham Act failed they could not receive summary judgement under unfair competition in their favor.
claim must show the defendant's unauthorized or wrongful assumption of control and ownership of the property and the plaintiff's right in the property and to its immediate possession. Plus the plaintiff must demand for immediate possession of the property. The defendants argued that under Illinois
state law their claim for conversion is not valid because it was not physical property but the plaintiffs' research ideas. The plaintiffs alleged that intangible items in a tangible medium were proper subjects of a conversion claim and because Chang & Taflove held physical copies of Ho's notebooks and Huang's thesis only reaffirmed their argument. However the court points to FMC Corp. v. Capital Cities/ABC, Inc., 915 F.2d 300, 303-04 (7th cir. 1990) which states that "the possession of copies of documents-as opposed to the documents themselves-does not amount to an interference with the owner's property sufficient to constitute conversion." Because the plaintiffs had access to the works in their idea form, by holding the notebooks Chang and Taflove did not interfere the plaintiffs' ability to use, control, access or publish their research and thus their actions do not constitute a claim for conversion under Illinois state law.
affirmed the district court's ruling on all counts except the allegation of misappropriation of trade secrets. In regard to copyright, the court of appeals stated that the plaintiffs failed to show alternative ways in which the model could be expressed. The court concluded that "these equations and figures are required by the Model ... and as such, are not subject to copyright." In regard to the state claims, the court affirmed the district court ruling that the Copyright Act preempted state law. As for misappropriation of trade secrets, the court of appeals held that this claim was not preempted by the Copyright Act but since the plaintiffs made little effort to keep their model secret their claim of misappropriation of trade secrets had no merit.
United States Court of Appeals for the Seventh Circuit
The United States Court of Appeals for the Seventh Circuit is a federal court with appellate jurisdiction over the courts in the following districts:* Central District of Illinois* Northern District of Illinois...
in 2011 that affirmed a 2009 decision of the United States District Court for the Northern District of Illinois
United States District Court for the Northern District of Illinois
The United States District Court for the Northern District of Illinois is the trial-level court with jurisdiction over the northern counties of Illinois....
: the expression of ideas (the idea-expression divide
Idea-expression divide
The idea–expression divide or idea–expression dichotomy limits the scope of copyright protection by differentiating an idea from the expression or manifestation of that idea.The case of Baker v. Selden was the first U.S...
) can be copyrighted but not the ideas themselves.
The plaintiff
Plaintiff
A plaintiff , also known as a claimant or complainant, is the term used in some jurisdictions for the party who initiates a lawsuit before a court...
s alleged that the defendants violated the copyright law of the United States by publishing equations, figures, and text from research materials that the plaintiffs had produced. They also alleged that Illinois
Illinois
Illinois is the fifth-most populous state of the United States of America, and is often noted for being a microcosm of the entire country. With Chicago in the northeast, small industrial cities and great agricultural productivity in central and northern Illinois, and natural resources like coal,...
state laws were violated by publication of the materials. The district court granted summary judgment
Summary judgment
In law, a summary judgment is a determination made by a court without a full trial. Such a judgment may be issued as to the merits of an entire case, or of specific issues in that case....
against the plaintiffs. The appeals court confirmed the judgment, concluding that the research materials were unprotectable ideas under the merger doctrine of copyright law, and that the claims of state law violations had no merit and were superseded by the Copyright Act.
Background
Seng-Tiong Ho and Allen TafloveAllen Taflove
Allen Taflove is a full professor in the Department of Electrical Engineering and Computer Science of Northwestern's McCormick School of Engineering, since 1998...
were professors of engineering at Northwestern University
Northwestern University
Northwestern University is a private research university in Evanston and Chicago, Illinois, USA. Northwestern has eleven undergraduate, graduate, and professional schools offering 124 undergraduate degrees and 145 graduate and professional degrees....
, where Yingyan Huang and Shi-Hui Chang were graduate students. The plaintiffs, Ho and Huang, alleged that in 1998 Ho formulated a "4-level, 2-electron atomic model with the Pauli exclusion principle
Pauli exclusion principle
The Pauli exclusion principle is the quantum mechanical principle that no two identical fermions may occupy the same quantum state simultaneously. A more rigorous statement is that the total wave function for two identical fermions is anti-symmetric with respect to exchange of the particles...
for simulating the dynamics of active media in a photonic device
Photonic integrated circuit
A photonic integrated circuit or integrated optical circuit is a device that integrates multiple photonic functions and as such is analogous to an electronic integrated circuit...
." Within a year Ho had completed the mathematical derivations of his model, notes and equations of which were hand-written in about sixty-nine pages. With permission from Ho, Huang briefly mentioned some results from the research in a conference paper published in 2001, and published the results in full in her 2002 master's thesis.
The plaintiffs alleged that Ho gave another of his graduate students, Shi-Hui Chang, the task of creating a computer simulation
Computer simulation
A computer simulation, a computer model, or a computational model is a computer program, or network of computers, that attempts to simulate an abstract model of a particular system...
of the model, giving him both access to Ho's handwritten texts and experience working with the model. Due to programming errors, Chang could not simulate the model. In 2002, Chang left Ho's research group and joined that of Taflove. In 2003 and 2004, Taflove and Chang submitted, and subsequently published, two articles directly related to the model. Some figures in Huang's master's thesis were included in these publications. The defendants did not attribute any published content to plaintiffs.
The plaintiffs alleged that when Ho attempted to publish a paper about the model in 2004, his submission was rejected on the basis that the work had already been published, i.e., the articles published by Taflove and Chang. In 2007 the plaintiffs received certificates of copyright for Ho's notes describing the model and Huang's master's thesis and a visual presentation of the thesis. The defendants, Taflove and Chang, denied many of these facts, and denied that Chang had copied from Ho or Huang.
The case
On July 31, 2007, Ho and Huang filed suit in the Northern District of IllinoisUnited States District Court for the Northern District of Illinois
The United States District Court for the Northern District of Illinois is the trial-level court with jurisdiction over the northern counties of Illinois....
, Eastern Division. They alleged copyright
Copyright
Copyright is a legal concept, enacted by most governments, giving the creator of an original work exclusive rights to it, usually for a limited time...
infringement and state law claims of false designation of origin, unfair competition, conversion, fraud and misappropriation of trade secret
Trade secret
A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers...
s involving six documents published by the defendants.
Copyright infringement claims
Ho and Huang, the plaintiffs, claimed that the use of the mathematical models by Taflove and Chang, the defendants, infringed on the copyrights they held for Huang’s thesis, Ho's notebooks, Huang's figures and a 2002 presentation. Their main argument was that the defendants had copied an "expression of complicated physical phenomenon" consisting of the model, derivation of equations and two figures and therefore infringed on their copyrights.The defendants' counter argument states that the model and equations are ineligible for copyright protections under the merger doctrine
Merger doctrine
The phrase merger doctrine or doctrine of merger may refer to one of several legal doctrines:* Merger doctrine * Merger doctrine * Merger doctrine...
because there are so few different ways to express a mathematical concept. The Copyright Act
Copyright Act
Copyright Act may refer to:Canada* Copyright Act of CanadaHong Kong*Copyright Ordinance 1997India*New Zealand* Copyright Act 1994United Kingdom...
states that "in no case does copyright protection extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery regardless of the form in which it is described, explained illustrated or embodied in such work" 17 U.S.C. 102(b). The plaintiffs argued that their model was not a fact and more like the cartoon character Mickey Mouse
Mickey Mouse
Mickey Mouse is a cartoon character created in 1928 by Walt Disney and Ub Iwerks at The Walt Disney Studio. Mickey is an anthropomorphic black mouse and typically wears red shorts, large yellow shoes, and white gloves...
, claiming that the model was only an expression of reality like Mickey is to a mouse
Mouse
A mouse is a small mammal belonging to the order of rodents. The best known mouse species is the common house mouse . It is also a popular pet. In some places, certain kinds of field mice are also common. This rodent is eaten by large birds such as hawks and eagles...
. However, under the copyright act and merger doctrine the plaintiffs failed to show legitimate infringement.
The district court granted summary judgement in favor of the defendants, asserting that the model was indeed an idea and therefore not eligible for copyright protection. The model is not like Mickey Mouse
Mickey Mouse
Mickey Mouse is a cartoon character created in 1928 by Walt Disney and Ub Iwerks at The Walt Disney Studio. Mickey is an anthropomorphic black mouse and typically wears red shorts, large yellow shoes, and white gloves...
because it is intended to describe reality in the form of an idea but is not an expression in and of itself.
False designation and unfair competition
The plaintiffs claimed that the publication of the model by the defendants was false designation of originFalse designation of origin
False designation of origin is leaving the origin of a good or service intentionally vague to attempt to profit from it....
under the Lanham Act
Lanham Act
The Lanham Act is a piece of legislation that contains the federal statutes of trademark law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.-History:Named for Representative Fritz G...
, and unfair competition
Unfair competition
Unfair competition in a sense means that the competitors compete on unequal terms, because favourable or disadvantageous conditions are applied to some competitors but not to others; or that the actions of some competitors actively harm the position of others with respect to their ability to...
because they failed to properly give credit to the plaintiffs and used it to further their own careers. The defendants argued that Dastar Corp. v. Twentieth Century Fox Film Corp.
Dastar Corp. v. Twentieth Century Fox Film Corp.
Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 , was a copyright and trademark case of the Supreme Court of the United States involving the applicability of the Lanham Act to a work in the public domain.-Background:...
nullifies the argument. Judge Murphy agreed and asserted that under Dastar the defendants were the properly designated origin regardless of whether or not the plaintiffs had any ownership over the Model because in the Lanham Act the "origin of goods" refers to the producer of the tangible good and not the author of any idea or concept contained within or on the goods. In regards to their unfair competition claims, because their claims under the Lanham Act failed they could not receive summary judgement under unfair competition in their favor.
Conversion
A conversionConversion (law)
Conversion is a common law tort. A conversion is a voluntary act by one person inconsistent with the ownership rights of another. It is a tort of strict liability...
claim must show the defendant's unauthorized or wrongful assumption of control and ownership of the property and the plaintiff's right in the property and to its immediate possession. Plus the plaintiff must demand for immediate possession of the property. The defendants argued that under Illinois
Illinois
Illinois is the fifth-most populous state of the United States of America, and is often noted for being a microcosm of the entire country. With Chicago in the northeast, small industrial cities and great agricultural productivity in central and northern Illinois, and natural resources like coal,...
state law their claim for conversion is not valid because it was not physical property but the plaintiffs' research ideas. The plaintiffs alleged that intangible items in a tangible medium were proper subjects of a conversion claim and because Chang & Taflove held physical copies of Ho's notebooks and Huang's thesis only reaffirmed their argument. However the court points to FMC Corp. v. Capital Cities/ABC, Inc., 915 F.2d 300, 303-04 (7th cir. 1990) which states that "the possession of copies of documents-as opposed to the documents themselves-does not amount to an interference with the owner's property sufficient to constitute conversion." Because the plaintiffs had access to the works in their idea form, by holding the notebooks Chang and Taflove did not interfere the plaintiffs' ability to use, control, access or publish their research and thus their actions do not constitute a claim for conversion under Illinois state law.
District Court order
On April 9, 2010, the District Court ordered the plaintiffs to pay $34,869.76 in costs to Taflove and Chang. On December 20, 2010, the District Court ordered the plaintiffs to also pay $745,582 in legal fees to Taflove and Chang. The District Court, in finding that legal fees should be awarded, relied on the strength of Taflove and Chang's case, the relief awarded, and a finding that significant evidence indicated that the lawsuit brought by plaintiffs "was motivated in key part by personal animosity."Court of Appeals ruling
On June 6, 2011, the United States Court of Appeals for the Seventh CircuitUnited States Court of Appeals for the Seventh Circuit
The United States Court of Appeals for the Seventh Circuit is a federal court with appellate jurisdiction over the courts in the following districts:* Central District of Illinois* Northern District of Illinois...
affirmed the district court's ruling on all counts except the allegation of misappropriation of trade secrets. In regard to copyright, the court of appeals stated that the plaintiffs failed to show alternative ways in which the model could be expressed. The court concluded that "these equations and figures are required by the Model ... and as such, are not subject to copyright." In regard to the state claims, the court affirmed the district court ruling that the Copyright Act preempted state law. As for misappropriation of trade secrets, the court of appeals held that this claim was not preempted by the Copyright Act but since the plaintiffs made little effort to keep their model secret their claim of misappropriation of trade secrets had no merit.