Ho v. Taflove

On July 31, 2007, Ho and Huang filed suit in the Northern District of Illinois, Eastern Division. They alleged copyright infringement and state law claims of false designation of origin, unfair competition, conversion, fraud and misappropriation of trade secrets involving six documents published by the defendants.^[2]

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.^[2]

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.^[2] 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.^[1]

The plaintiffs claimed that the publication of the model by the defendants was false designation of origin 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.^[2]

A conversion 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.^[2] 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."^[7] 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.^[2]

On April 9, 2010, the District Court ordered the plaintiffs to pay $34,869.76 in costs to Taflove and Chang.^[8] On December 20, 2010, the District Court ordered the plaintiffs to also pay $745,582 in legal fees to Taflove and Chang.^[9] 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."^[9]

On June 6, 2011, the United States Court of Appeals for the Seventh Circuit 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."^[1] 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.^[1]