`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`SENG-TIONG HO and YINGYAN HUANG,
`Plaintiffs,
`
`
`)
`
`))
`
`No. 07 C 4305
`
`))
`
`)))))
`
`v.
`ALLEN TAFLOVE and SHIH-HUI CHANG,
`Defendants.
`
`MEMORANDUM OPINION AND ORDER
`Plaintiffs Seng-Tiong Ho (“Ho”) and Yingyan Huang (“Huang”)
`filed suit against defendants Allen Taflove (“Taflove”) and Shih-
`Hui Chang (“Chang”) alleging copyright infringement, trade secret
`misappropriation, false designation of origin, fraud, conversion,
`and unfair competition. Plaintiffs claims center around a
`mathematical model they originated, which defendants are alleged to
`have copied and used in various publications. Defendants move both
`to dismiss and for summary judgment on all counts. For the
`following reasons, the motion for summary judgment is granted and
`the motion to dismiss is denied as moot. Plaintiffs’ motion to
`strike defendants’ reply to plaintiffs’ response to defendants’
`Rule 56.1 statement of facts is granted.
`I.
`Ho and Taflove are professors of engineering at Northwestern
`University (“Northwestern”) and, during the relevant period, Huang
`and Chang were engineering graduate students at Northwestern. In
`1998, Ho first conceived and formulated a “4-level 2-electron
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`atomic model with Pauli Exclusion Principle for simulating the
`1
`electron dynamics of active media using Finite Difference Time
`Domain method” (the “Model”). The Model is an advance relative to
`2
`earlier models that did not include the Pauli Exclusion Principle
`3
`or certain “pumping dynamics,” among other things.
`Plaintiffs implemented and validated the Model for various
`applications, including optical switching and various gain media.
`Ho completed the derivation of equations for the Model by 1999 and
`involved Chang in implementing the equations into a FDTD computer
`program code for the purpose of running simulations of the Model.
`The computer program was developed from an earlier FDTD program,
`which was created at least in part by Chang. Chang was a research
`assistant for Ho and worked under his instruction until sometime in
`2002 when he left to join Taflove’s research group.
`Huang started working for Ho in his lab in September of 2000.
`
`1
`
`2
`
` A quantum mechanical principle formulated by Wolfgang
`Pauli in 1925. See generally, http://en.wikipedia.org/wiki/
`Pauli_exclusion_principle (last visited on January 12, 2010).
` Finite Difference Time Domain (“FDTD”) is a popular
`computational electrodynamics modeling technique that is
`considered easy to understand and implement. See generally,
`http://en.wikipedia.org/wiki/FDTD (last visited on January 12,
`2010).
` Generally speaking, mathematical models use mathematical
`language to describe a system by a set of variables that
`represent properties of the system and a set of equations that
`establish relationships between the variables. The model is the
`set of functions that describe relationships between the
`different variables. See generally, http://en.wikipedia.org/
`wiki/Mathematical_model (last visited on January 7, 2010).
`
`3
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`2
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`Between 2000 and 2001, she worked on applications of the Model to
`various mediums. The main focus of her work with Ho was to apply
`the Model to a range of gain medium (e.g., laser) parameters.
`Plaintiffs’ research results and the Model were partially published
`in a conference paper in 2001 and then published in detail in 2002
`in Huang’s thesis.
`The Model’s original formulation and derivation of equations
`were also contained in Ho’s 1998 and 1999 notebooks, and published
`in a 2002 presentation. The notebooks, the 2002 presentation,
`Huang’s thesis, and two figures used in Huang’s thesis were
`registered with the Copyright Office in 2007. (See Pls.’ Resp. at
`4
`3.)(providing copyright registration numbers). There is presently
`no known commercial use for the Model.
`Defendants submitted an article to the Optics Express Journal
`(“OE”) and a four-page symposium paper to IEEE APS (“APS”), an
`online archival publication, describing the Model and discussing
`its applications. Some of the figures and equations published in
`Huang’s thesis were used in these articles. The OE article was
`published in 2003 and covered the same subject matter as the APS
`
`4
`
` No copies of the certificates of registration were filed
`as evidence of a valid copyright in the five subject works,
`although the registration numbers were provided by the
`plaintiffs. Copies of the 2002 presentation and Ho’s research
`notebooks are not included with the summary judgment exhibits
`either. Defendants submitted a copy of Huang’s thesis in their
`exhibits, which apparently contains the two figures that were
`separately registered with the Copyright Office at issue. (See
`Defs.’ SOF, Ex. D3.)
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`3
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`Paper, but with more detail. Defendants did not include
`attributions to plaintiffs for their work or reference Huang’s
`thesis. Plaintiffs filed complaints against defendants with OE,
`APS, and Northwestern alleging plagiarism. On July 31, 2007,
`plaintiffs filed the present suit alleging copyright infringement,
`trade secret misappropriation, false designation of origin, fraud,
`conversion, and unfair competition.
`5
`II.
`Summary judgment is appropriate where the record shows that
`“there is no genuine issue as to any material fact and that the
`moving party is entitled to judgment as a matter of law.” Fed. R.
`Civ. P. 56(c). A genuine issue for trial exists “if the evidence is
`such that a reasonable jury could return a verdict for the
`nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
`248, 106 S. Ct. 2505, 91 L. Ed.2d 202 (1986). The movant initially
`bears the burden of “identifying those portions of ‘the pleadings,
`depositions, answers to interrogatories, and admissions on file,
`together with the affidavits, if any,’ which it believes
`
`5
`
` The complaint includes allegations that, in addition to
`the OE article and APS paper, some of the registered works were
`also copied in Taflove’s book and in “other” publications.
`(Compl. ¶ 23; Pls.’ Resp. at 4.) Those allegations are mentioned
`in one sentence in the facts section of plaintiffs’ response, but
`no argument is made. Id. Plaintiffs’ responses to defendants’
`interrogatories only allege copyright infringement in the APS
`paper and OE article. (Defs.’ SOF ¶ 63.) Accordingly,
`plaintiffs’ copyright infringement claim is limited to those two
`documents.
`
`4
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`demonstrate the absence of a genuine issue of material fact.”
`Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 91 L.
`Ed.2d 265 (1986)(citing Fed. R. Civ. P. 56(e)). Once the movant has
`met this burden, the non-movant “may not rest upon the mere
`allegations or denials of the adverse party’s pleading,” but rather
`“must set forth specific facts showing that there is a genuine
`issue for trial.” Fed. R. Civ. P. 56(e).
`I must construe all facts in the light most favorable to the
`non-movant and draw all justifiable inferences in favor of that
`party. See Anderson, 477 U.S. at 255, 106 S. Ct. at 2505.
`III.
`The Copyright Act provides that “[c]opyright protection
`subsists ... in original works of authorship fixed in any tangible
`medium of expression ... from which they can be perceived,
`reproduced, or otherwise communicated, either directly or with the
`aid of a machine or device.” 17 U.S.C. § 102(a). As a general
`matter, a plaintiff asserting copyright infringement must prove:
`“(1) ownership of a valid copyright, and (2) copying of constituent
`elements of the work that are original.” Feist Publ'ns, Inc. v.
`Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 113
`L.Ed.2d 358 (1991).
`Plaintiffs provide copyright registration numbers as prima
`facie evidence of copyrightability and copyright ownership of
`Huang’s thesis, Ho’s notebooks, Huang’s figures, and a 2002
`
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`presentation. They argue that defendants copied plaintiffs’
`“expression of a complicated physical phenomenon,” consisting of 1)
`the Model formulation, 2) the related full derivation of equations,
`and 3) two figures. (See Pls.’ Resp. 7.)
`6
`However, the Copyright Act clearly provides that “[i]n no case
`does copyright protection for an original work of authorship 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). Defendants contend that the items allegedly
`7
`copied are unprotectable concepts, ideas, methods, procedures,
`processes, systems, and/or discoveries, even if contained in a
`copyrighted work. Additionally, defendants contend that the merger
`doctrine applies because there are so few ways of mathematically
`expressing the Model. See Wildlife Express Corp. v. Carol Wright
`Sales, Inc., 18 F.3d 502, 508 (7th Cir. 1994) (no copyright
`infringement for using expression required by idea); Applied
`
`6
`
` Defendants figures, titled “four-level two-electron
`model” and “semiconductor band structure,” do not appear to be
`direct copies of figure 2-1 of Huang’s thesis, titled “Four-level
`two-electron scheme for semiconductor band structure.” (Compare
`SOF Exs. D28, Fig. 1 and D30, Figs. 1,2 with SOF Ex. D3, Fig. 2-
`1.)
` Copyright Office Circular 31 explains that copyright
`protection is not available for “scientific or technical methods
`or discoveries... mathematical principles; formulas, algorithms;
`or any concept, process or method of operation.”
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`Innovations, Inc. v. Regents of the Univ. of Minn., 876 F.2d 626
`(8th Cir. 1989)(noting that statistical models and mathematical
`principles cannot be copyrighted.) Defendants cite numerous
`persuasive cases in support of this argument. See Baker v. Selden,
`101 U.S. 99, 103 (1879)(“The copyright of a work on mathematical
`science cannot give to the author an exclusive right to the methods
`of operation which he propounds, or to the diagrams which he
`employs to explain them, so as to prevent an engineer from using
`them whenever occasion requires.”); Am. Dental Ass’n v. Delta
`Dental Plans Ass’n, 126 F.3d 977, (7th Cir. 1997)(“Einstein’s
`articles laying out the special and general theories of relativity
`were original works even though many of the core equations, such as
`the famous E=mc2, express ‘facts’ and therefore are not
`copyrightable.”); MiTek Holdings, Inc. v. Arce Eng’g Co., 89 F.3d
`1548, 1556 n.19 (11th Cir. 1996)(“Were we to grant copyright
`protection to MiTek’s user interface, which is nothing more than a
`process, we would be affording copyright protection to a process
`that is the province of patent law.”); Dimension D, LLC v. True,
`No. 2:06CV113-SRW(WO), 2006 WL 106952, at * 4 (M.D. Ala. Apr. 21,
`2006)(remanding case to state court after finding no evidence
`demonstrating the mathematical model/algorithm at issue qualified
`for copyright protection, citing the merger doctrine and 17 U.S.C
`§ 102(b)). Plaintiffs contend that their Model is not a fact
`and therefore is protectable. To illustrate this point, they
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`compare the Model to a cartoon character, arguing that like Mickey
`Mouse, an expression of a mouse with defined personality and
`characteristics, the Model is only an expression of the scientific
`phenomenon it simulates. But Mickey Mouse is not an idea,
`procedure, process, system, method of operation, concept,
`principle, or discovery, and his characteristics and personality
`are not intended to realistically mimic those of a real mouse
`(e.g., wears clothes, owns a dog, has jobs, etc.) Simply put,
`Mickey Mouse does not have plaintiffs’ merger doctrine or 17 U.S.C.
`§ 102(b) problems.
`Moreover, the “unique assumptions” that plaintiffs argue make
`their works protectable are not identified in their brief or cited
`evidence. (See generally Pls.’ Resp. 5-8. and PSOF Ex. A, ¶¶ 30-
`33)(supported in large part by Ho’s affidavit, which states that
`defendants “utilized” plaintiffs’ “various writings, paragraphs,
`equations, and figures”; the modeling concept, the formulation, the
`derivation, and application of the model to various mediums); see
`also (Defs.’ SOF Ex. D40.)(letter from Northwestern’s plagiarism
`inquiry committee noting that “[t]he basic physics model of a four-
`level model is fairly standard...[t]he Pauli exclusion principle is
`clearly important, but is certainly not the intellectual property
`of any of the parties involved”). The two figures at issue consist
`in large part of lines, parabolas, arrows (unprotectable elements)
`and were described by Northwestern as “fairly conventional
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`diagrammatic representations.” (Compare Defs.’ SOF Exs. D28, Fig.
`1 and D30, Figs. 1,2 with Defs.’ SOF Ex. D3, Fig. 2-1.; see also
`Defs.’ SOF Ex. D40.) Without identification of what “unique
`assumptions” were made or what elements of the plaintiffs’ figures,
`equations, and derivation are at issue, I cannot determine if that
`expression could be considered original and protectable in light of
`17 U.S.C. 102(b) and the merger doctrine.
`The cases cited by plaintiffs are not helpful. For example,
`plaintiffs cite to Flick-Reedy Corp. v. Hydro-Line Mfg. Co., 351
`F.2d 546 (7th Cir. 1965), in support of their argument that the
`Model formulation and derivation are protectable. But in that
`case, the Seventh Circuit found plaintiff’s copyright was valid as
`a revision and new arrangement of computations and formulae that
`were in the public domain - not a valid copyright of the
`computations and formulae themselves. Id. at 549-50; see also
`Addison-Wesley Pub. Co. v. Brown, 223 F. Supp. 219 (E.D.N.Y.
`1963)(pre-Feist decision protecting plaintiffs’ textbook containing
`original physics homework problems); Apple Computer Inc. v.
`Franklin Computer Corp., 714 F.2d 1240 (3rd Cir. 1983)(computer
`program protectable).
`Plaintiffs also claim that the merger doctrine does not apply
`because there are numerous ways of deriving a fundamental principle
`and depicting the results of a scientific model. But the issue
`here is whether there are numerous ways of expressing plaintiffs’
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`Model and whether that Model is protectable in the first place.
`Without some evidence or legal authority suggesting that the
`expression copied did not merge with plaintiffs’ idea, this
`argument fails.
`8
`
`IV.
`Next, with regard to plaintiffs’ claims for false designation
`of origin under the Lanham Act, 15 U.S.C. § 1125, and unfair
`competition, defendants argue that Dastar Corp. v. Twentieth
`Century Fox Film Corp., 539 U.S. 23, 123 S. Ct. 2041, 156 L.Ed.2d
`18 (2003) effectively bars those claims. I agree. Under Dastar,
`defendants are the properly designated origin of the allegedly
`infringing publications, regardless of whether the original idea,
`formulation, equations, and figures relating to the Model were
`plaintiffs’. This is because the term “origin of goods” in the
`Lanham Act refers to “the producer of the tangible goods that are
`offered for sale, and not to the author of any idea, concept, or
`communication embodied in those goods.” Id. at 32.
`As the Seventh Circuit has explained, “[t]he right
`question...is whether the consumer knows who has produced the
`finished product. In the Dastar case that was Dastar itself, even
`though most of the product’s economic value came from elsewhere.”
`Bretford Mfg., Inc., v. Smith Sys. Mfg. Corp., 419 F.3d 576, 581
`
`8
`
` In light of my finding that the cited works are not
`protected by the Copyright Act, defendants’ joint authorship and
`limitations arguments are moot.
`
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`(7th Cir. 2005); see also Francois v. Jack Ruch Quality Homes,
`Inc., No. 03-1419, 2006 WL 2361892, at *13 (C.D. Ill. Aug. 14,
`2006)(“Dastar made it clear that there is no claim under the Lanham
`Act for copying, revising, and using a copyright-able work. Such
`claims exist if at all under copyright law.”)(emphasis in
`original). Here, the allegedly infringing publications were
`appropriately designated as having “originated” with defendants.
`Common law unfair competition claims “rise or fall” based on
`the Lanham Act. See MJ Partners Restaurant Ltd. v. Zadikoff, 10 F.
`Supp. 2d 922, 929 (N.D. Ill. 1998). Therefore, because plaintiffs’
`Lanham Act claim fails, their unfair competition claim fails too.
`Defendants’ motion is granted on Counts II and III.
`V.
`In Illinois, to establish a claim for conversion a plaintiff
`must show: 1) defendant’s unauthorized or wrongful assumption of
`control, dominion, or ownership over a plaintiff’s personal
`property; 2) plaintiff’s right in the property; 3) plaintiff’s
`right to immediate possession of the property; and 4) plaintiff’s
`demand for possession of the property. Van Diest Supply Co. v.
`Shelby County State Bank, 425 F.3d 437, 439 (7th Cir. 2005).
`Defendants argue that plaintiffs’ claim is not cognizable in
`Illinois because they do not allege conversion of physical
`property, but rather conversion of plaintiffs’ research ideas. In
`re Thebus, 108 Ill. 2d 255, 260, 483 N.E.2d 1258, 91 Ill. Dec. 623
`
`11
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`(1985)(stating an action for conversion usually “lies only for
`personal property which is tangible, or at least represented by or
`connected with something tangible”).
`It appears that plaintiffs are really alleging conversion of
`intangibles (e.g., credit for their work, research concepts), but
`they suggest in their brief that 1) intangibles are the proper
`subject of a conversion claim if they are available in tangible
`form, and 2) this claim is also based on defendants’ retention of
`copies of plaintiffs’ notebooks and thesis. (See Compl. ¶ 42;
`Pls.’ Opp’n. at 12.) To the extent plaintiffs argue that
`defendants’ possession of physical copies of plaintiffs’ works
`constitutes conversion, their claim fails as there are no
`allegations or evidence indicating that plaintiffs did not have
`copies of those materials available to them at all times. FMC
`Corp. v. Capital Cities/ABC, Inc., 915 F.2d 300, 303-04 (7th Cir.
`1990)(stating 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...[t]he only rub is that someone else is using it as
`well”).
`In support of their argument that intangibles can be the
`subject of a conversion claim, plaintiffs cite to Bilut v.
`Northwestern Univ., 296 Ill. App. 3d 42, 692 N.E.2d 1327
`(Ill.App.Ct. 1998). In Bilut, the plaintiff doctoral student
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`brought a claim for conversion of her research ideas. She alleged
`that her advisor/professor refused to allow her to conduct her
`proposed research, supported her dismissal from the doctoral
`program, and “usurped her research ideas.” Id. at 50. The Bilut
`court dismissed her conversion claim as time-barred, but noted in
`dicta that her research ideas were “a proper subject of conversion
`because the printed copy of the research constituted tangible
`property.” Without any thoughtful analysis, plaintiffs conclude
`9
`that their claim must also be viable because their research ideas
`were written in tangible form. But the evidence does not suggest
`that defendants ever prevented Ho and Huang from conducting,
`controlling, accessing, using, or publishing their research.
`Accordingly, I do not find Bilut persuasive here. Defendants
`unauthorized copying and use of plaintiffs’ published works does
`not sustain a claim for conversion.
`VI.
`I also grant defendants’ motion as to plaintiffs’ common law
`fraud/misrepresentation claim (Count V). Plaintiffs’ five sentence
`response cites caselaw unrelated to this claim and states that
`
`9
`
` The Bilut opinion also cites to Conant v. Karris, 165
`Ill.App.3d 783, 117 Ill.Dec. 406, 520 N.E.2d 757 (Ill. 1987),
`suggesting that the research proposal in that case was
`confidential and/or no longer of use to plaintiff once usurped by
`her advisor. Id. (allowing claim for conversion of confidential
`information no longer of value to plaintiff once disclosed to
`third party).
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`there are fact issues relating to “the manner in which Chang misled
`Plaintiffs in obtaining copies of their protected materials that he
`and Taflove later used in their infringing works” that preclude
`summary judgment. But those fact issues are unrelated to the
`10
`stated fraud claim, which alleges defendants used plaintiffs’ work
`and passed it off as their own. (See Compl. ¶¶ 43-46.) Moreover,
`the fraud claim as stated is not well-founded. By taking credit
`for plaintiffs’ work, defendants may have misled publishers or
`readers as to proper authorship, but they clearly did not mislead
`plaintiffs.
`
`VII.
`Plaintiffs’ trade secret misappropriation claim also fails
`because it is based on the faulty premise that the Model is a trade
`secret. It is undisputed that the Model was published by
`plaintiffs in 2001 and 2002. See BondPro Corp. V. Siemens Power
`Generation, Inc., 463 F.3d 702, 706 (7th Cir. 2006)(“A trade secret
`that becomes public knowledge is no longer a trade secret.”) This
`fact alone dooms plaintiffs’ claim. 11
`
`10
`
` To the extent the fraud claim is based on Chang’s alleged
`misrepresentation to plaintiffs as to how he planned to use Ho
`and/or Huang’s work, they fail to explain how such a
`misrepresentation is actionable fraud. See Davis v. Carter, 452
`F.3d 686, 692 (7th Cir. 2006) (court is not required to “scour a
`record to locate evidence supporting a party’s legal argument”
`nor “research and construct the parties’ arguments.”)
` Contrary to plaintiffs’ contentions, the Model’s trade
`secret status is not dependent on whether defendants gave
`plaintiffs proper attribution in later publications.
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`Plaintiffs also allege that in addition to the Model,
`defendants’ publications included other “materials from Ho’s
`copyrighted notebook.” (See Pls.’ Opp’n. 14). The only “evidence”
`supporting this statement is Ho’s affidavit, which includes the
`following averment: “Some of the information in Defendants’ OSA
`article and book chapter contain materials from my copyrighted
`notebooks that were not previously published.” (Id. Ex. A, ¶ 32.)
`For obvious reasons, this unsupported, nebulous statement does not
`sustain plaintiffs’ trade secret claim at this stage in the
`litigation.
`
`VIII.
`Plaintiffs’ state law claims are also all preempted by the
`Copyright Act. “State law claims do not avoid preemption simply
`because they are based upon the improper use of uncopyrightable
`material contained in works properly subject to copyright. If the
`rule were otherwise, states would be free to regulate materials
`Congress has assigned to the public domain.” Nash v. CBS, Inc.,
`704 F. Supp. 823, 832 (N.D. Ill. 1989), aff'd, 899 F.2d 1537 (7th
`Cir. 1990)(citations omitted).
`
`IX.
`For the foregoing reasons, defendants’ motion for summary
`judgment is granted and defendants’ motion to dismiss is denied as
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`moot. Plaintiffs’ motion to strike defendants’ reply to
`plaintiffs’ response to defendants’ Rule 56.1 statement of facts is
`granted.
`
`ENTER ORDER:
`___________________________
`Elaine E. Bucklo
`United States District Judge
`
`Date: January 15, 2009
`
`16