Researcher's Materials Were Unprotectable Ideas Under Copyright Law's Merger Doctrine

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Equations, figures, and text relating to a university professor's development of an atomic model were not protectable under federal copyright law, the U.S. Court of Appeals for the Seventh Circuit ruled June 6 (Ho v. Taflove, 7th Cir., No. 10-2144, 6/6/11).

Affirming an award of summary judgment for the defendant accused of taking the professor's research findings, the court also ruled that several state law claims were preempted by the Copyright Act. A claim of misappropriation of trade secrets was not preempted, but failed because the plaintiff did not establish that the allegedly copied material constituted secrets.

Graduate Student Changes Professors, Takes Material

Seng-Tiong Ho is an engineering professor at Northwestern University, Evanston, Ill. In 1997, Shi-Hui Chang began working as a graduate student with Ho. In 1999, Ho assigned Chang to create a computer program using equations related to Ho's formulation of a “4-level 2-electron atomic model with Pauli Exclusion Principle for simulating the dynamics of active media in a photonic device.”

Chang began working on a program based on a program he had developed earlier but was unable to complete the project. In 2002, Chang began working with Allen Taflove, a colleague of Ho's at Northwestern. When Chang changed groups, he was instructed not to work on any projects from Ho's group and was directed to return any relevant materials. Chang, however, kept one of Ho's notebooks.

In 2000, Yingyan Huang began working as a graduate student with Ho. She also worked on applying Ho's atomic model, and she used some of that work in her master's degree thesis. Chang asked for copies of Huang's thesis and copies of two figures used in them. In 2003 and 2004, Taflove and Chang produced a symposium paper and published an article, both of which described the atomic model and its applications, without attribution to Ho or Huang.

In 2004, Ho submitted a paper for publication and it was rejected because of Taflove and Chang's prior publication on the same topic. In 2007, Ho and Huang registered their respective copyright interests in Ho's 1998-1999 notebooks, Huang's master's thesis, the two figures, and a visual presentation developed by Huang.

Ho sued Taflove, alleging six counts of copyright infringement, namely: (1) the 2003 paper by Taflove and Chang submitted to the IEEE Antennas and Propagation Society, (2) Chang's doctoral thesis, (3) the 2004 article published in Optics Express, (4) a chapter of a book published by Artech House in 2005, (5) a 2006 presentation by Taflove, and (6) a 2007 presentation by Taflove.

According to Ho, the Optics Express article copied 21 items—including text, equations, and figures—from their works, and the Antennas and Propagation Society paper copied 12 items.

Ho also brought claims of false designation, unfair competition, conversion, fraud, and misappropriation of trade secrets under state law. Taflove moved for summary judgment.

Judge Elaine E. Bucklo of the U.S. District Court for the Northern District of Illinois granted in part the Taflove's motion for summary judgment. First, the district court determined that under the merger doctrine, Ho could not exercise exclusive rights over the equations, figures, and text that he claimed had been copied.

The court also the conversion claim because at no time was Ho prevented from using any material that he claimed ownership of, and he was not prevented from “conducting, controlling, accessing, using, or publishing” his research, in the words of the court. The fraud claim failed because, regardless of any alleged misrepresentation to publishers or readers, there was no assertion of any false statement made by Taflove to Ho upon which Ho relied. Finally, the lower court found that there was no trade secret that could be subject to a misappropriation claim. On top of these findings, the district court ruled that all the state law claims were preempted by the Copyright Act.

The court denied a motion for reconsideration and Ho appealed.

Equations, Figures, Text Not Copyrightable

Judge Kenneth F. Ripple first found no error in the lower court's ruling that under the merger doctrine the allegedly copied equations, figures, and text were necessary in order to communicate their underlying ideas and were thus not protected under federal copyright law.

The “fact-expression dichotomy” is codified in the Copyright Act, 17 U.S.C. §102(b), which states:


In 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.

In this case, the court said, it was not “particularly difficult” to conclude that the work in which Ho claimed authorship rights—the atomic model—was an idea rather than protectable expression. Furthermore, the court rejected Ho's argument that the atomic model was “fictitious,” because it attempted to describe a situation based on hypothetical conditions. The court said:


In [Ho's] own words, the Model “mimic[s] … certain behaviors of millions of particles in a photonic device.” … That is, the Model attempts to represent and describe reality for scientific purposes. This scientific reality was not created by the plaintiffs. Rather, the Model embodies certain newly discovered scientific principles. Granted, as the plaintiffs note, the Model makes certain hypothetical assumptions, but those hypothetical assumptions do not render the Model fictitious. Rather, the Model strives to describe reality, and, as conceded at oral arguments, the value of the Model is its ability to accurately mimic nature.

The court distinguished Flick-Reedy Corp. v. Hydro-Line Manufacturing Co., 351 F.2d 546, 146 USPQ 694 (7th Cir. 1965), and Situation Management Systems Inc. v. ASP Consulting LLC, 560 F.3d 53, 90 USPQ2d 1095 (1st Cir. 2009).

Flick-Reedy found that the “arrangement, expression and manner of presentation” of public domain ideas—specifically, mathematical data—could be protectable as a creative work. The court noted that in that case, “the coloring, wording and location of titles and type of shading” were found to constitute creative expression.

In Situation Management the First Circuit said that presentation of information about a process or a system could be protected to the extent that there had been “creative choices in describing those processes and systems, including the works' overall arrangement and structure.”

Application of the Merger Doctrine

In the instant case, however, there was no allegation that Taflove had copied Ho's creative presentation of the underlying ideas. “Rather, the plaintiffs contend that the defendants copied the substance of the equations, figures and text,” the court said.

The court rejected Ho's argument that the merger doctrine did not apply here because there existed multiple possible ways to express the ideas embodied in the atomic model. The court said that there was insufficient evidence in the record to support the argument that the equations and figures could be expressed differently; thus, the court concluded that in order to express the relevant ideas, use of the equations and figures was necessary.

Applying the merger doctrine to the allegedly copied text was “a more difficult question,” the court said. “We have recognized that text describing scientific ideas may be subject to copyright,” such as in American Dental Association v. Delta Dental Plans Association, 126 F.3d 977, 44 USPQ2d 1296 (7th Cir. 1997). However, the court said that this argument was insufficiently addressed in Ho's summary judgment pleadings. In particular, Ho had not sufficiently countered the claim by Taflove that the allegedly copied text was “one of only a few ways … to express” the relevant ideas.

Conversion, Fraud Claims Preempted

Turning to the state law claims, the court ruled that the conversion and fraud claims were preempted under 17 U.S.C. §301(a). In so concluding, the court applied a two-part test as set forth in Baltimore Orioles Inc. v. Major League Baseball Players Association, 805 F.2d 663, 231 USPQ 673 (7th Cir. 1986) . Quoting from Baltimore Orioles, the court said that preemption occurs if:

(1) “the work in which the right is asserted [is] fixed in tangible form and come[s] within the subject matter of copyright as specified in [17 U.S.C.] §102,” and


“the right [is] equivalent to any of the rights specified in §106.” The first part of the test being satisfied, the court said, preemption was dependent on the second part. In this case, the allegedly copyrighted material was not protectable under the Copyright Act; however, preemption would still occur if the state law in question effectively created “copyright-like” protections in the relevant circumstances.

With regard to the conversion claim, the court noted that Ho's claim was based on the fact that Taflove published the material without giving due credit to Ho.

“The conversion claim, then, is focused on [Taflove's] unauthorized publishing, not possession, of the protected work,” the court said. “Because publishing is a right under the Copyright Act, the conversion claim is preempted.”

The court distinguished the instant facts from those in Bilut v. Northwestern University, 296 Ill. App. 3d 42, 692 N.E.2d 1327 (1998), in which a student asserted that a professor had taken the student's ideas and prevented her from conducting research on the topic.

“The plaintiff's claim of conversion in Bilut went beyond the publication of an idea,” the court said. “In this case, however, the plaintiffs have alleged conversion based solely on the defendants' publishing the information without attribution.”

This case, the court said, was more akin to United States ex rel. Berge v. Board of Trustees of the University of Alabama, 104 F.3d 1453, 41 USPQ2d 1481 (4th Cir. 1997), which preempted a conversion claim when the only acts complained of were plagiarism and lack of attribution.

Thus, the court concluded that Ho's conversion claim constituted an equivalent of a copyright claim and was thus preempted.

The conversion claim based on Chang's failure to return one of Ho's notebooks was not sufficiently developed in the pleadings, the court ruled.

The fraud claim was also preempted, the court said, because it “amount[ed] to a claim that the defendants have published without attribution, thereby misrepresenting the true origins of the work.” Again, such a claim was no different from a copyright infringement claim.

Trade Secrets Claim Not Preempted

However, in bringing a claim of misappropriation of trade secrets, Ho was asserting a right distinguishable from the rights protected under federal copyright law, the court said. Specifically, a trade secrets claim requires establishing that the material in general is secret and that the defendant has breached a confidential relationship.

“Both of these elements go beyond the rights regulated under the Copyright Act,” the court said. “The act of publishing the allegedly copied materials would not itself establish a trade secrets misappropriation claim,” however, the court said.

Thus, in order to resolve the summary judgment question with regard to this claim, the court said it was necessary to address the substantive merits of the claim. Ultimately, the court determined that Ho had failed to adequately establish that the material in question constituted a secret.

First, the court rejected the argument that the material was secret because in the academic and scientific context there was an expectation that use of such material would be accompanied by a citation giving credit to Ho.

“Such an expectation of attribution … is not part of a trade secrets misappropriation claim,” the court said.

Next, the court rejected the argument that some of the material was secret because it had not previously been published. Here, the court faulted Ho for failing to specify what portion of Taflove's works were “copied from … Ho's unpublished notebook, as opposed to that taken from … Huang's published sources.”

Having concluded that the plaintiffs had failed to establish that there were any secrets involved, the court affirmed summary judgment with regard to the trade secrets claim.

The court's opinion was joined by Judges David F. Hamilton and G. Patrick Murphy, sitting by designation.

By Anandashankar Mazumdar

Opinion at  


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