Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Ho v. Taflove, No. 07 C 4305, Slip Op. (N.D. Ill. Apr. 9, 2010 (Bucklo, J.) 

Judge Bucklo denied plaintiffs’ motion for reconsideration of the Court’s order granting defendants summary judgment as to plaintiffs’ Copyrights, Lanham Act and related state law claims in this dispute over whether defendants took plaintiffs’ mathematical model (the “Model”). As an initial matter, the Court noted that the Federal Rules of Civil Procedure do not provide for “motions to reconsider.” Rather, parties file either a Rule 59(e) motion to alter or amend judgment (within 28 days of the judgment) or a Rule 60(b) motion for relief from judgment (within a "reasonable time”). The substance of the motion determines whether it is heard pursuant to Rule 59(e) or Rule 60(b). Plaintiffs’ motion was brought pursuant to Rule 60(b), but the Court treated it as a Rule 59(e) motion because it sought to alter the judgment, not for relief from it.

A Rule 59(e) motion requires newly discovered evidence or manifest errors of law. Plaintiffs’ motion as to their state law conversion, copyright and Lanham Act claims relied upon additional facts that were available during the initial briefing, but not raised at that time. The Court, therefore, did not consider the evidence and the plaintiffs' arguments were denied.

As to the Court’s decision that the Model was not copyrightable as a mathematical formula pursuant to §102(b) of the Copyright Act, plaintiffs provided no convincing authority showing that it was copyrightable. And plaintiffs provided not even a single example of an alternate expression of the Model to satisfy the merger doctrine.

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Ho v. Taflove, No. 07 C 4305, Slip Op. (N.D. Ill. Jan. 15, 2010 (Bucklo, J.). 

Judge Bucklo granted defendants' motion for summary judgment in this copyright and Lanham Act case involving the alleged infringement and misappropriation of plaintiffs, a Northwestern professor and a Northwestern graduate student, mathematical model of a 4-level z-electron atomic model with Pauli Exclusion Principle for simulating the electron dynamics of active media using Finite Difference Domain method (the "Model"). 

Copyright Claims

Plaintiffs copyrighted their thesis, notebooks, certain figures and a presentation, all embodying the Model. The Court held that the Model was uncopyrightable because it was fact and algorithm. The Court explained why the Model was a fact as opposed to a cartoon character like Mickey Mouse, as defendants argued:

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.

To the extent the Model was copyrightable based upon "unique considerations" underlying the Model, plaintiffs did not identify the considerations or support them with evidence. And the two copyrighted charts consisted of unprotectable elements such as lines, arrows and parabolas.   Additionally, Northwestern described the figures as "fairly conventional diagramatic representations."

Lanham Act Claims

Citing the Supreme Court's Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041 (2003), decision, the Court held that the defendants were correct in identifying themselves as the originator of their papers, even if plaintiff originated the Model underlying the papers. The proper designation of origin is the producer of the work, not the author of the underlying idea. Because defendants prepared the papers, they were correctly identified. And the Court held that plaintiffs' common law unfair competition claim failed for the same reasons.

Conversion Claim

The Court granted summary judgment in defendants' favor as to plaintiffs' conversion claim because plaintiffs presented no evidence that defendants prevented plaintiffs access to their written works or to their intangible property – the Model or their research. Plaintiffs remained able at all times to continue their research.

Trade Secret & State Law Claims

The Court held that the Model was not a trade secret because plaintiffs published it in 2001 and 2002. The plaintiffs' remaining state law claims were also preempted by the Copyright Act.

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