HO v. TAFLOVE (June 6, 2011)
In 1998, Professor Seng-Tiong Ho was an engineering professor at Northwestern University. It was then that he first formulated his "4-level 2-electron atomic model.” He was working with graduate student Chang at the time. Several years later, Chang started working for Professor Allen Taflove, another engineering professor at the University. Graduate student Huang began working with Ho and his Model. Some Model research results were mentioned in a 2001 paper and later included in Huang's master’s thesis. In 2003 and 2004, Taflove and Chang wrote a paper and an article describing the Model and its applications. Ho and Huang brought an action against Taflove and Chang alleging violations of the Copyright Act. They also included in their complaint allegations of conversion, fraud, and misappropriation of trade secrets. Judge Bucklo (N.D. Ill.) granted summary judgment to the defendants on all counts. Ho and Huang appeal.
In their opinion, Circuit Judges Ripple and Hamilton and District Judge Murphy affirmed. The Court first addressed the copyright infringement claim. At issue in the case is the Copyright Act exception for ideas. The Court found that the Model was an idea. The whole purpose of the Model was to replicate reality. The plaintiffs did not create something, they merely discovered something. The Court conceded that a description of a scientific idea may be protected under copyright principles, but noted the plaintiffs failed to adequately support that argument. The Court turned to the state law claims and first considered preemption. The Copyright Act preempts state claims if the work at issue is in a tangible form and if the right at issue is "equivalent" to a § 106 right. The 106 rights are "reproduction, adaptation, publication, performance, and display." Preemption applies even if the material is not protected by copyright. The Court found the tangible form element satisfied and addressed the § 106 element with respect to each cause of action. It found the conversion count preempted because it was based on the alleged publication, a § 106 right. It found the fraud count preempted as well. Although fraud claims are frequently not preempted because they contain elements different from infringement, the fraud alleged here is that the works were published without attribution. Publication is a § 106 right. The Court found the trade secret misappropriation claim not preempted because the claim contained elements of secrecy and confidentiality that are not contained in the Copyright Act. The plaintiffs could not prevail on that claim, however, because they did not maintain the secrecy of the Model. Plaintiffs intentionally released the information in the conference paper and Huang’s thesis. They can no longer succeed on a trade secret claim.