Israel v. University of Utah et al

Filing 86

MEMORANDUM DECISION granting 69 Motion for Summary Judgment. Plaintiffs first, second, fourth, and fifth causes of action are dismissed with prejudice. Plaintiffs third cause of action is dismissed without prejudice. Signed by Judge Ted Stewart on 9/7/18. (jlw)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
ESTHER ISRAEL,
Plaintiff,

MEMORANDUM DECISION AND ORDER
GRANTING DEFENDANTS’ MOTION
FOR SUMMARY JUDGMENT

v.
DONALD STEVEN STRASSBERG,
JORDAN ELIZABETH RULLO, JULIA
MACKARONIS, KELLY KINNISH,
MICHAEL MINER,

Case No. 2:15-CV-741 TS
District Judge Ted Stewart

Defendants.

This matter is before the Court on Defendants’ Motion for Summary Judgment. For the
reasons that follow, the Court will grant the Motion.
I. BACKGROUND
Pro se Plaintiff Esther Israel (“Plaintiff”) was admitted to the Ph.D. Psychology program
at the University of Utah in 2002. Defendant Donald Strassberg was Israel’s assigned research
advisor. The University dictated that, prior to pursuing a doctoral degree, Plaintiff needed to
meet the University’s requirements for a master’s degree in clinical psychology. Accordingly,
Plaintiff was required to complete a master’s thesis.
During her studies, Plaintiff researched the concept of relying on viewing time to
measure a subject’s sexual interest. This research became the subject of her master’s thesis. In
developing a study that would form the basis of her thesis, Plaintiff selected and arranged a set of
images, wrote instructions and survey questions, and created the syntax necessary for the study

1

to be administered by a computer program called DirectRT. The images, text, and syntax
ultimately used in her study are the subject of this copyright infringement suit. 1
Israel’s master’s thesis, entitled “Viewing Time as an Objective Measure of Sexual
Interest,” was approved for publication in June 2006. Strassberg felt the work was important to
the field of study and, in 2007, Strassberg submitted Plaintiff’s master’s thesis for publication in
an academic journal with his name included as second author. At some point during the time
Plaintiff and Strassberg worked together, their relationship became strained.
In 2005, Defendant Jordan Rullo joined the graduate program and began working with
Strassberg, who was assigned to be her graduate advisor. Plaintiff alleges that Strassberg began
sharing Plaintiff’s original materials with Rullo around this time, and that the two Defendants
used Plaintiff’s thesis materials without her knowledge or consent. Defendants assert that
Plaintiff willingly gave them permission to use the materials, and also assisted Rullo in the
development of Rullo’s thesis.
Rullo published her master’s thesis in 2008. Rullo’s thesis utilized Plaintiff’s study
materials and methods and built upon Plaintiff’s viewing time study by examining the relevant
data as to gay and lesbian populations. 2 Strassberg felt Rullo’s thesis was also important to the
field of study and submitted it for publication. Rullo’s thesis was published in March 2009 and
included Strassberg as second author and Plaintiff as third author. Plaintiff alleges she did not

1

In May 2008, Plaintiff applied for and obtained a Certificate of Registration for these
elements of her study.
2

Plaintiff’s thesis focused exclusively on heterosexuals.
2

agree to being listed as third author, though Defendants maintain she specifically requested
attribution and agreed to be third author, given her significant contributions to the work.
In 2009, Plaintiff left the University on contentious terms without completing her Ph.D.
program. However, a number of graduate students working under the advisement of Strassberg
continued to build on Plaintiff’s original research after Plaintiff left the University.
Israel filed this suit in October 2015, naming the University of Utah, Strassberg, Rullo,
and several other graduate students that worked under the advisement of Strassberg as
Defendants. Plaintiff alleges Defendants Strassberg, Rullo, and the other named individuals
produced peer-reviewed publications, academic papers, or presentations that infringed on her
copyright without her consent, and further misappropriated the use of her name. Plaintiff also
alleged that Defendant University of Utah repeatedly failed to address her reports of copyright
infringement.
The University of Utah filed a Motion to Dismiss Plaintiff’s claims based on Eleventh
Amendment sovereign immunity. Plaintiff’s Motion was granted on April 18, 2017, and
Defendant University of Utah was dismissed from the case.
The remaining Defendants filed a Motion for Summary Judgment on April 10, 2018,
seeking dismissal of each of Plaintiff’s claims as a matter of law. Plaintiff opposes the Motion,
arguing that a number of disputed facts prevent the Court from granting summary judgment.

3

II. SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate “if the movant shows that there is no genuine dispute
as to any material fact and the movant is entitled to judgment as a matter of law.” 3 The
materiality requirement dictates that “[o]nly disputes over facts that might affect the outcome of
the suit under the governing law will properly preclude the entry of summary judgment. Factual
disputes that are irrelevant or unnecessary will not be counted.” 4
“At the summary judgment stage, a complainant cannot rest on mere allegations, but
must set forth by affidavit or other evidence specific facts, which for purposes of the summary
judgment motion will be taken to be true.” 5 The Court is required to construe all facts and
reasonable inferences in the light most favorable to the nonmoving party. 6 “Where the record
taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is
no genuine issue for trial.” 7
III. DISCUSSION
Plaintiff alleges that Defendants (1) infringed on her copyright in violation of 17 U.S.C. §
501; (2) violated the Federal Lanham Act, 15 U.S.C. § 1225, by misattributing or failing to
attribute Plaintiff’s name in the authorship of various publications; and (3) violated Utah’s false
endorsement law codified in Utah Code Ann. § 13-11a-3.

3

Fed. R. Civ. P. 56(a).

4

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

5

Burke v. Utah Transit Auth. & Local 382, 462 F.3d 1253, 1258 (10th Cir. 2006)
(internal quotation marks and citation omitted).
6

See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986);
Wright v. Sw. Bell Tel. Co., 925 F.2d 1288, 1292 (10th Cir. 1991).
7

Matsushita Elec. Indus., 475 U.S. at 587 (internal quotation marks and citation omitted).
4

A. COPYRIGHT INFRINGEMENT
Claims one and five in Plaintiff’s Complaint allege copyright infringement. “In order to
prevail on a claim of copyright infringement, the plaintiff must show: (1) ownership of a valid
copyright, and (2) copying by the defendant of protected components of the copyrighted
material.” 8
1. Valid copyright
“A Certificate of Registration, if timely obtained, constitutes prima facie evidence of the
validity of the copyright. Once the presumption . . . is established, the defendant has the burden
of overcoming it.” 9 “Defendant may rebut the presumption by presenting evidence casting doubt
on the validity of the copyright. If defendant makes a sufficient showing, then the presumption
dissolves and the burden shifts back to plaintiff.” 10
It is undisputed that Plaintiff obtained a Certificate of Registration for the following
components of her master’s thesis: (1) the arrangement and compilation of the images used in the
viewing time study; (2) the written instructions and surveys included in the viewing time study;
and (3) the DirectRT syntax, which allowed Plaintiff to administer the study via computer.
Defendants argue none of these components are eligible for copyright protection. For purposes of
this Motion, the Court can assume that these components are protectable.
Plaintiff did not, however, obtain a Certificate of Registration for the authored work of
her master’s thesis or the published article by Plaintiff and Strassberg. It is not clear whether

8

Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 831 (10th Cir. 1993).

9

Id. at 831–32.

10

Quinn v. City of Detroit, 23 F. Supp. 2d 741, 746 (E.D. Mich. 1998).
5

Plaintiff’s infringement claims are based, at least in part, on infringement of her master’s thesis
and article.
“Copyright registration is not a prerequisite for copyright protection.” 11 However,
registration is necessary as a prerequisite for an infringement suit, 12 excepting three
circumstances not present in this case. 13 Because she did not obtain a copyright registration for
her master’s thesis, Plaintiff cannot rely on her thesis or published articles as a basis for
copyright infringement. 14
2. Actual copying
Having deemed certain parts of Plaintiff’s thesis materials copyrightable, for purposes of
this Motion, the Court must now determine if the Defendants actually copied protectable
elements of the copyrighted work. This requires the Court to determine: “(1) whether the
defendant, as a factual matter, copied portions of the plaintiff’s [material]; and (2) whether, as a

11

Enter. Mgmt. Ltd., Inc. v. Warrick, 717 F.3d 1112, 1119 (10th Cir. 2013) (citing 17
U.S.C. §§ 102, 408(a)).
12

Id.; 17 U.S.C. § 411(a).

13

See Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 165 (2010) (“[Section] 411(a)
expressly allows courts to adjudicate infringement claims involving unregistered works in three
circumstances: where the work is not a U.S. work, where the infringement claim concerns rights
of attribution and integrity under § 106A, or where the holder attempted to register the work and
registration was refused.”).
14

Though not clear, Plaintiff seems to argue that her master’s thesis does not need to be
registered because it is a derivative work of her registered copyright, This argument does not find
support in the law. See Murray Hill Publ’ns, Inc. v. ABC Commc’ns, Inc., 264 F.3d 622, 630 (6th
Cir. 2001), abrogated on other grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010).
However, the Court need not reach a determination on this issue because, as will be discussed,
Plaintiff is not able to show Defendants unlawfully copied her thesis.
6

mixed issue of fact and law, those elements of the [material] that have been copied are protected
expression and of such importance to the copied work that the appropriation is actionable.” 15
The Court will first discuss which elements of Plaintiff’s work are protectable. Once the
protectable elements have been determined, the Court will assess the evidence showing actual
copying of the protectable elements for each of the alleged offending materials. 16
a.

Protectable elements

“The mere fact that a work is copyrighted does not mean that every element of the work
may be protected.” 17 “Unlike a patent, a copyright gives no exclusive right to the art disclosed;
protection is given only to the expression of the idea—not the idea itself.” 18 “The writings which
are to be protected are the fruits of intellectual labor, embodied in the form of books, prints,
engravings, and the like.” 19 “No matter how much original authorship the work displays, the
facts and ideas it exposes are free for the taking. The very same facts and ideas may be divorced
from the context imposed by the author, and restated or reshuffled by second comers, even if the
author was the first to discover the facts or to propose the ideas.” 20 “Thus, courts comparing
works must first distill the protectable elements of the copyrighted work—i.e., determine what

15

Gates Rubber Co., 9 F.3d at 832.

16

See id. at 833 (“Although we suggest that it will often be helpful to make an initial
determination of whether the defendant copied portions of the plaintiff’s program before
determining whether the copying involved protectable elements under the copyright law, there
may be cases where the issue of protectability can more efficiently be addressed first.”).
17

Feist Publ’ns, Inc. v Rural Tel. Serv. Co., Inc., 499 U.S. 340, 348 (1991).

18

Mazer v. Stein, 347 U.S. 201, 217 (1954).

19

Feist Publ’ns, Inc., 499 U.S. at 346 (quotation marks and citation omitted) (emphasis
in original).
20

Id. at 349 (quotation marks and citation omitted).
7

aspects constitute protectable expression.” 21 This distinction is commonly referred to as the
“idea/expression dichotomy.” 22
“The idea/expression dichotomy traces back to the Supreme Court’s decision in Baker v.
Selden.” 23 In Baker, Selden obtained copyrights on a series of books setting out a new system of
bookkeeping. The books included an explanation of the system and blank forms with ruled lines
and headings designed for use with that system. Selden sued Baker for copyright infringement
after Baker published account books making use of a system with similar forms.
The Supreme Court framed the issue as “whether the exclusive property in a system of
book-keeping can be claimed, under the law of copyright, by means of a book in which that
system is explained?”24 In concluding that Baker had not infringed Selden’s copyright, the Court
explained the following:
The copyright of a book on perspective, no matter how many drawings and
illustrations it may contain, gives no exclusive right to the modes of drawing
described, though they may never have been known or used before. . . . [Similarly,]
[t]he 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. . . .
[W]hilst no one has a right to print or publish his book, or any material part
thereof, as a book intended to convey instruction in the art, any person may practice
and use the art itself which he has described and illustrated therein. The use of the
art is a totally different thing from a publication of the book explaining it. 25

21

Blehm v. Jacobs, 702 F.3d 1193, 1200 (10th Cir. 2012).

22

Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1354 (Fed. Cir. 2014).

23

Id. at 1355.

24

Baker, 101 U.S. at 101.

25

Id. at 103–04.
8

The case at hand is factually similar to Baker. Plaintiff seeks to protect the study she
wrote, arranged, and implemented. While Plaintiff is entitled to protection from copyright
infringement of her thesis materials, she is only entitled to protection of the work as it is
expressed. The ideas underlying the written expression—the use of images of attractive
individuals and scenery, tracking viewing time as a measure of sexual interest, asking
participants to rate images on a scale, inquiring as to participants’ sexual orientation and/or
sexual interests and comfort levels, and other elements related to the process and method of
Plaintiff’s study—are not protectable elements of the copyright. As stated in Feist,
It may seem unfair that much of the fruit of the compiler’s labor may be used by
others without compensation . . . , however, . . . [t]he primary objective of copyright
is not to reward the labor of authors, but to promote the Progress of Science and
useful Arts. To this end, copyright assures authors the right to their original
expression, but encourages others to build freely upon the ideas and information
conveyed by a work. 26
b.

Evidence of copying

The Court must now determine if any of the accused works infringe on the protectable
elements of Plaintiff’s thesis materials, namely the images, text, and syntax as expressed by
Plaintiff. Finding direct proof of copying is rarely feasible. 27 “Therefore, a plaintiff can indirectly
prove copying (in a factual sense) ‘by establishing that Defendants had access to the copyrighted
work and that there are probative similarities between the copyrighted material and the allegedly
copied material.’” 28 Absent a showing of both elements, the Court must deny the claim.
26

Feist Publ’ns Inc., 499 U.S. at 349–50 (internal quotation marks and citations omitted).

27

See La Resolana Architects, PA v. Reno, Inc., 555 F.3d 1171, 1178 (10th Cir. 2009);
Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996).
28

La Resolana Architects, 555 F.3d at 1178 (quoting Country Kids ‘N City Slicks, Inc.,
77 F.3d at 1284) (emphasis added).
9

Proving a probative or substantial similarity “is primarily a qualitative rather than a
purely quantitative analysis and must be performed on a case-by-case basis.” 29 “The proper focus
is on the similarities between the works, not their minute differences.” 30 “[A] court may grant
summary judgment for the defendant if the protectable expression in the copyrighted work and
the allegedly infringing work is ‘so dissimilar that no reasonable jury could find for the plaintiff
on the question of substantial similarity.’” 31
Plaintiff’s first cause of action specifically lists four alleged infringing works and then
references an attached list that includes all of the alleged infringing works. Plaintiff’s fifth cause
of action alleges that there are a number of additional unnamed documents that relied on her
thesis materials and thus infringed on her copyright. The Court will assess the validity of the
claims against each of the offending works.
i.

Jordan Rullo’s master’s thesis entitled “Category Specificity in Sexual
Arousal/Interest as a Complex Function of Sex and Sexual Orientation”

In Plaintiff’s deposition, Plaintiff makes a number of allegations of infringement
regarding Rullo’s thesis. These allegations include that Rullo’s thesis copied the substance of
portions of Plaintiff’s literature review, 32 that Rullo’s thesis explains the same stimulus and
procedure as that used by Plaintiff in her study, including references to the DirectRT program, 33

29

Blehm, 702 F.3d at 1202 (quoting Gates Rubber Co., 9 F.3d at 839).

30

Id.

31

Id. at 1202–03 (quoting Sturdza v. United Arab Emirates, 281 F.3d 1287, 1297 (D.C.
Cir. 2002)).
32

Docket No. 70-19, at 166:22-168:25.

33

Id. at 166:7-18.
10

that Rullo’s thesis made use of her data, copied her methods, and recited many of her original
ideas, 34 and that Rullo explains an identical procedure for conducting her study. 35
Unquestionably, Rullo’s thesis makes significant use of Plaintiff’s original materials.
Notably, Plaintiff is cited numerous times in Rullo’s thesis. In spite of this, Rullo has not
infringed on any of the protectable elements of Plaintiff’s copyright.
As explained above, the methods, ideas, processes, findings, etc. of Plaintiff’s materials
and study are not protected elements of Plaintiff’s copyright. The protectable elements include
only the expression of Plaintiff’s work.
Plaintiff’s Surreply does identify three sentences originated in her protected materials that
also appear, either in whole or in part, in several of the alleged infringing works, including
Rullo’s master’s thesis. 36 The copied portion as written in Plaintiff’s protected materials reads,
We would like you to rate each of the following pictures in terms of how sexually
appealing you find the picture to be. Please make your ratings on a scale of 1-7
where 1 is “not at all sexually appealing” and 7 is “extremely sexually appealing.”
We are interested in your rating of each picture, not how you believe others might
rate the picture. 37

34

Id. at 169:5-20.

35

Id. at 178:6-179:20.

36

The relevant portion of Rullo’s master’s thesis reads, “Their task was to rate how
‘sexually appealing’ they found each picture to be on a scale of 1-7, where 1 was ‘not at all
sexually appealing’ and 7 was ‘extremely sexually appealing.’” Docket No. 70-11, at 26. The full
sentences as quoted in Plaintiff’s protected materials appear in both of Rullo and Strassburg’s
published articles. See Docket No. 70-12, at 4 and Docket No. 70-14, at 5.
37

Docket No. 70-1, at 10.
11

Copying must be significant to amount to infringement. 38 Here, where Rullo and
Strassberg copied only three sentences of the entire work, which simply quote the instructions
given to the participants of the study, the copying is not sufficiently significant to amount to
infringement. Even if the copying was significant enough to amount to infringement, the
infringement would be excused by the doctrine of fair use.
The fair use doctrine “permits and requires courts to avoid rigid application of the
copyright statute when, on occasion, it would stifle the very creativity which that law is designed
to foster.” 39 17 U.S.C. § 107 codifies the following elements to determine whether an otherwise
infringing material is protected by the fair use doctrine:
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.
Each of the above stated factors weigh in favor of finding that Rullo’s copying of Plaintiff’s
thesis is entitled to protection under the fair use doctrine.

38

Country Kids ‘N City Slicks, Inc., 77 F.3d at 1287 (“After filtering out the
unprotectable elements of a work, a court must determine whether those protectable portions of
the original work that have been copied constitute a substantial part of the original work—i.e. a
matter that is significant in the plaintiff’s product.”) (internal quotation marks and citation
omitted); Feder v. Videotrip Corp., 697 F. Supp. 1165, 1176 (D. Colo. 1988) (“[I]n determining
infringement, if the points of dissimilarity not only exceed the remaining examples of similarity,
but indicate that these slight similarities are of minimal importance either quantitatively or
qualitatively, then there is no infringement.”).
39

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994) (internal quotation
marks and citation omitted).
12

First, the purpose of the use is for nonprofit educational purposes, not commercial
purposes, and therefore weighs in favor of finding fair use. Second, the nature of the use factor
requires consideration of whether the work is that which copyright protections were intended to
extend. 40 Works that are more creative and less factual qualify for more protections. 41 Here,
Plaintiff’s work is based on scientific findings and facts, not fictional, creative works. 42
Therefore, the second factor also weighs in favor of finding fair use.
The third factor, requiring consideration of the portion of the work that is copied, also
weighs in favor of fair use here because the amount of text copied word-for-word from
Plaintiff’s thesis is relatively minimal. Additionally, the copied expression merely explains a
process used in conducting the study and is, therefore, less significant substantively.
Finally, the last factor, “the effect of the use upon the potential market for or value of the
copyrighted work,” “requires courts to consider not only the extent of market harm caused by the
particular actions of the alleged infringer, but also whether unrestricted and widespread conduct
of the sort engaged in by defendant would result in a substantially adverse impact on the
potential market for the original.” 43 This factor also weighs in favor of finding fair use.
Academic studies and publications often flow from previous studies and publications. Overlap
and building upon research materials is critical to the advancement of science.

40

Id. at 586.

41

See id.

42

See Stewart v. Abend, 495 U.S. 207, 237–38 (1990) (“In general, fair use is more likely
to be found in factual works than in fictional works.”).
43

Campbell, 510 U.S. at 590 (internal quotation marks and citation omitted).
13

Based on this analysis, the text of Rullo’s thesis that is substantially similar to the text of
Plaintiff’s protected materials falls comfortably under the protections of the fair use doctrine.
Plaintiff’s deposition also provides an example of a part of Rullo’s thesis that contains
language substantially similar to that included in Plaintiff’s master’s thesis. 44 As previously
discussed, Plaintiff’s master’s thesis has not been registered and is, therefore, not eligible to be
the subject of an infringement suit. However, even if the thesis is eligible, an infringement suit
would fail under the doctrine of fair use and for lack of significant copying for substantially the
same reasons as those discussed above.
The Court, therefore, finds that Plaintiff has failed to create an issue of fact regarding her
claim that Rullo’s thesis infringes on her copyright. 45
ii.

Rullo and Strassberg’s article entitled “Category-Specificity in Sexual Interest in
Gay Men and Lesbians”

This article is the version of Rullo’s thesis that was published in an academic journal.
Plaintiff has not alleged any facts related to infringement that are different than those alleged
against Rullo’s thesis. Therefore, for the same reasons Plaintiff failed to create an issue of fact
regarding the infringement of Rullo’s thesis, Plaintiff has also failed to create an issue of fact
regarding the above-titled article’s infringement on her copyright.

44

Docket No. 70-19, at 172:20-174:18.

45

Plaintiff is listed as third author on this article. Plaintiff and Defendants dispute
whether Plaintiff agreed to be listed as third author and the effect the attribution has on Plaintiff’s
infringement claims. Even accepting Plaintiff’s asserted facts and legal interpretation, Plaintiff
cannot succeed on this claim.
14

iii.

Jordan Rullo’s dissertation entitled “Bisexuality: Beyond the Prevailing
Assumptions About Male and Female Sexual Orientation”

Plaintiff testified at her deposition that she believes significant portions of certain
sections of Rullo’s dissertation infringes her copyright. Plaintiff explains that Rullo describes the
“exact same study.” 46 Plaintiff cites to page 142 of the dissertation, which states “the stimuli and
procedures in the present study were identical to those used with the heterosexual.” 47 The article
then cites to Plaintiff’s thesis and article.
It is undisputed that Rullo relied on the Plaintiff’s copyrighted material to conduct the
study that is the subject of Rullo’s dissertation. However, Rullo’s dissertation merely explains
that her study was identical to Plaintiff’s study, and, accordingly, attributes Plaintiff as the
originator. A description of the copyrighted materials is insufficient to create an issue of fact as
to whether the two works are substantially similar. Absent any evidence of substantial copying of
Plaintiff’s protectable materials, as expressed, the Court finds that Rullo’s dissertation is “so
dissimilar” from the protected elements of Plaintiff’s copyrighted work that no reasonable jury
could find infringement.
iv.

Rullo, Strassberg, and Miner “Gender-Specificity in Sexual Interest in Bisexual
Men and Women”

Plaintiff alleges the use of her syntax, text, and stimuli are infringed upon in the abovetitled article. 48 Again, Plaintiff fails to identify any express copying of her protectable materials.

46

Docket No. 70-19, at 198:10-17.

47

Id. at 199:14-17.

48

Id. at 200:15-201:1.
15

Therefore, as with the articles discussed above, the Court finds that Plaintiff has failed to create
an issue of fact regarding the alleged infringement.
v.

Additional copyright infringements

Plaintiff further provided a list of additional documents and publications that allegedly
infringe on her work. The allegations of copyright violation of these materials suffer from the
same deficiencies as those previously discussed. Plaintiff only suspects that Defendants used her
materials in conducting the studies underlying the findings contained in these works. Such is not
infringement on the protectable elements of Plaintiff’s copyright.
The unnamed documents discussed in Plaintiff’s fifth cause of action, even if identified
for the Court, likely do not infringe on the Plaintiff’s copyright for the same reasons.
Because Plaintiff has failed to identify any legally significant copying of the protectable
elements of her thesis materials by any of the Defendants, the Court finds that the allegedly
offending martials are “so dissimilar” to Plaintiff’s thesis materials, “that no reasonable jury
could find for the plaintiff on the question of substantial similarity.” 49 The Court will
accordingly dismiss Plaintiff’s first and fifth claims for copyright infringement.
B. LANHAM ACT CAUSES OF ACTION
Plaintiff’s second and fourth causes of action arise under the Federal Lanham Act, which
provides in relevant part,

49

Blehm, 702 F.3d at 1203. Both parties discuss whether the Defendants had access to the
protected materials. There are obvious disputes of fact regarding this issue. However, because
Plaintiff has failed to demonstrate substantial similarity as to any of the alleged infringing works,
these disputes are not material. As stated, indirect evidence of actual copying must include
evidence of both access and substantial similarity.
16

Any person who, on or in connection with any goods or services, . . . uses in
commerce any word, term, name, . . . or any combination thereof, or any false
designation of origin, . . . which . . . is likely to cause confusion, or to cause mistake,
or to deceive as to the affiliation, connection, or association of such person with
another person, . . . shall be liable in a civil action by any person who believes that
he or she is or is likely to be damaged by such act. 50
Plaintiff alleges that Defendants violated her rights under the Lanham Act by (1) falsely
attributing authorship to Plaintiff in various presentations and papers and (2) failing to
appropriately attribute Plaintiff’s authorship in various presentations and publications. Plaintiff’s
Complaint alleges that she was harmed professionally by these violations.
As argued by Defendant, Plaintiff cannot succeed on her Lanham Act claims because
Plaintiff’s name was not used “in commerce.” Congress made clear that its purpose in enacting
the Lanham Act is wholly related to the commercial use of marks in stating, “The intent of this
chapter is to regulate commerce within the control of Congress by making actionable the
deceptive and misleading use of marks in such commerce . . . .” 51
Plaintiff has not provided the Court with any evidence suggesting that the use of her
name listed, or not listed, on the articles and presentations at issue are commercial in nature. The
articles at issue, and the publications in which they were featured, are scientific and educational
in nature. Academic publications fall outside of the purview of congressional reach under the
commerce clause because they include non-commercial speech, which is entitled to the highest
levels of protection by the First Amendment of the Constitution.52

50

15 U.S.C. § 1125(a).

51

Id. § 1127.

52

See Edward Lewis Tobinick, MD v. Novella, 848 F.3d 935, 952 (11th Cir. 2017), cert.
denied sub nom. Tobinick v. Novella, 138 S. Ct. 449 (2017).
17

Plaintiff alleges the articles at issue are in commerce because the publications of the
articles benefit from paying readers and subscribers. This argument has been rejected by circuit
courts of the United States, finding that “magazines and newspapers often have commercial
purposes, but those purposes do not convert the individual articles within these editorial sources
into commercial speech subject to Lanham Act liability.” 53
Additionally, Plaintiff has not alleged that her name was not used and/or misused “in
commerce.” No commercial benefit was added or taken away from the articles’ inclusion and/or
exclusion of Plaintiff’s name and nothing suggests that the publications suffered any form of
economic loss from the use or non-use of Plaintiff’s name. Further, though Plaintiff alleged she
has suffered professional harm from the misuse of her name, she failed to allege any specific
economic harm that has resulted directly from the alleged misuse of her name.
In light of the above, the Court finds Plaintiff failed to present any material issues of fact
regarding Plaintiff’s second and fourth causes of action. Plaintiff argues that summary judgment
on this issue is not appropriate because “whether or not scientific research is commercial use is a
question of fact that cannot be presumed.” 54 Plaintiff is incorrect. Whether the use of a mark is
used in commerce is an issue of law to be determined by the Court. The Court will, therefore,
dismiss Plaintiff’s second and fourth claims as a matter of law.
C. STATE LAW FALSE ADVERTISING CLAIM
Plaintiff brought suit before this Court asserting federal question jurisdiction pursuant to
28 U.S.C. § 1331. Because the Court has original jurisdiction over the Plaintiff’s copyright and

53

Id. (citing Farah v. Esquire Magazine, 736 F.3d 528, 541 (D.C. Cir. 2013)).

54

Docket No. 73, at 15.
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Lanham Act causes of action, the Court may exercise supplemental jurisdiction over the
remaining state claim.
When federal claims are dismissed, the Court retains subject matter jurisdiction over the
remaining state law claims under 28 U.S.C. § 1367(a) and (c). 55 It is, therefore, up to the Court’s
discretion whether to exercise this supplemental jurisdiction over the state law claims or
remand. 56 However, the Tenth Circuit has suggested, “[w]hen all federal claims have been
dismissed, the court . . . usually should[] decline to exercise jurisdiction over any remaining state
claims.” 57 Having resolved all of the federal claims and having considered the relevant factors, 58
the Court declines to exercise its discretion over Plaintiff’s remaining state-law claim.
III. CONCLUSION
It is therefore
ORDERED that Defendants’ Motion for Summary Judgment (Docket No. 69) is
GRANTED. Plaintiff’s first, second, fourth, and fifth causes of action are dismissed with
prejudice. Plaintiff’s third cause of action is dismissed without prejudice.

55

Carlsbad Tech., Inc. v. HIF Bio, Inc., 556 U.S. 635, 639–40 (2009).

56

Id. at 640.

57

Koch v. City of Del City, 660 F.3d 1228, 1248 (10th Cir. 2011) (quoting Smith v. City
of Enid ex rel. Enid City Comm’n, 149 F.3d 1151, 1156 (10th Cir. 1998)).
58

Carnegie-Mellon Univ. v. Cohill, 484 U.S. 343, 350 (1988) (“[A] federal court should
consider and weigh in each case, and at every stage of the litigation, the values of judicial
economy, convenience, fairness, and comity in order to decide whether to exercise jurisdiction
over a case brought in that court involving pendent state-law claims.”).
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DATED this 7th day of September, 2018.
BY THE COURT:

Ted Stewart
United States District Judge

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