6 NO. 6 Mealey's Litig. Rep.: Intell. Prop. 5

Mealey's Litigation Reports: Intellectual Property
December 15, 1997


Copyright (c) 1997 Mealey Publications, Inc.

CHICAGO -- A graduate student's status as joint author of a scholarly paper shields him from a copyright infringement claim asserted by his professor, the Seventh Circuit U.S. Court of Appeals ruled Dec. 3 (S.R. Seshadri v. Masoud Kasraian, et al., No. 97-1610, 7th Cir.).
The panel affirmed the entry of summary judgment for Masoud Kasraian in an infringement action brought by University of Wisconsin electrical engineering professor S.R. Seshadri.
(Text of Opinion in Section D. Mealey's Document #16-971215-104.)
The article, entitled "Double-grating thin-film devices based on second-order Bragg interaction," was published in the Journal of Applied Physics under Kasraian's name in 1994. Seshadri filed suit in U.S. District Court for the Western District of Wisconsin, asserting that he was the sole author of the article and alleging copyright infringement. Moving for summary judgment, Kasraian asserted joint authorship and argued that as a joint author, he was entitled to copyright and license the work, subject only to a duty to account to the coauthor for any profits. Kasraian also alleged that Seshadri had abandoned any copyright claim he might have had.
The District Court granted Kasraian's motion, finding no question of fact on the issue of joint authorship in spite of Seshadri's assertion in an affidavit that he wrote the article and never intended to abandon the copyright. Seshadri appealed.
Affirming in an opinion by Chief Judge Richard A. Posner, the Seventh Circuit found the Seshadri affidavit unconvincing in light of the circumstances of the case.
Specifically, the Seventh Circuit cited the fact that the article was first submitted to the Journal of Applied Physics in November 1992 under the names of both Kasraian and Seshadri, with Kasraian's name listed first. Included with the submission was an agreement signed by both parties assigning the copyright to the publisher of the journal upon acceptance of the article for publication. In April 1993, however, Seshadri withdrew the manuscript from the journal, stating that its preparation "was based on certain erroneous information given by" Kasraian and asking that Seshadri's name be deleted from the article. The journal returned the copies of the manuscript to Seshadri.
Subsequently, Kasraian resubmitted the article to the journal, which agreed to publish it. Kasraian informed Seshadri that he had inserted an acknowledgement thanking him for his help in preparing the article; Seshadri responded by informing Kasraian that he was "not permitted to publish any of my ideas and words as your own" or to use Seshadri's name. The acknowledgement was deleted; the article was published with only minor changes from the November 1992 version.
Citing the parties' course of conduct, the panel said, "Anyone reading the correspondence between Seshadri and Kasraian would conclude that the article was indeed a joint work. Seshadri not only submitted it under both names but listed Kasraian's first, and while K does precede S in the alphabet, it would be odd for a senior professor to list a graduate student's name before his own if the student had contributed nothing more to the article than the usual assistance that a research assistant provides."
Further, the panel said, if errors appeared in the article, "the coauthor might conceivably have some legal remedy, but it wouldn't be under the Copyright Act."
While finding it unnecessary to consider the abandonment of copyright allegation, the panel noted that "this issue could not be resolved on summary judgment on the basis of the record compiled to date."
Seshadri is represented by Harry E. VanCamp of Louderman, Hayes, VanCamp, Priester & Schwartz in Madison, Wis. Kasraian is represented by Richard Briles Moriarty in Madison.