REGENTS OF THE U. OF M. v. Applied Innovations

• Decision Date: 09 October 1987
• Docket Number: No. 3-86-683.,3-86-683.
• Citation: 685 F. Supp. 698
• Parties: REGENTS OF THE UNIVERSITY OF MINNESOTA and National Computer Systems, Inc., a Minnesota Corporation, Plaintiffs, v. APPLIED INNOVATIONS, INC., a New Jersey Corporation, Defendant.
• Court: U.S. District Court — District of Minnesota

685 F. Supp. 698

REGENTS OF THE UNIVERSITY OF MINNESOTA and National Computer Systems, Inc., a Minnesota Corporation, Plaintiffs, v. APPLIED INNOVATIONS, INC., a New Jersey Corporation, Defendant.

No. 3-86-683.

United States District Court, D. Minnesota, Third Division.

October 9, 1987.

Dorsey & Whitney by Thomas Tinkham and Stuart Hemphill, Minneapolis, Minn., for plaintiffs.

Maslon, Edelman, Borman & Brand by Gary Haugen and Virginia A. Bell, Minneapolis, Minn., and Saidman, Sterne, Kessler & Goldstein by William F. Patry, Washington, D.C., and Ralph Gordon, Frederick, Md., for defendant.

FINDINGS OF FACT, CONCLUSIONS OF LAW, AND JUDGMENT

ALSOP, Chief Judge.

The above-entitled matter came before the court for trial on May 4 through May 18, 1987. Plaintiffs, Regents of the University of Minnesota ("Regents") and National Computer Systems, Inc. ("NCS"), commenced this action against Applied Innovations, Inc. ("AI"), on August 1, 1986, alleging claims of copyright infringement (Count I); trademark infringement and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (Count II); trademark infringement under Minn.Stat. § 333.28(a) (Count III); common law trademark infringement and unfair competition (Count IV); and deceptive trade practices within the meaning of Minn.Stat. § 325D.44, subd. 1(1)-(3), (5) and (12) (Count V).

Defendant AI counterclaimed for declaratory judgment that the copyrights asserted by the plaintiffs are invalid or were not infringed upon (Count I); for declaratory judgment that the plaintiffs misused their copyright interest (Count II); for declaratory judgment and damages for intentional interference with business relations (Count III); and for alleged violations of Section 1 and 2 of the Sherman Act (Counts IV and V).

Following a hearing on plaintiffs' motion for summary judgment, the court dismissed defendant's first, second, fourth, and fifth counterclaims against the Regents, except to the extent they seek declaratory or prospective injunctive relief, and dismissed defendant's third counterclaim in its entirety against the Regents. In addition, the court dismissed defendant's second counterclaim in its entirety against NCS. The parties have agreed to bifurcate for a later trial AI's third, fourth, and fifth counterclaims and, in addition, the parties have waived their right to jury trial on all claims. Having considered the evidence and being fully advised in the premises, the court makes the following:

FINDINGS OF FACT

1. Plaintiff Regents is a constitutional corporation established by charter of the territory of Minnesota to act as the governing body of the University of Minnesota.

2. Plaintiff NCS is a corporation organized under the laws of the state of Minnesota with its principal place of business at 11000 Prairie Lakes Drive, Eden Prairie, Minnesota 55344.

3. Defendant AI is a corporation organized under the laws of the state of New Jersey with its principal place of business in South Kingston Office Park, Suite A-1, Wakefield, Rhode Island 02789.

4. During the late 1930's, University of Minnesota Professors Starke R. Hathaway and J. Charnley McKinley began the task of creating a psychometric test to be used by medical and psychological professionals to provide an objective assessment of certain personality characteristics or traits. After years of effort Hathaway, McKinley, and their associates created the Minnesota Multiphasic Personality Inventory ("MMPI") test and scoring data.

5. The MMPI can be dissected into four interrelated types of materials.

(a) Test statements or test items—short declarative questions. The questions are to be answered true, false, or cannot say.

(b) Scale membership or scale definitions and item direction for scoring—scale membership and scoring direction represents the author's determination that certain responses (scoring direction) to certain test statements (scale membership) indicates a particular personality characteristic or the reliability of the test score. There are ten basic or clinical scales (hypochondriasis, depression, conversion hysteria, psychopathic deviate, masculinity-femininity, paranoia, psychasthenia, schizophrenia, hypomania, social introversion) and four validity scales (cannot say score, lie, infrequency, K-correction).

(c) Normative statements or T score conversion data—is the form of presentation the authors selected to compare raw scores on the different scales and an individual's raw score to a normative group (the Minnesota adult normals).

(d) Statement correlation tables—the MMPI test is administered in four different formats, the standard Group Form, R Form, S Form, and the MMPI 168. The latter two tests are short versions of the Group Form test and the R Form test merely presents the questions in a different order. The correlation tables pairs the test statement numbers of the various versions of the test with the corresponding numbers of the same statements in the standard Group Form.

6. Hathaway and McKinley began the process of creating the MMPI by determining and defining the personality traits they wanted to identify with their proposed psychometric test. Unlike previous psychometric tests, the authors wanted to use the test to identify a wide range of psychological traits. To this end, the authors compiled a list of more than 1,000 potential test statements. The test items were derived from psychiatric examination direction forms, psychiatric textbooks, earlier published scales of personal and social attitudes, and the authors own clinical experience. None of the test items taken from prior literature, however, was used in their original form, although some of the prior statements were redrafted with only slight modifications. The authors attempted to correct perceived deficiencies of prior psychometric tests by redrafting these prior test statements into short, simple, declarative, true/false statements.

The authors then commenced on the long and tedious process of determining which of their 1,000 plus test items assisted in identification of particular personality traits, a process appropriately called building scales. Although there were some minor variations in the building of the individual scales, a crude, general description of the process is as follows. The authors selected individuals that had been diagnosed as manifesting the personality trait they were attempting to identify. Then Hathaway and McKinley would compare their responses to the test items to the responses of a group of Minnesota adults (typically friends and relatives of patients at the University of Minnesota Hospital) and a control group of University of Minnesota students. Based on this comparison, a particular test item was initially selected as a discriminating test item if the percentage frequency difference between the criterion group (individuals manifesting the clinical trait) and the group of Minnesota adults ("normals") was a statistically significant amount, which varied from one scale to another.

Wanting to further distinguish between persons manifesting other major psychosis, as well as persons considered normal, Hathaway and McKinley eliminated additional test statements by comparing responses of individuals exhibiting other major psychosis to the responses of the criterion group. The authors also attempted to correct the false positive problem by administering the tentative scale to individuals not exhibiting the psychological trait they were trying to identify, and eliminating those statements eliciting a false positive response. Finally, Hathaway and McKinley eliminated some test statements because they thought they were inappropriate and for other unknown reasons.

There are several alternative ways to build scales other than the contrasted group method used by Hathaway and McKinley. Two other such methods are the internal consistency and rational or theoretical methods. Indeed, some individuals have used these alternative methods to create their own scales using MMPI test statements to identify the same personality trait identified by Hathaway and McKinley, although selecting different test statements than those selected by Hathaway and McKinley.

After building the discriminating scales, Hathaway and McKinley selected the T formula as the norming device for comparing the raw scores on the different scales and an individual's raw score to a normative group (the Minnesota adult normals). The authors chose to divide the normal group into male and female to eliminate non-trait factors which were not eliminated by the scale building process. Also, Hathaway and McKinley adjusted the T score for the normal group based upon their own judgment. In addition, the T formula was not used on the lie and infrequency scales. Instead, the authors relied on their experience and percentiles when norming these scales.

There are several alternative norming devices that might have been used by the authors and have been used by other authors of psychometric scales, such as percentile ranking, decile ranking, linear T-score transformation, nonlinear T-score transformation, Z score transformation, and stanine transformation.

7. The first scale built by Hathaway and McKinley was the hypochondriasis scale. The 103 test items making up the scale, scoring direction, and the corresponding T score conversion data were first published in volume 10 of the Journal of Psychology at pages 255 through 268 on Oct. 28, 1940. There was a general notice of copyright to the Journal Press on the title page of the Journal and the first page of the article. The article did not contain a separate notice of copyright to the authors or the Regents.

8. On May 8, 1942, the University of Minnesota Press published with notice of copyright to the University of Minnesota 100 copies of an article entitled The Minnesota Multiphasic Personality Schedule. The article contained 550 test items, the scale membership, scoring...