IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

 

JOHN WILEY & SONS, LTD., AND ) 

AMERICAN INSTITUTE OF PHYSICS, ) 

 ) 

 Plaintiffs, ) Judge: 

 ) 

 v. ) Case No. 

 ) 

MCDONNELL BOEHNEN HULBERT ) 

& BERGHOFF LLP, AND JOHN DOE ) 

NOS. 1-10, ) 

 ) 

 Defendants. ) 

 

COMPLAINT 

 Plaintiffs John Wiley & Sons, Ltd. ("Wiley"), and American Institute of 

Physics ("AIP"), for their complaint against defendants McDonnell Boehnen Hulbert 

& Berghoff LLP ("McDonnell") and John Doe Nos. 1-10, aver: 

Nature of the Action

 1. This is an action for copyright infringement. It arises from the 

unauthorized copying and/or distribution of plaintiffs' copyrighted works by a law firm, 

and its professionals, in connection with their patent prosecution practices, so that 

defendants and their clients may reap a profit. 

Jurisdiction and Venue

 2. This Court has subject matter jurisdiction over the claim in this 

action pursuant to 28 U.S.C. §§ 1331 and 1338 because it arises under the Copyright 

Act, 17 U.S.C. § 101 et seq. 

 3. Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400. 

Case: 1:12-cv-01446 Document #: 1 Filed: 02/29/12 Page 1 of 7 PageID #:1
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Parties

 4. Wiley is a United Kingdom corporation with its principal place of 

business in Chichester, England. 

5. AIP is a New York not-for-profit corporation with its principal place 

of business in Melville, New York. 

6. Upon information and belief, McDonnell is a law firm with its 

principal place of business in Chicago, Illinois. 

7. Defendants John Doe Nos. 1-10 are partners, associates or other 

employees of McDonnell, whose identities are not currently known to plaintiffs. 

The Business of Plaintiffs

 8. Plaintiffs publish many of the world's leading scientific, technology 

and medical journals. 

9. Plaintiffs' journals consist primarily of peer-reviewed articles, written 

by one or more scholars, often based upon original research. 

 10. Plaintiffs invest heavily in publishing their journals. Plaintiffs incur 

substantial costs for copyediting, proofreading, typesetting, printing, binding, distributing 

and marketing their journals, as well as administering the peer-review process that is 

integral to the publication of those works, and the progress of science. 

11. Each plaintiff ordinarily requires its authors to assign or exclusively 

license to it the copyright in each article accepted for publication in one of its journals. 

This practice enables each plaintiff to maximize the dissemination of each work. 

Plaintiffs routinely register their copyrights in their journals published in the United 

States. 

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12. Plaintiffs earn a substantial portion of their revenue from the 

publication of their copyrighted journals both through (a) subscriptions to, and the sale 

of individual issues of, those journals, and (b) the licensing of the rights that the 

copyright law provides with respect to the content of those journals. Consistent with the 

purpose of Article 1, Section 8, Clause 8, of the Constitution of the United States, this 

revenue provides an incentive for creative expression. Plaintiffs would suffer serious 

financial injury if the copyrights in those journals were not enforced. A substantial 

decline in their income could cause plaintiffs to cease publishing one or more deserving 

journals. This would adversely impact the creation of new works, scholarly endeavor 

and, ultimately, scientific progress. 

The Unlawful Acts of Defendants

 13. McDonnell is engaged in the practice of law. On its website, 

McDonnell states "we know high-technology industries, and we know the law. We work 

with our clients to provide them with the benefit of our extensive knowledge and 

experience, so that they can rest assured that their technology assets are protected." 

Among other things, McDonnell files and prosecutes United States patent applications 

on behalf of its clients. In addition, McDonnell holds itself out as practicing "intellectual 

property law," which includes copyright law. 

14. In connection with researching, filing and prosecuting certain patent 

applications, McDonnell made and/or distributed to the United States Patent and 

Trademark Office ("PTO"), and perhaps others, unauthorized copies of copyrighted 

articles from plaintiffs' journals, including but not limited to those identified on Schedule 

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A. Such unauthorized copies were used for the commercial benefit of defendants and 

their clients. 

15. Upon information and belief, defendants made (a) additional copies 

of the copyrighted works that defendants included or cited in their patent applications to 

the PTO, including those identified on Schedule A, and (b) copies of plaintiffs' 

copyrighted works that defendants considered in connection with those applications, but 

did not ultimately cite or provide to the PTO. Plaintiffs cannot know the full extent of 

defendants' copying without discovery. Apart from the copying of plaintiffs' works 

accompanying the patent filings described above, this internal copying infringes 

plaintiffs' copyrights. 

CLAIM FOR RELIEF

(Copyright Infringement – 17 U.S.C. § 501) 

 16. Plaintiffs repeat the averments contained in paragraphs 1 through 

15 as if set forth in full. 

17. Plaintiffs either own the copyrights in the articles contained in the 

journals they publish or, alternatively, exclusively license those copyrights ("Plaintiffs' 

Copyrights"). 

 18. Defendants have infringed certain of the Plaintiffs' Copyrights, 

including, but not limited to, the registered copyrights in the articles listed on Schedule A 

by making unauthorized copies of them for internal use, and for distribution outside 

McDonnell. 

 19. This mere multiplication of copies for the for-profit business 

purposes of defendants is not privileged under the law. 

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 20. Defendants are prosecuting patents for the profit of themselves and 

their clients and are using Plaintiffs' Copyrights as part of that profit-making activity 

without due compensation to plaintiffs. Upon information and belief, McDonnell has 

charged its clients for the copies it has made of plaintiffs copyrighted works, and thereby 

made a direct profit as a result of its infringement. 

 21. Defendants have copied and/or distributed the copyrighted articles 

in their entirety. 

 22. Plaintiffs publish, sell and distribute journals, and license the 

copyrighted content contained in them, for precisely these types of use. Plaintiffs are 

ready, willing and able to provide defendants with licenses for their use either directly, 

through their licensing agents, or otherwise. Nevertheless, defendants have not 

acquired any of the licenses necessary to make their copying and distribution of 

plaintiffs' copyrighted articles lawful. 

23. The acts of defendants have irreparably damaged and, unless 

enjoined, will continue to irreparably damage plaintiffs. Plaintiffs have no adequate 

remedy at law for these wrongs and injuries. Plaintiffs are, therefore, entitled to a 

preliminary and permanent injunction restraining and enjoining defendants and their 

agents, servants, employees, attorneys, and all persons acting in concert with them, 

from infringing the Plaintiffs' Copyrights. 

 24. Defendants have willfully infringed the Plaintiffs' Copyrights. 

 25. Plaintiffs are entitled to recover damages sustained as a result of 

defendants' unlawful conduct, including (1) defendants' profits, or (2) plaintiffs' 

damages, or alternatively, at plaintiffs' election, (3) statutory damages. 

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 WHEREFORE, plaintiffs respectfully request that this Court enter 

judgment: 

A. Preliminarily and permanently enjoining defendants, their agents, 

servants, employees, attorneys, and all those acting in concert with them, from 

infringing the Plaintiffs' Copyrights; 

B. Awarding plaintiffs their damages or defendants' profits, or 

alternatively, at plaintiffs’ election, statutory damages, as a result of defendants' 

infringement of the Plaintiffs' Copyrights; 

C. Awarding plaintiffs their costs and reasonable attorneys' fees in this 

action; and 

 D. Awarding plaintiffs such other and further relief as the Court deems 

just and proper. 

Dated: February 29, 2012 

 

 Respectfully submitted, 

/s/ Annette M. McGarry

Annette M. McGarry (#6205751) 

amm@mcgarryllc.com 

Marianne C. Holzhall (#6204057) 

mch@mcgarryllc.com 

McGarry & McGarry, LLC 

120 North LaSalle Street, Suite 1100 

Chicago, IL 60602 

(312) 345-4600 

Dunnegan & Scileppi LLC 

350 Fifth Avenue 

New York, New York 10118, 

 Of Counsel.

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 Schedule A

Wiley.

Raznikov, V., et al., “A new approach to data reduction and evaluation in highresolution time-of-flight mass spectrometry using a time-to-digital convertor datarecording system,” Rapid Communications in Mass Spectrometry, vol. 15, No. 8, pp. 

570-578 (2001) that is a subject of U.S. Certificate of Copyright Registration No. TX-5-

338-941, registered on May 14, 2001. 

AIP

Erchak, A., et al., “Enhanced coupling to vertical radiation using a twodimensional photonic crystal in a semiconductor light-emitting diode,” Applied Physics 

Letters, vol. 78, No. 5, pp. 563-565 (2001) that is a subject of U.S. Certificate of 

Copyright Registration No. TX-5-308-834, registered on January 26, 2001. 

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