In the
United States Court of Appeals
For the Seventh Circuit
No. 10-2144
S ENG -T IONG H O , et al.,
Plaintiffs-Appellants,
v.
A LLEN T AFLOVE, et al.,
Defendants-Appellees.
Appeal from the United States District Court
for the Northern District of Illinois, Eastern Division.
No. 1:07-cv-04305—Elaine E. Bucklo, Judge.
A RGUED JANUARY 20, 2011—D ECIDED JUNE 6, 2011
Before R IPPLE and H AMILTON, Circuit Judges, and
M URPHY, District Judge.
R IPPLE, Circuit Judge. Seng-Tiong Ho and Yingyan
Huang brought this action against Allen Taflove and Shi-
Hui Chang in the United States District Court for the
Northern District of Illinois. They alleged that the defen-
The Honorable G. Patrick Murphy, United States District
Judge for the Southern District of Illinois, is sitting by designa-
tion.
2 No. 10-2144
dants, members of another research team at the same
university, violated the Copyright Act by publishing
equations, figures and text copied from the plaintiffs’
work. The plaintiffs also raised several state law claims
against the defendants based on the alleged copying.
The defendants filed a motion for summary judg-
ment and a motion to dismiss. The district court granted
the defendants’ motion for summary judgment as to
all claims and therefore declined to address the motion
to dismiss.
We conclude that the district court correctly granted
summary judgment in favor of the defendants. Professor
Ho and Ms. Huang fail to show a genuine dispute of
material fact that, if resolved in their favor, would give
the allegedly copied equations, figures and text the pro-
tection of the Copyright Act. Moreover, the Copy-
right Act preempts two of the three state law claims
raised on appeal; the third state law claim fails to
survive summary judgment on the merits. Accordingly,
we affirm the judgment of the district court.
I
BACKGROUND
A. Facts
Professors Ho and Taflove are both engineering pro-
fessors at Northwestern University, and, during the
relevant period, Ms. Huang and Mr. Chang were engi-
No. 10-2144 3
neering graduate students at Northwestern University.1
Starting in 1997, Mr. Chang worked as a graduate
student with Professor Ho. In 1998, Professor Ho con-
ceived of and first formulated a “4-level 2-electron
atomic model with Pauli Exclusion Principle for
simulating the dynamics of active media in a photonic
device (’the Model’).” Appellants’ Br. 4. It is not con-
tested that the Model significantly advanced previous
models. By 1999, Professor Ho had completed mathemati-
cal derivations of the Model, which comprised sixty-nine
pages of notes and equations. The Model currently has
no known commercial use.
Professor Ho then tasked Mr. Chang with creating a
computer program code, using the derived equations,
for the purpose of running Model simulations. The com-
puter program code was based on an earlier program
that Mr. Chang had helped create. Mr. Chang, however,
was unsuccessful in this task because of programming
errors.
In June 2002, Mr. Chang switched to Professor Taflove’s
research group. When Mr. Chang switched groups, he
was warned by the head of the department not to con-
tinue any work previously done in Professor Ho’s
group and to avoid misappropriating Professor Ho’s
1
Ms. Huang is currently an employee of Professor Ho.
Mr. Chang is now a professor at National Cheng Kung Univer-
sity in Taiwan. For the purposes of this opinion, we use the
titles the parties had during the relevant time period (i.e.,
Mr. Chang, not Professor Chang).
4 No. 10-2144
work. Mr. Chang returned several of Professor Ho’s
notebooks, but he failed to return an original copy of one
of Professor Ho’s notebooks previously issued to him
in early 2002 to record his work.
Ms. Huang began to work for Professor Ho in Septem-
ber 2000. Until 2001, Ms. Huang’s work focused on ap-
plying the Model to different mediums. With permis-
sion from Professor Ho, some results from the plain-
tiffs’ research were mentioned briefly in a conference
paper published in 2001 2 and then were published in full
in 2002 in Ms. Huang’s master’s thesis. Mr. Chang, who
already had switched to Professor Taflove’s research
group, asked Ms. Huang to provide him with two
figures from her work and copies of her master’s thesis.
Professor Taflove and Mr. Chang submitted a sympo-
sium paper to the IEEE Antennas and Propagation
Society (“APS paper”) and an article to the journal Optics
Express (“OE article”). These submissions described the
Model and its applications: The APS paper provided a
brief summary, and the OE article described the Model
in detail. Some of the figures in Ms. Huang’s master’s
thesis also were included in these submissions. The APS
paper was published in 2003, and the OE article was pub-
lished in 2004. Professor Taflove and Mr. Chang did not
attribute any of the contents of the OE article or the
APS paper to Professor Ho or Ms. Huang.
2
The conference paper was prepared by Seongsik Chang,
a postdoctoral fellow in Professor Ho’s group, and listed
Professor Ho, Mr. Chang (the defendant) and Ms. Huang as co-
authors.
No. 10-2144 5
Professor Ho first became aware of the alleged wrong-
doing in 2004, when he submitted his project for pub-
lication in Optics Communications, and it was rejected
because of a previously published paper on the same
topic, namely Professor Taflove and Mr. Chang’s APS
paper. In 2007, the plaintiffs received certificates of copy-
right in Professor Ho’s 1998 and 1999 notebooks,
Ms. Huang’s master’s thesis, two figures used within
Ms. Huang’s master’s thesis and a visual presentation
given by Ms. Huang that discussed the Model.
Professor Ho and Ms. Huang allege that Professor
Taflove and Mr. Chang infringed upon their copyrights
six times, by using the copyrighted materials without
permission in the following documents, listed chrono-
logically: (1) the APS paper; (2) Mr. Chang’s Ph.D. thesis;
(3) the OE article; (4) Professor Taflove and Mr. Chang’s
book chapter, published by Artech House in 2005;
(5) Professor Taflove’s presentation in 2006; and (6) Profes-
sor Taflove’s presentation in 2007. “[T]he two main in-
fringing documents” are the APS symposium paper and
the OE article, as the other incidents of infringement
involve parts of these two documents. Appellants’ Br. 7.
Professor Ho and Ms. Huang assert that the OE article
has twenty-one items copied from their work and that
the APS symposium paper has twelve, creating thirty-
three infringements in total. Professor Ho and Ms. Huang
calculate that, from that list of copied items, fifty-five
percent are text, thirty percent are equations and fifteen
percent are figures.
6 No. 10-2144
B. District Court Proceedings
Professor Ho and Ms. Huang brought this action
against Professor Taflove and Mr. Chang, alleging copy-
right infringement and state law claims of false designa-
tion of origin, unfair competition, conversion, fraud and
misappropriation of trade secrets. The district court
granted summary judgment in favor of the defendants
for all claims, see Ho v. Taflove, 696 F. Supp. 2d 950 (N.D.
Ill. 2010), and subsequently denied the plaintiffs’ motion
for reconsideration, see R.139.
1. Summary Judgment Motion
The district court addressed separately each of the
plaintiffs’ five claims. On appeal, Professor Ho and
Ms. Huang challenge only the district court’s summary
judgment ruling on their claims of copyright infringe-
ment, conversion, fraud and trade secrets misappropria-
tion. We therefore shall examine the district court’s
rulings only on those claims.
With respect to copyright infringement, the district
court held that the equations, figures and text were
“unprotectable concepts, ideas, methods, procedures,
processes, systems, and/or discoveries” and that the
merger doctrine is applicable because there are limited
ways of mathematically expressing the Model. Ho, 696
F. Supp. 2d at 954. The district court rejected the plain-
tiffs’ analogy that, just as Mickey Mouse is a particular
expression of a mouse, the Model is a creative expres-
sion of a scientific phenomenon. In the district court’s
No. 10-2144 7
view, Mickey Mouse is entirely fictitious, but the Model
mimics reality. The district court remained unpersuaded
by the plaintiffs’ contention that “unique assumptions”
indicate that the Model is fictional because the plain-
tiffs were unable to identify what unique assumptions
existed. Id.
With respect to the conversion claim, the district court
first dismissed any claim that the defendants converted
physical copies of the plaintiffs’ work because, based
on the presented evidence, the plaintiffs had access to
such items at all times. 3 As for conversion of the
intangible ideas claim, the court noted that there was
no evidence that the defendants prevented Professor
Ho and Ms. Huang “from conducting, controlling, ac-
cessing, using, or publishing their research.” Id. at 957.
The district court also found insufficient evidence
to support a claim of fraud: “By taking credit for plain-
tiffs’ work, defendants may have misled publishers
or readers as to proper authorship, but they clearly
did not mislead plaintiffs.” Id.
In the district court’s view, no trade secrets misappro-
priation occurred because the Model was not kept se-
cret. It reasoned that the Model was published by
Professor Ho and Ms. Huang in 2001 and 2002. Moreover,
3
Before the district court, the plaintiffs made no specific claim
that Professor Ho’s 2002 notebook was given to Mr. Chang
and never returned. In fact, Professor Ho admitted in his
deposition that, to his knowledge, the defendants never physi-
cally had taken anything of his. R.82, Ex. E (Ho Dep.) at 471-72.
8 No. 10-2144
a trade secret is not dependent on whether proper at-
tribution is given in later publications.
In support of a trade secrets misappropriation claim,
Professor Ho also had asserted that Professor Taflove
and Mr. Chang’s article and book chapter contained
some materials from the notebooks that were not previ-
ously published. The district court, however, found
this statement “unsupported” and “nebulous.” Id. at 958.
Thus, the assertion by Professor Ho was insufficient to
support a claim of trade secrets misappropriation.
In the alternative, the district court found all the state
law claims preempted by the Copyright Act. The court
noted that preemption can apply even when the
allegedly copied material is not subject to protection
under the Copyright Act. Otherwise, the district court
noted, the state could give copyright-like protection to
material that Congress had decided not to protect by
copyright. Accordingly, the district court granted sum-
mary judgment in favor of Professor Taflove and
Mr. Chang for all claims.
2. Motion for Reconsideration
Following the court’s ruling, the plaintiffs filed a
motion for reconsideration. Although the filing was
labeled as a Rule 60(b) motion, see Fed. R. Civ. P. 60(b),4 the
4
Federal Rule of Civil Procedure 60(b) states: “On motion and
just terms, the court may relieve a party or its legal representa-
(continued...)
No. 10-2144 9
district court held that the motion was, in substance, a
Rule 59(e) motion to alter or amend its previous sum-
mary judgment decision, see Fed. R. Civ. P. 59(e).5 The
4
(...continued)
tive from a final judgment, order, or proceeding for the fol-
lowing reasons.” The reasons listed in Rule 60(b) include:
(1) mistake, inadvertence, surprise, or excusable
neglect;
(2) newly discovered evidence that, with reason-
able diligence, could not have been discovered
in time to move for a new trial under Rule
59(b);
(3) fraud (whether previously called intrinsic or
extrinsic), misrepresentation, or misconduct by
an opposing party;
(4) the judgment is void;
(5) the judgment has been satisfied, released or
discharged; it is based on an earlier judgment
that has been reversed or vacated; or applying
it prospectively is no longer equitable; or
(6) any other reason that justifies relief.
Fed. R. Civ. P. 60(b).
5
Federal Rule of Civil Procedure 59(e) provides: “A motion to
alter or amend a judgment must be filed no later than 28 days
after the entry of the judgment.”
The plaintiffs’ motion for reconsideration states that it is
brought under Rule 60(b). A motion under Rule 60(b) seeks
relief from a judgment. The plaintiffs’ motion, however, reiter-
(continued...)
10 No. 10-2144
motion maintained that the grant of summary judg-
ment for copyright infringement and conversion was
a manifest error of fact and law.
The district court denied the motion for reconsidera-
tion. Regarding the copyright infringement claim, the
district court ruled that the plaintiffs improperly intro-
duced new arguments in their motion and relied on
previously available authority. The district court refused
to consider these additional materials and found that
the plaintiffs’ remaining arguments were duplicative of
those that already had been raised and rejected.
Regarding the conversion claim, the district court
would not consider the “new” evidence proffered by the
plaintiffs to show conversion of tangible and intangible
property; these items had not been mentioned in the
summary judgment briefing nor had they been included
in the prior evidentiary submission. Additionally, Profes-
sor Ho had stated, in his deposition, that no items had
5
(...continued)
ates that it seeks “reconsideration” from the district court in
part because of errors of law. An error of law is a basis
for altering or amending the judgment under Rule 59(e), but
it is not explicitly recognized as a basis for relief under
Rule 60(b). See Obriecht v. Raemisch, 517 F.3d 489, 493-94 (7th Cir.
2008). The plaintiffs also filed their motion for reconsidera-
tion within the time allowed under Rule 59(e). Accordingly,
we agree with the district court that the substance of the
motion reveals that it is a Rule 59(e) motion to alter or amend
a judgment. On appeal, neither party contests the characteriza-
tion of the motion as a motion under Rule 59(e).
No. 10-2144 11
been physically taken from him. The district court also
observed no error in its alternative holding that the
Copyright Act preempted the conversion claim.
Professor Ho and Ms. Huang timely appealed the
district court’s decision.
II
DISCUSSION
Professor Ho and Ms. Huang submit that the district
court erred in granting summary judgment on their
claims of copyright infringement, conversion, fraud and
trade secrets misappropriation and also that it erred in
denying their motion for reconsideration.
A. Summary Judgment
“We review a grant of summary judgment de novo,
construing all facts in the light most favorable” to
Professor Ho and Ms. Huang and “drawing all reasonable
inferences in [their] favor.” Ogden v. Atterholt, 606 F.3d
355, 358 (7th Cir. 2010). Summary judgment is appro-
priate “if the movant shows that there is no genuine
dispute as to any material fact.” Fed. R. Civ. P. 56(a).
The party moving for summary judgment “always bears
the initial responsibility” of showing “the absence of a
genuine issue of material fact.” Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986). Once “a properly supported motion
for summary judgment is made,” the nonmoving party
bears the burden to “set forth specific facts showing
12 No. 10-2144
that there is a genuine issue for trial.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 250 (1986) (internal quotation
marks and citation omitted). Notably, any party asserting
that a fact is or is not genuinely disputed must cite “to
particular parts of materials in the record,” or show that
“an adverse party cannot produce admissible evidence
to support the fact.” Fed. R. Civ. P. 56(c)(1). Thus, “a party
opposing a properly supported motion for summary
judgment may not rest upon mere allegation or denials
of his pleading.” Anderson, 477 U.S. at 256; see also
Cleveland v. Porca Co., 38 F.3d 289, 295 (7th Cir. 1994).
Additionally, a “court need consider only the cited materi-
als.” Fed. R. Civ. P. 56(c)(3).
Professor Ho and Ms. Huang challenge the district
court’s grant of summary judgment in favor of the de-
fendant on their copyright infringement, conversion,
fraud and trade secrets misappropriation claims. We
address each claim in turn.
1. Copyright Infringement Claim
In granting summary judgment, the district court
accepted Professor Taflove and Mr. Chang’s view that the
allegedly copied materials were not protected by the
Copyright Act because the Model is an idea. Specifically,
according to the defendants, the Model is “a new mathe-
matical model of how electrons behave under certain
circumstances.” R.81 at 7. Moreover, the equation, figures
and text are the only ways to express this idea, and so,
under the merger doctrine, these expressions are not
copyrightable.
No. 10-2144 13
Professor Ho and Ms. Huang counter, in their response
to the summary judgment motion and now on appeal,
that the nature of the Model is fictitious because it de-
scribes reality under hypothetical conditions; accordingly,
all of the Model’s expressions are protected. In their
summary judgment filings, however, they failed to
address whether the equations, figures and text are
the only possible expressions of the Model.
Protection under the Copyright Act is subject to
statutory exceptions. Section 102(b) of the Copyright Act
provides that:
In no case does copyright protection for an
original work of authorship extend to any idea,
procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the
form in which it is described, explained, illus-
trated, or embodied in such work.
17 U.S.C. § 102(b). We have described § 102(b) of the
Copyright Act as codifying a “fact-expression dichot-
omy.” American Dental Ass’n v. Delta Dental Plans Ass’n,
126 F.3d 977, 981 (7th Cir. 1997). In essence, “the Copy-
right Act protects the expression of ideas, but exempts
the ideas themselves from protection.” Wildlife Express
Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 507 (7th Cir.
1994). This limitation on copyright protection promotes
the purpose of the Copyright Act by assuring “authors
the right to their original expression,” but also by
“encourag[ing] others to build freely upon the ideas and
information conveyed by a work.” Feist Publ’ns, Inc. v.
Rural Tel. Serv. Co., 499 U.S. 340, 349-50 (1991); see also
14 No. 10-2144
Wildlife Express Corp., 18 F.3d at 507; Erickson v. Trinity
Theatre, Inc., 13 F.3d 1061, 1069 (7th Cir. 1994). Under
the merger doctrine, when “there is only one feasible
way of expressing an idea, so that if the expression
were copyrightable it would mean that the idea was
copyrightable,” the expression is not protected. Bucklew
v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 928
(7th Cir. 2003). Thus, even though an individual can
have a valid copyright in a document, facts and ideas
contained in the document are not subject to copyright.
See American Dental Ass’n, 126 F.3d at 979.6
The fact-expression distinction in copyright protection
has roots in the Nation’s jurisprudence that go back long
before the Copyright Act of 1976. See Mazer v. Stein, 347
U.S. 201, 217-18 (1954) (stating that “[copyright] protec-
tion is given only to the expression of the idea—not the
idea itself” and discussing pre-Copyright Act cases).
Indeed, the Supreme Court recognized this dichotomy in
Baker v. Selden, 101 U.S. 99, 103 (1879), and explained
6
Professor Ho and Ms. Huang maintain that the infringed work
enjoys a presumption of protectability because they obtained
certificates of copyright for that work. They can own valid
copyrights in a work, but that work may contain facts and
ideas that are not subject to copyright. Moreover, they misun-
derstand the presumption: Ownership of a copyright creates
a presumption of validity of the copyright, not that an infringe-
ment of that copyright occurred. See JCW Inv., Inc. v. Novelty,
Inc., 482 F.3d 910, 914-15 (7th Cir. 2007) (“The owner
of a copyright may obtain a certificate of copyright, which
is ‘prima facie evidence’ of its validity.”).
No. 10-2144 15
the rationale for limiting copyright protection in certain
areas:
The 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. The very object of
publishing a book on science or the useful arts is to
communicate to the world the useful knowledge
which it contains. But this object would be frus-
trated if the knowledge could not be used without
incurring the guilt of piracy of the book. And
where the art it teaches cannot be used without
employing the methods and diagrams used to
illustrate the book, or such as are similar to them,
such methods and diagrams are to be considered
as necessary incidents to the art, and given there-
with to the public; not given for the purpose of
publication in other works explanatory of the
art, but for the purpose of practical application.
We have recognized that the Court’s explanation in
Baker is reflected in § 102(b) of the Copyright Act. See
American Dental Ass’n, 126 F.3d at 981.
Although the line between an expression and an idea
can be difficult to determine at times,7 we do not believe
7
See Nash v. CBS, Inc., 899 F.2d 1537, 1540-41 (7th Cir. 1990)
(discussing the fact-expression dichotomy).
16 No. 10-2144
that the record in this case presents a particularly dif-
ficult situation. The Model is an idea. In Professor Ho and
Ms. Huang’s own words, the Model “mimic[s] . . . certain
behaviors of millions of particles in a photonic device.”
Appellants’ Br. 4. That is, the Model attempts to repre-
sent and describe reality for scientific purposes. This
scientific reality was not created by the plaintiffs. Rather,
the Model embodies certain newly discovered scientific
principles. Granted, as the plaintiffs note, the Model
makes certain hypothetical assumptions, but those hypo-
thetical assumptions do not render the Model fictitious.
Rather, the Model strives to describe reality, and, as
conceded at oral arguments, the value of the Model is
its ability to accurately mimic nature. See Gates Rubber
Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 842-43 (10th
Cir. 1993) (“The constants in the Design Flex program
represent scientific observations of physical relationships
concerning the load that a particular belt can carry around
certain sized gears at certain speeds given a number
of other variables. These relationships are not invented or
created; they already exist and are merely observed,
discovered and recorded. Such a discovery does not
give rise to copyright protection.”). As the Supreme
Court put it in Feist Publications, Inc. v. Rural Telephone
Service Co., 499 U.S. 340, 347 (1991), “facts do not owe
their origin to an act of authorship. The distinction is one
between creation and discovery: The first person to
find and report a particular fact has not created the fact;
he or she has merely discovered its existence.”
Professor Ho and Ms. Huang rely on two cases that are
not relevant to this appeal because they involve alleged
No. 10-2144 17
copying of the creative presentation, not the substance,
of facts or ideas. In Flick-Reedy Corp. v. Hydro-Line Manu-
facturing Co., 351 F.2d 546, 548 (7th Cir. 1965), the
plaintiff claimed that the defendant had copied the
“expression and presentation of the computations, formu-
lae and explanations.” We concluded that the “arrange-
ment, expression and manner of presentation” of the
mathematical data could be protected by copyright, even
if the equations and formulae themselves were in the
public domain. Id. Specifically, we commented on the
coloring, wording and location of titles and type of
shading used by the parties. In short, the issue in Flick-
Reedy centered around the creative arrangement, expres-
sion and manner of presentation, and we were not con-
cerned with whether the substance of the mathematical
data was copyrightable.
Similarly, in Situation Management Systems, Inc. v. ASP
Consulting LLC, 560 F.3d 53 (1st Cir. 2009), our colleagues
in the First Circuit concluded that materials used to
train employees in communication and negotiation
skills were subject to the Copyright Act as expressions
of a process or system. The court observed that the
plaintiff made “creative choices in describing those pro-
cesses and systems, including the works’ overall arrange-
ment and structure.” Id. at 61.
In this case, by contrast, Professor Ho and Ms. Huang
do not contend that the defendants appropriated their
creative presentation of the Model through copying
such aspects as the color or font employed by the plain-
tiffs. Rather, the plaintiffs contend that the de-
18 No. 10-2144
fendants copied the substance of the equations, figures
and text. See R.82, Ex. D (Huang Dep.) at 265-67
(Ms. Huang affirming that the copying of the substance
of the Model, not its presentation, was what mattered).
Unlike the plaintiffs in Flick-Reedy and Situation Manage-
ment Systems, Inc., Professor Ho and Ms. Huang claim
a copyright interest in the substance—not presentation—
of the equations, figures and text.
On appeal, Professor Ho and Ms. Huang maintain
that there are numerous ways to express the Model and
therefore that, as a consequence, the merger doctrine
does not apply. The plaintiffs, however, failed to support
sufficiently this argument before the district court in
their summary judgment filings. In their summary judg-
ment papers, the plaintiffs offered no evidence of how
the Model could be expressed through other equations
or figures. Equations and figures are common com-
ponents of mathematical science used to depict ideas.
Although equations can be rearranged through the laws
of mathematics, the substance of the equation never-
theless remains the same. Without any evidence that the
Model could be expressed by equations and figures
other than those used by the plaintiffs, we conclude that
these equations and figures are “required by” the Model,
see Wildlife Express Corp., 18 F.3d at 508 (emphasis in
original), and as such, are not subject to copyright.
Whether text, as opposed to equations and figures, is
required by the Model or has other possible expressions is
a more difficult question. We have recognized that text
describing scientific ideas may be subject to copyright.
No. 10-2144 19
See American Dental Ass’n, 126 F.3d at 979 (“Einstein’s
articles laying out the special and general theories of
relativity were original works even though many of the
core equations, such as the famous E=mc 2 , express ‘facts’
and therefore are not copyrightable.”). Here as well,
however, the plaintiffs did not raise adequately this
argument in their summary judgment papers.8 Professor
Taflove and Mr. Chang maintained in their summary
judgment motion that the allegedly copied text was “one
of only a few ways . . . to express” the Model. R.81 at 8.
Professor Ho and Ms. Huang failed to refute that asser-
tion in their response to the summary judgment motion.
In fact, before the district court, the plaintiffs observed
that “[i]t is irrelevant to copyright rights whether the
expression is in words or mathematical symbols, just as
an author’s choice of the English or German language
is irrelevant to copyrightability.” R.91 at 6. Exactly how
the text, defining the variables and offering technical
explanations, could have been expressed differently
is unclear.
Thus, in their summary judgment motions, the plain-
tiffs failed to show that the text at issue is one of
8
In their summary judgment papers and on appeal, the
plaintiffs maintained that there are multiple ways of ex-
pressing the Model. This blanket statement seems to cover the
expressions of the Model whether in equations, figures, or text.
In their summary judgment papers, however, the plaintiffs
offered no examples of alternative expressions or any other
further elaboration. In their motion for reconsideration and
on appeal, the plaintiffs offer several examples of how the
text could have been written differently. See R.126, Ex. 1K.
20 No. 10-2144
many possible expressions. Based on the nature of the
Model and the plaintiffs’ failure to raise arguments ade-
quately and to provide specific evidence in their sum-
mary judgment filings, the district court did not err in
concluding that the equations, figures and text were not
subject to copyright.
2. State Law Claims
Professor Ho and Ms. Huang also seek review of the
district court’s disposition of three state law claims for
conversion, fraud and trade secrets misappropriation.
The district court held that all of the plaintiffs’ state law
claims are preempted under the Copyright Act, and in
the alternative, that each state law claim fails on the
merits. We shall consider first the extent to which the
Copyright Act preempts the plaintiffs’ state law claims;
we then shall examine the merits of any state law claim
not preempted by the Copyright Act.
a. Preemption
We review de novo whether the Copyright Act preempts
any of the plaintiffs’ state law claims. See Toney v. L’Oreal
USA, Inc., 406 F.3d 905, 907-08 (7th Cir. 2005). The Copy-
right Act preempts “all legal and equitable rights that
are equivalent to any of the exclusive rights within the
general scope of copyright as specified by section 106”
and are “in a tangible medium of expression and come
within the subject matter of copyright as specified by
sections 102 and 103.” 17 U.S.C. § 301(a). We have
No. 10-2144 21
distilled from the language of § 301 two elements: “First,
the work in which the right is asserted must be fixed
in tangible form and come within the subject matter of
copyright as specified in § 102. Second, the right must
be equivalent to any of the rights specified in § 106.”
Baltimore Orioles, Inc. v. Major League Baseball Players
Ass’n, 805 F.2d 663, 674 (7th Cir. 1986).
(1) Tangible Medium
Regarding the first element, we note that the material
in which the plaintiffs assert rights—the Model and its
manifestations in equations, figures and text—are expres-
sions in a tangible form. These expressions even orig-
inate in tangible works that are copyrighted—namely,
Ms. Huang’s master’s thesis and Professor Ho’s note-
books. Because the expressions of the Model are in
tangible materials, the first element is satisfied.
(2) Equivalent Right
The second element for preemption is that the rights
in the state law claims be equivalent to the exclusive
rights under the Copyright Act. We summarized the
rights of a copyright owner, detailed in § 106 of the Copy-
right Act, to be “reproduction, adaptation, publication,
performance, and display” of the copyrighted work.
Toney, 406 F.3d at 909. A well-respected treatise has
elaborated on this concept along the same lines, noting
that equivalent rights exist “if under state law the act of
reproduction, performance, distribution, or display, no
22 No. 10-2144
matter whether the law includes all such acts or only
some, will in itself infringe the state-created right.” 1
Melville B. Nimmer & David Nimmer, Nimmer on
Copyright § 1.01[B][1] (2010) (emphasis in original). “[T]o
avoid preemption, a state law must regulate conduct that
is qualitatively distinguishable from that governed by
federal copyright law—i.e., conduct other than reproduc-
tion, adaptation, publication, performance, and display.”
Toney, 406 F.3d at 910.
We have concluded that the material in dispute—the
equations, figures and text—are not copyrightable. How-
ever, the Copyright Act can preempt state law even
when the rights are claimed in uncopyrighted or
uncopyrightable materials. We accepted this possibility
in Baltimore Orioles, Inc. v. Major League Baseball Players
Association, 805 F.2d 663, 676 (7th Cir. 1986), when we
determined that preemption applied even though the
rights were asserted in work that was uncopyrightable.
Again, in Toney, we noted that “state laws that intrude
on the domain of copyright are preempted even if
the particular expression is neither copyrighted nor
copyrightable.” 406 F.3d at 911. In the Copyright Act,
Congress sought to ensure that a state will not provide
“copyright-like protections in materials” that should
remain uncopyrighted or uncopyrightable. Id.9
9
Other circuits have come to a similar conclusion that when
rights are asserted in uncopyrighted expressions in a copy-
righted work, the Copyright Act still can preempt state law.
(continued...)
No. 10-2144 23
In their motion for summary judgment, the defendants
assert that all of the plaintiffs’ state law claims are “alter-
native legal theories for recovery” based on the alleged
copying, R.81 at 13, and the defendants cite extensively
to the plaintiffs’ complaint as evidence. We consider
separately whether each state law claim challenged on
appeal is based on a right equivalent to those under the
Copyright Act.
(a) Conversion
The complaint, with respect to conversion, states that
the “Defendants misappropriated the works by publishing
said works and texts . . . and Defendants passed off
said works and text as their own without giving credit
to Plaintiffs.” R.1 at 14 (emphasis added). In their
response to the summary judgment motion, the plain-
tiffs elaborate that “[b]y passing off the works as their
own in numerous scientific publications, Defendants
wrongfully and without authorization assumed control
over them, which is actionable conversion.” R.91 at 12.
The conversion claim, then, is focused on the defen-
dants’ unauthorized publishing, not possession, of the
9
(...continued)
Nat’l Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 849 (2d
Cir. 1997) (“Copyrightable material often contains uncopy-
rightable elements within it, but Section 301 preemption bars
state law . . . claims with respect to uncopyrightable as well
as copyrightable elements.”); R.W. Beck, Inc. v. E3 Consulting,
LLC, 577 F.3d 1133, 1146-47 (10th Cir. 2009) (same).
24 No. 10-2144
protected work. Because publishing is a right under
the Copyright Act, the conversion claim is preempted.
The plaintiffs rely on Bilut v. Northwestern University,
692 N.E.2d 1327 (Ill. App. Ct. 1998), as support for
their contention that a conversion claim is not
preempted by the Copyright Act. We cannot accept this
argument. In Bilut, the plaintiff alleged “loss of physical
control over her research project,” id. at 1335, claiming
that her professor “usurped” her ideas and then pro-
hibited her from conducting a study, id. at 1333. The
plaintiff’s claim of conversion in Bilut went beyond the
publication of an idea. In this case, however, the plain-
tiffs have alleged conversion based solely on the defen-
dants’ publishing the information without attribution.
The present case is much more like the situation that
confronted our colleagues in the Fourth Circuit in United
States ex. rel Berge v. Board of Trustees of the University of
Alabama, 104 F.3d 1453 (4th Cir. 1997). There, the court
held that a claim of conversion was preempted because
a “charge of plagiarism and lack of attribution can only
amount to, indeed, are tantamount to, a claim of copy-
right infringement, for [the plaintiff] has certainly not
been prevented from using her own ideas and methods.”
Id. at 1464.
On appeal, Professor Ho and Ms. Huang also rest their
conversion claim on Mr. Chang’s failure to return Profes-
sor Ho’s 2002 notebook. Yet, the plaintiffs failed to raise
sufficiently this argument in their summary judgment
papers. In their response to the summary judgment
motion, the plaintiffs simply made a general assertion
No. 10-2144 25
that tangible property was taken without permission,
followed by a citation to their statement of additional
facts. The statement of additional facts, however, does
not identify what tangible property was taken without
permission and makes no mention of the 2002 notebook
in particular. It was incumbent on the plaintiffs to
identify with particularity the factual basis for their
claim. See Anderson, 477 U.S. at 250. They failed to do so.
We therefore must conclude that, based on the plain-
tiffs’ summary judgment filings, the rights asserted in
the conversion claim concerned the misappropriation of
their work through publication, which is equivalent to
the right to control publication under the Copyright Act.
(b) Fraud
As a general proposition, a claim of common law fraud
is not preempted by the Copyright Act “so long as the
causes of action concerning them contain elements that
are different from copyright infringement.” Allied Artists
Pictures Corp. v. Rhodes, 496 F. Supp. 408, 444 (S.D. Ohio
1980), aff’d in part, remanded in part, 679 F.2d 656 (6th
Cir. 1982); see also Valente-Kritzer Video v. Pinckney, 881
F.2d 772, 776 (9th Cir. 1989). A claim of fraud can be,
however, a “disguised copyright infringement claim,” if
the sole basis of the fraud claim is that a defendant repre-
sented materials as his own. Nimmer & Nimmer, supra,
§ 1.01[B][1][e].
Here, the complaint alleges that the defendants know-
ingly published material taken from the plaintiffs and
that defendants “fraudulently represented” that they
26 No. 10-2144
were the originators of the work. R.1 at 14. Additionally,
in their response to the summary judgment motion, the
plaintiffs asserted that “Defendants have, in essence,
‘passed off’ [10] Plaintiffs’ works as their own by using
and representing Plaintiffs’ copyrighted materials as
their own work,” R.91 at 13, and that “plagiarism is a
type of fraud that is actionable.” R.91 at 12. Professor Ho
and Ms. Huang’s allegations of fraud therefore amount
to a claim that the defendants have published without
attribution, thereby misrepresenting the true origins of
the work. The plaintiffs do not allege in their summary
judgment filings any other misrepresentation by the
defendants. Because the fraud claim is based on the de-
fendants’ improper publishing alone, it is preempted
10
True “passing off” claims are not preempted by the Copyright
Act, but the “passing off” claim alleged by the plaintiffs is not
of that variety. As Nimmer on Copyright explains:
[T]here is no pre-emption of the state law of fraud, nor
of the state law of unfair competition of the “passing
off” variety. If A claims that B is selling B’s products
and representing to the public that they are A’s, that is
passing off. If, by contrast, B is selling B’s products and
representing to the public that they are B’s, that is not
passing off. A claim that the latter activity is actionable
because B’s product replicates A’s, even if denominated
“passing off,” is in fact a disguised copyright infringe-
ment claim, and hence pre-empted.
1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright
§ 1.01[B][1][e] (2010); see also R.W. Beck, Inc., 577 F.3d at 1148
(quoting Nimmer on Copyright).
No. 10-2144 27
by the Copyright Act. See R.W. Beck, Inc. v. E3 Consulting,
LLC, 577 F.3d 1133, 1148 (10th Cir. 2009) (finding the
plaintiff’s fraud claim was preempted because “[t]he
crux of the allegations is that [the defendant] represented
to the public that the reports it distributed were its own
when, in fact, they were copies of [the plaintiff’s]
reports”).11
(c) Trade Secrets Misappropriation
In their complaint, Professor Ho and Ms. Huang allege
that the “Defendants misappropriated Plaintiffs’ trade
secrets.” R.1 at 15. In their response to summary judg-
ment, they note that they “took steps to keep their works
secret.” R.91 at 13.
Under Illinois law, the definition of a trade secret re-
quires that the information “is sufficiently secret to
derive economic value” and is subject to efforts “to main-
tain its secrecy or confidentiality.” 765 ILCS 1065/2(d).
A trade secret misappropriation involves the acquisition
of a trade secret through improper means, which
requires the breach of a confidential relationship or other
duty to maintain secrecy. See 765 ILCS 1065/2(a), (b). A
11
On appeal, Professor Ho and Ms. Huang allege promissory
fraud based on Mr. Chang’s promise, when he left Professor
Ho’s group, not to use any of Professor Ho’s research. This
allegation of promissory fraud, however, was not mentioned
by the plaintiffs in their summary judgment papers. Accord-
ingly, we conclude that the Copyright Act preempts the plain-
tiffs’ claim of fraud.
28 No. 10-2144
claim of trade secret misappropriation, then, requires
that the information have a status of secrecy and that
a confidential relationship be breached. Both of these
elements go beyond the rights regulated under the Copy-
right Act.12 The act of publishing the allegedly copied
materials would not itself establish a trade secrets mis-
appropriation claim. Because a claim for trade secrets
misappropriation regulates conduct beyond the rights
under the Copyright Act, it is not preempted.
In sum, Professor Ho and Ms. Huang’s claims of conver-
sion and fraud assert the same interests as those under
the Copyright Act: to control the publication of the copy-
righted work.13 Accordingly, the plaintiffs’ claims of
conversion and fraud are preempted under the Copy-
right Act, and we affirm the district court’s grant of
summary judgment on that basis. By contrast, the trade
secrets claim asserts a right very different from the rights
protected by the Copyright Act, and, therefore, with
respect to that allegation, we cannot rest our decision
12
See Stromback v. New Line Cinema, 384 F.3d 283, 303-04 (6th Cir.
2004) (citing cases, across circuits, which “have held that claims
brought under state trade secret statutes . . . survive preemption
because the required proof of the existence and breach of a
confidential relationship provides the extra element neces-
sary to survive preemption”).
13
See also Daboub v. Gibbons, 42 F.3d 285, 289 (5th Cir. 1995)
(finding all of the plaintiffs’ state law claims preempted because
“[t]he core of each of these state law theories of recovery in
this case . . . is the same: the wrongful copying, distribution,
and performance of the lyrics of [a song]”).
No. 10-2144 29
on preemption, but must reach the substantive merits
of that state claim.
b. Merits of the Trade Secrets Misappropriation
Claim
Turning to the merits of the trade secrets misappropria-
tion claim, the plaintiffs have failed to show a genuine
dispute of material fact that, if resolved, would establish
misappropriation of trade secrets. Illinois law provides
the following definition of “trade secret”:
(d) “Trade secret” means information, including
but not limited to, technical or non-technical
data, a formula, pattern, compilation, program,
device, method, technique, drawing, process,
financial data, or list of actual or potential
customers or suppliers, that:
(1) is sufficiently secret to derive econo-
mic value, actual or potential, from
not being generally known to other
persons who can obtain economic
value from its disclosure or use; and
(2) is the subject of efforts that are reason-
able under the circumstances to main-
tain its secrecy or confidentiality.
765 ILCS 1065/2.
In their response to the summary judgment motion,
Professor Ho and Ms. Huang maintained that they had
a valid trade secrets misappropriation claim because the
30 No. 10-2144
expressions of the Model had “ ‘actual or potential’ eco-
nomic value” and because “they took steps to keep their
works secret.” R.91 at 13.
We need not decide whether the expressions of the
Model had economic value because the plaintiffs did
not show, in their summary judgment papers, that
the expressions of the Model had the status of secrecy.
Professor Ho and Ms. Huang concede that “Professor
Ho’s research results were partially published in a con-
ference paper in 2001 and then published in more detail
in 2002” in Ms. Huang’s master’s thesis. R.92 at 15.
The plaintiffs, nevertheless, offer two reasons why the
Model had the status of secrecy; both of these conten-
tions fail. The plaintiffs first submit that “it is expected
that anyone reading that thesis and using the Model
would at least cite the thesis as the source of the expres-
sion of the Model.” R.91 at 13-14. Such an expectation of
attribution, however, is not part of a trade secrets misap-
propriation claim. Once the possessor of information
intentionally releases that information, the possessor
can no longer make a successful trade secrets misappro-
priation claim because the information is not subject
to reasonable efforts to maintain secrecy.
Professor Ho and Ms. Huang also contend that the
defendants used “materials from Ho’s copyrighted note-
book that were not published.” Id. at 14. As support for
this assertion, the plaintiffs point to their statement of
material facts, which refers, in turn, to Professor Ho’s
affidavit, submitted as Exhibit A to the plaintiffs’ response
to the summary judgment motion. In his affidavit, Profes-
No. 10-2144 31
sor Ho generally asserts that the defendants’ publica-
tions included materials from one of his copyrighted,
but unpublished, notebooks. See R.91, Ex. A at 9. The
affidavit, however, does not specify what material alleg-
edly was copied from Professor Ho’s unpublished note-
book, as opposed to that taken from Ms. Huang’s pub-
lished master’s thesis or from other published sources.
See Anderson, 477 U.S. at 256 (“[A] party opposing a
properly supported motion for summary judgment
may not rest upon the mere allegations or denials of his
pleading, but . . . must set forth specific facts showing
that there is a genuine issue for trial.” (internal quotation
marks omitted)); Porca Co., 38 F.3d at 295 (finding the
assertion of bad faith alleged in an affidavit and stated
in the form of “opinion and beliefs” was insufficient
to show a genuine issue for trial). The plaintiffs claim
that the defendants used material from Professor Ho’s
copyrighted notebook, but they provide no specific evi-
dence linking the material in papers published by the
defendant to that found exclusively in Professor Ho’s
unpublished notebook.
Because the plaintiffs fail to show that the expressions
of the Model have a status of secrecy, their trade secrets
misappropriation claim cannot survive summary judg-
ment on the merits.
B. Motion for Reconsideration
We review a district court’s denial of a motion for
reconsideration for abuse of discretion. Reger Dev., LLC
v. Nat’l City Bank, 592 F.3d 759, 763 (7th Cir. 2010).
32 No. 10-2144
The plaintiffs submit that the district court abused its
discretion because it failed to consider the additional
evidence they provided at this stage of the proceedings,
including support for their assertion that there are
many different ways to express the Model whether as
sentences, paragraphs or even full articles. The defendants
reply that the district court properly denied the plain-
tiffs’ motion for reconsideration because the motion
failed to explain what copying occurred and why it was
actionable. Additionally, the defendants note that the
plaintiffs did not show that the additional evidence
previously was unavailable.
Federal Rule of Civil Procedure 59(e) 1 4 “allows a court
to alter or amend a judgment only if the petitioner can
demonstrate a manifest error of law or present newly
discovered evidence.” Obriecht v. Raemisch, 517 F.3d 489,
494 (7th Cir. 2008). The plaintiffs, in their motion for
reconsideration, proffered a great deal of additional
evidence. Yet, as the district court and defendants note,
the plaintiffs made no showing that this evidence was
newly discovered or previously unavailable. Further-
more, as our previous discussion has made clear, the
district court made no error of law that could have
served as a basis for granting the Rule 59(e) motion.
In their motion, the plaintiffs explicitly noted their dis-
agreement with the legal reasoning of the court, but they
presented no new argument that would expose an error
in that reasoning. The district court nevertheless reex-
14
See supra note 5.
No. 10-2144 33
amined the issue of copyright infringement and conver-
sion based on the motion, but it reached the same con-
clusion, a conclusion that we affirm today. Accordingly,
the district court did not abuse its discretion in denying
the plaintiffs’ motion for reconsideration.
Conclusion
We conclude that the district court properly granted
summary judgment on all claims in favor of Professor
Taflove and Mr. Chang and that the district court did
not abuse its discretion in denying Professor Ho and
Ms. Huang’s motion for reconsideration. Accordingly,
its judgment is affirmed.
A FFIRMED
6-6-11