The Honorable G. Patrick Murphy, United States District



Judge for the Southern District of Illinois, is sitting by designation.

In the

United States Court of Appeals

For the Seventh Circuit

No. 10-2144

SENG-TIONG HO, et al.,

Plaintiffs-Appellants,

v.

ALLEN TAFLOVE, 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.

ARGUED JANUARY 20, 2011—DECIDED JUNE 6, 2011

Before RIPPLE and HAMILTON, Circuit Judges, and

MURPHY, District Judge.



RIPPLE, Circuit Judge. Seng-Tiong Ho and Yingyan

Huang brought this action against Allen Taflove and ShiHui Chang in the United States District Court for the

Northern District of Illinois. They alleged that the defen-
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 judgment 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 protection of the Copyright Act. Moreover, the Copyright 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 professors at Northwestern University, and, during the

relevant period, Ms. Huang and Mr. Chang were engi-
No. 10-2144 3

Ms. Huang is currently an employee of Professor Ho. 1

Mr. Chang is now a professor at National Cheng Kung University 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).

neering graduate students at Northwestern University.1

Starting in 1997, Mr. Chang worked as a graduate

student with Professor Ho. In 1998, Professor Ho conceived 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 contested that the Model significantly advanced previous

models. By 1999, Professor Ho had completed mathematical 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 computer 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 continue any work previously done in Professor Ho’s

group and to avoid misappropriating Professor Ho’s
4 No. 10-2144

The conference paper was prepared by Seongsik Chang, 2

a postdoctoral fellow in Professor Ho’s group, and listed

Professor Ho, Mr. Chang (the defendant) and Ms. Huang as coauthors.

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 September 2000. Until 2001, Ms. Huang’s work focused on applying the Model to different mediums. With permission from Professor Ho, some results from the plaintiffs’ research were mentioned briefly in a conference

paper published in 2001 and then were published in full 2

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 symposium 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 published 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.
No. 10-2144 5

Professor Ho first became aware of the alleged wrongdoing in 2004, when he submitted his project for publication 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 copyright 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 chronologically: (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) Professor Taflove’s presentation in 2007. “[T]he two main infringing 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 thirtythree 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 copyright infringement and state law claims of false designation 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 infringement, conversion, fraud and trade secrets misappropriation. 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 plaintiffs’ analogy that, just as Mickey Mouse is a particular

expression of a mouse, the Model is a creative expression of a scientific phenomenon. In the district court’s
No. 10-2144 7

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 physically had taken anything of his. R.82, Ex. E (Ho Dep.) at 471-72.

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 plaintiffs 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. As for conversion of the 3

intangible ideas claim, the court noted that there was

no evidence that the defendants prevented Professor

Ho and Ms. Huang “from conducting, controlling, accessing, 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 plaintiffs’ 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 misappropriation occurred because the Model was not kept secret. It reasoned that the Model was published by

Professor Ho and Ms. Huang in 2001 and 2002. Moreover,
8 No. 10-2144

Federal Rule of Civil Procedure 60(b) states: “On motion and 4

just terms, the court may relieve a party or its legal representa-

(continued...)

a trade secret is not dependent on whether proper attribution 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 previously 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 summary 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), the 4
No. 10-2144 9

(...continued) 4

tive from a final judgment, order, or proceeding for the following reasons.” The reasons listed in Rule 60(b) include:

(1) mistake, inadvertence, surprise, or excusable

neglect;

(2) newly discovered evidence that, with reasonable 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).

Federal Rule of Civil Procedure 59(e) provides: “A motion to 5

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...)

district court held that the motion was, in substance, a

Rule 59(e) motion to alter or amend its previous summary judgment decision, see Fed. R. Civ. P. 59(e). The 5
10 No. 10-2144

(...continued) 5

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 reconsideration 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 characterization of the motion as a motion under Rule 59(e).

motion maintained that the grant of summary judgment for copyright infringement and conversion was

a manifest error of fact and law.

The district court denied the motion for reconsideration. Regarding the copyright infringement claim, the

district court ruled that the plaintiffs improperly introduced 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, Professor Ho had stated, in his deposition, that no items had
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 appropriate “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 materials.” 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 defendant 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 mathematical 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 describes 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, illustrated, 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 dichotomy.” American Dental Ass’n v. Delta Dental Plans Ass’n,

126 F.3d 977, 981 (7th Cir. 1997). In essence, “the Copyright 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

Professor Ho and Ms. Huang maintain that the infringed work 6

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 misunderstand the presumption: Ownership of a copyright creates

a presumption of validity of the copyright, not that an infringement 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.”).

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] protection 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
No. 10-2144 15

See Nash v. CBS, Inc., 899 F.2d 1537, 1540-41 (7th Cir. 1990) 7

(discussing the fact-expression dichotomy).

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 frustrated 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 therewith 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, we do not believe 7
16 No. 10-2144

that the record in this case presents a particularly difficult 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 represent 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 hypothetical 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 Manufacturing Co., 351 F.2d 546, 548 (7th Cir. 1965), the

plaintiff claimed that the defendant had copied the

“expression and presentation of the computations, formulae and explanations.” We concluded that the “arrangement, 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 FlickReedy centered around the creative arrangement, expression and manner of presentation, and we were not concerned 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 processes and systems, including the works’ overall arrangement 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 plaintiffs. 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 Management 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 judgment papers, the plaintiffs offered no evidence of how

the Model could be expressed through other equations

or figures. Equations and figures are common components of mathematical science used to depict ideas.

Although equations can be rearranged through the laws

of mathematics, the substance of the equation nevertheless 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

In their summary judgment papers and on appeal, the 8

plaintiffs maintained that there are multiple ways of expressing 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.

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 , express ‘facts’

2

and therefore are not copyrightable.”). Here as well,

however, the plaintiffs did not raise adequately this

argument in their summary judgment papers. Professor 8

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 assertion 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 plaintiffs failed to show that the text at issue is one of
20 No. 10-2144

many possible expressions. Based on the nature of the

Model and the plaintiffs’ failure to raise arguments adequately and to provide specific evidence in their summary 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 Copyright 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 expressions in a tangible form. These expressions even originate in tangible works that are copyrighted—namely,

Ms. Huang’s master’s thesis and Professor Ho’s notebooks. 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 Copyright 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

Other circuits have come to a similar conclusion that when 9

rights are asserted in uncopyrighted expressions in a copyrighted work, the Copyright Act still can preempt state law.

(continued...)

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 reproduction, 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. However, 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
No. 10-2144 23

(...continued) 9

Nat’l Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 849 (2d

Cir. 1997) (“Copyrightable material often contains uncopyrightable 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).

In their motion for summary judgment, the defendants

assert that all of the plaintiffs’ state law claims are “alternative 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 plaintiffs 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 defendants’ unauthorized publishing, not possession, of the
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 prohibited 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 plaintiffs have alleged conversion based solely on the defendants’ 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 copyright 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 Professor 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 plaintiffs’ 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 represented materials as his own. Nimmer & Nimmer, supra,

§ 1.01[B][1][e].

Here, the complaint alleges that the defendants knowingly published material taken from the plaintiffs and

that defendants “fraudulently represented” that they
26 No. 10-2144

True “passing off” claims are not preempted by the Copyright 10

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 infringement 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).

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’ Plaintiffs’ works as their own by using [10]

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 defendants’ improper publishing alone, it is preempted
No. 10-2144 27

On appeal, Professor Ho and Ms. Huang allege promissory 11

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. Accordingly, we conclude that the Copyright Act preempts the plaintiffs’ claim of fraud.

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 judgment, they note that they “took steps to keep their works

secret.” R.91 at 13.

Under Illinois law, the definition of a trade secret requires that the information “is sufficiently secret to

derive economic value” and is subject to efforts “to maintain 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
28 No. 10-2144

See Stromback v. New Line Cinema, 384 F.3d 283, 303-04 (6th Cir.

12

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 necessary to survive preemption”).

See also Daboub v. Gibbons, 42 F.3d 285, 289 (5th Cir. 1995) 13

(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]”).

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 Copyright Act. The act of publishing the allegedly copied

12

materials would not itself establish a trade secrets misappropriation 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 conversion and fraud assert the same interests as those under

the Copyright Act: to control the publication of the copyrighted work. Accordingly, the plaintiffs’ claims of

13

conversion and fraud are preempted under the Copyright 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
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 misappropriation 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 economic 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 reasonable under the circumstances to maintain 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’ economic 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 conference 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 contentions 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 expression of the Model.” R.91 at 13-14. Such an expectation of

attribution, however, is not part of a trade secrets misappropriation claim. Once the possessor of information

intentionally releases that information, the possessor

can no longer make a successful trade secrets misappropriation 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 notebook 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’ publications 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 allegedly was copied from Professor Ho’s unpublished notebook, as opposed to that taken from Ms. Huang’s published 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 evidence 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 judgment 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

See supra note 5. 14

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 plaintiffs’ 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) “allows a court 14

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. Furthermore, 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 disagreement 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-
No. 10-2144 33

amined the issue of copyright infringement and conversion based on the motion, but it reached the same conclusion, 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.

AFFIRMED

6-6-11