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Full Opinion
United States Court of Appeals
For the First Circuit
Nos. 13-2237, 13-2294, 13-2369
ROSS W. GREENE,
Plaintiff, Appellant, Cross-Appellee,
THE CENTER FOR COLLABORATIVE PROBLEM SOLVING, INC.,
Plaintiff,
v.
J. STUART ABLON,
Defendant, Appellee, Cross-Appellant,
GENERAL HOSPITAL CORPORATION,
a/k/a Massachusetts General Hospital,
Defendant, Appellee.
APPEALS FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Denise J. Casper, U.S. District Judge]
Before
Howard, Chief Judge,
Lipez and Thompson, Circuit Judges.
Mark S. Resnick, with whom The Resnick Law Group, P.C. was on
brief, for appellant.
Denis M. King, with whom Thomas J. Sartory and Goulston &
Storrs PC were on brief, for appellees.
July 16, 2015
LIPEZ, Circuit Judge. Dr. Ross W. Greene ("Greene")
developed a method of treating children with explosive behaviors
known as the Collaborative Problem Solving ("CPS") Approach.
Greene advanced this method through his work at the Massachusetts
General Hospital ("MGH") Department of Psychiatry, his unaffiliated
private practice, and workshops and publications, including a book
he wrote himself called The Explosive Child and a book he co-
authored with Dr. J. Stuart Ablon ("Ablon") called Treating
Explosive Kids. After a falling out with both MGH and Ablon,
Greene brought suit alleging, inter alia, that MGH had infringed
his CPS-related trademarks and that Ablon had infringed his CPS-
related copyrights. MGH counterclaimed for ownership of the marks
and prevailed on summary judgment. Greene appeals that ruling.
The copyright claims present a more complicated scenario.
The district court limited the scope of Greene's copyright claims
by determining that the book he co-authored with Ablon, Treating
Explosive Kids, was a joint work, but not a derivative work, under
the Copyright Act. Greene appeals that ruling, claiming that the
court improperly circumscribed the evidence that he could present
on his copyright infringement claim. Greene's claim that Ablon
created PowerPoint slides that infringed on his solo work, The
Explosive Child, went to trial. After a jury awarded Greene
$19,000 on that claim, Greene moved for an accounting for profits
Ablon derived from their joint work, Treating Explosive Kids, and
-2-
an injunction to prevent Ablon from further infringing on The
Explosive Child -- remedies Greene had sought in his complaint and
which the parties agreed would be submitted to the court after
completion of the jury trial. To contest the $19,000 jury award
against him, Ablon moved for post-verdict relief. The district
court denied the various motions and both parties appeal.
We agree with the district court's capable handling of
this complex case in all respects except one: the court erred in
ruling that a work cannot be both joint and derivative as a matter
of law. However, we conclude that Greene has not shown that the
error improperly circumscribed his copyright claim. We therefore
affirm.
I. The Trademark Dispute
A. Factual Background
1. The CPS Marks
Greene is a psychologist who developed an alternative
approach for the treatment of behaviorally challenging children.
By 1993, with his method still developing, he began a sixteen-year
employment relationship with MGH. Throughout Greene's tenure at
MGH, he continued to develop his method, including through studies
he conducted at MGH. He also continued to disseminate his method
through, among other outlets, unaffiliated workshops and his
unaffiliated private practice. The development of Greene's method
culminated in his 1998 book, The Explosive Child: A New Approach
-3-
for Understanding and Parenting Easily Frustrated, Chronically
Inflexible Children ("The Explosive Child"). In 2001, Greene
developed two service marks1 to identify his approach:
"Collaborative Problem Solving" and "Collaborative Problem Solving
Approach" (collectively, the "CPS Marks" or the "Marks").
Between 2002 and 2003, Greene and his business partner,
Ablon, co-founded three organizations devoted to the CPS
methodology, each making use of the CPS Marks. One of these
organizations, the Collaborative Problem Solving Institute (the
"Institute"), was an MGH-affiliated program within the MGH
Department of Psychiatry. The Institute relied on MGH's non-profit
status to solicit tax deductible donations, which were placed in a
"sundry fund" that MGH administered. In addition, the MGH
Development Office assisted with the Institute's fundraising
efforts. Greene served as the Institute's Director and identified
himself as such in numerous flyers, books, papers, and articles, as
well as on stationery and the Institute website, which were branded
with the MGH logo.
The two other entities that Greene and Ablon founded, the
CPS Clinic (the "Clinic") and the Center for Collaborative Problem
Solving, Inc. (the "Center"), were Massachusetts sub-chapter S
1
"Service marks and trademarks function to identify the
source of services and goods, respectively." Int'l Ass'n of
Machinists & Aerospace Workers, AFL-CIO v. Winship Green Nursing
Ctr., 103 F.3d 196, 199 n.2 (1st Cir. 1996).
-4-
corporations. The Clinic (which later merged with the Center,
retaining the Center's name) shared space at MGH with the Institute
and accepted referrals from it. However, the Clinic and the Center
were private practices not formally affiliated with MGH. To wit,
in an email during the planning stages of the Institute, the MGH
Office of General Counsel acknowledged that Greene's private
practice and the Institute would share space and interact through
referrals, but expressed a need to "mak[e] clear that the private
practice is not associated or affiliated with MGH in any way." At
all times, Greene has been the Center's President, and he and Ablon
have been its sole and equal shareholders.
In 2007, the Institute rebranded itself as Think:Kids and
began using the service marks "Think:Kids" and "Think:Kids
Rethinking Challenging Kids" to identify its programming. Although
the Think:Kids marks were affiliated with MGH, it was Greene and
Ablon's unaffiliated Center that registered these marks with the
U.S. Patent and Trademark Office ("USPTO") on the principal
register.2
Greene has also sought to register the CPS Marks with the
USPTO. Greene registered "Collaborative Problem Solving Approach"
2
In its Final Judgment and Declaration on MGH's summary
judgment motion, the district court ordered the amendment of these
registrations so as to make MGH the registrant instead of the
Center. Greene does not contest that ruling. Therefore, this
dispute only concerns the CPS Marks.
-5-
in his own name on the supplemental register3 on July 9, 2002,
noting February 15, 2001 as the date of first use. In 2008, about
a year before this action began, he filed applications to register
"The Collaborative Problem Solving Approach" and "Collaborative
Problem Solving" on the principal register. When MGH learned that
Greene was seeking to register these marks in his own name, MGH
filed oppositions to his applications.4
2. Greene's Employment Contracts with MGH and the IP
Policy
Greene's tenure at MGH ran from July 1993 to January 2009
and was the sum of ten consecutive appointments, each of which was
six months to two years in length. The process for obtaining each
appointment was the same.
First, Greene would sign and submit an appointment
application in which he agreed to abide by MGH's bylaws and
3
The supplemental register is a separate register for marks
that are not yet eligible for registration on the principal
register. See 15 U.S.C. Ā§ 1091(a). Marks registered on the
supplemental register receive some but not all of the protections
and legal advantages marks on the principal register receive. See
How to Amend from the Principal to the Supplemental Register,
USPTO, http://www.uspto.gov/trademarks/law/suppreg_ornamental.jsp
(last modified Oct. 18, 2012).
4
A person "who believes that he would be damaged by the
registration of a mark upon the principal register" may oppose
another person's application to register that mark by filing an
opposition "stating the grounds therefor" with the USPTO. 15
U.S.C. Ā§ 1063(a).
-6-
policies.5 Greene's first three applications, covering
appointments from July 1, 1993 through December 31, 1996, stated,
"I agree to abide by the Bylaws, rules, regulations and policies of
the Professional Staff and of the Hospital." (Emphasis added.)
Greene's fourth and fifth applications, covering appointments from
January 1, 1997 through November 4, 1999, stated, "I agree to read
and abide by the Bylaws, rules, regulations and policies of the
Professional Staff and of the Hospital." (Emphasis added.)
Finally, Greene's next (and last) five applications, covering
appointments from November 5, 1999 through November 4, 2009,
stated, "I have received and had an opportunity to read the Bylaws
of the [Medical/]Professional Staff. I specifically agree to abide
by all such bylaws and any policies and procedures that are
applicable . . . ." (Emphasis added.)
In 2005 and 2007, as part of his final two applications,
Greene also signed supplemental release forms, which stated, "I
understand that the ownership and disposition of inventions and
other intellectual property that I create during the time when I
have my Professional Staff appointment shall be determined in
accordance with the Intellectual Property Policy at the Hospital,
a copy of which is . . . available at [URL]."
5
Section 2.01 of the bylaws (in force at all relevant times)
required Staff Members to abide by "all applicable . . . policies
of the Hospital."
-7-
After submitting his applications, Greene would receive
a letter informing him that the MGH Board of Trustees had appointed
him to his position for a particular term. All eleven appointment
letters6 stated, "Enclosed is the Professional Staff Appointment
Form which reflects the terms and conditions of the appointment."
All eleven Professional Staff Appointment Forms stated, "In
discharging the duties and exercising the privileges of your
appointment, you are required to . . . [a]bide by the Bylaws,
rules, regulations, and policies of the Professional Staff and the
Hospital." (Emphasis added.) None of these forms state that MGH's
policies might change from time to time.
MGH first enacted its intellectual property ("IP") policy
on April 21, 1995. Consequently, MGH did not have an IP policy in
place when Greene received his first three appointments in June
1993, May 1994, and January 1995. As enacted in 1995, the policy
provided: "Trademarks shall be owned by MGH [1] if they are created
by members in the course of their employment or affiliation with an
Institution or [2] if they are used to identify any product or
service originating with or associated with an Institution."
MGH updated its IP policy on July 19, 2002. In relevant
part, the 2002 revisions added a third scenario in which MGH would
6
In February 1999, Greene was promoted from Clinical
Assistant in Psychology to Assistant in Psychology. Hence, even
though there were only ten applications, Greene actually received
eleven appointment letters.
-8-
acquire ownership of a mark: "Trademarks shall be owned by [MGH] if
they . . . [3] pertain to significant Institutional Activities,"
defined as "any activities that received direct or indirect
financial support from an Institution, including Institutional
salary support or funding from any outside source awarded to or
administered by an Institution."
B. Procedural Background
In June 2009, Greene filed a complaint in federal
district court alleging, inter alia, trademark infringement for
MGH's use of the CPS Marks (Count X) and seeking, inter alia, a
declaratory judgment as to Greene's ownership of the Marks (Count
XII). With its answer, MGH filed a counterclaim seeking a
declaratory judgment that MGH owns the CPS Marks (Count 4). MGH
also sought an order that Greene's registration of "Collaborative
Problem Solving Approach" on the USPTO supplemental register be
revoked and that Greene's 2008 applications to register the CPS
Marks on the principal register be denied. MGH moved for summary
judgment on Counts X and XII of Greene's complaint and on Count 4
of the counterclaim.7 The district court granted MGH's motion,
7
Greene submitted an affidavit with his opposition to the
motion for summary judgment that became the subject of a motion to
strike and a motion for sanctions. The district court granted and
allowed these motions, respectively. As a result, portions of
Greene's affidavit pertaining to an alleged oral agreement between
Greene and MGH were stricken and Greene was precluded from relying
on that agreement in his opposition to MGH's summary judgment
motion. Greene explicitly does not appeal those decisions.
Therefore, we will evaluate the summary judgment motion without
-9-
holding that Greene was subject to the IP policy and that, on two
independent grounds, MGH owned the CPS Marks. First, under the
1995 and 2002 versions of the IP policy, the Marks were used to
identify services associated with MGH, namely, the CPS Institute.
Second, under the 2002 version of the IP policy, the Marks
pertained to significant activities that received financial support
from MGH as well as outside funding that MGH administered. Greene
filed a timely appeal.
C. Contract Defenses
Greene does not dispute that the IP policy was broad
enough to encompass the CPS Marks. The long affiliation of the
Marks with the Institute, and the Institute's financial
relationship with MGH, were enough to bring the Marks within the IP
policy's scope.8 Rather, Greene raises a series of contract
defenses, arguing that the employment agreements binding him to the
IP policy were either voidable or unenforceable because of
equitable estoppel, failure to reach a meeting of the minds, or
regard to the stricken passages.
8
Greene argues that MGH waived any arguments predicated on
the 1995 version of the IP policy; consequently, he argues, the
district court erred when it held that he was subject to the 1995
policy from, at latest, his 1997 appointment renewal. Given
Greene's admission that the 2002 Policy independently encompasses
the Marks, we will assume, without deciding, that only the 2002
version applies. Thus, all references to "the IP policy" are
references to the 2002 version. That assumption makes no
difference to the outcome of this appeal.
-10-
unilateral mistake. We address these issues in turn.9
1. Equitable Estoppel
Greene contends that MGH is equitably estopped from
enforcing the IP policy. Equitable estoppel is appropriate only
where failure to apply estoppel would result in injustice. Heckler
v. Cmty. Health Servs., 467 U.S. 51, 59 (1984); Sullivan v. Chief
Justice for Admin. & Mgmt. of Trial Ct., 858 N.E.2d 699, 711 (Mass.
2006). Under Massachusetts law,10 an estoppel defense to a contract
claim consists of: "(1) a representation intended to induce
reliance on the part of a person to whom the representation is
made; (2) an act or omission by that person in reasonable reliance
on the representation; and (3) detriment as a consequence of the
act or omission." Bongaards v. Millen, 793 N.E.2d 335, 339 (Mass.
2003). "[T]he party asserting the estoppel theory has a heavy
burden to prove that all [three] elements are present." Sullivan,
9
We review the district court's grant of summary judgment de
novo, drawing all reasonable inferences in favor of the non-moving
party. Beacon Mut. Ins. Co. v. OneBeacon Ins. Grp., 376 F.3d 8, 14
(1st Cir. 2004).
10
The parties recognize, through multiple citations, that the
contract claims in this case are governed by Massachusetts law.
Further, as the record does not reveal a contrary choice of law
provision in the bylaws, the IP policy, or Greene's employment
contracts, we conclude that Massachusetts law must apply. See
Restatement (Second) of Conflict of Laws Ā§ 188(3) (1971)
(explaining that, in the absence of a choice of law provision,
"[i]f the place of negotiating the contract and the place of
performance are in the same state, the local law of this state will
usually be applied").
-11-
858 N.E.2d at 712 (quoting Clickner v. City of Lowell, 663 N.E.2d
852, 856 (Mass. 1996)) (internal quotation marks omitted).
Here, Greene's estoppel defense fails because he cannot
establish the first element, "a representation intended to induce
reliance." The representation underlying an estoppel defense need
not be a verbal one: "conduct amounting to a representation" is
sufficient. Boylston Dev. Grp., Inc. v. 22 Boylston St. Corp., 591
N.E.2d 157, 163 (Mass. 1992) (quoting Cellucci v. Sun Oil Co., 320
N.E.2d 919, 923 (Mass. App. Ct. 1974)). Neither does the
representation have to amount to "deceit, bad faith or actual
fraud"; rather, the court looks for "conduct contrary to general
principles of fair dealing." Edwards v. Sullivan & Cogliano Cos.,
Inc., 2002 Mass. App. Div. 43, 43 (2002) (quoting MacKeen v.
Kasinskas, 132 N.E.2d 732, 734 (Mass. 1956)). Greene argues that
MGH represented that he owned the Marks by (1) behaving as if he
owned the Marks, and (2) failing to disclose the IP policy.
a. Behavior Suggesting Greene Owned the Marks
To support his first contention, that MGH behaved as if
he owned the CPS Marks, Greene points to three alleged facts:
(1) MGH was aware of and endorsed his use of the Marks in
unaffiliated enterprises; (2) MGH allowed the Center to share space
with the Institute; and (3) MGH did not object when, in 2002,
Greene registered one of the CPS Marks in his own name on the USPTO
supplemental register. Drawing all reasonable inferences in
-12-
Greene's favor for summary judgment purposes, but mindful that
Greene has the burden of proving his estoppel defense, we cannot
find that any of this conduct amounted to a representation that
Greene owned the CPS Marks.
Greene's participation in activities that took place
outside of MGH, in which he nevertheless made use of the CPS Marks,
was consistent with MGH's ownership of the Marks. Greene always,
to MGH's knowledge, identified himself by his MGH affiliation. By
identifying himself as an MGH affiliate, Greene rendered his uses
harmonious with MGH's ownership of the Marks because Greene's self-
identification with MGH served to identify the Marks with MGH as
well. Also, Greene's own account of conversations he had with MGH
about his external uses suggests that he sought MGH's approval to
use the Marks in outside contexts.11 These interactions are
entirely consistent with MGH's position as owner because, even on
Greene's telling of events, he used the Marks at MGH's pleasure.
Nor does MGH's acquiescence to Greene's use of the Marks
in the names of his private corporations amount to a representation
11
According to Greene, "he informed MGH as to how he was using
the Marks to describe and brand his non-MGH activities and . . .
the hospital representatives agreed to that use." Greene Br. 31
(emphasis added). Greene also writes that "MGH endorsed and
supported [his use of the Marks]." Id. at 30 (emphasis added).
Finally, Greene stated in his affidavit that he discussed his
private use of the Marks with Dr. Rosenbaum during negotiations for
the creation of the Institute, and Dr. Rosenbaum did not object to
Greene's continued private use of the Marks. A. 2329 Ā¶ 32.
-13-
that Greene owned the Marks.12 These private corporations, the
Clinic and the Center, shared physical space with the Institute
but, unlike the Institute, were not formally affiliated with MGH.
Use of the Marks in the names of both Greene's private corporations
and the MGH-affiliated Institute would ordinarily suggest a common
source for those services. In one sense, that was entirely
accurate, for Greene and Ablon were the principals in all three
organizations. Furthermore, even when used in Greene's private
enterprises, the Marks represented the same service, namely, the
methodology Greene developed.
But MGH, as owner of the Marks, would want to avoid
confusion as to the source of CPS services whenever the Marks were
used in a context not affiliated with MGH. See Star Fin. Servs.,
Inc. v. AASTAR Mortg. Corp., 89 F.3d 5, 9 (1st Cir. 1996) ("The
purpose of trademark laws is to prevent the use of the same or
similar marks in a way that confuses the public about the actual
source of the goods or service."). That is precisely what MGH did.
In an email from its Office of General Counsel, MGH required Greene
to make clear to the public that his private corporations were "not
associated or affiliated with MGH in any way." Thus, MGH both
12
For Greene's use of the Marks in his private corporations
to support his argument about MGH's representations, MGH would have
to know that Greene was using the Marks in this manner. The record
supports the inference that MGH was, indeed, aware of this use of
the Marks. See A. 1542 (identifying Greene's private practice as
the "CPS Clinic" in an email from Greene to the MGH Office of
General Counsel).
-14-
allowed Greene to promote the CPS Approach and behaved in a manner
consistent with the notion that the trademark ordinarily -- i.e.,
absent a disclaimer to the contrary -- stood for services
associated with MGH. Such behavior falls far short of representing
that Greene owned the Marks.
Greene's two remaining arguments pertaining to MGH's
behavior are equally unavailing. First, while Greene points to the
fact that his private corporation, the Center, shared space with
the MGH-affiliated Institute, we fail to see how co-tenancy
translates into a representation about ownership of the Marks.
Second, although Greene argues that MGH did not object to his 2002
registration of a CPS service mark in his own name with the USPTO,
Greene does not assert that MGH knew about that registration until
this action began.13 In his reply brief, he tries to shift the
burden to MGH and accuses MGH of failing to cite any evidence in
the record to show that it did not have knowledge of Greene's
registration. But the burden to produce evidence of MGH's
13
Greene also contends that the chief of the MGH Department
of Psychiatry demanded that he "relinquish" the Marks. However,
such a statement does not support Greene's estoppel defense because
the alleged statement was not made until 2008, long after the
Institute was founded and after Greene had signed every one of his
employment agreements. By 2008, Greene had already ceded ownership
of the Marks to MGH through years of affiliating the Marks with the
Institute and using MGH's financial infrastructure. Consequently,
even if we treated this statement as a representation about
Greene's ownership, it would be impossible for Greene to show the
necessary detrimental reliance.
-15-
knowledge, and thereby render MGH's failure to object meaningful,
rests with Greene.
b. Failure to Disclose the IP Policy
To support the notion that MGH's failure to disclose the
IP policy amounted to a representation that Greene owned the Marks,
Greene points to (1) MGH's exclusive knowledge of the IP policy;
(2) the unfairness of enacting a policy mid-appointment that could
result in an employee's unknowing loss of IP rights; and (3) the
lack of a warning in his employment contracts that policies could
change or may have changed since the last appointment, coupled with
the similarity of language across his employment contracts. All of
these arguments are grounded in Greene's assertion that he did not
have actual knowledge of the IP policy until after he had
unwittingly ceded his intellectual property rights to MGH by
allowing the Marks to become affiliated with the Institute.
Extrinsic materials may be incorporated into a contract
by reference as long as "the language used in the contract . . .
clearly communicate[s] that the purpose of the reference is to
incorporate the referenced material into the contract (rather than
merely to acknowledge that the referenced material is relevant to
the contract, e.g., as background law or negotiating history)."
NSTAR Elec. Co. v. Dep't of Pub. Utils., 968 N.E.2d 895, 905 (Mass.
2012) (internal quotation marks omitted). "Unless incorporation by
general reference is explicitly rejected by some statute or
-16-
regulation, incorporation by a clearly stated general reference
will suffice." Chicopee Concrete Serv., Inc. v. Hart Eng'g Co.,
498 N.E.2d 121, 122 (Mass. 1986).
Accordingly, a Massachusetts employer's policies may be
incorporated by reference into its employment contracts. See
Madonna v. Trs. of Univ. of Mass., 593 N.E.2d 1321, 1322 (Mass.
App. Ct. 1992) (holding that an employer bound an employee to its
personnel policy with the following language on the reverse side of
an employment contract: "All employees of the University are
employed pursuant to and subject to the polices and procedures of
the Medical Center and the policies, rules and regulations adopted
by the Board . . . as amended, revised, or repealed from time to
time").
Here, the language in Greene's applications and
appointment forms was sufficiently clear to incorporate the IP
policy by reference. Greene signed and submitted three
applications while the 2002 version of the IP policy was in effect:
in October 2003, August 2005, and October 2007. Each application
stated, "I have received and had an opportunity to read the Bylaws
of the Medical/Professional Staff. I specifically agree to abide
by all such bylaws and any policies and procedures that are
applicable to appointees to the Medical/Professional Staff." Each
application was accepted and Greene received, on each occasion, a
Professional Staff Appointment Form stating, "In discharging the
-17-
duties and exercising the privileges of your appointment, you are
required to . . . [a]bide by the Bylaws, rules, regulations, and
policies of the Professional Staff and the Hospital."
Once it is acknowledged that at least three of Greene's
employment contracts incorporated the IP policy as enacted in 2002,
his arguments quickly fall away because of "[t]he general
rule . . . that, in the absence of fraud, one who signs a written
agreement is bound by its terms whether he reads and understands it
or not." Spritz v. Lishner, 243 N.E.2d 163, 164 (Mass. 1969)
(quoting Cohen v. Santoianni, 112 N.E.2d 267, 271 (Mass. 1953));
see St. Fleur v. WPI Cable Sys./Mutron, 879 N.E.2d 27, 35 (Mass.
2008) (distinguishing Cohen because the plaintiff alleged fraud in
the inducement); Rosenberg v. Merrill Lynch, Pierce, Fenner &
Smith, Inc., 170 F.3d 1, 18, 21 n.17 (1st Cir. 1999) (stating, in
a case in which the plaintiff signed a form incorporating "rules,
constitutions, or by-laws," that "[i]f [the defendant] had provided
the rules to [the plaintiff] but she did not read them, that would
not save her [from having to abide by those rules]").
Greene argues that it is unfair to hold him to a policy
enacted in the middle of one of his appointments. When the 2002
version of the IP policy was enacted, Greene was in the middle of
an appointment that began in November 2001 and ended in November
2003. However, considering Greene's subsequent applications in
October 2003 and August 2005 (the latter of which included explicit
-18-
reference to the IP policy), the fact that the IP policy was
enacted mid-appointment is inconsequential. As the district court
reasoned, MGH's claim to the CPS Marks arose, inter alia, from the
association of the Marks with MGH services, namely, the Institute.
Greene allowed that association to continue even after he signed
subsequent applications agreeing to abide by the IP policy.14
Finally, Greene complains that his employment contracts
did not explicitly warn him that MGH might adopt new policies or
modify existing policies. The argument fails to appreciate that
Greene's tenure at MGH was not one continuous period of employment.
Rather, Greene enjoyed ten separate appointments, each governed by
a separate agreement to be bound by the policies then in effect.
Regardless of the facial similarity between contracts, Greene was
required to read or assume the risk of not reading the policies
incorporated afresh into each agreement.
In sum, since MGH's conduct did not amount to a
representation that Greene owned the Marks, Greene's estoppel
defense fails.
14
This reasoning also applies to Greene's argument that the
policy could not be applied "retroactively" to IP created before
2005. Even if the policy did not apply until 2005, Greene
nevertheless permitted the ongoing association of the Marks with
the Institute.
-19-
2. Meeting of the Minds
Rehearsing similar arguments under a different heading,
Greene argues that a valid contract was not formed at all because
there was no "meeting of the minds." Since he did not know the IP
policy existed, the argument goes, "Greene simply did not agree to
be bound."
Although mutual assent is often misleadingly referred to
as a "meeting of the minds," the formation of a valid contract
under Massachusetts law requires objective, not subjective, intent.
Nortek, Inc. v. Liberty Mut. Ins. Co., 843 N.E.2d 706, 713-14
(Mass. App. Ct. 2006). "A party's intent is deemed to be what a
reasonable man in the position of the other party would conclude
his objective manifestations to mean." CSX Transp. Inc. v. ABC &
D Recycling, Inc., No. 11-30268-FDS, 2013 WL 3070770, at *5 (D.
Mass. June 14, 2013). Assent may be inferred from conduct.
Okerman v. VA Software Corp., 871 N.E.2d 1117, 1125 (Mass. App. Ct.
2007).
Here, notwithstanding Greene's assertions that he was
unaware of the IP policy, he objectively manifested the intent to
be bound by that policy when, without reservation, he signed the
employment agreements that incorporated it by reference. See I & R
Mech., Inc. v. Hazelton Mfg. Co., 817 N.E.2d 799, 802 (Mass. App.
Ct. 2004) ("The manifestation of mutual assent between contracting
parties generally consists of an offer by one and the acceptance of
-20-
it by the other."). Under these circumstances, there can be no
doubt that Greene intended to be bound by his employment agreements
in their totality. Separate evidence of Greene's assent to a
particular provision (the incorporated IP policy) would be
superfluous. Nevertheless, Greene provided precisely that
additional evidence by signing the supplemental forms in 2005 and
2007. These forms, which Greene submitted with his final two
employment applications, gave explicit notice of the IP policy and
provided a URL address where the policy text could be accessed.
Against the weight of such clear manifestations of objective
intent, Greene's meeting of the minds defense cannot succeed.
3. Unilateral Mistake
Finally, Greene argues that, for the same reasons
asserted above, his employment agreements are voidable under the
doctrine of unilateral mistake. The district court held that
Greene waived the unilateral mistake affirmative defense by failing
to plead it in his answer to MGH's counterclaim. We find that the
defense could not succeed even if it were not waived.
Unilateral mistake is a disfavored defense. See, e.g.,
Eck v. Godbout, 831 N.E.2d 296, 303 (Mass. 2005) ("A release may be
rescinded or modified based on a mutual mistake of the parties, but
not on one party's unilateral 'mistake' about how future
contingencies might make the release inadvisable."); see also
Restatement (Second) of Contracts Ā§ 153 cmt. a (1981) ("Courts have
-21-
traditionally been reluctant to allow a party to avoid a contract
on the ground of mistake, even as to a basic assumption, if the
mistake was not shared by the other party."). Nevertheless, a
contract may be avoided under Massachusetts law if the party
asserting unilateral mistake does not bear the risk of the mistake
and either (1) enforcing the agreement would be unconscionable or
(2) the other party had reason to know of the mistake or his fault
caused the mistake. Nissan Autos. of Marlborough, Inc. v. Glick,
816 N.E.2d 161, 166 (Mass. App. Ct. 2004) (citing Restatement
(Second) of Contracts Ā§ 153). "A party bears the risk of a mistake
when . . . he is aware, at the time the contract is made, that he
has only limited knowledge with respect to the facts to which the
mistake relates but treats his limited knowledge as sufficient
. . . ." Restatement (Second) of Contracts Ā§ 154; accord Horney v.
Westfield Gage Co., Inc., 77 Fed. App'x 24, 34 (1st Cir. 2003);
Covich v. Chambers, 397 N.E.2d 1115, 1121 n.13 (Mass. App. Ct.
1979). In part due to the doctrine's origins in equity, courts
have "considerable discretion" in matters of contractual mistake.
O'Rourke v. Jason Inc., 978 F. Supp. 41, 47 (D. Mass. 1997).
Here, the mistake to which Greene refers is his
misunderstanding about whether an IP policy existed and applied to
the Marks. Greene's argument fails because he bore the risk of
that mistake when he signed his employment contracts knowing that
he had incomplete knowledge about the terms of those contracts.
-22-
All of his employment contracts clearly stated that he would be
bound to MGH's "policies," yet he did not seek out or read those
policies. Greene therefore "treat[ed] his limited knowledge as
sufficient" and assumed the risk of mistake. Even if Greene did
not bear the risk, we could not find it unconscionable to enforce
the agreements under the circumstances. Nor could we find that MGH
had reason to know Greene was unfamiliar with the IP policy,
particularly considering that Greene explicitly acknowledged that
policy in the 2005 and 2007 supplemental forms. The unilateral
mistake defense, like Greene's other defenses, must fail.
Since all of Greene's contract-based defenses fail, the
judgment for MGH is affirmed.
II. The Copyright Dispute
A. Factual Background
In 1998, Greene published The Explosive Child, a book
explaining the CPS Approach for lay audiences. The book has been
published in three subsequent editions and is uncontestedly
Greene's solo work. Also in 1998, Greene met Ablon, a trainee in
the MGH psychology internship program. As one of Ablon's
supervisors, Greene became his mentor. Under Greene's mentorship,
Ablon became interested in the CPS Approach and began assisting in
its dissemination through workshops and speaking engagements.
In early 2002, Greene and Ablon wrote a prospectus for a
new book, ultimately called Treating Explosive Kids: The
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Collaborative Problem Solving Approach ("Treating Explosive Kids").
The prospectus acknowledged that the CPS Approach had first been
articulated in Greene's prior work, The Explosive Child. In
contrast to its predecessor, Treating Explosive Kids was to be co-
authored by Greene and Ablon and written for an audience of mental
health professionals. In April 2002, they signed a publishing
contract with Guilford Publications, Inc. ("Guilford"), agreeing to
complete the book by the end of 2002.
Both Greene and Ablon agree that, at the time they signed
the publishing contract, they intended that Ablon would make
substantive contributions to the book. They disagree, however,
about the quantity and quality of Ablon's actual contributions.
According to Ablon, he "submitted most if not all of the treatment
vignettes" -- dialogues that appear on 145 pages of the 226-page
book. Ablon also claims to have taken "the lead in writing Chapter
8, regarding implementation of CPS in therapeutic and restrictive
facilities, which wound up being 25 pages long," to have written
"significant parts of other portions of the book[,] and [to have]
reviewed and made suggestions for many other sections."
Greene tells a different story. According to Greene,
"After significant delay, Dr. Ablon, rather than delivering an
acceptable manuscript, delivered to me an 'attempt' at only one
chapter." Ablon's work was, in Greene's view, "poorly written,
lacked focus, and did not accurately represent the [CPS Approach]."
-24-
Greene claims that, after consulting with the agent who had
represented him and Ablon in their dealings with Guilford, he
discarded "most" of Ablon's draft and wrote what amounted to almost
the entire book himself. However, as Greene explains, "In an
attempt to salvage for him some co-authorship role, we decided that
he (Dr. Ablon) would contribute as original material some treatment
vignettes describing some treatment interactions he had
encountered." Greene calculates that Ablon's contributions
survived on fewer than fifteen pages of the final published text.
Both authors acknowledge that Greene edited the drafts.
Guilford published Treating Explosive Kids in October
2005. The book identifies Greene and Ablon as co-authors and as
co-owners of the copyright. Greene and Ablon divide royalties from
the book equally.
By 2007 or 2008, Greene and Ablon's relationship had
soured, and efforts to improve their relationship through lawyers
and a mediator proved ineffective. Ablon became a full-time
employee at MGH at the end of 2008 and, soon after, was appointed
Director of the Think:Kids program. In that capacity, Ablon has
created written expression, including PowerPoint slides, that
describe and promote the CPS Approach and which form part of the
basis for this action. MGH terminated Greene's employment on
January 15, 2009.
-25-
B. Procedural Background
In his June 2009 complaint and in two subsequent amended
complaints, Greene filed several claims against Ablon. He alleged
that certain of Ablon's PowerPoint slides infringed on Greene's
copyrights in The Explosive Child (Count I) and Treating Explosive
Kids (Count II). Greene also sought an accounting for Ablon's use
of Treating Explosive Kids (Count III), an injunction enjoining
Ablon from continued infringement of The Explosive Child (Count
XI), and a declaration of the intellectual property rights of the
parties (Count XII).
Ablon moved for partial summary judgment. On September
17, 2012, the district court granted the motion in part and denied
it in part. In particular, the district court held that Treating
Explosive Kids was a joint work under the Copyright Act. However,
the court stated that it could not resolve at summary judgment
whether Treating Explosive Kids was also a derivative work because
the record was "sufficiently open-ended to permit a rational
factfinder to conclude either that Treating Explosive Kids is a
derivative work based on The Explosive Child or that Treating
Explosive Kids is not a derivative work."
At a status conference on December 4, 2012, the court
asked counsel for both sides whether, as a legal matter, Treating
Explosive Kids could be a derivative work in light of the court's
earlier ruling that it was a joint work. Greene and Ablon
-26-
submitted simultaneous briefs on the issue nine days later. On
January 9, 2013, at the final pretrial conference, the court again
heard from both parties on the derivative work issue. Noting that
it had gained greater clarity on the issue since the summary
judgment motion, the district court ruled on a motion in limine
that Treating Explosive Kids could not be both joint and derivative
as a matter of law. Therefore, in light of its earlier ruling that
the book was a joint work, the derivative work question would not
go to the jury. The court then dismissed Count II of Greene's
complaint, which alleged that Ablon's slides infringed on Treating
Explosive Kids, because Ablon co-owned that book and could not
infringe on it as a matter of law.
Count I of Greene's complaint -- that Ablon's PowerPoint
slides infringed on Greene's solo work, The Explosive Child -- went
to trial on January 14, 2013.15 Greene contends that "a large
portion" of the evidence he planned to present at trial was
excluded because the court did not allow him to present expressions
from Ablon's slides that were also found in Treating Explosive
Kids.16 Greene ultimately introduced six expressions from Ablon's
15
The court had issued its dissection analysis of The
Explosive Child on December 4, 2012. Greene v. Ablon, 914 F. Supp.
2d 110 (D. Mass. 2012); see Concrete Mach. Co. v. Classic Lawn
Ornaments, Inc., 843 F.2d 600, 608-09 (1st Cir. 1988) (explaining
that the purpose of a dissection analysis is to identify the
elements of a work that are protected by copyright).
16
Greene argues he was prevented from presenting expressions
from Ablon's slides that were the same as or similar to expressions
-27-
slides that did not also appear in Treating Explosive Kids and that
allegedly infringed on The Explosive Child.
Trial lasted eight days. At the close of Greene's case,
Ablon moved for judgment as a matter of law under Federal Rule of
Civil Procedure 50(a) and renewed his motion at the close of his
own case, but the court denied his motions and let the jury decide
the infringement claim.17 The jury awarded Greene $19,000 in
statutory damages.18 Greene then moved for judgment on his remedial
claims, which the parties had agreed would be submitted to the
court after trial: an accounting of profits Ablon earned from his
use of their joint work, Treating Explosive Kids (Count III); an
injunction to prevent Ablon from infringing further on The
Explosive Child (Count XI); and a declaration of the rights of the
parties (Count XII). Meanwhile, Ablon renewed his motion for
judgment as a matter of law, now under Federal Rule of Civil
Procedure 50(b). The district court denied these motions and, on
September 20, 2013, entered final judgment for Greene on Count I of
his complaint and for Ablon on all other counts.
found in Treating Explosive Kids, although in fact the court only
excluded expressions from the slides identical to those found in
Treating Explosive Kids.
17
The motion was granted in regard to claims not relevant
here.
18
Under 17 U.S.C. Ā§ 504(c)(1), a copyright owner may pursue
actual damages or "may elect, at any time before final judgment is
rendered, to recover, instead of actual damages and profits, an
award of statutory damages" between $750 and $30,000.
-28-
Greene appeals (1) the district court's summary judgment
decision that Treating Explosive Kids is a joint work; (2) the
court's ruling that Treating Explosive Kids is not a derivative
work; and (3) the court's denial of his motions for an accounting
and injunctive relief. Ablon appeals the court's denial of his
renewed motion for judgment as a matter of law.
C. Joint Work
The district court held in its summary judgment ruling
that Treating Explosive Kids is a joint work. Under the Copyright
Act, a joint work is "a work prepared by two or more authors with
the intention that their contributions be merged into inseparable
or interdependent parts of a unitary whole." 17 U.S.C. Ā§ 101.
"Inseparable" contributions "have little or no independent meaning
standing alone," as might frequently be the case with collaboration
on a written text like a play or a novel. Childress v. Taylor, 945
F.2d 500, 505 (2d Cir. 1991). "Interdependent" contributions, on
the other hand, "have some meaning standing alone but achieve their
primary significance because of their combined effect, as in the
case of the words and music of a song." Id. For a work to be
"joint," the authors must have intended, "at the time the writing
is done," that their contributions be merged into "an integrated
unit." Id. (emphasis omitted) (quoting H.R. Rep. No. 1476, at 120
(1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5736). It is not
necessary that the authors' contributions be quantitatively or
-29-
qualitatively equal, only that each author's contribution be more
than de minimis. 1 Melville Nimmer & David Nimmer, Nimmer on
Copyright Ā§ 6.07[A][1] (2014) ("Nimmer").
Authors who create a joint work co-own the copyright in
that work. 17 U.S.C. Ā§ 201(a); see also Saenger Org., Inc. v.
Nationwide Ins. Licensing Assocs., Inc., 119 F.3d 55, 59 (1st Cir.
1997) (citing Ā§ 201(a) for the premise that "copyright protection
generally attaches to the person [or persons] who actually
create[ ] a work"). Joint authors share "equal undivided interests
in the whole work -- in other words, each joint author has the
right to use or to license the work as he or she wishes, subject
only to the obligation to account to the other joint author for any
profits that are made." Thomson v. Larson, 147 F.3d 195, 199 (2d
Cir. 1998). Even if it is clear that one co-author has contributed
more to the work than another co-author, they are nevertheless
equal owners of the copyright in the absence of an agreement to the
contrary. 1 Nimmer Ā§ 6.08.
Greene argues that it is a genuine issue of material fact
whether he intended his contributions to merge with Ablon's into a
unitary whole. He concedes that the book, as originally conceived,
would have been such an integrated work, but insists that his
intention changed after seeing Ablon's early efforts. At that
point, Greene asserts, the initial project was aborted and
reignited with different intentions: Ablon's contributions were to
-30-
be limited to a handful of stand-alone vignettes. As noted, Greene
calculates that Ablon's contributions ultimately comprised no more
than fifteen pages of the final 226-page published manuscript.
Even accepting that Ablon contributed a scant fifteen
pages of excisable vignettes, Greene's argument fails because he
confuses the quality and quantity of Ablon's contributions with the
relationship the authors intended those contributions would have to
the rest of the book. We agree with the district court that "there
is no evidence that either Greene or Ablon believed that Treating
Explosive Kids was anything other than a unitary book, and there is
abundant evidence that Ablon's contributions to the book would be
[i.e., proved to be and, more importantly, were intended to be]
interdependent with Greene's contributions." Greene v. Ablon, No.
09-10937-DJC, 2012 WL 4104792, at *11 (D. Mass. Sept. 17, 2012)
(citations omitted). Although Ablon's vignettes and Greene's
surrounding passages may "have some meaning standing alone," the
structure of the book -- vignettes nested in related text --
demonstrates that these contributions were undoubtedly intended to
"achieve their primary significance because of their combined
effect." Childress, 945 F.2d at 505. Furthermore, the prospectus,
the publishing contract,19 the copyright notice, and the book itself
19
Ablon argues that we need not engage in a copyright analysis
to determine if he and Greene are co-owners of the book because the
publishing contract establishes that relationship. While the
contract provides some evidence that Greene and Ablon intended to
co-own the Treating Explosive Kids copyright -- as through the
-31-
all describe Greene and Ablon, without distinction, as co-authors
of a single work. Based on these facts, the only reasonable
conclusion is that Ablon's contributions were always intended to be
interdependent with Greene's. Therefore, the district court
correctly determined at summary judgment that Treating Explosive
Kids is a joint work, meaning that Greene and Ablon jointly own the
copyright in that work.
D. Derivative Work
Although in its summary judgment ruling the district
court held that it was a genuine issue of material fact whether
Treating Explosive Kids is a derivative work, the court modified
its ruling shortly before trial. Accepting Ablon's argument that
the book could not be both a joint work and a derivative work as a
matter of law, and seeing no reason to disturb its earlier decision
that Treating Explosive Kids was a joint work, the court ruled on
publisher's (unkept) promise to register the copyright "in the
author's names [sic]" -- the contract itself only concerns the
relationship between the authors and the publisher, not the
relationship between Greene and Ablon. For example, the contract
details how royalties are to be divided between the publisher on
one hand and the authors on the other, but not how the authors are
to divide royalties. While one may infer from the contract that
Greene and Ablon equally co-own the copyright, the joint work
analysis unequivocally establishes that fact. Furthermore, the
parties contest whether Treating Explosive Kids can be both joint
and derivative as a matter of copyright law. Addressing the joint
work question is a necessary predicate to that discussion. See
infra Section II(D).
-32-
a motion in limine that the book could not be a derivative work as
a matter of law.20
Greene argues that this ruling was erroneous and
improperly circumscribed his case. He asserts that, if the
derivative work question had gone to the jury, he would have sought
to introduce into evidence an additional two dozen expressions
showing that Ablon's PowerPoint slides infringed on expression that
he alone owned in both books. Although Greene is correct that the
district court's ruling was erroneous -- a work can be both joint
and derivative -- he misunderstands the consequences of that error
and has not shown that it affected the trial.
A derivative work is "a work based upon one or more
preexisting works." 17 U.S.C. Ā§ 101. It "consists of a
contribution of original material to a pre-existing work so as to
recast, transform or adapt the pre-existing work." Mass. Museum of
Contemporary Art Found., Inc. v. BĆ¼chel, 593 F.3d 38, 64-65 (1st
Cir. 2010) (quoting 1 Nimmer Ā§ 3.03[A]). Importantly, "[t]he
copyright in a . . . derivative work extends only to the material
contributed by the author of such work, as distinguished from the
preexisting material employed in the work . . . ." 17 U.S.C.
Ā§ 103(b). With respect to that preexisting work, "[a]ny elements
20
Greene objects to the court modifying its summary judgment
ruling on a motion in limine. Because we find the district court's
legal conclusion erroneous in any event, we need not reach this
procedural issue.
-33-
that the author of the derivative work borrowed from the underlying
work . . . remain protected by the copyrights in the underlying
work." Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1112
(1st Cir. 1993).
Greene maintains that, when a derivative work is created
jointly, each co-author owns only the contributions he or she
personally penned. However, nothing about the limited scope of a
derivative work copyright upsets the ownership regime that normally
arises when more than one author contributes to a work. When the
authors of a derivative work are joint authors, they share equally
in the copyright to the derivative work, regardless of who penned
the new material. See 17 U.S.C. Ā§ 201(a). Thus, Greene has no
greater claim than Ablon to any of the original expression in
Treating Explosive Kids, and he cannot claim copyright infringement
on the basis of Ablon's use of that original expression in his
PowerPoint slides.
We do have the fact here that an author of the joint
work, Treating Explosive Kids, is also the author of the relevant
preexisting work, The Explosive Child. However, that coincidence
does not affect the contours of the Treating Explosive Kids
copyright, nor does it upset the joint ownership arrangement
described above. Treating Explosive Kids may be both joint and
derivative, with Greene alone owning the copyright in the
-34-
underlying work -- The Explosive Child -- and co-owning the
copyright in the derivative work with Ablon.21
Hence, Greene might have a viable infringement claim
against Ablon if Ablon created a derivative of Treating Explosive
Kids, such as the slides, that used the non-original material in
Treating Explosive Kids -- i.e., material derived from The
Explosive Child and covered by Greene's copyright in that work.
Consequently, Greene should have been allowed to introduce into
evidence slides with expression drawn verbatim from Treating
Explosive Kids. He could have used that expression to argue to the
jury both that Treating Explosive Kids is a derivative work based
on The Explosive Child and, relatedly, that Ablon drew on
expression from Treating Explosive Kids that the co-owned Treating
Explosive Kids copyright did not encompass. See, e.g., Oddo v.
Ries, 743 F.2d 630, 634 (9th Cir. 1984) (holding that the co-owner
of a derivative work infringes on the other co-owner's preexisting
work when he uses it without permission in a subsequent work,
notwithstanding that the preexisting work was used in the co-owned
21
Professor Nimmer provides another example of how a work may
be both joint and derivative. He posits a screenplay based on a
novel. "[The] screenplay is a derivative work of the novel on
which it is based. Let us imagine that [two writers] work together
to translate the [novel] to the silver screen. Their resulting
screenplay, as between themselves, is a joint work. Nonetheless,
vis-a-vis the novel, their screenplay is a derivative work. One
and the same production thus can occupy both statuses." 1
Nimmer Ā§ 6.05 (emphasis omitted). In that example, the screenplay
writers co-own the screenplay copyright, which does not include
expression from the preexisting novel.
-35-
derivative); see also Danjaq LLC v. Sony Corp., No. CV97-8414-
ER(Mcx), 1998 WL 957053, at *3 (C.D. Cal. Jul. 29, 1998) ("[T]he
owner of the copyright in the original work may sue the author(s)
of a joint-derivative work who make further derivative works which
employ pre-existing material from the original work without the
permission of the owner of the original work."). Instead, the
court only allowed Greene to introduce into evidence slides with
expression that did not appear verbatim in Treating Explosive Kids,
on the theory that only those slides would support an argument that
Ablon had infringed Greene's copyright in The Explosive Child.
On the record before us, however, we are unable to assess
whether the district court's erroneous conclusion harmed Greene in
any way. Greene failed to make an offer of proof of the alleged
two dozen additional expressions that he claims he would have
sought to introduce at trial if the court had allowed the jury to
determine whether Treating Explosive Kids is a derivative work.
See Fed. R. Evid. 103(a)(2) (requiring an offer of proof); Faigin
v. Kelly, 184 F.3d 67, 86 (1st Cir. 1999) ("[I]t is a bedrock rule
of trial practice that, to preserve for appellate review a claim of
error premised on the exclusion of evidence, the aggrieved party
must ensure that the record sufficiently reflects the content of
the proposed evidence." (internal quotation marks omitted)). Only
one expression -- referred to at trial as the "conventional wisdom"
expression -- was excluded with the necessary offer of proof.
-36-
However, the court excluded that expression in part because it was
not subject to copyright protection, and Greene has not argued that
the district court's analysis on that point was erroneous. Despite
numerous opportunities to do so, including his opposition to the
motion in limine, the final pretrial conference, and the trial,
Greene has not identified any of the two dozen expressions he
allegedly would have sought to introduce but for the court's
ruling.22 Since Greene has not developed a record to show that he
has been harmed, we decline to remand for further proceedings.
E. Accounting
Apart from the infringement claim based on Ablon's
unlawful use of expression from The Explosive Child, Greene sought
an accounting from Ablon for Ablon's use of their joint work,
Treating Explosive Kids. According to Greene, Ablon earned profits
from activities that used expression taken from Treating Explosive
Kids and, since they co-owned the copyright to that work, Ablon was
obligated to share the profits with Greene. The parties agreed
that the accounting claim would be submitted to the court instead
of to the jury. After the infringement trial, Greene moved for
judgment on his accounting claim. The court denied the motion
because Greene had not presented any evidence that Ablon had
22
Neither has Greene identified these expressions on appeal.
We are not suggesting, however, that such an offer of proof would
have been timely.
-37-
actually received any profits from his use of their joint work.
Hence, there was nothing for which to account.
A co-owner "must account to other co-owners for any
profits he earns from licensing or use of the copyright." Oddo,
743 F.2d at 633. The duty to account "comes from 'equitable
doctrines relating to unjust enrichment and general principles of
law governing the rights of co-owners.'" Id. (quoting Harrington
v. Mure, 186 F. Supp. 655, 657-58 (S.D.N.Y. 1960)); see Cambridge
Literary Props., Ltd. v. W. Goebel Porzellanfabrik G.m.b.H. & Co.
KG., 510 F.3d 77, 98 (1st Cir. 2007); Goodman v. Lee, 78 F.3d 1007,
1012 (5th Cir. 1996); Ashton-Tate Corp. v. Ross, 916 F.2d 516, 522
(9th Cir. 1990).
As discussed in Section II(C), Treating Explosive Kids is
a joint work. Therefore, Greene and Ablon co-own the copyright to
that work. Greene argues that Ablon owes him an accounting for
having exploited Treating Explosive Kids in two contexts. First,
as director of MGH's Think:Kids enterprise, Ablon allegedly used
expression from Treating Explosive Kids in MGH programs,
advertising, and fundraising efforts, as well as in the treatment
of clients and in the training of clinicians, yielding "large sums
of revenue" for MGH in the form of donations and fees.23 Second,
23
In his motion, Greene did not cite any specific uses of the
copyrighted material to the district court. On appeal, he cites
thirty-seven pages in the record reproducing a Think:Kids slide
presentation and several Think:Kids handouts. He does not,
however, identify which particular passages in these thirty-seven
-38-
Ablon allegedly earned revenue for himself by using material from
Treating Explosive Kids in talks he gave outside of MGH.24
1. MGH Revenue
The district court rejected Greene's first theory
because, as a matter of law, Ablon could not be called to account
for MGH's profits. The court correctly held that "donations and
fees to MGH are not subject to an accounting as to Ablon's
profits." Greene v. Ablon, No. 09-10937-DJC, 2013 WL 4714344, at
*5 (D. Mass. Aug. 28, 2013). As Greene concedes, an accounting can
only be sought from a co-owner, not the co-owner's licensee, see 1
Nimmer Ā§ 6.12[B], and MGH is not a co-owner of the copyright in
this case.
Still, Greene argues, even if Ablon did not himself earn
revenue from allowing MGH to use the copyright (impliedly licensing
the copyright to MGH), MGH's financial gain shows that the
copyright had value, and Ablon must account to him for that value.
pages are allegedly drawn from Treating Explosive Kids, nor whether
these pages encompass some of the same slides disputed at trial.
Nor does Greene explain which passages from Treating Explosive Kids
appear in the Think:Kids materials. Use, of course, must precede
an accounting for use. But since Ablon does not contest that he
used the Treating Explosive Kids materials in the manner Greene
asserts, we will accept that material from Treating Explosive Kids
was used in the materials Greene cites.
24
Below, Greene also argued a third context: that Ablon's
salary at MGH was based in part on the exploitation of Treating
Explosive Kids. The district court declined to speculate on what
proportion of Ablon's salary, if any, was tied to the Treating
Explosive Kids copyright. Greene has not revived that argument on
appeal.
-39-
In this argument, Greene is pressing the depletion theory of
copyright accounting, which supposes that one co-owner's use of the
work necessarily reduces the residual value available for other co-
owners to exploit. See 1 Nimmer Ā§ 6.12[A]. This lost value, the
theory goes, is what justifies the accounting. Id. In effect,
Greene argues that a party's duty to account for profits earned is
really a duty to account for value lost.
We acknowledge the theoretical appeal of the notion that
if one owner permits free use of the copyright, that owner incurs
a debt to his co-owner because the use, paid-for or not, partially
depletes the value of the copyright. However, the duty to account
is for profits, not value. See Cambridge Literary Props., Ltd.,
510 F.3d at 84 (discussing an "accounting for profits by a co-owner
of a copyright"); Goodman, 78 F.3d at 1012 ("It is widely
recognized that '[a] co-owner of a copyright must account to other
co-owners for any profits he earns from the licensing or use of the
copyright . . . .'" (quoting Oddo, 743 F.2d at 633)); Weissmann v.
Freeman, 868 F.2d 1313, 1318 (2d Cir. 1989) ("The only duty joint
owners have with respect to their joint work is to account for
profits from its use."); see also Shapiro, Bernstein & Co. v. Jerry
Vogel Music Co., 221 F.2d 569, 571 (2d Cir. 1955), modified, 223
F.2d 252 (2d Cir. 1955) (holding that the defendant was "entitled
to an accounting . . . of the proceeds received from the
exploitation of the copyright" (emphasis added)); Picture Music,
-40-
Inc. v. Bourne, Inc., 314 F. Supp. 640, 646-47 (S.D.N.Y. 1970)
(referring to a duty to account for "compensation"). Indeed,
Congress itself referred to "profits" as the subject of a co-
owner's duty to account. See H.R. Rep. No. 94-1476, at 121 (1976),
reprinted in 1976 U.S.C.C.A.N. 5659, 5736 (describing co-owners of
a copyright "as tenants in common, with each co[-]owner having an
independent right to use or license the use of a work, subject to
a duty of accounting to the other co[-]owners for any profits").25
Since Ablon can be called to account only for profits earned, not
value lost, the district court correctly held that MGH's alleged
financial gain was irrelevant to Ablon's duty to account.
2. Ablon's Revenue
In his motion for an accounting, Greene referred
generally to the "evidence at trial" to support his contention that
Ablon "engaged in speaking programs outside of MGH for which he was
likely compensated." The district court rejected this argument,
stating, "Greene does not identify the evidence that would tie the
Treating Explosive Kids copyright to compensation that Ablon was
'likely' to have received." Greene, 2013 WL 4714344, at *5. We
agree that the record does not support this claim. Even if Ablon
were compensated for these speaking engagements, Greene has not
25
We note that Congress knew well how to speak of value
instead of profits, as in the fourth fair use factor: "the effect
of the use upon the potential market for or value of the
copyrighted work." 17 U.S.C. Ā§ 107.
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provided evidence that Ablon's compensation would have been tied to
his use of expression from Treating Explosive Kids as opposed to,
for example, the underlying ideas. See 17 U.S.C. Ā§ 102(b) ("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 . . . ."); Golan v.
Holder, 132 S. Ct. 873, 890 (2012) (explaining the "idea/expression
dichotomy" and describing it as one of two "'traditional contours'
of copyright protection" (quoting Eldred v. Ashcroft, 537 U.S. 186,
221 (2003))).26
F. Injunction
Having secured a verdict that Ablon infringed on The
Explosive Child with his PowerPoint slides, Greene sought an
injunction to prevent Ablon from infringing on The Explosive Child
again in the future. Like the accounting claim discussed above,
the request for injunctive relief was submitted to the district
court on a motion after trial. The district court denied the
26
Greene also appeals the district court's decision not to
grant additional limited discovery in aid of judgment, i.e., in aid
of the accounting Greene sought. As the court wrote, "[t]he
parties went through extensive discovery lasting almost one
year . . . . Greene still is not able to point to any evidence
that Ablon has profited from exploiting his copyright in Treating
Explosive Kids." Greene, 2013 WL 4714344, at *5. The court did
"not see how additional discovery would do anything more than
increase the cost of litigation to both sides." Id. We agree.
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motion.27 We review the decision to grant or deny permanent
injunctive relief for abuse of discretion. eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391 (2006).
The Copyright Act authorizes courts to grant injunctive
relief for copyright infringement. 17 U.S.C. Ā§ 502(a). "A
plaintiff seeking a permanent injunction is traditionally required
to satisfy a four-factor test: '(1) that it has suffered an
irreparable injury; (2) that remedies available at law, such as
monetary damages, are inadequate to compensate for that injury;
(3) that, considering the balance of hardships between the
plaintiff and defendant, a remedy in equity is warranted; and
(4) that the public interest would not be disserved by a permanent
injunction.'" CoxCom, Inc. v. Chaffee, 536 F.3d 101, 112 (1st Cir.
2008) (quoting eBay Inc., 547 U.S. at 391). An injunction should
not be granted where "a less drastic remedy" will suffice.
Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139, 165-66 (2010).
Greene argues that the court abused its discretion by
failing to credit the possibility that Ablon would continue to
infringe on The Explosive Child in the future. Greene's prediction
rests on an allegation that Ablon continued to infringe even after
Greene filed his complaint. The district court reasoned that
Ablon's infringing activities could not "reasonably be expected to
27
Greene also sought declaratory relief, which the court also
denied. Greene does not challenge that ruling on appeal.
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continue, where the infringement found by the jury was limited to
a finite set of presentation slides that can easily be changed
. . . and where the benefit to Ablon in using this material is
likely far outweighed by the costs of responding to a future
lawsuit." Greene, 2013 WL 4714344, at *7.
Greene also argues that the court mistakenly determined
that his injury was sufficiently addressed by the jury's damages
award. He specifies that the jury award did not and could not
sufficiently compensate him for the "loss of quality control over
the dissemination of his model nationwide." The district court
reasoned that the jury award was adequate because $19,000 is
situated comfortably in the statutory range of $750 to $30,000,
suggesting the jury did not feel constrained by the statutory cap.
See id. at *7.
We detect no abuse of discretion in the court's reasoning
and will not upset its decision to deny the injunction. To the
extent Greene bases his argument on the loss of quality control
over his method, copyright law does not give the author control
over a method described in a written work; only control over the
written work itself. See 17 U.S.C. Ā§ 102(b) (stating that
copyright protection does not extend to ideas).
G. Cross-Appeal
Ablon challenges the district court's denial of his post-
verdict, Rule 50(b) motion for judgment as a matter of law. We
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review the denial of a Rule 50(b) motion de novo. Quint v. A.E.
Staley Mfg. Co., 172 F.3d 1, 9 (1st Cir. 1999).
At trial, Greene tried to prove that Ablon's PowerPoint
slides infringed on The Explosive Child, a work Greene wrote and
owned alone. Greene presented six expressions from The Explosive
Child ("expressions one through six") and juxtaposed them with
allegedly infringing expressions from Ablon's slides ("slides one
through six"). The jury found that Ablon had indeed infringed on
Greene's copyright, although the special verdict form did not allow
the jury to specify which of the six expressions from The Explosive
Child were infringed.
Ablon attempts to undermine the verdict by showing that
his slides could not have infringed on any of the six expressions
from The Explosive Child. His argument unfolds in three parts.
First, Ablon argues that slides one through four are probatively
similar to a work he co-owns, Treating Explosive Kids, and so those
expressions could not have infringed on The Explosive Child as a
matter of law. Second, he argues that slides two, four, and five
are not probatively similar to, and therefore do not infringe on,
The Explosive Child. Finally, Ablon argues that expressions three,
five, and six from The Explosive Child are not protected by
copyright law. We address each argument in turn.
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1. Similarity to Treating Explosive Kids
Ablon argues that his co-ownership of Treating Explosive
Kids means that certain of the challenged slides should have been
found non-infringing as a matter of law and excluded from evidence
at trial. The court refused to admit evidence of expression from
Ablon's slides that was reproduced verbatim from Treating Explosive
Kids. However, the court allowed Greene to introduce evidence from
the slides that was "similar to" expression found in the joint
work, including slides one through four, and allowed the jury to
decide whether those slides infringed on Greene's solely owned
work, The Explosive Child.
Ablon's argument, in effect, is that he was entitled to
judgment as a matter of law on slides one through four because he
has a right, as co-owner of Treating Explosive Kids, not only to
take verbatim expressions from that book, but also to create
"probatively similar" works.28 In other words, he sees his slides
as derivative works vis-a-vis Treating Explosive Kids and, as co-
owner of that book, he claims a right to create such derivatives.
28
Greene argues that Ablon's use of "probative similarity" is
misplaced, and that "substantial similarity" is the proper metric
in this context. The dispute is immaterial. The difference
between the two terms lies in their respective roles in the
copyright infringement analysis. See T-Peg, Inc. v. Vt. Timber
Works, Inc., 459 F.3d 97, 108, 111 (1st Cir. 2006) (explaining that
"substantial similarity" is used to evaluate "copying," and
"probative similarity" is used to show "actual copying"
indirectly). However, Ablon's argument does not require us to
differentiate between particular stages of the copyright
infringement analysis.
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Ablon is certainly correct that the co-owner of a joint
work has a right to create derivative works, such as PowerPoint
slides, subject to the accounting rights of his co-owner. However,
he misunderstands the nature of derivative works. A derivative
work is simply an infringing work made non-infringing through the
acquisition of permission to use the underlying preexisting
expression. See TMTV, Corp. v. Mass Prods., Inc., 645 F.3d 464,
471 (1st Cir. 2011) (characterizing an infringing work as "an
unauthorized derivative work"); see also 1 Nimmer Ā§ 3.01
(explaining that "a work will be considered a derivative work only
if[, but for permission to use the underlying work,] it would be
considered an infringing work"). When a work derives from multiple
preexisting sources, it is not sufficient for the author to obtain
permission to use expression from one preexisting source but not
the others.
Here, Ablon ignores the possibility that his slides may
be derivative of both Treating Explosive Kids and The Explosive
Child. Although he had a right to make derivative works of the
former, he had no rights in the latter.29 Hence, the fact that
Ablon's slides may have derived from Treating Explosive Kids is not
sufficient to prove, as a matter of law, that the slides did not
29
Even if Treating Explosive Kids is itself a derivative work,
whatever permission Ablon would have had to use expression from The
Explosive Child in the joint-derivative work would not have
extended to further derivative works, like the slides. See, e.g.,
Oddo, 743 F.2d at 633-34.
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infringe on The Explosive Child. Accordingly, the district court
correctly denied judgment as a matter of law with respect to slides
one through four and properly admitted them into evidence.
2. Similarity to The Explosive Child
Ablon also argues that slides two, four, and five were
not sufficiently similar to expression in The Explosive Child for
a reasonable jury to have found infringement.30 In our de novo
review of the district court's decision to deny Ablon's Rule 50(b)
motion, we will not reverse the lower court "unless the evidence,
together with all reasonable inferences in favor of the verdict,
could lead a reasonable person to only one conclusion, namely, that
the moving party was entitled to judgment." Lama v. Borras, 16
F.3d 473, 477 (1st Cir. 1994) (quoting PH Group Ltd. v. Birch, 985
F.2d 649, 653 (1st Cir. 1993)).
In evaluating whether Ablon's slides and the relevant
passages from The Explosive Child were substantially similar, the
jury had to apply the "ordinary observer" test. "Under that test,
two works will be said to be substantially similar if a reasonable,
ordinary observer, upon examination of the two works, would
'conclude that the defendant unlawfully appropriated the
plaintiff's protectable expression.'" T-Peg, Inc. v. Vt. Timber
30
Here, again, Ablon speaks of probative similarity. However,
since Ablon is contesting the jury's ultimate infringement
findings, the proper metric of similarity in this context is
substantial similarity. See T-Peg, Inc., 459 F.3d at 108
(explaining the copyright infringement framework).
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Works, Inc., 459 F.3d 97, 112 (1st Cir. 2006) (quoting Johnson v.
Gordon, 409 F.3d 12, 18 (1st Cir. 2005)).
To be sure, some differences in language exist between
slides two, four, and five and the related passages in The
Explosive Child.31 In each pair of expressions, however, key words
or phrases overlap such that a reasonable jury could have concluded
that the later expression was a minimally revised version of the
earlier work and not an original articulation of a common idea.
Segrets, Inc. v. Gillman Knitwear Co., 207 F.3d 56, 65 (1st Cir.
2000) ("Slight or trivial variations between works will not
31
The slides and passages in question are as follows:
Slide two ("Reward and punishment programs can teach basic
lessons but weren't ever intended to teach complicated skills.")
and this expression from The Explosive Child: "First, notice that
all the categories end with the same word: skills. Pathways can
best be thought of as skills that need to be trained. Second,
reward and punishment programs don't train the child in any of the
skills." (In his brief, Ablon misquotes the slide, replacing
"programs" with "systems".)
Slide four ("Rather, challenging behavior -- including
explosions, implosions and everything else in between -- occurs
when a demand placed upon someone requires skills to handle the
demand in an adaptive manner that person does not fully possess.")
and this expression from The Explosive Child: "An explosive
outburst -- like other forms of maladaptive behavior -- occurs when
the cognitive demands being placed upon a person outstrip that
person's capacity to respond adaptively." (In his brief, Ablon
misquotes the slide, adding "the" before "person".)
Slide five ("The child has shown he needs someone to serve as
his 'tour guide' for navigating problems and regulating emotions.")
and this expression from The Explosive Child: "That is, you're
going to be doing the thinking for your child that he's currently
incapable of thinking on his own; you're going to serve as his tour
guide through frustration." (In his brief, Ablon misquotes The
Explosive Child, omitting "doing the", turning the semicolon into
a period, and changing "serve as his" to "serves as a".)
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preclude a finding of infringement under the ordinary observer
test." (quoting Concrete Mach. Co. v. Classic Lawn Ornaments, Inc.,
843 F.2d 600, 608 (1st Cir. 1988))). Given the equivalence in
language between these portions of the two works, we cannot say
that a reasonable jury was foreclosed from finding that slides two,
four, and five were "substantially similar" to Greene's correlative
expression in The Explosive Child. Hence, the district court did
not err in denying Ablon's motion for judgment as a matter of law
with respect to those slides.
3. Availability of Copyright Protection
In his final argument, Ablon contends that expressions
three, five, and six from The Explosive Child are not subject to
copyright, and therefore the court should not have admitted them
into evidence. We take these expressions in turn, reviewing de
novo the district court's assessments of copyrightability. Soc'y
of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, 51
(1st Cir. 2012).
First, Ablon argues that expression three from The
Explosive Child is not sufficiently original to merit copyright
protection. Greene's book posits that, "[a]s children develop,
they learn that . . . most things in life are 'gray,'" and he
describes certain children as "black and white thinkers stuck in a
gray world." As the district court explained, "[h]ere the idea is
that explosive children suffer from an inflexibility of
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thought . . . . This idea could be expressed in many ways . . . ."
Greene v. Ablon, 914 F. Supp. 2d 110, 119 (D. Mass. 2012).
In arguing that Greene's expression is not sufficiently
original, Ablon isolates the words "gray" and "black and white
thinkers" from the larger expression, and observes that Greene is
far from the first to employ these phrases to contrast ambiguity
and precision. True as that may be, the standard for originality
in copyright is low. See Feist Publ'ns, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 346, 362-63 (1991) (explaining that the
originality requirement demands only "a modicum of creativity").
Importantly, the question here is not whether Greene has a
copyright in those words taken in isolation, but whether their use
in the particular context is protected. See Soc'y of Holy
Transfiguration Monastery, 689 F.3d at 52 n.18 (citing Salinger v.
Random House, Inc., 811 F.2d 90, 98 (2d Cir. 1987), for the
proposition that "although ordinary phrases might not be
copyrightable, their 'use in a sequence of expressive words does
not cause the entire passage to lose protection'"). We agree with
the district court that Greene's use of the black/white/gray
imagery to describe a characteristic of the "explosive child"
satisfies the low threshold of originality required to earn
copyright protection.
Ablon similarly argues that expression five from The
Explosive Child is not original and therefore not subject to
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copyright protection.32 Here, the relevant phrase from Greene's
work is: "you're going to serve as [your child's] tour guide
through frustration." Ablon focuses on the words "tour guide,"
contending that they are the only overlap with his slide, which
reads, "The child has shown he needs someone to serve as his 'tour
guide' for navigating problems and regulating emotions." Greene's
decision to use "tour guide" in this context as a shorthand for a
parent's role in a child's emotional journey through difficult
episodes easily passes the threshold of creativity the law
requires. Again, the protected expression at issue is not, as
Ablon avers, the words "tour guide" alone; rather it is the phrase
in which those words are contained. We agree with the district
court that, considered as a whole, that phrase meets the
originality requirement.
Finally, Ablon concedes that he copied slide six --
"[y]our explanation guides your intervention" -- verbatim from The
Explosive Child, but argues that Greene's expression is not subject
32
Ablon also asserts that expression five is subject to the
merger doctrine. See Yankee Candle Co. v. Bridgewater Candle Co.,
259 F.3d 25, 35-36 (1st Cir. 2001) (explaining that, under the
merger doctrine, copyright protection is not available for
expression when the underlying idea can only be expressed one way).
We need not consider merger: Ablon's argument on this point
consists wholly of a bare assertion that merger applies. That
argument is therefore waived. See Alicea v. Machete Music, 744
F.3d 773, 780 (1st Cir. 2014) ("[I]ssues adverted to in a
perfunctory manner, unaccompanied by some effort at developed
argumentation, are deemed waived." (quoting United States v.
Zannino, 895 F.2d 1, 17 (1st Cir. 1990))).
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to copyright because it is a short phrase. Ablon is correct that,
as a general matter, certain kinds of short phrases are excluded
from copyright protection. The Copyright Office has specified that
"[w]ords and short phrases such as names, titles, and slogans" are
not subject to copyright. 37 C.F.R. Ā§ 202.1(a). However, "much
turns on the specific short phrases at issue, as not all short
phrases will automatically be deemed uncopyrightable." Soc'y of
Holy Transfiguration Monastery, 689 F.3d at 51-52; see 1 Nimmer
Ā§ 2.01[B] ("[E]ven a short phrase may command copyright protection
if it exhibits sufficient creativity.").
As the district court explained, "[a]lthough the phrase
'your explanation guides your intervention' may not seem like a
novel expression, such is not required for copyright protection."
Greene, 914 F. Supp. 2d at 120. Greene uses this short, punchy
statement to summarize a method for handling explosive children.
Indeed, the creativity of the phrase is due in part to its succinct
articulation of a complex concept. We agree with the district
court that, in context, the phrase is substantial and creative
enough to warrant copyright protection. Cf. Hutchins v. Zoll Med.
Corp., 492 F.3d 1377, 1385 (Fed. Cir. 2007) (holding "stay calm,"
"if no pulse, start CPR," and "give two breaths" were each
"fragmentary phrases" not subject to copyright); Lexmark Int'l,
Inc. v. Static Control Components, Inc., 387 F.3d 522, 542 (6th
Cir. 2004) (comparing a short computer program of sufficient
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creativity to other "spare, simple, but creative" expressions, like
the poetry of e.e. cummings); CMM Cable Rep, Inc. v. Ocean Coast
Props., Inc., 97 F.3d 1504, 1520 (1st Cir. 1996) (holding "call in,
clock in, and win" is an unprotectable slogan); Arvelo v. Am. Int'l
Ins. Co., 66 F.3d 306, 306 (1st Cir. 1995) (holding, in an
unpublished opinion, that the name "Retail Plus" is not subject to
copyright).33
III.
For the foregoing reasons, in the trademark dispute, the
district court ruled correctly that none of Greene's defenses to
the enforcement of his employment contracts with MGH succeed. In
the copyright dispute, we agree with the district court that
Treating Explosive Kids is a joint work. Although the district
court erroneously concluded that Treating Explosive Kids cannot be
simultaneously joint and derivative, Greene failed to make an offer
of proof demonstrating that any harm resulted from the court's
33
Ablon argues in the alternative that the copying in slide
six was de minimis. However, "[t]hat the copying involved only a
small portion of the plaintiff's work does not by itself make the
copying permissible. Indeed, even if the similar material is
quantitatively small, if it is qualitatively important, the trier
of fact may properly find substantial similarity. As a result, de
minimis copying is best viewed not as a separate defense to
copyright infringement but rather as a statement regarding the
strength of the plaintiff's proof of substantial similarity."
Situation Mgmt. Sys., Inc. v. ASP. Consulting LLC, 560 F.3d 53, 59
(1st Cir. 2009) (citation omitted) (internal quotation marks
omitted). Here, the originality of the phrase, coupled with
evidence that Ablon copied other portions of The Explosive Child,
as well, are sufficient to overcome the de minimis defense.
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ruling. The district court properly determined that Greene is not
entitled to an accounting or an injunction. Finally, the district
court properly denied Ablon's motion for judgment as a matter of
law under Rule 50(b).
Affirmed. Each party shall bear its own costs.
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