United States: First Circuit Clarifies Rights Of Co-Author Of Joint Derivative Work To Make Further Derivatives

Last Updated: October 13 2015
Article by Jenevieve J. Maerker

In a squabble between two psychologists over rights to books about "explosive" children, the First Circuit weighed in this summer with an opinion holding that a work of authorship under the Copyright Act can be simultaneously both a "joint work" and a "derivative work."  The case is Greene v. Ablon, 794 F.3d 133 (1st Cir. 2015).

The plaintiff, Dr. Ross Greene, pioneered a method for treating children with "explosive" behaviors, known as the Collaborative Problem Solving ("CPS") approach.  Dr. Greene worked for many years at Massachusetts General Hospital, where he conducted research, saw patients, and ran the Collaborative Problem Solving Institute.  Dr. Greene published a book in 1998 titled The Explosive Child: A New Approach for Understanding and Parenting Easily Frustrated, Chronically Inflexible Children.

Dr. Greene's protégé, Dr. Stuart Ablon, worked with Greene to develop the CPS approach and disseminate it via various organizations that the two co-founded.  In 2005, Greene and Ablon published a book they had co-authored titled Treating Explosive Kids, which, unlike Greene's earlier work, was directed not to a lay audience but to mental health professionals.  Although the two had agreed to be joint authors and to collaborate in preparing the new book, Greene alleged that Ablon in fact shirked his duties and contributed very little.

Proceedings in the District Court

MGH terminated Greene's employment in January 2009, shortly after having installed Ablon in his place as director of the CPS Institute (by then rebranded as Think: Kids).  In June 2009, Greene sued Ablon, alleging that certain PowerPoint presentations Ablon had developed infringed Greene's copyright in both his earlier book, The Explosive Child, and their co-authored work, Treating Explosive Kids.  Ablon took the position that Treating Explosive Kids was a joint work, so Ablon as a co-author could not infringe that work. Ablon also argued that Treating Explosive Kids could not be derivative of The Explosive Child because, in creating the joint work, Greene had intended for his contributions – including those drawn from his preexisting solo work – to be merged into a unitary whole.

In ruling on Ablon's motion for partial summary judgment, the District Court held that Treating Explosive Kids was indeed a joint work, and consequently dismissed Greene's infringement claim as to that work. The District Court also accepted Ablon's position on the derivative work question, ruling on a motion in limine that Treating Explosive Kids could not be both joint and derivative as a matter of law.  In other words, the materials in Ablon's PowerPoint presentations that previously appeared in the joint work could not be infringing, because Ablon was a co-author of that work, and this held true even in the case of material that was originally drawn from Greene's preexisting solo work. The judge therefore would not allow Greene to introduce in evidence those portions of the PowerPoint presentations that had appeared in the joint work, regardless of whether they were derived from the solo work.

Is Treating Explosive Kids a Joint Work?

On Greene's appeal, the First Circuit affirmed the District Court's holding that Greene's and Ablon's co-authored book, Treating Explosive Kids, was a "joint work" under the Copyright Act, that 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. § 101.  The parties' intentions in this case created a joint work, and made Greene and Ablon equal owners of the copyright, despite Greene's allegations that Ablon failed to pull his weight.  "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."

Is Treating Explosive Kids a Derivative Work?

The First Circuit disagreed, however, with the District Court's ruling that Treating Explosive Kids could not also be derivative of Greene's solo work, The Explosive Child.  A derivative work is "a work based upon one or more preexisting works."  17 U.S.C. § 101.  The First Circuit explained that "Treating Explosive Kids may be both joint and derivative, with Greene alone owning the copyright in the underlying work – The Explosive Child – and co-owning the copyright in the derivative work with Ablon."

The court did not go so far, however, as to accept Greene's position that "when a derivative work is created jointly, each co-author owns only the contributions he or she personally penned."  Rather, "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."  Id.  In such a situation, the co-owner of a joint derivative work has a right to use, and therefore cannot infringe, the new elements of the derivative work, which he jointly owns.  He does not, however, have a right to use the elements of the joint derivative work that were drawn from his co-author's independently owned underlying work.

This meant that the District Court erred in holding that Treating Explosive Kids could not be both joint and derivative. However, the ultimate ruling was affirmed, because Greene had failed to make an offer of proof as to how the error, and the resulting exclusion of evidence, had harmed his position at trial.  Greene was therefore left with a $19,000 jury award on his claim that limited portions of Ablon's PowerPoint slides (which had not appeared in the joint work) infringed his solo work.

Other Issues

The First Circuit also upheld the District Court's ruling against Greene on related trademark infringement claims, finding that Greene had signed away his rights to the marks COLLABORATIVE PROBLEM SOLVING and COLLABORATIVE PROBLEM SOLVING APPROACH via his employment agreements with MGH.

Today, Ablon is still the director of MGH's Think: Kids program.  Meanwhile, Greene has founded a non-profit called Lives in the Balance to disseminate information about the CPS method, which he now refers to as "Collaborative & Proactive Solutions."  With a federal appellate court ruling in the books to settle their disagreement, hopefully the parties can return to focusing on teaching kids and parents to solve problems collaboratively.

Quick Reference: As a Joint Author of a Derivative Work, What Do I Have a Right to Use in Other Contexts?

  • Material newly created by me for the derivative work, not based on a previous work ­– yes.
  • Material newly created by my co-author for the derivative work, not based on a previous work – yes.
  • Material created by my co-author for his or her pre-existing solo-authored work, and incorporated in the derivative joint work with permission – no!
  • Material newly created by either of us for the derivative work, but which paraphrases or is otherwise closely based on material created by my co-author for his or her pre-existing solo-authored work – no! Even if a passage has been reworked for the derivative joint work, if it is close enough to a passage in the pre-existing work that it would infringe if it were used without permission, then it may not be used in other contexts, since the solo author's permission does not extend any farther than the joint derivative work itself.
  • Ideas and concepts (as distinct from expression) drawn from my co-author's pre-existing solo-authored work (or from anywhere else) – yes!

Of course, in any given case, there is likely to be room for debate regarding whether, as a factual matter, an accused passage is substantially similar to protectable expression from the pre-existing solo-authored work.  To be safe, the joint author of a derivative work who may wish to make future derivative works based on the joint work would be wise to negotiate for permission at the outset with the co-author who is sole owner of the underlying work.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
25 Oct 2017, Webinar, Boston, United States

Foley Hoag will present a 60-minute webinar on Wednesday, October 25 at 12:30 pm EDT, offering guidance for in-house counsel regarding the basics of trademark and design protection in the European Union. Attendees will learn about the opportunities and pitfalls to be on the lookout for when looking to secure, protect, and enforce an IP portfolio overseas.

1 Nov 2017, Webinar, Boston, United States

Please join Foley Hoag on Wednesday, November 1, 2017 for a webinar that covers the details of drafting an appropriate arbitration clause for your company’s commercial contracts.

9 Nov 2017, Conference, Waltham, United States

Please join us on Thursday, November 9 at the Westin Waltham Hotel for our quarterly New England M&A Forum, which brings the latest in market trends and recent legal developments to the New England M&A professionals' community.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.