A Joint Author Does Not Own Derived Material
Addressing joint and derivative works under the Copyright Act, the U.S. Court of Appeals for the First Circuit found the district court erred in ruling that a single work cannot be both joint and derivative. Greene, et al. v. Ablon, et al., Case Nos. 13-2237, -2294, -2369 (1st Cir., July 16, 2015) (Lipez, J.).
Dr. Ross Greene developed a method for treating children with explosive behaviors; the method is known as the Collaborative Problem Solving (CPS) Approach. Greene practiced CPS through his work at Massachusetts General Hospital (MGH), his unaffiliated private practice, and workshops and publications, including a book he authored in 1998 called The Explosive Child and a book he co-authored with Dr. Stuart Ablon in 2002 called Treating Explosive Kids. In 2009, after Greene had a falling out with MGH and Ablon, and after he was subsequently terminated from MGH, Greene filed suit alleging 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. The district court also limited Greene’s copyright claims by determining that the book he co-authored with Ablon was a joint work and accordingly could not be a derivative work under the Copyright Act. Greene appealed both rulings.
In 1993, when he was still developing CPS, Greene began a sixteen year employment relationship with MGH. Greene’s employment relationship was governed by MGH’s intellectual property policy giving MGH ownership rights to trademarks developed by employees if they “pertain to significant” MGH activities. In 2001 Greene developed the CPS mark to identify his approach. In 2008, when Greene sought to register the CPS marks in his own name, MGH filed oppositions to his applications. The 1st Circuit affirmed the district court’s finding that Greene was bound by MGH’s IP policy and that MGH owned the CPS marks. The court rejected Greene’s contract defenses based on equitable estoppel, failure to reach a meeting of the minds and unilateral mistake.
With respect to the copyright claim, the court found the 2002 book was both a joint work by Greene and Ablon and a derivative work based on Greene’s 1998 book. Under the Copyright Act, a joint work is “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” Authors of a joint work co-own the copyright, sharing “equal undivided interests in the whole work” unless there is an agreement to the contrary. A derivative work is a “work based on one or more preexisting works.” The copyright in a derivative work extends only to the new material in the derivative work and not the preexisting material included in the derivative 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. Accordingly, the court explained that Greene had no greater claim than Ablon to any of the original expression in the 2002 book. Greene did however have a claim against Ablon if he used material derived from Greene’s 1998 book, even if that material was included in the 2002 book.
Practice Note: An author cannot gain an ownership interest in material copyrighted by another simply by using it derivatively in a joint work.