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

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.

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