Greene v. General Hospital Corp.
794 F.3d 133
1st Cir.2015Background
- Dr. Ross W. Greene developed the "Collaborative Problem Solving" (CPS) method, published The Explosive Child (solo work), and later co‑authored Treating Explosive Kids with Dr. J. Stuart Ablon. Greene worked at Massachusetts General Hospital (MGH) for many years and ran affiliated and unaffiliated CPS programs.
- Greene registered certain CPS service marks and sought USPTO registrations; MGH asserted ownership under its Intellectual Property (IP) policy and moved for summary judgment to declare MGH owner of the CPS marks.
- MGH's IP policy (1995; amended 2002) claimed ownership of trademarks created in the course of affiliation or used to identify services associated with MGH; Greene had repeatedly signed appointment forms incorporating hospital policies.
- Greene sued Ablon alleging copyright infringement: Ablon's PowerPoint slides allegedly copied expression from The Explosive Child and Treating Explosive Kids; the district court found Treating Explosive Kids to be a joint work and dismissed infringement claims based on that co‑owned book.
- At trial, a jury found Ablon infringed Greene's copyright in The Explosive Child and awarded $19,000; post‑trial Greene sought an accounting and injunction; the district court denied those remedies. Both parties appealed several rulings.
Issues
| Issue | Plaintiff's Argument (Greene) | Defendant's Argument (MGH / Ablon) | Held |
|---|---|---|---|
| Ownership of CPS marks under MGH IP policy | Greene: employment agreements did not bind him to the IP policy (estoppel, no meeting of minds, unilateral mistake) | MGH: agreements incorporated hospital policies; Greene objectively manifested assent and used marks in association with MGH | Court: MGH owns the marks; Greene's contract defenses fail (summary judgment affirmed) |
| Whether Treating Explosive Kids is a joint work | Greene: Ablon's contributions were minimal and intended to be separate vignettes (not merged) | Ablon: intended co‑authorship and interdependent contributions | Court: Treating Explosive Kids is a joint work; authors intended interdependent, unitary book (summary judgment affirmed) |
| Whether a work can be both joint and derivative | Greene: court precluded evidence because it ruled Treating Explosive Kids could not be both | Ablon: if joint, co‑ownership bars infringement claims based on Treating Explosive Kids | Court: It was legal error to say a work cannot be both joint and derivative, but Greene failed to show prejudice (no offer of proof), so no relief granted |
| Accounting and injunctive relief after verdict | Greene: co‑owner Ablon must account for profits from uses of Treating Explosive Kids and injunction needed to prevent future infringement of The Explosive Child | Ablon: no evidence he personally realized profits tied to the joint work; injunction unwarranted | Court: denied accounting (no proof Ablon earned profits); denied injunction (monetary award adequate; low risk of future infringement) |
Key Cases Cited
- Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991) (defines joint work test: contributions intended to be merged into inseparable or interdependent parts)
- Saenger Org., Inc. v. Nationwide Ins. Licensing Assocs., Inc., 119 F.3d 55 (1st Cir. 1997) (copyright protection attaches to actual creators)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (four‑factor test for permanent injunction)
- Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) (originality standard in copyright requires only a modicum of creativity)
- T‑Peg, Inc. v. Vermont Timber Works, Inc., 459 F.3d 97 (1st Cir. 2006) (ordinary observer test for substantial similarity)
- Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984) (co‑owner must account for profits from licensing/use; co‑owner can infringe on preexisting work owned by co‑author)
- Cambridge Literary Props., Ltd. v. W. Goebel Porzellanfabrik G.m.b.H. & Co. KG., 510 F.3d 77 (1st Cir. 2007) (discusses accounting for profits by a co‑owner)