Greene v. General Hospital Corp.

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. § 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. § 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 § 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 ¶ 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 § 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 § 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 § 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

-23-
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. § 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. § 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 § 6.07[A][1] (2014) ("Nimmer").

Authors who create a joint work co-own the copyright in

that work. 17 U.S.C. § 201(a); see also Saenger Org., Inc. v.

Nationwide Ins. Licensing Assocs., Inc., 119 F.3d 55, 59 (1st Cir.

1997) (citing § 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 § 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. § 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. Büchel, 593 F.3d 38, 64-65 (1st

Cir. 2010) (quoting 1 Nimmer § 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.

§ 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. § 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 § 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 § 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 § 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. § 107.

-41-
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. § 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.

-42-
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. § 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.

-43-
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. § 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

-44-
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.

-45-
 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.

-46-
 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 § 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.

-47-
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).

-48-
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".)

-49-
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

-50-
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

-51-
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))).

-52-
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. § 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

§ 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

-53-
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.

-54-
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.

-55-