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Greene v. Ablon

United States Court of Appeals, First Circuit

July 16, 2015

ROSS W. GREENE, Plaintiff, Appellant, Cross-Appellee, THE CENTER FOR COLLABORATIVE PROBLEM SOLVING, INC., Plaintiff,
J. STUART ABLON, Defendant, Appellee, Cross-Appellant, GENERAL HOSPITAL CORPORATION, a/k/a Massachusetts General Hospital, Defendant, Appellee

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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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.

Before Howard, Chief Judge, Lipez and Thompson, Circuit Judges.


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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 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

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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 for Understanding and Parenting Easily Frustrated, Chronically Inflexible Children (" The Explosive Child" ). In 2001, Greene developed two service marks[1] 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 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" in his own name on the supplemental register[3] on July 9, 2002, noting

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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 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]."

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 letters[6] 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

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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 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, 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

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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 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, 104 S.Ct. 2218, 81 L.Ed.2d 42 (1984); Sullivan v. Chief Justice for Admin. & Mgmt. of Trial Ct., 448 Mass. 15, 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, 440 Mass. 10, 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, 858 N.E.2d at 712 (quoting Clickner v. City of Lowell, 422 Mass. 539, 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., 412 Mass. 531, 591 N.E.2d 157, 163 (Mass. 1992) (quoting Cellucci v. Sun Oil Co., 2 Mass.App.Ct. 722, 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, 333 Mass. 695, 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

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own name on the USPTO supplemental register. Drawing all reasonable inferences in 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 ...

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