Latimer v. Roaring Toyz, Inc.

[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT FILED
________________________ U.S. COURT OF APPEALS
ELEVENTH CIRCUIT
No. 08-16665 APRIL 2, 2010
________________________ JOHN LEY
CLERK
D. C. Docket No. 06-01921-CV-T-30-EAJ

TODD LATIMER,

Plaintiff-Appellant,

versus

ROARING TOYZ, INC.,
a Florida corporation, et al.,

Defendants,

KAWASAKI MOTORS CORP, USA,
a foreign corporation,
HACHETTE FILIPACCHI MEDIA U.S., INC.,
a foreign corporation,

Defendants-Appellees.

________________________

Appeal from the United States District Court
for the Middle District of Florida
_________________________

(April 2, 2010)
Before MARCUS, FAY and ANDERSON, Circuit Judges.

FAY, Circuit Judge:

This appeal arises out of an intellectual property dispute between a

professional photographer and multiple defendants regarding the distribution and

publication of photographs of a customized motorcycle. Todd Latimer sued

Kawasaki Motors Corp., U.S.A. (“Kawasaki”), Hachette Filipacchi Media U.S.,

Inc. (“Hachette”), Roaring Toyz, Inc. (“Roaring Toyz”), and Robert Fisher for

copyright infringement and unfair competition, alleging that defendants copied and

used his protected work without permission or authorization. Defendants maintain

they were permitted to use the photographs and, as unauthorized derivative works,

the photographs fail to qualify for copyright protection. The district court granted

summary judgment to all defendants on the unfair competition claim and to

Kawasaki and Hachette on the copyright infringement claims. The district court

held that (1) Latimer’s unfair competition claim is preempted by the Copyright

Act,1 (2) the photographs are not unauthorized derivative works and thus they

qualify for copyright protection, (3) Latimer granted Kawasaki an implied license

to use the photographs in its press release materials, and (4) Hachette’s subsequent

publication of the photographs was fair use. We affirm in part and reverse in part.

1
This ruling is not challenged on appeal.

2
 I. BACKGROUND

A. Factual Background

We state the facts in the light most favorable to the non-moving party,

plaintiff-appellant Todd Latimer, as required by the law controlling summary

judgment.

Todd Latimer is a professional photographer who specializes in motorcycle

photography. Latimer’s passion for motorcycles and background in glamour and

fashion photography helped him develop a reputation as a respected motorcycle

photographer. Latimer is known for portraying motorcycles in a unique and

artistic style. Latimer’s photographs have appeared on the covers of motorcycle

enthusiast magazines such as Two Wheel Tuner, Super Street Bike, and Cycle

Scene.

In late 2004 or early 2005, Latimer was introduced to Roaring Toyz by his

friend and Roaring Toyz employee, Bruce Casner. Roaring Toyz is a Florida

based company that specializes in customizing sport motorcycles and

manufacturing aftermarket2 parts for the same. Casner was familiar with Latimer’s

work and approached him to photograph aftermarket parts for a Roaring Toyz

2
Aftermarket is defined as “the market for parts and accessories for a manufactured
article (as an automobile) for repair and replacement as distinguished from the use of such parts
as original components.” Webster's Third New International Dictionary 38 (3d ed. 1966).

3
catalog. Several months later, Casner hired Latimer to help with the Roaring Toyz

booth at the West Palm Beach Motorcycle Show. Casner arranged for models to

appear in the booth and Latimer conducted several photo shoots during the show to

generate interest in the Roaring Toyz display. During the show Latimer met

Roaring Toyz president and founder, Robert Fisher.

In late 2005, Fisher retained John Del Cioppo, owner and operator of

Graphics 2, a New Jersey corporation that had recently relocated to Florida, to

manage Roaring Toyz websites and advise him on marketing and public relations

issues. Prior to Del Cioppo’s involvement, Fisher managed Roaring Toyz

marketing efforts with assistance from his employees.

Kawasaki, a prominent motorcycle manufacturer, planned to unveil its

highly anticipated ZX-14 sport motorcycle at Daytona Bike Week in March 2006.

The ZX-14 promised to be the fastest production motorcycle ever built; and as

such, news of its release generated a lot of excitement within the motorcycle

community. While preparing for the introduction of the ZX-14, Kawasaki noted a

trend developing in the marketplace for customized motorcycles. The ZX-14’s

main competition, the Suzuki Hayabusa, was particularly sought after for

customization projects. In addition, many aftermarket parts were readily available

for the Hayabusa, which increased it’s attractiveness to potential buyers. As a

4
result, Kawasaki’s marketing plan for the ZX-14 focused on the bike’s

customization potential and availability of aftermarket parts.

In an effort to further their marketing plan, Kawasaki engaged Roaring Toyz

to customize two ZX-14 motorcycles. Kawasaki’s Director of Product Planning,

Patrick Kelly, discovered Roaring Toyz online and was impressed by their work.

In January 2006, Kawasaki delivered two pre-production ZX-14 motorcycles to

Roaring Toyz. The customized motorcycles were to be delivered to Daytona and

displayed alongside the production model ZX-14 during Bike Week. Decisions

regarding how the customization should be done, as well as what the final product

should look like, were left to Roaring Toyz.

Roaring Toyz customized the mechanical features of motorcycles, leaving

paint and body work to outside contractors. As such, Roaring Toyz commissioned

Ryan Hathaway, an independent painter, to apply custom paint and graphics to the

ZX-14 motorcycles. Hathaway had provided paint services to Roaring Toyz for

five or six years, during which he also produced work for other companies and

individuals. Fisher and Hathaway discussed graphic styles and color schemes but

Hathaway made the final decisions as to the paint design and colors for the ZX-

14s. During January and February 2006, Hathaway worked in his one-man shop

designing the artwork, selecting the paint colors, and painting the bodywork for the

5
ZX-14 motorcycles.

Meanwhile, Latimer was assigned by Two Wheel Tuner magazine to follow

Roaring Toyz customization of the ZX-14 motorcycles. Specifically, Latimer’s

assignment was to provide photographs of the motorcycles at various stages of the

customization process for inclusion with a magazine article. As a result of the

assignment, Latimer was frequently present at the Roaring Toyz shop

photographing the motorcycles. During one of his visits to Roaring Toyz, Latimer

was approached by Fisher to photograph several other customized motorcycles for

use on the Roaring Toyz website. On February 14 and 16, 2006, Latimer

photographed three Yamaha R1s and three Suzuki Hayabusas, as requested by

Fisher.

As Roaring Toyz worked to complete the ZX-14 project in time for Daytona

Bike Week, Kawasaki was planning the ZX-14 World Press Introduction, to be

held in late February 2006 in Las Vegas, Nevada. The ZX-14 World Press

Introduction was an important event for Kawasaki and was carefully orchestrated

to garner positive media exposure for the motorcycle’s release. Kawasaki carefully

selected its press invitees with a focus toward motorcycle enthusiast publications.

One such publication in attendance was Cycle World magazine3, which is owned

3
Cycle World is the largest motorcycle enthusiast magazine with a circulation of over
330,000.

6
by defendant-appellee Hachette.

As the press event approached, Kawasaki realized that in order to effectively

implement its marketing plan, it needed to exhibit the customized ZX-14s to the

media. The customized motorcycles were not scheduled to be completed until

Daytona Bike Week in early March, and as such would not be available for the

ZX-14 World Press Introduction in Las Vegas. Thus, Kawasaki’s only alternative

was to exhibit photographs of the customized motorcycles.

Kawasaki’s public relations firm, Freeman & McCue, contacted Del Cippo

to obtain photographs of the customized motorcycles. When Del Cippo responded

with unsatisfactory images taken by the Roaring Toyz staff, Freeman McCue

pleaded for “usable, reproducible photos” of the motorcycles. On February 23,

2006, Fisher contacted Latimer and explained Kawasaki’s urgent request for

photographs of the customized ZX-14s. Latimer agreed to conduct a photo shoot

that evening to meet Kawasaki’s February 24, 2006 deadline as long as he was

paid for the photographs taken on February 14 and 16, 2006. Latimer claims that

Fisher told him the ZX-14 photographs would be used on a placard to be displayed

beside the ZX-14 motorcycles at Daytona Bike Week. However, Fisher and Del

Cippo insist that they told Latimer the photographs would be used by Kawasaki for

the press release in Las Vegas. Latimer denies being told this by either Fisher or

7
Del Cippo. Latimer also claims that he made it clear to both Fisher and Del Cippo

that the photographs could not be leaked before the publication of his article in

Two Wheel Tuner.

Latimer worked throughout the night of February 23-24 photographing the

customized ZX-14s, as requested by Fisher and Del Cippo. The photographs were

taken at Roaring Toyz facility since there was only one kick stand for the two

motorcycles. Due to the short deadline, Roaring Toyz employees assisted Latimer

by running extension cords and power cables for lights and cameras and setting up

the background and flooring. However, Latimer made all decisions regarding

lighting, appropriate camera equipment and lens, camera settings and use of the

white background, which was consistent with the industry practice he had noted in

studying other advertising photographs.

When the photo session concluded on the morning of February 24, 2006,

Latimer asked to be paid $800.00 for the photographs taken on February 14 and

16, 2006. Fisher gave Latimer a check for $800.00 and in return Latimer gave

Fisher a compact disc containing edited images of the three Yamaha R1 and three

Suzuki Hayabusa motorcycles. Fisher claims that payment for the R1 and

Hayabusa motorcycles was never discussed and that Latimer’s payment request

pertained to that night’s photo session.

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 After arriving home that morning, Latimer began digitally editing the ZX-14

photographs for use on the placard. Later that same morning, Latimer emailed Del

Cioppo a selection of edited images of the customized ZX-14 motorcycles. Each

of the images Latimer delivered to Del Cioppo contained a metadata4 file that

provided the viewer with technical information and copyright notice for the

photograph. Del Cioppo immediately forwarded the images to Kawasaki via

email.

Later that day, Del Cioppo informed Latimer that Kawasaki was impressed

by the ZX-14 photographs and wanted to include five of his images in its

presentation at the press event in Las Vegas, Nevada. Latimer informed Del

Cioppo that Kawasaki could use his images of the ZX-14 motorcycles conditioned

on Kawasaki giving him credit as the photographer. Latimer claims that he

understood Kawasaki’s request to be limited to using the photographs in a screen

presentation. However, in an email to Del Cioppo on February 24, 2006, Latimer

wrote: “Kawasaki will list you guys on the flyer for sure. Please forward my credit

info to them so that they might attach it on the back of the flyer, that would be

cool. Thanks, Todd.”

4
Metadata, commonly described as “data about data,” is defined as “[s]econdary data that
organize, manage, and facilitate the use and understanding of primary data. Black’s Law
Dictionary 1080 (9th ed. 2009).

9
 During the ZX-14 press event, Kawasaki distributed press kits to

approximately thirty members of the media, including a representative of Cycle

World magazine. The press kits contained a selection of digital images on compact

disk, including copies of Latimer’s ZX-14 photographs, with their respective

metadata attached.

Del Cioppo posted Latimer’s photographs of the customized ZX-14

motorcycles on two Roaring Toyz websites5 to promote and advertise the sale of its

merchandise and customization services. Del Cioppo also testified that he spoke to

a publisher at Cycle World about publishing Latimer’s photographs of the

customized ZX-14 motorcycles. According to Del Cioppo, he “called in some

favors and . . . talked to one of the publishers . . . to give him an exclusive, the

opportunity to come in and photograph the ZX-14s at Roaring Toyz. He declined.”

Subsequently, Cycle World published three of the five ZX-14 photographs that

were included in the press kits distributed by Kawasaki in Las Vegas. The

photographs were published in conjunction with a feature article written by Don

Canet that appeared in the June 2006 issue of Cycle World.

On June 2, 2006, the Register of Copyrights granted Latimer’s application

for copyright registration of his photographs of the customized ZX-14 motorcycles,

5
www.roaringtoyz.com and www.zx-14parts.com.

10
under Certificate of Registration No. Vau700-638. Five of these protected works

are at issue in this appeal. Latimer claims he learned that his photographs were

being used without his permission when he read a copy of the June 2006 issue of

Cycle World while in a barber shop. Believing that confronting defendants about

the unauthorized use of his photographs would be tantamount to “professional

suicide,” Latimer delayed taking action until August 2006 when he contacted

Kawasaki and informed them that his photographs were being used without his

permission.

B. Procedural Background

In October 2006, Latimer brought this action against defendants alleging

federal copyright infringement under 17 U.S.C. § 501 and unfair competition under

Florida common law. Latimer specifically alleges that (1) Roaring Toyz used his

protected work without authorization by displaying the photographs on its websites

to promote and advertise the sale of merchandise, (2) Kawasaki used his protected

work without authorization by including the photographs in its press kits that were

distributed to the media, and (3) Hachette used his protected work without

authorization by publishing the photographs in the June 2006 issue of Cycle World

magazine. Latimer seeks a permanent injunction preventing defendants from

infringing his copyright, an order directing defendants to tender all infringing

11
copies of his protected work or destroy the protected work under a writ of

destruction pursuant to 17 U.S.C. § 503, and actual damages suffered as a result of

the infringement and/or disgorgement of defendants’ profits not taken into account

in computing actual damages.

In December 2007, defendants moved for summary judgment arguing that

Latimer’s photographs are “unauthorized derivative works based upon protectable

preexisting works created and owned by Ryan Hathaway,” and as such do not

qualify for copyright protection. The district court granted summary judgment to

all defendants on Latimer’s unfair competition claim holding that it is preempted

by the Copyright Act. The district court also granted summary judgment to

Kawasaki and Hachette on Latimer’s copyright infringement claims holding that

the photographs are not derivative works but that Latimer granted Kawasaki an

implied license to use the photographs in its press release materials, and Hachette’s

subsequent publication of the photographs was fair use.

Latimer moved for reconsideration arguing that he had no notice the issues

of implied license or fair use were to be considered on summary judgment.

Latimer stated that the court’s order “goes beyond the matters briefed by the

parties and sua sponte grants Kawasaki summary judgment on the theory of

implied license and Hachette summary judgment based upon fair use.” Latimer

12
argued that the district court’s power to grant summary judgment sua sponte is

tempered by Rule 56's requirement that the nonmoving party be given an

opportunity to oppose the motion. The district court disagreed with Latimer’s

assertion that he did not have sufficient notice of the issues but nevertheless

granted his motion for reconsideration giving him the opportunity to brief the

issues. On reconsideration, the district court again granted summary judgment to

Kawasaki and Hachette repeating its prior holdings. The district court certified the

case for immediate appeal under Rule 54(b)6 and this appeal followed.

The district court also held that there are genuine issues of material fact,

which preclude granting summary judgment to Roaring Toyz and Robert Fisher on

Latimer’s copyright infringement claim. That ruling is not before us.

II. STANDARD OF REVIEW

We review the district court's grant of summary judgment de novo,

considering all the evidence and factual inferences in the light most favorable to

the non-moving party. See Wilchombe v. TeeVee Toons, Inc., 555 F.3d 949, 956

(11th Cir. 2009). Under Fed. R. Civ. P. 56(c), a motion for summary judgment is

properly granted when “the pleadings, depositions, answers to interrogatories, and

6
“When an action presents more than one claim for relief — whether as a claim,
counterclaim, crossclaim, or third-party claim — or when multiple parties are involved, the court
may direct entry of a final judgment as to one or more, but fewer than all, claims or parties only
if the court expressly determines that there is no just reason for delay.” Fed. R. Civ. P. 54(b).

13
admissions on file, together with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving party is entitled to a

judgment as a matter of law.” Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.

Ct. 2548, 2552 (1986).

Courts have historically viewed summary judgment as inappropriate in the

copyright infringement context because of the inherently subjective nature of the

inquiry. See Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218, 1223

(11th Cir. 2008). Wrongful appropriation is typically shown by proving a

“substantial similarity” of copyrightable expression. See Nichols v. Universal

Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), cert. denied, 282 U.S. 902, 51 S.

Ct. 216 (1931). Because substantial similarity is an extremely close question of

fact, see Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946), summary judgment

has traditionally been frowned upon in copyright litigation, see id. at 474.

However, in cases such as this, where substantial similarity is undisputed by the

parties, non-infringement may be determined as a matter of law on a motion for

summary judgment. Cf. Herzog v. Castle Rock Entm't, 193 F.3d 1241, 1247 (11th

Cir. 1999) (recognizing that summary judgment is appropriate where “the

similarity between two works concerns only non-copyrightable elements of the

plaintiff's work, or because no reasonable jury, properly instructed, could find that

14
the two works are substantially similar”).

III. DISCUSSION

A. Copyright Infringement

To establish a prima facie case of copyright infringement, “two elements

must be proven: (1) ownership of a valid copyright, and (2) copying of constituent

elements of the work that are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,

Inc., 499 U.S. 340, 361, 111 S. Ct. 1282, 1296 (1991). “To ‘satisfy Feist 's first

prong, a plaintiff must prove that the work . . . is original and that the plaintiff

complied with applicable statutory formalities.’” Bateman v. Mnemonics, Inc., 79

F.3d 1532, 1541 (11th Cir. 1996) (quoting Lotus Dev. Corp. v. Borland Int'l, Inc.,

49 F.3d 807, 813 (1st Cir. 1995), aff'd by, 516 U.S. 233, 116 S. Ct. 804 (1996)). In

a judicial proceeding, “certificate of a registration made before or within five years

after first publication of the work shall constitute prima facie evidence of the

validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. §

410(c). Once the plaintiff produces a certificate of registration, the burden shifts to

the defendant to establish that “the work in which copyright is claimed is

unprotectable (for lack of originality).” Bateman, 79 F.3d at 1541.

In the instant case, Latimer brought claims against defendant-appellees,

Kawasaki and Hachette, pursuant to 17 U.S.C. § 501, alleging that they infringed

15
his copyright in the ZX-14 photographs. Latimer produced a certificate of

copyright registration granted June 2006, less than four months after the

photographs were initially published. Thus, Latimer benefits from a rebuttable

presumption that his copyright is valid.

To satisfy Feist’s second prong, a plaintiff must establish, as a factual

matter, that the alleged infringer actually copied plaintiff’s copyrighted material.

See id. “Factual proof of copying, however, is only an element in satisfying the

second prong of Feist.” Id. “[T]he plaintiff must also respond to any proof

advanced by the defendant that the portion of the work actually taken does not

satisfy the constitutional requirement of originality as set forth in Article I, § 8, cl.

8.” Id. at 1542; see also Feist, 499 U.S. at 345-46, 111 S. Ct. at 1287-88 (noting

that “[t]he sine qua non of copyright is originality,” as well as emphasizing that it

is a “constitutional requirement”). If a plaintiff survives a challenge to the

originality requirement, they must also prove that “the copying of copyrighted

material was so extensive that it rendered the offending and copyrighted works

substantially similar.” Lotus, 49 F.3d at 813.

In the instant case, actual copying of Latimer’s photographs is undisputed.

Defendant-appellees distributed and published digital copies, which were

indistinguishable from Latimer’s original photographs. As such, substantial

16
similarity is not at issue. Defendant-appellees do not repeat their previous claims

that Latimer’s work “lacks sufficient originality, and is incapable of constituting

copyrightable subject matter.” Instead, on this appeal, defendant-appellees

challenge Latimer’s copyright by arguing that the photographs are “unauthorized

derivative works based upon protectable preexisting works created and owned by

Ryan Hathaway, and for which uses Latimer has not requested nor received a

license.”

B. Derivative Works

The subject matter of federal copyright includes derivative works, but the

copyright in such works “extends only to the material contributed by the author,”

and does not affect any copyright protection in the preexisting material. 17 U.S.C.

§ 103(b). Under 17 U.S.C. § 101, “a derivative work must incorporate a

substantial element of a preexisting work of authorship and recast, transform, or

adapt those elements.” SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d

301, 305 (S.D.N.Y., 2000). Furthermore, “protection for a work employing

preexisting material in which copyright subsists does not extend to any part of the

work in which such material has been used unlawfully.” 17 U.S.C. § 103(a). It is

undisputed that the artwork on the customized ZX-14 motorcycles is the original,

creative expression of Ryan Hathaway, and as such entitled to copyright

17
protection. The fact that Hathaway’s artwork appears on useful articles does not

diminish his copyright protection. See 17 U.S.C. § 113(a). Thus, Latimer’s

photographs do not qualify for copyright protection if they are derivative works

made without Ryan Hathaway’s authorization.

“Federal courts have historically applied a generous standard of originality

in evaluating photographic works for copyright protection.” Schrock v. Learning

Curve Int’l, Inc., 586 F.3d 513, 519 (7th Cir. 2009). Except for a limited class of

photographs that can be characterized as “slavish copies,” courts have recognized

that most photographs contain at least some originality in their rendition of the

subject-matter. Id.; see also Rogers v. Koons, 960 F.2d 301, 307 (2nd Cir. 1992)

(“Elements of originality in a photograph may include posing the subjects, lighting,

angle, selection of film and camera, evoking the desired expression, and almost

any other variant involved.”). Yet, courts have been reluctant to find that

photographs of a preexisting work are derivative works. Cf. Schrock, 586 F.3d at

518 (“we will assume without deciding that each of Schrock’s photos qualifies as a

derivative work within the meaning of the Copyright Act”); Ty, Inc. v. Publ’ns Int’l

Ltd., 292 F.3d 512, 519 (7th Cir. 2002) (stating that “photographs of Beanie Babies

are derivative works from the copyrighted Beanie Babies themselves” but basing

that statement entirely on the parties’ concession that the photographs were

18
derivative works); Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000)

(sidestepping the derivative works question by holding that a vodka bottle, a useful

article not subject to copyright protection, does not qualify as a preexisting work

within the meaning of the Copyright Act). At least one influential district court7

has held that photographs of preexisting works are not always derivative works.

See SHL Imaging, 117 F. Supp. 2d at 305 (a photograph of a sculpture “merely

depicts that sculpture; it does not recast, transform, or adapt” the authorship found

in the preexisting work).

Relying exclusively on SHL Imaging, the district court concluded that

“Latimer has not ‘recast, transform[ed], or adopt[ed]’ [sic] Hathaway’s artwork,”

thus the photographs were not derivative works. We tend to agree with defendant-

appellees that this apparent incongruity “tears a gaping hole in copyright protection

that runs counter to every other section of the Copyright Act’s clear intent to

protect original works of authorship against misappropriation.” If a photograph,

which satisfies the originality requirement for copyright protection, does not recast,

transform, or adapt an underlying work, then all original works are vulnerable to

misappropriation by the photographer’s lens. However, defendant-appellees offer

7
The United States District Court for the Southern District of New York has developed
substantial expertise in copyright law as a result of the large number of copyright cases litigated
in that district each year.

19
no precedential support for their assertion that photographs of preexisting works

are derivative works.

Further weakening defendant-appellees argument is the fact that the ZX-14

motorcycles were the subject matter and primary focus of Latimer’s photographs.

Latimer’s photographs can best be described as being “based upon” the ZX-14

motorcycles, useful articles not subject to copyright protection. The fact that

Hathaway’s artwork appears in the photographs is merely incidental. However, we

need not resolve the derivative work question if the photographs were made with

Hathaway’s authorization.

Even if the photographs are derivative works, they must also be

unauthorized for defendant-appellee’s argument to succeed. As noted previously,

the copyright in a derivative work is defeated only when the underlying work has

been misappropriated. Whether the copyright owner of an original work of

authorship has granted a license to create a derivative work is a threshold question

that must be answered before turning to the more difficult question of whether the

derivative work qualifies as such. Thus, we need not resolve the derivative works

question if the photographs were made with Hathaway’s authorization.

C. Implied License

The Copyright Act requires a writing for all exclusive transfers of copyright.

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See 17 U.S.C. § 204(a). However, non-exclusive licenses are exempt from this

writing requirement, see 17 U.S.C. § 101, and “may be granted orally, or may even

be implied from conduct,” Jarrod Maxwell, Inc. v. Veeck, 110 F.3d 749, 752 (11th

Cir. 1997). An implied license is created when one party (1) creates a work at

another person’s request; (2) delivers the work to that person; and (3) intends that

the person copy and distribute the work. See id. Because an implied license is an

affirmative defense to a claim of copyright infringement, “the alleged infringers

have the burden of establishing an implied license.” Atkins v. Fischer, 331 F.3d

988, 992 (D.C. Cir. 2003).

Implied licenses may be limited and a defendant who exceeds the scope of

an implied license commits copyright infringement. See id. Courts focus on

objective evidence revealing the intent of the parties to determine if an implied

license exists, and this inquiry also reveals the scope of that license. See

Wilchombe v. Teevee Toons, Inc., 555 F.3d 949, 956 (11th Cir. 2009); Gracen v.

Bradford Exchange, 698 F.2d 300, 303 (7th Cir. 1983) (the scope of an implied

license may be proven through parol evidence). In Asset Marketing Systems, Inc.

v. Ganon, the Ninth Circuit held that a copyright owner must express the intent to

restrict the scope of a license when they deliver the copyright work. 542 F.3d 748,

756 (9th Cir. 2008). Thus, an implied license will be limited to a specific use only

21
if that limitation is expressly conveyed when the work is delivered.

1. Did Hathaway Grant an Implied License?

Hathaway never executed a document granting an exclusive license in his

original artwork. Thus, the photographs are unauthorized unless Hathaway granted

a non-exclusive license, either orally or through conduct. Because defendant-

appellees allege that Latimer’s photographs infringe on Hathaway’s original work,

Latimer has the burden of establishing an implied license.

Hathaway’s conduct satisfies all three prongs of the implied license test.

Kawasaki requested that Roaring Toyz customize the ZX-14 motorcycles, and

Roaring Toyz in turn asked Hathaway to apply custom paint and graphics to the

motorcycles. Hathaway thus created the original artwork at Kawasaki’s request.

Hathaway knew the customized motorcycles, which sported his custom paint work,

were to be used by Kawasaki to promote their new ZX-14 motorcycle. Thus, when

Hathaway delivered the painted bodywork to Roaring Toyz, he constructively

delivered the artwork to Kawasaki. Hathaway knew the customized motorcycles

would be publicly displayed at Daytona Bike Week and photographed by the

media. Hathaway also knew that both Kawasaki and Roaring Toyz sought as much

media exposure as possible for the ZX-14 customization project. Thus, it is

reasonable to infer that Hathaway intended that his artwork be photographed and

22
distributed by Kawasaki, Roaring Toyz, and the media. At a minimum, Hathaway

granted Kawasaki and Roaring Toyz an implied license to copy and distribute his

original work.

2. Did Latimer Exceed the Scope of the License?

While it is clear that Hathaway granted Kawasaki and Roaring Toyz an

implied license, the question remains whether this implied license extends to

Latimer’s use of Hathaway’s artwork. Latimer argues that his use of Hathaway’s

work was merely incidental but nevertheless fell within the scope of Hathaway’s

implied license. Hathaway knew that Kawasaki and Roaring Toyz intended to

promote the customized motorcycles as widely as possible and did not expressly

restrict the scope of the license when he delivered the work. Thus, Hathaway’s

implied license at least encompassed uses that promoted the ZX-14 motorcycle.

Latimer’s photographs were such a use. Roaring Toyz asked Latimer to

photograph the ZX-14 motorcycles, which sported Hathaway’s artwork, in

response to Kawasaki’s request for high quality promotional images. Roaring

Toyz provided Latimer with access to the motorcycles and assisted his efforts in

producing the images. As such, Latimer’s use of Hathaway’s artwork fell within

the scope of what Hathaway intended when he granted the implied license. Thus,

Latimer’s photographs are not infringing works and qualify for copyright

23
protection.

3. Did Latimer Grant Kawasaki an Implied License?

Defendant-appellees claim that, even if Latimer’s photographs enjoy

copyright protection, they did not commit copyright infringement because Latimer

granted them a non-exclusive implied license to use his work. The district court

agreed and granted summary judgment to Kawasaki on this issue. We also agree

that Latimer granted Kawasaki an implied license to use his photographs but find

that Kawasaki’s use might have exceeded the scope of that license.

Like Hathaway, Latimer never executed a document granting an exclusive

license in his work and Latimer’s oral representations regarding the use of his

photographs are disputed by the parties. However, Latimer’s conduct satisfies all

three prongs of the implied license test. Kawasaki requested that Roaring Toyz

provide it with photographs of the customized ZX-14s, and Roaring Toyz in turn

asked Latimer to create those photographs. Latimer thus created the photos at

Kawasaki’s request. Latimer’s deposition testimony indicates that he knew

Roaring Toyz would send the photographs to Kawasaki to create the placard.

Thus, when Latimer delivered the photographs to Del Cioppo, he constructively

delivered them to Kawasaki. In addition, Latimer also testified that he consented

to Kawasaki’s request to use the photographs in a “slide show or PowerPoint

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presentation or whatever is flashed up on a screen.” Thus, Latimer granted

Kawasaki an implied license to use his photographs. Latimer created the

photographs at Kawasaki’s request, delivered the photographs to Kawasaki, and

intended that Kawasaki use the photographs on a placard and in a screen

presentation.

Latimer contradicts some of his deposition testimony described above in an

affidavit submitted after the district court vacated its first summary judgment

order. Defendant-appellees argue that this affidavit should be dismissed as a sham

because it contradicts prior sworn testimony.

A court may determine that an affidavit is a sham when it contradicts

previous deposition testimony and the party submitting the affidavit does not give

any valid explanation for the contradiction. See Van T. Junkins & Assocs., Inc. v.

U.S. Indus., Inc., 736 F.2d 656 (11th Cir. 1984). However, “[t]his rule is applied

sparingly because of the harsh effect it may have on a party’s case.” Allen v. Bd. of

Pub. Educ. for Bibb County, 495 F.3d 1306, 1316 (11th Cir. 2007). As such,

courts must “find some inherent inconsistency between an affidavit and a

deposition before disregarding the affidavit.” Id.

In his affidavit, Latimer states: “I did not know that Del Cioppo or Fisher

forwarded the photographs to Kawasaki until Fisher or Del Cioppo told me that

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Kawasaki was impressed with my photographs and wanted to use them in some

type of slide show or PowerPoint presentation where the photographs would be

flashed upon a screen.” The affidavit contradicts both Latimer’s April 4 deposition

testimony that he knew and intended that Roaring Toyz would forward his

photographs to Kawasaki, and his September 27 deposition testimony that he knew

when he sent the photos that Kawasaki “might” use them. Given that there is an

inherent inconsistency between the affidavit and the two previous depositions, and

Latimer has failed to provide an explanation for the contradiction, the affidavit

may be dismissed as a sham.

4. Did Kawasaki Exceed the Scope of its License?

It is clear from the record that Latimer gave Kawasaki an implied license to

use his photographs. The question remaining is whether Kawasaki exceeded the

scope of that license by including Latimer’s photographs in its press kit. In

reaching the conclusion that Kawasaki has not exceeded the scope of the implied

license, the district court relied on an email sent by Latimer to Roaring Toyz. In

the email, Latimer stated: “I know that Kawasaki will list you guys on the flyer for

sure. Please forward my credit info to them so that they might attach it to the back

of the flyer, that would be cool.” The district court asserts, without explanation,

that this email “confirms that [Latimer] did not limit Kawasaki’s use to ‘placards’

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or a computer generated presentation flashed on the screen.” The district court

obviously understood the term “flyer” to mean “a handbill or circular for mass

distribution.” Webster's Third New International Dictionary 870 (3d ed. 1966).

However, Latimer claims that he used the term “flyer” to refer to the placard to be

displayed at Bike Week, and not to Kawasaki’s press kit. When asked about the

use of the word “flyer,” Latimer testified that it was “[j]ust a poor choice of words .

. . because it was a display, flyer, poster, placard. I think they all run [sic] about

the same thing.”

On summary judgment, Latimer’s evidence must be taken at face value, and

all justifiable inferences are to be drawn in his favor. Neither we nor the district

court are to undertake credibility determinations or weigh the evidence. Although

it may be a stretch, a reasonable person could believe that Latimer meant “placard”

when he typed “flyer.” Consequently, the district court’s reasoning in this regard

is insufficient to sustain summary judgment on this issue. We may, nevertheless,

affirm the district court’s judgment if alternative grounds exist for finding that

Kawasaki did not exceed the scope of the implied license.

Kawasaki asserts that Latimer did not expressly communicate to Kawasaki

any restrictions on the use of the photographs. However, Latimer contends that all

of his communications with Kawasaki went through Roaring Toyz and that he

27
granted Kawasaki permission to use the photographs for a specific purpose-a

media display at Bike Week. Thus, the question here is whether Latimer delivered

a warning adequate to put Kawasaki on notice that certain uses of Latimer’s photos

would constitute copyright infringement.

Kawasaki relies on Asset Marketing Systems, as support for its argument that

Latimer was required to expressly communicate the restriction directly to

Kawasaki. 542 F.3d at 748. However, in Asset Marketing Systems, the parties

were in direct communication with one another and the copyright holder did not

attempt to limit the scope until after he had delivered the copyrighted work to the

defendant. Id. at 757.

Latimer insists that he limited the scope of the license before delivering the

photographs to Kawasaki. Latimer testified that he did so by expressing the

limitations to Roaring Toyz, who acted as an intermediary between Latimer and

Kawasaki. Latimer stated in his April 4 deposition that he made it clear to Roaring

Toyz that the photos were not to be “leaked,” i.e. published or distributed in any

way other than on a placard. In his September 25 deposition, Latimer reiterated

this point, claiming that he told Fisher and Del Cioppo, “These can never be in

print.” In addition, Latimer testified that he marked the photographs with metadata

containing his contact information and “all rights reserved.” Based on his

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communications with Roaring Toyz and the copyright notice contained in the

photograph’s metadata, Latimer claims that he believed it was unnecessary to

reiterate the limitations on the license when he emailed the photographs.

Latimer’s deposition testimony raises genuine issues of material fact

regarding the scope of Kawasaki’s license. Even if Latimer agreed that Kawasaki

could distribute his photographs to the media in a printed flyer, the distribution of

the photographs in digital format on compact disks could be found to have

exceeded the scope of the license. Furthermore, Kawasaki’s distribution of

Latimer’s photographs in digital format may have enabled Hachette and others to

infringe Latimer’s copyright. Finding these genuine issues of material facts, that

must be resolved by a jury, we reverse the district court’s grant of summary

judgment to Kawasaki.

D. Fair Use

“[W]hile there may be evidence of copying, not all copying is legally

actionable.” Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1542 (11th Cir. 1996).

The fair use doctrine is a statutory exception to copyright infringement, which

seeks to balance First Amendment concerns with the protections otherwise

afforded authors by the Copyright Act. The Supreme Court has described fair use

as “a privilege in others than the owner of the copyright to use the copyrighted

29
material in a reasonable manner without his consent.” Harper & Row Publishers,

Inc. v. Nation Enters., 471 U.S. 539, 549, 105 S. Ct. 2218, 2224-25 (1985).

Section 107 of the Copyright Act specifically permits the unauthorized use of

copyrighted work “for purposes such as criticism, comment, news reporting,

teaching (including multiple copies for classroom use), scholarship, or research.”

17 U.S.C. § 107. Thus, defendant-appellees have not infringed Latimer’s

copyright if the use made of the photographs is a fair use under 17 U.S.C. § 107.

However, defendant-appellees did not assert a fair use defense in their

answer to Latimer’s complaint. They also never raised the issue of fair use in their

motion for summary judgment. In fact, fair use was first raised by the district court

sua sponte in its first order for summary judgment. Even after the district court

vacated that order to allow the parties to brief, inter alia, the fair use issue,

defendant-appellees only reference to fair use stated: “Defendants respectfully

suggest that this Court need not go as far as fair use analysis in order to determine,

as a matter of law, that Hachette’s use of the photographs was lawful.” On

reconsideration the district court entered summary judgment in favor of Hachette,

again holding that its publication of Latimer’s photographs was fair use. On

appeal, Latimer argues that Hachette waived the affirmative defense of fair use by

failing to raise it in its answer. Defendant-appellees claim that fair use need not be

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raised as an affirmative defense to copyright infringement because fair use is not

an infringement at all.

1. Is Fair Use an Affirmative Defense?

Defendant-appellees assert that fair use is merely a denial of copyright

infringement rather than an affirmative defense that admits the allegations of the

complaint but provides another reason why the plaintiff may not recover.

Defendant-appellees rely on the language of the statute itself for the proposition

that the fair use of a copyrighted work “is not an infringement of copyright.” 17

U.S.C. § 107. To further support their argument, defendant-appellees claim that

“Judge Birch of this Court has repeatedly expressed this Court’s view that ‘fair

use’ is better viewed as an affirmative right rather than as a defense.” However,

defendant-appellees misrepresent Judge Birch’s comments. In Bateman v.

Mnemonics, Inc., Judge Birch commented that “[a]lthough the traditional approach

is to view ‘fair use’ as an affirmative defense, this writer, speaking only for

himself, is of the opinion that it is better viewed as a right granted by the Copyright

Act of 1976.” 79 F.3d 1532, 1542 n.22 (11th Cir. 1996). Several years later in

Suntrust Bank v. Houghton Mifflin Co., Judge Birch commented that “fair use is

commonly referred to as an affirmative defense, see Campbell v. Acuff-Rose Music,

Inc., 510 U.S. 569, 590, 114 S. Ct. 1164, 1177 (1994), and, as we are bound by

31
Supreme Court precedent, we will apply it as such.” 268 F.3d 1257, 1260 n.3

(11th Cir. 2001). Thus, a close reading of Judge Birch’s comments reveal that he

was expressing his personal views, not the views of this Court, but nevertheless

recognized that binding Supreme Court authority requires us to treat fair use as an

affirmative defense. Moreover, the Supreme Court explained in Harper & Row,

that “[t]he drafters resisted pressures from special interest groups to create

presumptive categories of fair use, but structured the provision as an affirmative

defense requiring a case-by-case analysis.” 471 U.S. at 561, 105 S. Ct. at 2231;

see also H.R. Rep. No. 90-83, at 37 (1967). Thus, the fair use of copyrighted work

is an affirmative defense and should be pleaded as such.

2. Did the District Court Err by Raising Fair Use Sua Sponte?

Failure to plead an affirmative defense generally results in a waiver of that

defense. See Jackson v. Seaboard Coast Line R. Co., 678 F.2d 992, 1012 (11th

Cir. 1982); Fed. R. Civ. P. 8(c) (“In responding to a pleading, a party must

affirmatively state any avoidance or affirmative defense”). Furthermore, “[c]ourts

generally lack the ability to raise an affirmative defense sua sponte.” Hutcherson

v. Lauderdale County, Tenn., 326 F.3d 747, 757 (6th Cir. 2003). Exceptions to this

rule include timeliness objections to habeas petitions, even where the government

has failed to plead timeliness as an affirmative defense. See, e.g., Jackson v. Sec’y

32
for Dept. of Corrs., 292 F. 3d 1347, 1349 (11th Cir. 2002) (holding that “the

district court possessed the discretion to raise sua sponte the timeliness issue”);

Hill v. Braxton, 277 F.3d 701, 706 (4th Cir. 2002) (holding that a district court has

the power to raise the limitations defense sua sponte because “[t]he one-year

limitations period implicates values beyond the interests of the parties”).

Defendant-appellees cite Yellen v. Cooper as an example of courts

considering affirmative defenses sua sponte. 828 F.2d 1471 (10th Cir. 1987). In

Yellen, the Tenth Circuit affirmed the district court’s sua sponte grant of summary

judgment based on an unpleaded affirmative defense, where the defense was

obvious from the face of the complaint. Id. at 1474-75. The court reasoned that

the policy underlying Rule 8(c) was to afford the plaintiff adequate notice of

unanticipated defenses and, because the affirmative defense was obvious from the

face of the complaint, the defense was not unanticipated in that case. Id. at 1476.

Relying primarily on Yellen, defendant-appellees argue that courts have

discretion to consider certain defenses sua sponte where the applicable law reflects

competing policy decisions. However, neither Yellen nor the Jackson line of cases

provide justification for allowing courts to raise sua sponte every issue that

implicates competing policy concerns. Rather, those cases give courts leeway to

dismiss claims based on affirmative defenses that promote judicial efficiency, even

33
where the defendants fail to raise those claims themselves. The rationale

underlying the Jackson line of cases is that habeas petitions, in particular, raise

issues of federalism and judicial efficiency-interests that “eclipse the immediate

concerns of the parties.” Hill, 277 F.3d at 705. Similarly, Yellen promotes judicial

efficiency by permitting summary dismissal before service on the defendant where

it is clear from the face of the complaint that waiting for the answer will be

superfluous. 828 F.2d at 1476.

In contrast, the goal of the fair use defense is to “strike a balance between

the First Amendment and the Copyright Act by permitting free communication of

facts while still protecting an author’s expression.” Harper & Row, 471 U.S. at

556, 105 S. Ct. at 2228; see also Suntrust Bank, 268 F.3d at 1260, n.3 (fair use has

“constitutional significance as a guarantor to access and use for First Amendment

purposes”). That a constitutional right is involved does not mitigate a defendant’s

burden of pleading its own affirmative defenses. Here, Hachette has not offered

any justification for its failure to plead fair use. Unlike the cases considered above,

courts considering the fair use defense have no interest that eclipses the party’s

own interest in protecting its First Amendment right to fair use of copyrighted

material. Thus, the district court erred in raising the fair use defense sua sponte.

As such, we reverse the district court’s grant of summary judgment to Hachette,

34
deferring the question of whether Hachette has waived the fair use defense. We are

not ruling as a matter of law that Hachette has waived the fair use defense because

this issue has not been properly presented in the district court. As previously

noted, failure to plead an affirmative defense generally results in a waiver of that

defense. See Jackson, 678 F.2d at 1012; Fed. R. Civ. P. 8(c). However, there are

exceptions to this rule and the district court is free on remand to entertain a motion

to amend by Hachette to assert the affirmative defense of fair use.8

IV. CONCLUSION

For the foregoing reasons, we affirm the district court’s denial of summary

judgment to Kawasaki and Hachette on their unauthorized derivative works

argument, reverse the district court’s grant of summary judgment to Kawasaki

based on implied license, reverse the district court’s grant of summary judgment to

Hachette based on fair use, and remand for further proceedings consistent with this

opinion.

AFFIRMED in part, REVERSED in part, and REMANDED.

8
Should the district court ultimately rule that Hachette has not waived the defense of fair
use, it must consider the four factors of § 107 in determining whether Hachette’s publication of
the photographs was fair use. See 17 U.S.C. § 107; Harper & Row, 471 U.S. at 560, 105 S. Ct.
at 2230; Pacific and Southern Co., Inc. v. Duncan, 744 F.2d 1490, 1494 (11th Cir. 1984). If fact
questions are in dispute, these must be resolved by the jury.

35