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Tampa Arena’s Violation Of Implied License For Photos Not Copyright Infringement

The District Court held that an implied license to use photographs on a Facebook page was a good defense to a copyright claim.  Davis v. Tampa Bay Arena, Ltd., Case No.: 8:12-cv-60-T-30MAP (M.D. Fla. June 27, 2013) (available here).  Plaintiff Davis, a professional photographer, sued Defendant Tampa Bay Arena (“Arena”) for copyright infringement.  Arena moved for summary judgment and the Court granted it.

In 1996, Davis and Arena entered into a verbal agreement for Davis’s services wherein Davis would shoot photos on an event-by-event basis.  Until around 2000, Davis photographed all of Arena’s events.  In 2000, Davis created a written agreement, which granted Arena a limited use of the photographs, including “rights to reproduce the images for newsletter, advertising, display prints, broadcast, and the [Arena] web site.”  The agreement stated that Davis retained ownership of all the images.  However, the agreement stated that Arena would allow Davis the right to use the images from Arena’s events in his portfolio and web site, but that Davis would not sell photographs without Arena’s permission.  When Davis used digital cameras, he would back up all the images onto CDs.

In 2007, the parties entered into a second agreement that was almost identical to the first, except it increased Davis’s fee and allowed Arena to use the images on posters without Davis’s permission.  In 2009 or 2010, Arena created a Facebook page and posted Davis’s pictures on the page.  The Facebook page was used by Arena as advertising.  Davis originally objected to the use of his photos, but then allowed Arena to use the photos only if they were low-resolution versions, gave Davis photo credit, preserved the metadata showing Davis’s ownership, and protected the photos from unauthorized copying by third parties.  After Arena agreed, Davis began helping Arena post the photos by giving several staff members of Arena log in and passwords to his photo-server.  If Arena violated the agreement, Davis would send an email detailing the violation.

Davis argued that in 2011, he complained about the use of his photos on Facebook.  He discovered that third parties could download his photos from Facebook.  Davis thought that if he stopped Arena from posting the Facebook photos that he would lose his job as event photographer.  Arena promised to amend the agreement to fairly compensate Davis for the Facebook usage.  However, they were unable to reach an agreement.  In mid-2011, Davis’s attorney sent Arena a letter requesting return of all hard copy original images and negatives in possession of Arena and demanding that Arena seek permission to use future photographs.  Arena only returned a few negatives to Davis.  Davis sued for copyright infringement.  Arena moved for summary judgment.

Arena “argues, in part, that it is entitled to summary judgment on Davis’ copyright
claim because Davis granted [Arena] an implied license to post his images to [Arena]’s Facebook page. The Court agrees that, taking the record in a light most favorable to Davis, the non-movant, it is undisputed that Davis granted [Arena] an implied license to post his images to the Forum’s Facebook page.”  Davis, Slip Op. P. 11.  An implied license is created when “(1) a person (the licensee) requests the creation of a work, (2) the creator (the licensor) makes that particular work and delivers it to the licensee who requested it, and (3) the licensor intends that the licensee copy and distribute his work.” Thornton v. J Jargon Co., 580 F. Supp. 2d 1261, 1281 (M.D. Fla. 2008).  Here, Davis took photographs of Arena’s events, created log in and passwords for Arena’s staff, and never threatened to sue for copyright infringement if Arena did not take down the Facebook photos.

Davis argued that the issue was the scope of the implied license.  In other words, Davis argued that he opposed Arena’s use of his photos, and attached conditions to its ability to use is photos on Facebook.  However, “even assuming that Davis attached conditions to [Arena]’s use of his images on Facebook, the record is clear that these conditions were covenants, not condition precedents to the granting of the implied license.”  Davis, Slip Op. P. 13.  As a result, Davis had a breach of contract claim against Arena, not a copyright infringement claim.  “In this case, the record is clear that despite the conditions Davis may have placed on [Arena]’s use of his images on its Facebook page, Davis did not withdraw his permission to allow [Arena] to use his images on Facebook even after Davis was placed on notice numerous times during the parties’ relationship that [Arena] was not complying with the conditions.”  Davis, Slip Op. Pp. 15-16.  As a result, the Court granted Arena’s motion for summary judgment on Davis’s claim of copyright infringement.

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