`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
`
`TODD LATIMER,
`
`Plaintiff,
`
`v.
`
`Case No. 8:06-cv-1921-T-30AEP
`
`ROARING TOYZ, INC., et al.,
`
`Defendants.
`_____________________________________/
`
`ORDER
`
`Plaintiff Todd Latimer commenced this action alleging copyright infringement against
`
`the Defendants. Defendants Hachette Filipacchi Media U.S., Inc. (“Hachette”) and Kawasaki
`
`Motors Corp, U.S.A.’s (“Kawasaki”) have brought before the Court their Renewed Motion
`
`for Partial Summary Judgment (Dkt. 131). Latimer has filed a response in opposition (Dkt.
`
`142). Hachette seeks summary judgment on its affirmative defense of fair use. Both
`
`Hachette and Kawasaki seek summary judgment on the issue of damages related to Latimer’s
`
`claims for indirect profits. The Court, having considered the motion and response and being
`
`otherwise advised on the premises, concludes that summary judgment is denied as to fair use
`
`and granted as to the claims for indirect profits.
`
`Background
`
`In January 2006, as part of their marketing activity to introduce the new ZX-14
`
`motorcycle to the public, Kawasaki engaged Roaring Toyz, Inc. to customize two ZX-14
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 2 of 12 PageID 2861
`
`motorcycles. The customized motorcycles were to be displayed alongside the standard
`
`production model during Daytona Bike Week.
`
`At about this time, Latimer, a professional photographer, was retained by 2Wheel
`
`Tuner magazine to follow the progress of Roaring Toyz customization of the ZX-14
`
`motorcycles. Latimer’s assignment was to provide photographs of the motorcycles at various
`
`stages of the customization process for inclusion with a magazine article.
`
`By the end of February 2006, Roaring Toyz had nearly completed the customization
`
`work. Around that time, Kawasaki was putting together final preparations for the ZX-14
`
`World Press Introduction, to be held in Las Vegas on February 26-28, 2006. Kawasaki
`
`requested photographs of the customized bikes to be included in a press kit handed out to the
`
`members of the media who attended the Press Introduction meeting. After first submitting
`
`unsatisfactory images, Roaring Toyz contacted Latimer on February 23, 2006, and asked that
`
`he take photographs of the customized bikes. Latimer agreed to conduct a photo shoot that
`
`night to meet Kawasaki’s February 24, 2006 deadline. On the morning of February 24, 2006,
`
`Latimer emailed a selection of digitally edited photos of the customized ZX-14 motorcycles
`
`to Roaring Toyz. Each of the digital images contained a metadata1 file that provided
`
`technical information and a copyright notice for the photograph. Roaring Toyz immediately
`
`emailed the images to Kawasaki.
`
`1 Metadata, commonly described as “data about data” is defined as “a set of data that describes and
`gives information about other data. Oxford English Dictionary.
`
`Page 2 of 12
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 3 of 12 PageID 2862
`
`At the press launch on February 26, 2006, Kawasaki distributed a press kit to
`
`approximately 30 members of the media. The press kit contained, among other items, a
`
`compact disc with more than 110 photographs of the ZX-14, including five of Latimer’s
`
`photographs with the metadata attached. A representative of Cycle World magazine, which
`
`is published by Hachette, attended the meeting and received one of the media kits. In
`
`conjunction with an article about the launch of the ZX-14, Cycle World published three of
`
`Latimer’s photographs in its June 2006 issue. Two of the pictures were printed with the
`
`article and the other picture was placed on the Table of Contents page.
`
`According to Latimer, he learned of the allegedly infringing uses of his photographs
`
`when he read a copy of the June 2006 issue of Cycle World. Believing that confronting
`
`Defendants about the unauthorized use of his photographs would be “professional suicide,”
`
`Latimer delayed taking any action until late August 2006, when he contacted Kawasaki and
`
`informed it that his photographs were being used without his permission.
`
`Latimer filed his original complaint on October 18, 2006. On October 27, 2006, he
`
`filed an amended complaint alleging copyright infringement and unfair competition against
`
`all Defendants. In an order dated August 7, 2008, the Court granted summary judgment to
`
`all Defendants on Latimer’s unfair competition claims. As to Latimer’s copyright
`
`infringement claims, the Court granted summary judgment to Hachette and Kawasaki but
`
`denied summary judgment to Roaring Toyz and Robert Fisher. The Court held that Latimer
`
`granted an implied license to Kawasaki to use his photographs in its press materials and that
`
`Hachette’s subsequent publication of the photographs was fair use.
`
`Page 3 of 12
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 4 of 12 PageID 2863
`
`Latimer appealed this Court’s grant of summary judgment to Kawasaki and Hachette
`
`on the copyright infringement claims. The Eleventh Circuit held that this Court properly
`
`found that Latimer granted an implied license to Kawasaki to use his copyrighted
`
`photographs but that there remains a factual issue as to the scope of the implied license. The
`
`Eleventh Circuit also reversed the grant of summary judgment to Hachette on the ground that
`
`fair use must be raised as an affirmative defense. The case was remanded to this Court for
`
`further proceedings.
`
`Since the mandate from the Eleventh Circuit was issued, and with leave of this Court,
`
`Hachette amended its answer and affirmative defenses to include the affirmative defense of
`
`fair use. Now before the Court is Hachette and Kawasaki’s renewed motion for partial
`
`summary judgment. Hachette asserts that its use of Latimer’s photographs constitutes fair
`
`use as a matter of law. Hachette and Kawasaki also contend that, regardless of whether
`
`Hachette’s use is fair, Latimer’s claims for indirect profits from each of these defendants are
`
`too speculative to present a triable issue of fact for a jury.
`
`Summary Judgment Standard
`
`Motions for summary judgment should only be granted when the pleadings,
`
`depositions, answers to interrogatories, and admissions on file, together with the affidavits,
`
`show there is no genuine issue as to any material fact and that the moving party is entitled
`
`to judgment as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317,
`
`322 (1986). The existence of some factual disputes between the litigants will not defeat an
`
`otherwise properly supported summary judgment motion; “the requirement is that there be
`
`Page 4 of 12
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 5 of 12 PageID 2864
`
`no genuine issue of material fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
`
`(1986)(emphasis in original). The substantive law applicable to the claimed causes of action
`
`will identify which facts are material. Id. Throughout this analysis, the judge must examine
`
`the evidence in the light most favorable to the non-movant and draw all justifiable inferences
`
`in his or her favor. Id. at 255.
`
`Once a party properly makes a summary judgment motion by demonstrating the
`
`absence of a genuine issue of material fact, whether or not accompanied by affidavits, the
`
`nonmoving party must go beyond the pleadings through the use of affidavits, depositions,
`
`answers to interrogatories and admissions on file, and designate specific facts showing that
`
`there is a genuine issue for trial. Chelates, 477 U.S. at 324. The evidence must be
`
`significantly probative to support the claims. Anderson, 477 U.S. at 248-49. This Court
`
`may not decide a genuine factual dispute at the summary judgment stage. Fernandez v.
`
`Bankers Nat'l Life Ins. Co., 906 F.2d 559, 564 (11th Cir. 1990). “[I]f factual issues are
`
`present, the Court must deny the motion and proceed to trial.” Warrior Tombigbee Transp.
`
`Co., Inc. v. M/V Nan Fung, 695 F.2d 1294, 1296 (11th Cir.1983). A dispute about a material
`
`fact is genuine and summary judgment is inappropriate if the evidence is such that a
`
`reasonable fact finder could return a verdict for the nonmoving party. Anderson, 477 U.S.
`
`at 248; Hoffman v. Allied Corp., 912 F.2d 1379 (11th Cir. 1990). However, there must exist
`
`a conflict in substantial evidence to pose a question for the fact finder. Verbraeken v.
`
`Westinghouse Elec. Corp., 881 F.2d 1041, 1045 (11th Cir. 1989).
`
`Page 5 of 12
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 6 of 12 PageID 2865
`
`I.
`
`Fair Use
`
`Discussion
`
`A copyright grants to the owner several exclusive rights, including the right to
`
`reproduce the copyrighted work and to distribute copies to the public. But under the fair use
`
`doctrine, codified at 17 U.S.C. § 107, some limited and useful forms of copying and
`
`distribution are tolerated as exceptions to copyright protection. Specifically, § 107 provides
`
`fair use may be made of material “for purposes such as criticism, comment, news reporting,
`
`teaching (including multiple copies for classroom use), scholarship, or research, is not an
`
`infringement of copyright.” The four factors considered to determine whether a use is a fair
`
`use are:
`
`(1) the purpose and character of the use, including whether such use is of a
`
`commercial nature or is for nonprofit educational purposes;
`
`(2) the nature of the copyrighted work;
`
`(3) the amount and substantiality of the portion used in relation to the
`
`copyrighted work as a whole; and
`
`(4) the effect of the use upon the potential market for or value of the
`
`copyrighted work.
`
`17 U.S.C. § 107. “[N]either the examples of possible fair uses nor the four statutory factors
`
`are to be considered exclusive. Peter Letterese & Assocs. v. World Inst. of Scientology
`
`Enters., 533 F.3d 1287, 1308 (11th Cir. Fla. 2008). Moreover, all factors are to be
`
`considered and weighed together. Id. No single factor is dispositive. And each case should
`
`Page 6 of 12
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 7 of 12 PageID 2866
`
`be decided on its own facts. Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539, 560
`
`(U.S. 1985).
`
`A.
`
`Purpose and Character of the Use
`
`“The ‘purpose and character of use’ factor in the fair use inquiry asks whether the
`
`work’s purpose was for profit or not for profit and to what extent the new work is
`
`transformative and does not simply ‘supplant’ the original work.” Peter Letterese, 533 F.3d
`
`at 1309. Commercial and non-transformative uses tend to weigh against a finding of fair use.
`
`Id. But “the more transformative the new work, the less will be the significance of other
`
`factors, like commercialism, that may weigh against a finding of fair use.” Campbell v.
`
`Acuff-Rose Music, 510 U.S. 569, 579 (U.S. 1994).
`
`The use of Latimer’s photographs in a magazine available for public purchase and
`
`open to paid advertising is a commercial use. However, the focus of the commercialism
`
`inquiry is whether the secondary user stands to profit from the use without paying the
`
`customary price. Harper & Row, 471 U.S. at 562. Latimer’s photographs were not selected
`
`to generate a profit. They were used inside the magazine to make the pages more visually
`
`appealing. But the photos were not intended to increase the sale of magazine. Therefore, the
`
`commercial nature of the use does not weigh heavily against a finding of fair use.
`
`However, Cycle World’s use of Latimer’s photographs is not significantly
`
`transformative. A transformative use “adds something new, with a further purpose or
`
`different character, altering the first [work] with new expression, meaning, or message.”
`
`Campbell, 510 U.S. at 579. A non-transformative use “merely supersedes the objects of the
`
`Page 7 of 12
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 8 of 12 PageID 2867
`
`original creation.” Id. (internal quotations omitted). Here, Latimer’s photos were intended
`
`to showcase the customized versions of the ZX-14 and that is how the photos were used in
`
`Cycle World magazine. Plus, there was minimal editing of the photos; they appeared in the
`
`magazine with substantially the same appearance as the originals. Therefore, the balance of
`
`the sub-factors weigh slightly against a finding of fair use.
`
`B.
`
`Nature of the Copyrighted Work
`
`The purpose of the second factor is to provide more protection for works that are
`
`“closer to the core of copyright protection.” Peter Letterese, 533 F.3d at 1312. Original,
`
`creative works merit more protection than more factual or derivative works. Id. There is no
`
`dispute at this point in the proceedings that Latimer’s photographs are creative works, which
`
`receive greater protection under copyright law.
`
`C.
`
`Amount and Substantiality of the Portion Used
`
`The third factor “recognizes that fragmentary copying is more likely to have a
`
`transformative purpose than wholesale copying.” Davis v. Gap, Inc., 246 F.3d 152, 175 (2d
`
`Cir. N.Y. 2001). Use of the entirety of an original work is less likely to be a fair use. But
`
`where the secondary copier uses only as much as needed to further its purpose, this factor
`
`weighs neither in favor of nor against a finding of fair use. Nunez v. Caribbean Int'l News
`
`Corp., 235 F.3d 18, 24 (1st Cir. P.R. 2000). As noted before, Cycle World used the majority
`
`of the three photos, with only minor cropping. But use of any smaller portion of the photos
`
`would have rendered them useless. Therefore, this factor is not weighed significantly in the
`
`Court’s analysis.
`
`Page 8 of 12
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 9 of 12 PageID 2868
`
`D.
`
`Effect of the Use on the Potential Market
`
`The fourth factor requires the Court to consider the effect of the secondary copier’s
`
`use on the potential market for the works at issue. Peter Letterese, 533 F.3d at 1315. “We
`
`must consider two inquiries: (1) ‘the extent of the market harm caused by the particular
`
`actions of the alleged infringer,’ and (2) ‘whether unrestricted and widespread conduct of the
`
`sort engaged in by the defendant [] would result in a substantially adverse impact on the
`
`potential market.’” Id. (quoting Campbell, 510 U.S. at 590).
`
`As to the issue of the market harm caused by the publication of Latimer’s photos in
`
`Cycle World, Hachette argues that there was no effect on the marketability of the particular
`
`photos at issue. Specifically, Hachette notes that other Latimer photographs, not at issue
`
`here, were published in 2Wheel Tuner magazine at about the same time that Cycle World ran
`
`its story featuring Latimer’s photographs. Hachette also points to numerous other photos of
`
`customized ZX-14 motorcycles published in other magazines. However, the question is not
`
`whether other similar photos could be sold in the future. Rather, it is whether Cycle World’s
`
`publication impaired the market for the specific photos it used. Nunez, 235 F. 3d at 24-25.
`
`That question is left unanswered by the record here. Also left unanswered by the record is
`
`the effect widespread conduct, like that of Cycle World, would have on the potential market
`
`for the photos. These factual questions prevent the Court from granting summary judgment
`
`on Hachette’s affirmative defense of fair use.
`
`Page 9 of 12
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 10 of 12 PageID 2869
`
`II.
`
`Hachette and Kawasaki’s Indirect Profits
`
`In his complaint, Latimer claims damages under 17 U.S.C. §504(b), which provides
`
`that “[t]he copyright owner is entitled to recover the actual damages suffered by him or her
`
`as a result of the infringement, and any profits of the infringer that are attributable to the
`
`infringement and are not taken into account in computing the actual damages. In establishing
`
`the infringer's profits, the copyright owner is required to present proof only of the infringer's
`
`gross revenue, and the infringer is required to prove his or her deductible expenses and the
`
`elements of profit attributable to factors other than the copyrighted work.” 17 U.S.C.
`
`§504(b). Though the Eleventh Circuit has never ruled on this issue, virtually every other
`
`Court of Appeals “has required some nexus between the infringing activity and the gross
`
`revenue figure proffered by a plaintiff.” Ordonez-Dawes v. Turnkey Props., Inc., 2008 U.S.
`
`Dist. LEXIS 24320 (S.D. Fla. Mar. 26, 2008).
`
`A low initial burden is placed on the copyright holder to make a showing of some
`
`causal connection between the infringement and the profits claimed. “[A] plaintiff may not
`
`seek gross revenues based entirely on a speculative connection to the plaintiff's claim.”
`
`Thornton v. J Jargon Co., 580 F. Supp. 2d 1261, 1280 (M.D. Fla. 2008). Here, Latimer’s
`
`attempt to show a causal link is too speculative.
`
`In his response to the motion for summary judgment, Latimer states that he seeks
`
`Kawasaki’s profits for the sales of the ZX-14 motorcycles and Hachette’s profits from the
`
`Page 10 of 12
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 11 of 12 PageID 2870
`
`sale of two issues of Cycle World magazine2. Latimer has not produced sufficient non-
`
`speculative evidence of any link between Kawasaki’s alleged infringement (the use of five
`
`of Latimer’s photos in their media kit) and the profits generated from the sale of the ZX-14
`
`motorcycle. Latimer claims that his photos were central to Kawasaki’s marketing plan. But
`
`the record shows that, in fact, the use of his photos was an afterthought. Kawasaki planned
`
`to showcase the motorcycles customized by Roaring Toyz. However, Kawasaki did not think
`
`of using photographs of the customized bikes until February 23, 2006, three days before the
`
`press launch. The use of five of Latimer’s photos in the media kit, which featured over 100
`
`other photographs, was a last minute decision.
`
`Latimer also claims that Kawasaki exceeded their sales projection, possibly implying
`
`a relationship between that and the use of his photographs. However, Latimer misstates the
`
`evidence in the record. In fact, Kawasaki did not exceed their sales goal; it only met the goal.
`
`Plus, any link between reaching the sales goal and Latimer’s photographs is purely
`
`speculative. Latimer has offered no evidence that shows any connection between the use of
`
`his photographs and the meeting of the sales goal.
`
`Nor has Latimer produced non-speculative evidence of a link between Hachette’s use
`
`of three of his photographs and the sale of the June 2006 issue of Cycle World magazine.
`
`Latimer simply argues, in a footnote, “since Hachette used Latimer’s photos to drive
`
`consumer interest and purchasing decisions, the causal connection requirement has been
`
`2 There are references in the record to the publication of Latimer’s photographs in Cycle World’s
`Annual Sport Bike Edition. No such allegation is included in the complaint and Latimer has not moved to
`amend the complaint to add this claim.
`
`Page 11 of 12
`
`
`
`Case 8:06-cv-01921-JSM-AEP Document 151 Filed 09/21/10 Page 12 of 12 PageID 2871
`
`fulfilled...” (Dkt. 142, p. 19 n. 14). However, Latimer provides no evidence to support this
`
`conclusory assertion.
`
`Latimer has failed to meet his burden to show a reasonable relationship between the
`
`profits he seeks and the alleged infringement of his copyrighted photographs. Therefore,
`
`summary judgment must be granted as to Latimer’s claims for indirect profits from Hachette
`
`and Kawasaki. Latimer may continue to pursue his claim for actual damages.
`
`It is therefore ORDERED AND ADJUDGED that Hachette Filipacchi Media U.S.,
`
`Inc. and Kawasaki Motors Corp, U.S.A.’s Motion for Partial Summary Judgment (Dkt. 131)
`
`is GRANTED IN PART and DENIED IN PART as stated above.
`
`DONE and ORDERED in Tampa, Florida on September 21, 2010.
`
`Copies furnished to:
`Counsel/Parties of Record
`
`S:\Odd\2006\06-cv-1921.msj 131.wpd
`
`Page 12 of 12