Case 8:06-cv-01921-JSM-AEP Document 93 Filed 08/07/08 Page 1 of 23 PageID 2335
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
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`TODD LATIMER,
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`Plaintiff,
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`v.
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`ROARING TOYZ, INC., ROBERT FISHER,
`KAWASAKI MOTORS CORP., USA, and
`HACHETTE FILIPACCHI MEDIA U.S.,
`INC.,
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`Defendants.
`______________________________________
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`Case No. 8:06-CV-1921-T-30EAJ
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`ORDER ON MOTION FOR SUMMARY JUDGMENT
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`Before the Court is Defendants’ motion for summary judgment (Dkt. 59) and briefs
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`filed in support and opposition thereto1 (Dkts. 63, 69, 91, & 92). Having considered the
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`parties motions and supporting exhibits, the supporting and opposing memoranda, and the
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`record evidence cited therein, the Court concludes that all Defendants are entitled to
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`summary judgment on Latimer’s unfair competition claim, and Defendants Kawasaki and
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`Hachette are entitled to summary judgment on Latimer’s copyright infringement claims. This
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`1The Court entered an order on March 13, 2008, granting summary judgment in favor of all Defendants on
`Latimer’s unfair competition claims and Defendants Hachette and Kawasaki on Latimer’s infringement claims (Dkt. 88).
`Citing Massey v. Congress Life Ins. Co., 116 F.3d 1414, 1417 (11th Cir. 1997), Latimer sought reconsideration on
`grounds that he lacked notice that implied license or fair use was to be considered on summary judgment (Dkt. 85). Out
`of an abundance of caution, the Court granted Latimer’s motion on April 3, 2008, and allowed him to file a brief
`addressing the issues raised in his motion for reconsideration. Latimer filed a Supplemental Brief on April 17, 2008,
`see Dkt. 91, and Defendants filed a Supplemental Memorandum in Support of Defendant’s Motion for Summary
`Judgment on May 1, 2008, see Dkt. 92. Said order renders Defendants Roaring Toyz and Robert Fisher’s motion for
`reconsideration (Dkt. 87) moot.
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`Case 8:06-cv-01921-JSM-AEP Document 93 Filed 08/07/08 Page 2 of 23 PageID 2336
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`matter will proceed to trial on Latimer’s copyright infringement claims against Roaring Toyz
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`and Robert Fisher.
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`Summary Judgment Standard
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`Motions for summary judgment should only be granted when the pleadings,
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`depositions, answers to interrogatories, and admissions on file, together with the affidavits,
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`show there is no genuine issue as to any material fact and that the moving party is entitled
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`to judgment as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317,
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`322 (1986). The existence of some factual disputes between the litigants will not defeat an
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`otherwise properly supported summary judgment motion. “The requirement is that there be
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`no genuine issue of material fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
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`(1986) (emphasis in original). “A mere ‘scintilla’ of evidence supporting the opposing party's
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`position will not suffice; there must be enough of a showing that the jury could reasonably
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`find for that party.” Walker v. Darby, 911 F.2d 1573, 1577 (11th Cir. 1990). The substantive
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`law applicable to the claimed causes of action identifies which facts are material. Id.
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`Throughout this analysis, the judge must examine the evidence in the light most favorable
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`to the non-moving party and draw all justifiable inferences in his favor. Id. at 255. Further,
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`“[e]vidence inadmissible at trial cannot be used to avoid summary judgment.” Broadway v.
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`City of Montgomery, Ala., 530 F.2d 657, 661 (5th Cir. 1976). “Even on summary judgment,
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`a court is not obligated to take as true testimony that is not based upon personal knowledge.”
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`Citizens Concerned About Our Children v. School Bd. of Broward County, Fla., 193 F.3d
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`1285, 1295 n. 11 (11th Cir. 1999) (per curiam).
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`In Van T. Junkins & Assocs., Inc. v. U.S. Indus., Inc., the Eleventh Circuit affirmed
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`a district court's finding that an affidavit that contradicted testimony on deposition was a
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`sham when the party merely contradicted its earlier testimony without giving any valid
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`explanation. 736 F.2d 656, 656 (11th Cir. 1984) ("When a party has given clear answers to
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`unambiguous questions which negate the existence of any genuine issue of material fact, that
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`party cannot thereafter create such an issue with an affidavit that merely contradicts, without
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`explanation, previously given clear testimony" (citation omitted)). The circuit court recently
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`cautioned, however, that
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`This rule is applied “sparingly because of the harsh effect [it] may have on a
`party's case.” Furthermore,
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`to allow every failure of memory or variation in a witness'
`testimony to be disregarded as a sham would require far too
`much from lay witnesses and would deprive the trier of fact of
`the traditional opportunity to determine which point in time and
`with which words the . . . affiant . . . was stating the truth.
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`As such, "our cases require the court to find some inherent inconsistency
`between an affidavit and a deposition before disregarding the affidavit.
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`Allen v. The Board of Public Education for Bibb County, 495 F.3d 1306, 1316 (11th Cir.
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`2007) (citations omitted).
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`Factual Background2
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`At the request of his friend Bruce Casner, Todd Latimer (“Latimer”), a free-lance
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`fashion photographer, prepared a series of photographs of custom motorcycle parts for an
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`2In considering Defendants’ motion, unless otherwise refuted by the record, the facts are taken in the light most
`favorable to Plaintiff.
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`-3-
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`advertising brochure for Defendant Roaring Toyz (“Roaring Toyz”).3 In June, 2005, Casner
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`asked Latimer to accompany him to a motorcycle show held at West Palm Beach, Florida,
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`where Casner introduced Latimer to Robert Fisher (“Fisher”), president of Roaring Toyz
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`(Dkt. 60, Ex. 3 at 62-64; Ex. 6-I at 24; 53-54).
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`Roaring Toyz displayed a number of customized motorcycles at the West Palm Beach
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`Motorcycle Show. During the show, Latimer took numerous photographs of motorcycles
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`customized by Roaring Toyz (Dkt. 60, Ex. 3 at 68; Ex. 6-I at 71). Between June, 2005, and
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`March, 2006, Latimer photographed a number of motorcycles Roaring Toyz was customizing
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`at its Sarasota, Florida facility. Latimer provided Roaring Toyz copies of some of the
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`photographs taken during this time period for its use on its website (Dkt. 60, Ex. 3 at 80–83;
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`96–97; 99; Ex. 6-I at 68; 71; 76-77; 78-79).
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`In mid-2005, Fisher met John Del Cioppo, a/k/a Jack Del Cioppo, owner and operator
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`of Graphics 2, a New Jersey corporation that had recently relocated to Florida.4 During the
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`latter half of 2005 through 2006, Roaring Toyz retained Del Cioppo to manage its websites
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`and advise it on marketing and public relations issues5 (Dkt. 60, Ex. 7 at 15-16).
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`Defendant Kawasaki Motor Corporation USA, Inc., (“Kawasaki”) manufactures, inter
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`alia, motorcycles, utility vehicles, all terrain vehicles, and watercraft. Kawasaki began
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`3Roaring Toyz, Inc., specializes in motorcycle customization and repair services (Dkt. 60, Ex. 3 at 14/23 –
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`15/1).
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`4According to Del Cioppo, Graphics 2 provides its clients with graphics design assistance related to point of
`sale, packaging, website development, display advertisements, and catalog production (Dkt. 60, Ex. 7 at 9). DelCioppo
`testified that prior to moving to Florida, he had 15 to 18 years experience providing marketing advice as well as graphic
`design services to various companies selling manufactured aftermarket products (Dkt. 60, Ex. 7 at 13).
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`5Del Cioppo estimated that Roaring Toyz paid him approximately $30,000.00 for his services in 2006.
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`-4-
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`Case 8:06-cv-01921-JSM-AEP Document 93 Filed 08/07/08 Page 5 of 23 PageID 2339
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`promoting its ZX-14 motorcycle in September 2005 (Dkt. 69, Ex. 5). While preparing for the
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`introduction of the ZX-14 motorcycles, Kawasaki personnel noted a trend developing in the
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`marketplace for customized motorcycles. Since Kawasaki did not manufacture or sell
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`customized motorcycles, it arranged for two ZX-14s to be delivered to Roaring Toyz in
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`January, 2006, for customization. Decisions regarding how the customization should be done,
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`as well as what the final product should look like, were left to Roaring Toyz (Dkt. 60, Ex.
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`3 at 28; 53-54).
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`Roaring Toyz commissioned Ryan Hathaway, an independent contractor who
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`operated a one-man shop engaged in custom paint work and graphics design, to customize
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`the paint on the ZX-14s. While Hathaway and Fisher discussed graphics styles and color
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`schemes, Hathaway made the final decisions as to the design and color of the artwork on the
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`ZX-14s (Dkt. 60, Ex. 5 at 13-16; 19-20; 21-22). During January and February, 2006,
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`Hathaway worked in his shop in Lake Placid, Florida, designing the artwork, selecting the
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`paint colors, and painting the ZX-14s. Id. at 5-6; 13-16; Ex. 3 at 147-48.
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`Meanwhile, in January, 2006, Latimer was retained by 2Wheel Tuner “to follow the
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`build” of the ZX-14s and provide 2Wheel Tuner with photographs of the motorcycles at
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`various stages of the customization process for inclusion with a magazine article.
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`On February 23, 2006, Fisher learned from Del Cioppo that Kawasaki wanted
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`photographs of the customized ZX-14s. Roaring Toyz had one day in which to provide the
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`requested photographs. Fisher contacted Latimer regarding Kawasaki’s request for
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`photographs, explaining the tight deadline when they spoke. Latimer agreed to travel to
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`Sarasota to conduct a photo shoot that evening. Id.
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`Case 8:06-cv-01921-JSM-AEP Document 93 Filed 08/07/08 Page 6 of 23 PageID 2340
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`When Latimer arrived at Roaring Toyz with his photography equipment, shop
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`personnel had not yet completed assembling the ZX-14s. Because they did not have a kick
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`stand for both motorcycles, the ZX-14s could not be transported off-site, so Roaring Toys
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`personnel assisted Latimer in setting up the ZX-14s for the photo shoot in front of the shop.
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`Because they were in a hurry to get the photographs done, Roaring Toyz personnel also
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`assisted Latimer by running “extension cords and power cables for lights and cables for
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`cameras and things, and you know, background, [and] flooring,” but Latimer made the
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`decisions regarding lighting, the appropriate camera equipment and lens, and camera settings,
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`as well as use of the white background consistent with the industry practice Latimer noted
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`in studying other advertising photographs.
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`Latimer worked throughout the night of February 23-24 taking photographs of the
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`ZX-14s, as requested by Fisher and Del Cioppo. Once the photo session concluded, Latimer
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`asked Fisher for $800.00 as payment for photographs of three R-1 and three Hayabasa
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`motorcycles taken on February 14 and 16, 2006. Fisher wrote Latimer an $800.00 check.
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`When Latimer left Roaring Toyz the morning of February 24, 2006, he took the ZX-
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`14 photographs with him so he could make any necessary modifications. Latimer e-mailed
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`“clean shots” of the ZX-14s to Del Cioppo during the morning of February 24, 2006. Each
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`-6-
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`Case 8:06-cv-01921-JSM-AEP Document 93 Filed 08/07/08 Page 7 of 23 PageID 2341
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`of the photographs Latimer delivered to Del Cioppo had a metadata6 file attached that
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`provided the viewer with technical information and copyright notice for the photograph.
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`Once Del Cioppo received the images from Latimer, he sent them on to Kawasaki by
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`e-mail (Dkt. 60, Ex. 7 at 86–87; 90).7 Subsequently, Del Cioppo informed Latimer that
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`Kawasaki was so impressed with his work that it wanted to include five of the photographs
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`in the material it planned to present during the ZX-14 press introduction to be held in Las
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`Vegas, Nevada, February 26-28, 2006. At that time, Del Cioppo was the only person who
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`had had any communication with Kawasaki regarding use of Latimer’s photographs.
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`According to Latimer, he was under the impression that the photographs would be used in
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`a “screen” presentation in connection with the public launch of the ZX-14s.8 Latimer
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`informed Del Cioppo that Kawasaki could use of the photographs conditioned on Kawasaki
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`giving him credit as the photographer (Dkt. 60, Ex. 6-II at 102-03; 110-12). Latimer’s
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`6Metadata, commonly described as “data about data,” is defined as “a set of data that describes and gives
`information about other data.” Oxford English Dictionary. Technical Appendix E to The Sedona Guidelines: Best
`Practice Guidelines & Commentary for Managing Information & Records in the Electronic Age defines metadata to
`include “all of the contextual, processing, and use information needed to identify and certify the scope, authenticity, and
`integrity of active or archival electronic information or records.” Examples of metadata for electronic documents include:
`a file's name, a file's location ( e.g., directory structure or pathname), file format or file type, file size, file dates ( e.g.,
`creation date, date of last data modification, date of last data access, and date of last metadata modification), and file
`permissions ( e.g., who can read the data, who can write to it, and who can run it).
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`7Initially, Latimer testified that he believed Del Cioppo would be using the photographs to prepare placards for
`display during Bike Week. Latimer later testified that he was aware that Kawasaki would have to approve the ZX-14
`photographs before they could be used and that he believed that Kawasaki was going to prepare the placards (Dkt. 60,
`Ex. 6-I at 260). Given Latimer’s testimony that he consented to Kawasaki using his photographs in the press materials
`for the Las Vegas introduction of the ZX-14 to the media, this contradiction is not relevant to the issues before the Court.
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`8As Defendants note, however, Latimer’s statement in the February 24, 2006 e-mail he sent to Del Cioppoi at
`11:13 a.m. confirms that he did not limit Kawasaki’s use to “placards” or a computer generated presentation flashed on
`a screen. Latimer clearly granted Kawasaki leave to publish the pictures for copying and distribution. See Dkt. 92, Ex.
`2 (before his photographs were published Latimer wrote: “Kawasaki will list you guys in 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.”).
`Thus, Latimer’s protests to the contrary are refuted by his e-mail – he was clearly aware that at some point in time,
`Kawasaki intended to use his photographs in a print media. See also Dkt. 60, Ex. 6-I, Vol. II at 277-78.
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`Case 8:06-cv-01921-JSM-AEP Document 93 Filed 08/07/08 Page 8 of 23 PageID 2342
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`photographs, with their respective metadata file attached, were included on a compact disk
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`distributed to approximately 30 members of the media who attended the introduction of the
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`ZX-14 motorcycle, including a representative of Cycle World Magazine9 (“CWM”), a
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`publication owned by Defendant Hachette Filipacchi Media U.S. (Dkt. 60, Ex. 2 at 32).
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` On June 2, 2006, more than three months after Kawasaki published Latimer’s ZX-14
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`photographs by including them in its media kit,10 the Register of Copyrights granted
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`Latimer’s request for registration of a compilation of his photographs of the ZX-14
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`motorcycles, five of which are the protected works at issue in these proceedings, under
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`Certificate of Registration No. VAu 700-638 (Dkt. 2, Ex. 1).
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`9Cycle World, a monthly publication targeting motorcycle enthusiasts, is distributed through subscriptions and
`newsstand sales throughout the United States and in some foreign countries.
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`10The significance of this delay is illustrated by the provisions of 17 U.S.C. § 412:
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`In any action under this title, . . . no award of statutory damages or of attorney's fees, as provided by
`sections 504 and 505, shall be made for –
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`(1)
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`(2)
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`any infringement of copyright in an unpublished work commenced before the effective date of
`its registration; or
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`any infringement of copyright commenced after first publication of the work and before the
`effective date of its registration, unless such registration is made within three months after the
`first publication of the work.
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`17 U.S.C. § 412 (2005). Section 412 is clarified in the following excerpt from the House Report on the 1976 Copyrights
`Act, 90 Stat. 2541 (1976):
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`Under the general scheme of the bill, a copyright owner whose work has been infringed before
`registration would be entitled to the remedies ordinarily available in infringement cases: an injunction
`on terms the court considers fair, and his actual damages plus any applicable profits not used as a
`measure of damages. However, section 412 would deny any award of the special or “extraordinary”
`remedies of statutory damages or attorney's fees where infringement of copyright in an unpublished
`work began before registration or where, in the case of a published work, infringement commenced
`after publication and before registration (unless registration has been made within a grace period of
`three months after publication).
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`Here, the protected work was first published on February 26, 2006. Thus, Latimer had until May 26, 2006, within which
`to register his copyright for purposes of statutory damages and attorney’s fees. Latimer’s registration of his copyright
`is effective June 2, 2006, one week after the three month period expired.
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`-8-
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`Del Cioppo posted Latimer’s photographs of the ZX-14s on a Roaring Toyz website
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`[www.roaringtoyz.com] to promote and advertise the sale of its merchandise and
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`customization services. The photographs were also subsequently posted on a website
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`featuring Roaring Toyz’s customized parts for the ZX-14s, found at www.zx-14parts.com.
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`While he could not remember the name of the individual with whom he spoke, Del
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`Cioppo testified that in an effort to get exposure for Roaring Toyz, he also had discussions
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`with one of the publishers at CWM regarding publishing Latimer’s photographs of the ZX-
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`14s (Dkt. 60, Ex. 7 at 125). According to Del Cioppo, he “called in some favors and . . .
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`talked to one of the publishers. . . . to give him an exclusive, the opportunity to come in and
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`photograph the ZX-14s at Roaring Toyz. He declined.” Id. Subsequently, CWM published
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`three of the five ZX-14 photographs included in the material Kawasaki distributed during its
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`unveiling of the ZX-14s in Las Vegas. The photographs were published in conjunction with
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`a feature article written by Don Canet that appeared in CWM’s June 2006 issue.
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`According to Latimer, he learned that the ZX-14 photographs he took on February 23-
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`24, 2006, were being used without his permission when he read a copy of the June, 2006
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`issue of Cycle World11 while in a barber shop12 (Dkt. 60, Ex. 6-I at 203-04; 205). Believing
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`that confronting Defendants about the unauthorized use of his photographs might be
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`“professional suicide,” Latimer delayed taking any action until late August, 2006, when he
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`11There 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.
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`12The date on which Latimer made this discovery is unclear. Latimer testified that he contacted an attorney
`before filing his request for copyright registration because he had learned that his photographs were being used without
`his permission. He has little recall of the details, however. As stated above, Latimer’s request for copyright registration
`was approved on June 2, 2006.
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`contacted Kawasaki and informed it that his photographs were being used without his
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`permission (Dkt. 60, Ex. 2 at 68-69).
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`Latimer sues Defendants for federal copyright infringement under 17 U.S.C. § 101
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`et seq. and unfair competition under Florida common law. Latimer seeks a permanent
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`injunction preventing Defendants from infringing his copyright, an order directing
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`Defendants to tender to him all infringing copies of his protected work that may be in their
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`possession or control or destroy the protected work under a writ of destruction issued
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`pursuant to 17 U.S.C. § 503, plus actual damages suffered as a result of the infringement
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`and/or disgorgement of Defendants’ profits that are not taken into account in computing
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`actual damages (Dkt. 2 at 4-5).
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`Legal Analysis
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`As discussed above, Latimer’s central claims, brought pursuant to 17 U.S.C. § 501,
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`allege that Defendants infringed his copyright in the ZX-14 photographs. Photographs
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`received federal copyright protection in the Act of March 3, 1865, 38th Cong., 2d Sess., 16
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`Stat. 198. The idea that photography is art deserving copyright protection is now well settled.
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`See 17 U.S.C. §§ 101,13 102(a)(5); see also Burrow-Giles Lithographic Co. v. Sarony, 111
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`U.S. 53, 58 (1884) (“[T]he Constitution is broad enough to cover an act authorizing copyright
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`of photographs, so far as they are representatives of original intellectual conceptions of the
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`13“‘Pictorial, graphic, and sculptural works’ include two-dimensional and three-dimensional works of fine,
`graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical
`drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form
`but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall
`be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates
`pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently
`of, the utilitarian aspects of the article.” 17 U.S.C. § 101.
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`-10-
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`author.”); Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1074-75 (9th Cir. 2000) (citation
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`omitted) (photographer brought infringement action against vodka producer alleging that
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`producer’s use of photographer’s “product shots” constituted copyright infringement, fraud,
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`and negligent misrepresentation); Rogers v. Koons, 960 F.2d 301, 306 (2d Cir.), cert.
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`denied,506 U.S. 934 (1992).
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`At its core, copyright law seeks “to promote the dissemination of creative expression,
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`and provide incentives for copyright owners to produce . . . original works.” CBS Broad.,
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`Inc. v. EchoStar Communications Corp., 265 F.3d 1193, 1211 (11th Cir. 2001). The plaintiff
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`in a § 501 action establishes a prima facie case of copyright infringement by proving by a
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`preponderance of the evidence (1) that he owns a valid copyright in the work allegedly
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`infringed, and (2) that the defendant(s) copied that work. Original Appalachian Artworks,
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`Inc. v. Toy Loft, Inc., 684 F.2d 821, 824 (11th Cir. 1982) (“The law is well settled that absent
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`a fraud, or any purposeful attempt to mislead the Copyright Office, the court would not
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`invalidate an otherwise valid Certificate of Registration”).
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`Although copyright protection attaches at the time of an author's creation of an
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`original work susceptible to copyright under 17 U.S.C. § 102(a), an owner's cause of action
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`for infringement of that copyright is unenforceable until compliance with the formalities of
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`registration, including payment of fees and deposit of copies of the work. 17 U.S.C. § 411.
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`Ownership is also demonstrated through such compliance. In cases like Latimer’s where
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`registration was filed within five years after first publication of the work, the certificate of
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`registration for the work “constitute(s) prima facie evidence of the validity of the copyright
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`and of the facts stated in the certificate,” 17 U.S.C. § 410(c), including the requirements of
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`originality and susceptibility to copyright under 17 U.S.C. § 102(a). See 3 Nimmer on
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`Copyright § 13.01[A] at 13-4. The burden then shifts to the defendants to rebut this
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`presumption of validity. See id. at 13-5.
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`Given that Latimer has produced a certificate of copyright registration for the ZX-14
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`photographs, he benefits from a rebuttable presumption that the copyright is valid. See 17
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`U.S.C. § 410(c) (1994). The burden, therefore, has shifted to the Defendants, who are
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`required to demonstrate that “the work in which copyright is claimed is unprotectable (for
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`lack of originality) or, more specifically, to prove that . . . the copyrighted work actually
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`taken is unworthy of copyright protection.” Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541
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`(11th Cir. 1996). While the Defendants are permitted to copy the idea presented by Latimer's
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`photographs, they cannot simply make copies of the photographs. Blackman v. Hustler
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`Magazine, Inc., 620 F.Supp. 792, 796 (D.D.C. 1985) (magazine which published a
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`photographer's photographs infringed the photographer's copyrights), aff'd in part, rev'd in
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`part, 800 F.2d 1160 (D.D.C. 1986) (on issue of damages).
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`Defendants do not dispute having used Latimer’s photographs in activities of
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`commercial value, and they have abandoned the issues of joint authorship and the sufficiency
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`of originality raised in their motion for summary judgment, see Dkt. 92 at 1. They do,
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`however, continue to assert that Latimer’s photographs are derivative works.
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`Derivative Work
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`In an effort to establish that Latimer’s photographs are unprotectable, Defendants
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`assert that the subject matter of the action, the photographs of the Kawasaki ZX-14 taken by
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`Latimer on February 23 – 24, 2006, are “unauthorized derivative works14 based upon
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`protectable preexisting works created and owned by Ryan Hathaway, and for which uses
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`Latimer had not requested nor received a license” (Dkt. 60, Ex. 5 at 22-23; Ex. 6-II at 139-
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`40). Defendants rely on Hathaway’s deposition testimony, see Dkt. 60, Ex. 5 at 21, to support
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`their argument that the paintwork on the ZX-14 motorcycles constitutes original and creative
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`expression subject to protection under the copyright laws of the United States. See 17 USC
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`§ 102(5). Defendants assert that because the photographs they are accused of infringing
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`depict both the ZX-14s and Hathaway’s artwork (Exhibit A-b, A-c), they incorporate
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`substantial portions of copyrightable works that does not belong to Latimer and for which
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`he has no license (17 U.S.C. § 103(a); Dkt. 60, Ex. 5 at 23). Thus, Defendants conclude, as
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`derivative works of Hathaway’s artwork, Latimer’s photographs are uncopyrightable.
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`Under 17 U.S.C. § 101, a derivative work must incorporate a substantial element of
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`a preexisting work of authorship and recast, transform, or adapt those elements. See SHL
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`Imaging, Inc. v. Artisan Homes, Inc., 117 F.Supp.2d 301, 305-06 (S.D. N.Y. 2000) (noting
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`that “any derivative work must recast, transform or adopt the authorship contained in the
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`preexisting work,” the Court found that “the authorship of the photographic work is entirely
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`14“A ‘derivative work’ is a work based upon one or more preexisting works, such as a translation, musical
`arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment,
`condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial
`revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship,
`is a ‘derivative work’.” 17 U.S.C. § 101.
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`-13-
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`

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`Case 8:06-cv-01921-JSM-AEP Document 93 Filed 08/07/08 Page 14 of 23 PageID 2348
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`different and separate from the authorship of the sculpture” depicted in the photograph).15 As
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`explained in SHL Imaging, “a photograph of . . . [a] ‘Puppy’ sculpture in Manhattan’s
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`Rockefeller Center[ ] merely depicts that sculpture; it does not recast, transform, or adopt .
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`. . [the] sculptural authorship. . . . [A]uthorship of the photographic work is entirely different
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`and separate from the authorship of the sculpture.” Id. at 306. The SHL court further noted:
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`This is not to suggest that photographs are incapable of derivative authorship.
`A cropped photograph of an earlier photograph is a derivative work. Re-
`shooting an earlier photographic work with some alteration of the expressive
`elements is another example. However, in both cases the nature of
`photographic authorship would have been recast, adapted, or transformed.
`Since plaintiff's photographs merely depict defendants' frames and do not
`recast, adapt or transform any authorship that may exist in the frames, they are
`not derivative works.
`
`Id.
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`It is undisputed that the artwork on the motorcycles is the original, creative expression
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`of Ryan Hathaway, and as such, entitled to copyright protection.16 Defendants contend that
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`15The Court rejects Defendants’ argument that its reliance on the SHL decision is misplaced. Having reviewed
`the language employed by Congress in defining a “derivative work,” see 17 U.S.C. § 101, this Court is not persuaded
`by Defendants’ contention that the holding in SHL is contrary to “expressed Congressional intent.”
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`16Defendants attack the validity of Latimer's copyright because the paintwork on the ZX-14s was done by Ryan
`Hathaway, who Defendants claim was an independent contractor (rather than a Roaring Toyz employee) with no written
`contract expressly identifying his design as a "work for hire." Generally, ownership of a copyright vests initially with
`the author of the work. 17 U.S.C. § 201(a) (“[T]he author is the party who actually creates the work, that is, the person
`who translates an idea into a fixed, tangible expression entitled to copyright protection.”). See Community for Creative
`Non-Violence v. Reid, 490 U.S. 730, 737 (1989) (citing 17 U.S.C. § 102). Where the creation is a "work for hire," the
`author (and, accordingly, the owner) of the work is considered to be the actual creator's employer.
`Here, Hathaway worked in his own shop located in Lake Placid, Florida, approximately 30 minutes from
`Roaring Toyz facility in Sarasota, Florida. Hathaway had provided services to Roaring Toyz for five to six years, during
`which he also produced work for other companies and individuals. While Roaring Toyz could commission other work,
`it did not have the right to arbitrarily assign Hathaway additional projects, and Hathaway retained complete discretion
`over when and how long he worked. Early in their relationship, Roaring Toyz paid Hathaway in cash, but by the time
`the ZX-14 project commenced, Roaring Toyz had begun paying by check upon completion of a project. Roaring Toyz
`works with the customization of the equipment on the motorcucles, leaving body and paint work to outside contractors
`such as Hathaway, eliminating the need to provide employee benefits and leaving the tax treatment to the contractor.
`Applying the factors set out in Reid, Hathaway’s artwork on the ZX-14s does not constitute a work for hire under the
`Copyright Act. See 17 U.S.C. §§ 102; 201. Hathaway has not taken the steps necessary under the Copyright Act to
`register his art work on the ZX-14s.
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`-14-
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`

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`Case 8:06-cv-01921-JSM-AEP Document 93 Filed 08/07/08 Page 15 of 23 PageID 2349
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`since Hathaway did not grant a license to Latimer to make a derivative work by
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`photographing Hathaway’s artwork, the photographs at issue are unauthorized derivative
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`works. The Copyright Act states that “[a] work consisting of editorial revisions, annotations,
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`elaborations, or other modifications [to a preexisting work that], as a whole, represent an
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`original work of authorship, is a ‘derivative work.’” 17 U.S.C. § 101. If, however, it is
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`non-infringing and sufficiently original, such a work qualifies for a separate copyright. See
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`17 U.S.C. § 103 (1994); Stewart v. Abend, 495 U.S. 207, 223-24 (1990).
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` The Court rejects Defendants’ argument that Latimer can have no copyrightable
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`interest in his photographs. Here, Latimer has not altered Hathaway’s artwork, recast it, or
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`otherwise transformed it during the photographic process. See Lee v. A.R.T. Co., 125 F.3d
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`580, 582-83 (7th Cir. 1997). The ZX-14s are the subject of the photographs. Hathaway’s
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`artwork has not been transformed in the slightest - it is presented in a different medium, but
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`it has not been changed in the process such that it meets the criteria for a derivative work
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`under