Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 1 of 19 PageID 2438
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
`
`G. MITCHELL DAVIS,
`
`Plaintiff,
`
`v.
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`TAMPA BAY ARENA, LTD.,
`d/b/a St. Pete Times Forum,
`
`Defendant.
`_____________________________________/
`
`ORDER
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`Case No. 8:12-cv-60-T-30MAP
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`THIS CAUSE comes before the Court upon Defendant’s Motion for Partial Summary
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`Judgment (Dkt. 86) and Plaintiff’s Response in Opposition (Dkt. 97). The Court, having
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`considered the motion, response, record evidence, and being otherwise advised in the
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`premises, concludes that the motion should be granted in part and denied in part.
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`BACKGROUND
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`This action seeks damages and injunctive relief for copyright infringement and related
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`state law claims. Plaintiff G. Mitchell Davis is a professional photographer. Defendant
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`Tampa Bay Arena, Ltd d/b/a Tampa Bay Times Forum (the “Forum”)1 is in the business of
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`hosting and serving as an entertainment venue for various concerts, sports, shows, and other
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`events in the Tampa Bay area.
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`1 The Forum is the successor in interest to the facility f/k/a the Ice Palace Arena. For the
`purposes of this Order, the Court will refer to both entities as the Forum, since any distinction
`between them is irrelevant at this point.
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`

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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 2 of 19 PageID 2439
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`In 1996, Davis first performed photographic services for the Forum pursuant to a
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`verbal agreement. When Sean Flynn became the Marketing Director in 1998, the Forum
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`continued to engage Davis verbally to produce photographs on an event-by-event basis.
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`From 1998 until some time in 2000, Davis photographed all of the Forum’s events on film.
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`During the film era, after photographing an event, Davis would send the film to a third-party
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`vendor to process the film and create photographic transparencies (slides). Davis would then
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`review the images embodied in the transparencies, remove any inferior shots, order prints of
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`the best images to include in his personal portfolio, and then deliver the transparencies along
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`with an invoice to the Forum for his fee and all expenses for film and processing costs.
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`In 2000, Davis typed the terms of a written agreement that he negotiated with Flynn
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`regarding the “terms and conditions” under which Davis “accepts and will complete the
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`assignment to produce photographs of events for the [Forum].” (Dkt. 86-1). Under the
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`agreement, Davis was entitled to $150 per event for his photographic services, and an hourly
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`rate of $20 for events lasting more than four hours. Id. The agreement provided the Forum
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`with limited use of Davis’ photographs, including the “rights to reproduce images for
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`newsletter, advertising, display prints, broadcast, and the [Forum] web site.” Id. The
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`agreement also provided, with respect to “Ownership of Images”, that: “The [Forum] agrees
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`that the ownership and copyright remains that of [Davis]. All images are copyrighted by
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`[Davis] and will remain so. Photo credit will be given when applicable.” Id. Under
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`“Reproduction Rights”, the agreement also provided that: “The [Forum] agrees to allow
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`[Davis] the right to use images from their events for use in his portfolio, web site and for
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`composites. These images are to be used as a sample of his work only. [Davis] agrees that
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`all images photographed at the [Forum] are not for sale without their permission.” Id.
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`Around the same time that the written agreement was executed, Davis began to use
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`both a film camera and a digital camera to photograph events. From March 24, 2003, until
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`the termination of the parties’ relationship, Davis used only a digital camera to photograph
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`the Forum’s events. Davis possesses all digital images on backup CDs he created and kept.
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`In February 2007, the parties executed a second agreement, almost identical to the
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`initial written agreement.2 The only substantive changes increased Davis’ fee to $350.00 per
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`event, increased Davis’ hourly rate to $130.00 per hour, and amended “Reproduction
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`Restriction” to delete the requirement that the Forum obtain Davis’ permission before using
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`the images in “[p]osters for sell.” (Dkt. 86-2).
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`At some point in 2009, or 2010, the Forum created a Facebook page and began to post
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`Davis’ pictures of its events on the Facebook page.3 The Forum uses their Facebook page
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`for advertising. The record reflects that Davis initially objected to the Forum posting his
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`pictures on the Forum’s Facebook page. Davis did not like the Forum using his pictures on
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`its Facebook page and viewed the usage as a violation of his agreement. According to Davis,
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`he conditioned the Forum’s use of his pictures on its Facebook page as follows: (1) the
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`Forum could upload only low-resolution photographs; (2) the Forum had to properly credit
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`Davis for each of his photographs; (3) the Forum had to preserve metadata showing Davis’
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`2 Davis negotiated the second agreement with Flynn’s successor, Holly Brown.
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`3 Facebook is a social networking site that connects people with friends.
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`Page 3 of 19
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 4 of 19 PageID 2441
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`ownership information of the images; and (4) the Forum had to protect Davis’ photographs
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`from third parties (i.e., so that they could not make unauthorized copies of his work).
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`The record reflects that in September 2010, Davis began to assist the Forum in posting
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`low resolution digital versions of Davis’ images to the Forum’s Facebook page. Specifically,
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`Davis created a password protected web portal access to his photo-server, which Davis
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`referred to as the “Ice Box”. Davis established logons and passwords that granted certain
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`marketing staff4 of the Forum permission to upload Davis’ images to Facebook in a small
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`version without first having to manually resize them.
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`The record reflects that from September 2010 until approximately March 2011, Davis
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`uploaded event photos on the Ice Box for the Forum’s Facebook posts. An e-mail dated
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`September 16, 2010, from Davis to Eckley, Babooram, and Straub stated: “Jessica, Please
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`make sure that the intern gives me photo credit this time please.” (Dkt. 86-5). That same
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`day, Eckley replied to all and stated: “I will. She definitely does on all of our Facebook
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`posts.” Id. In an e-mail dated September 19, 2010, from Davis to Eckley, Davis stated:
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`“Please bookmark this website. From now on you will download the images from events for
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`your Facebook account from here.” (Dkt. 86-3) (emphasis added). On October 9, 2010,
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`Davis sent an e-mail to Babooram and Eckley, with the subject “Facebook photos STP” that
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`stated, in relevant part: “OK Ladies, I just uploaded the photos for your facebook post from
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`last night:” (Dkt. 86-4) (emphasis added). There are similar e-mails from Davis to the
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`4 Davis communicated with a number of the Forum’s marketing staff during the time that he
`assisted them with posting his images on the Forum’s Facebook page: Jessica Eckley, Nashira
`Babooram, Elmer Straub, and Brittany Zion.
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`Page 4 of 19
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`Forum’s marketing staff dated October 25, 2010, November 17, 2010, November 27, 2010,
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`December 6, 2010, December 13, 2010, December 20, 2010, January 6, 2011, January 23,
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`2011, January 30, 2011, February 21, 2011, February 28, 2011, and March 6, 2011, in which
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`Davis indicated that he had uploaded or refilled event photos on the Ice Box. See (Dkt. 86-
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`4). Davis does not state in any of these e-mails any limitations on the Forum’s use of the
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`uploaded event photos on the Forum’s Facebook page. See id.
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`The record reflects that Davis notified the Forum’s marketing staff when they failed
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`to use low resolution images from The Icebox for the Forum’s Facebook posts. For example,
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`on January 23, 2011, Davis sent an e-mail to Zion and Eckley, which stated:
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`Hey Girls,
`Please be aware that your new intern has uploaded the full size high res
`versions of the Circus and the Winter Jam photos. He also left it so you
`can DOWNLOAD the full resolution print quality images.
`If you give him the DVD and he does not know how to resize the
`images in photoshop this will happen again. That [sic] one of the
`reasons that I put the Ice Box page together. You can choose what size
`image you need and it will do the sizing for you.
`Please correct this problem,
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`(Dkt. 86-6).
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`The next day, Eckley sent an e-mail, explaining that the reason high res versions from
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`the DVD were posted was because Davis had forgotten to upload the low res images to the
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`Ice Box, which prompted Davis to explain that the purpose for establishing the Ice Box was
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`to facilitate posting low res images to the Forum’s Facebook page. The following reflects
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`portions from their January 24, 2011 e-mails:
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`Eckley 4:38 pm: Pedro cannot resize images from the CD so we will
`need you to upload low res versions to the Ice Box for us to switch
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`them out . . . Let us know when Winter Jam is up and we will grab
`them.
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`Davis 7:09 pm: I’m a little confused because nothing has changed with
`the Ice Box. It’s been in place since last year’s Storm season. I don’t
`need to upload low res versions of the images, you just need to choose
`to download the SMALL version of the image. This is just like when
`Nashira was downloading the high res version for Pollstar or Venue
`Today and you were downloading the small version for Facebook.
`Nothing has changed. If I need to I will be more than glad to come
`down and go over the procedure with everyone . . .
`
`Eckley 7:49 pm: Not that I need to explain, but our UNPAID intern,
`after working 40 hours this week plus two events took it on himself to
`go home and upload photos because you were concerned it wasn’t done
`yet . . . Pedro’s email below was simply pointing out that there was no
`pictures from Winter Jam in Ice Box.
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`Davis 9:48 pm: As I said I would be happy to come in and instruct you
`guys on how the download process works. In you[r] first email you
`asked me to re-upload low res versions . . . . The reason I put together
`the Ice Box was to make things easier for everyone. You don’t even
`have to contact me to download an image or if you need low res vs high
`res. You simply choose which size image and download it.
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`(Dkt. 86-7) (emphasis added).
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`At his deposition, Davis admitted he was not telling the Forum in these e-mails that
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`it was prohibited from posting low-resolution images on Facebook, but was instead telling
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`the Forum how to post low-resolution images on Facebook using the Ice Box. Davis also
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`testified that he constantly told Eckley verbally that the Forum’s use of his images on
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`Facebook was a violation of his agreement.
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`According to Davis, on or about February 2011, he complained to Eckley and Straub
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`about the use of his images on the Forum’s Facebook page. Around this time, Davis
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`discovered that third parties could download his images from Facebook and considered this
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`Page 6 of 19
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 7 of 19 PageID 2444
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`a violation of his agreement. Davis testified at his deposition that when he told Straub that
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`he did not want his images posted on the Forum’s Facebook page, Straub responded that the
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`Forum needed to be able to post his images to Facebook for advertising. Davis interpreted
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`Straub’s response to mean that if Davis prohibited the Forum from posting his images to
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`Facebook, Davis would lose his role as the Forum’s photographer. Davis testified: “I was
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`either to quit my job or to let them keep downloading the photos to Facebook. I had no other
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`choice. So Elmer kept stringing me along by saying, we’re going to work on it. We’re going
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`to work on it. We’re going to work on it.” (Deposition of Davis at 250:10-14). During his
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`deposition, Davis also testified: “The only reason I ever put up with them using any pictures
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`on Facebook was because they were lying to me [about changing the photography
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`agreement]”. Id. at 258:15-21. Davis stated that the Forum was going to include “some type
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`of bonus for allowing them to use [his] photos for Facebook.” Id. at 258:22-23.
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`Nothing in the record suggests that Davis ever told the Forum during any point in their
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`relationship that he considered the use of his images on Facebook to be copyright
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`infringement. According to Davis, he allowed the Forum to continue to post his images on
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`Facebook because Straub told him that he would provide Davis with a new contract fairly
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`compensating Davis for the Facebook usage.
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`On February 24, 2011, Straub sent an e-mail to Davis stating, in relevant part: “I have
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`asked Paul D [the Forum’s attorney] to draw up an agreement that is current so we are
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`operating from something that originated w/ us (you, me, jessica and brittany), not any
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`former marketing folks because ultimately we are the ones working together.” (Dkt. 86-9).
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`Page 7 of 19
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 8 of 19 PageID 2445
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`The record reflects that, during this time, Davis continued to e-mail the Forum’s marketing
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`staff when he uploaded new event photos to the Ice Box.
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`On March 9, 2011, Straub sent Davis a draft of the new agreement by e-mail. (Dkt.
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`86-11). On April 15, 2011, Straub e-mailed Davis indicating that there was a “tweak” to the
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`draft contract. (Dkt. 86-12). When Davis responded to ask what the “tweak” was, Straub
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`replied: “Giving you the right to be able to do your portfolio and even sell pics while
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`allowing us to post o[n] Facebook, website, etc and promote our events day to day, etc, etc”.
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`Id.
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`The parties were unable to agree on the terms of a new agreement. According to
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`Davis, the new agreement drastically changed the terms of his previous agreements with the
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`Forum. Subsequently, on June 16, 2011, Straub met with Davis and informed him that the
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`Forum would no longer be using him to photograph its events.
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`On July 15, 2011, Davis’ attorney sent a letter to the Forum. The letter stated, in
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`pertinent part, that the Forum was “in breach of the terms of the agreement signed by [Davis]
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`and the Forum . . . as well as predecessor agreements.” The letter also stated, in pertinent
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`part, that Davis was the “lawful owner of all of the images taken over the entire course of his
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`work for the Forum” and stated that Davis “would like to make arrangements to obtain
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`possession of all hard copy original images, including negatives, which are in the possession,
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`custody, or control of the Forum.” The letter also stated, in part: “If the Forum wishes to
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`make use of such originals or negatives pursuant to the Agreement, [Davis] will agree to
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`coordinate with the Forum to facilitate such use.” (Dkt. 55-4) (emphasis added).
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`Page 8 of 19
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 9 of 19 PageID 2446
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`Davis estimates that he delivered between 23,000 and 33,000 slides to the Forum.
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`(Dkt. 97-1). According to Davis, the Forum returned approximately 200 slides to him.
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`According to Davis, the Forum told him that the slides returned to Davis were the only slides
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`that the Forum was able to locate.
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`Davis testified during his deposition that he is operating under his photography
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`agreements with the Forum “[u]ntil this court case is over”. (Deposition of Davis at 407:7-
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`9).
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`Davis’ amended complaint against the Forum alleges claims for: copyright
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`infringement (Count I); breach of bailment (Count II); conversion (Count III); replevin
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`(Count IV); and breach of contract (Count V). The Forum moves for summary judgment on
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`Davis’ copyright infringement claim (Count I), and Davis’ property claims (Counts II-IV).
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`For the reasons stated below, the Court grants the Forum’s motion with respect to the
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`copyright claim and denies the Forum’s motion with respect to the property claims.
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` SUMMARY JUDGMENT STANDARD OF REVIEW
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`Motions for summary judgment should be granted only 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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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 10 of 19 PageID 2447
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`(1986) (emphasis in original). The substantive law applicable to the claimed causes of action
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`will identify which facts are material. Id. Throughout this analysis, the court must examine
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`the evidence in the light most favorable to the non-movant and draw all justifiable inferences
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`in its favor. Id. at 255.
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`Once a party properly makes a summary judgment motion by demonstrating the
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`absence of a genuine issue of material fact, whether or not accompanied by affidavits, the
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`nonmoving party must go beyond the pleadings through the use of affidavits, depositions,
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`answers to interrogatories and admissions on file, and designate specific facts showing that
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`there is a genuine issue for trial. Celotex, 477 U.S. at 324. The evidence must be
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`significantly probative to support the claims. Anderson, 477 U.S. at 248-49 (1986).
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`This Court may not decide a genuine factual dispute at the summary judgment stage.
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`Fernandez v. Bankers Nat’l Life Ins. Co., 906 F.2d 559, 564 (11th Cir. 1990). “[I]f factual
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`issues are present, the Court must deny the motion and proceed to trial.” Warrior Tombigbee
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`Transp. Co. v. M/V Nan Fung, 695 F.2d 1294, 1296 (11th Cir. 1983). A dispute about a
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`material fact is genuine and summary judgment is inappropriate if the evidence is such that
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`a reasonable jury could return a verdict for the nonmoving party. Anderson, 477 U.S. at 248;
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`Hoffman v. Allied Corp., 912 F.2d 1379 (11th Cir. 1990). However, there must exist a
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`conflict in substantial evidence to pose a jury question. Verbraeken v. Westinghouse Elec.
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`Corp., 881 F.2d 1041, 1045 (11th Cir. 1989).
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`Page 10 of 19
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 11 of 19 PageID 2448
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`I.
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`Davis’ Copyright Infringement Claim
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`DISCUSSION
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`The Forum argues, in part, that it is entitled to summary judgment on Davis’ copyright
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`claim because Davis granted the Forum an implied license to post his images to the Forum’s
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`Facebook page. The Court agrees that, taking the record in a light most favorable to Davis,
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`the non-movant, it is undisputed that Davis granted the Forum an implied license to post his
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`images to the Forum’s Facebook page.
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`Although the Copyright Act provides that the transfer of an exclusive license to a
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`work must be in writing, the statute exempts nonexclusive licenses from the writing
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`requirement. See 17 U.S.C. § 204; 17 U.S.C. § 101 (defining transfer of copyright ownership
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`to exclude a nonexclusive license). Thus, a nonexclusive license to use a copyrighted work
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`“may be granted orally, or may even be implied from conduct.” Jacob Maxwell, Inc. v.
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`Veeck, 110 F.3d 749, 752 (11th Cir. 1997) (internal quotations omitted).
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`An implied license is created when: “(1) a person (the licensee) requests the creation
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`of a work, (2) the creator (the licensor) makes that particular work and delivers it to the
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`licensee who requested it, and (3) the licensor intends that the licensee copy and distribute
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`his work.” Thornton v. J Jargon Co., 580 F. Supp. 2d 1261, 1281 (M.D. Fla. 2008) (quoting
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`Nelson–Salabes, Inc. v. Morningside Dev., LLC, 284 F.3d 505, 514 (4th Cir. 2002); Effects
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`Assocs., Inc. v. Cohen, 908 F.2d 555, 558-59 (9th Cir. 1990)).
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`As explained by the Eleventh Circuit in Wilchombe v. TeeVee Toons, Inc.
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`A nonexclusive license to use copyrighted material may be granted
`orally or implied from conduct . . . An implied nonexclusive license is
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`Page 11 of 19
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 12 of 19 PageID 2449
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`created when one party creates a work at another party’s request and
`hands it over, intending that the other party copy and distribute it . . . In
`determining whether an implied license exists, a court should look at
`objective factors evincing the party’s intent, including deposition
`testimony and whether the copyrighted material was delivered “without
`warning that its further use would constitute copyright infringement.”
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`555 F.3d 949, 956 (11th Cir. 2009); see also Latimer v. Roaring Toyz, Inc., 601 F.3d 1224,
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`1235 (11th Cir. 2010). “[A]n implied license will be limited to a specific use only if that
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`limitation is expressly conveyed when the work is delivered.” Latimer, 601 F.3d at 1235.
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`The record is undisputed that Davis granted the Forum an implied license to post his
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`images to the Forum’s Facebook page. The agreements demonstrate that the Forum
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`requested Davis to “produce photographs” of its events. As requested, Davis took the
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`photographs and delivered them to the Forum by establishing logons and passwords for the
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`Forum’s marketing staff to access the Ice Box photo-server. Davis also instructed the
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`Forum’s marketing staff to download the images to Facebook through the hyperlink to the
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`Ice Box. Davis then sent e-mails to the Forum after he uploaded the images to the Ice Box
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`in order to notify the Forum’s marketing staff when the images were ready to be posted to
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`Facebook. Additionally, Davis never told anyone at the Forum that he would file suit for
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`copyright infringement if the images were not removed from Facebook. Moreover, Davis
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`continued uploading the images to the Ice Box after Facebook added a feature that made it
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`possible for visitors to the Facebook page to make unauthorized copies of images posted on
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`Facebook.
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`In his response, Davis argues that there are genuine disputes regarding the scope of
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`any implied license that may have been created. Davis argues that he objected to the
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`Forum’s use of his images on Facebook and attached a number of conditions to the Forum’s
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`use of his images on Facebook. Davis argues that “[t]here is a genuine issue of material fact
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`regarding the scope of any implied license that may have been created and to what extent the
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`Forum complied with that scope.” (Dkt. 97).
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`Davis’ response misses the salient issue. Davis neglects to acknowledge that his
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`copyright infringement claim fails even if the Court assumes that Davis attached conditions
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`to the scope of the implied license and assumes that the Forum failed to comply with those
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`conditions. In other words, the Court interprets any disputed facts on these issues in Davis’
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`favor, as the Court must do. However, any disputes on these issues are not material because,
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`even assuming that Davis attached conditions to the Forum’s use of his images on Facebook,
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`the record is clear that these conditions were covenants, not condition precedents to the
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`granting of the implied license. Accordingly, any breach on the Forum’s part of these
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`covenants provides Davis with a breach of contract claim against the Forum, not a copyright
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`infringement claim.
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`Importantly, copyright law is clear that a licensee’s breach of a covenant in a
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`copyright license does not rescind the authorization to use the copyright work, but rather
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`provides the licensor with a cause of action for a breach of contract. See Graham v. James,
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`144 F.3d 229, 236-37 (2d Cir. 1998); Atlantis Info. Tech. v. CA, Inc., 485 F. Supp. 2d 224,
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`233-34 (E.D.N.Y. 2007); see also Jacob Maxwell, Inc. v. Veeck, 110 F.3d 749, 753-54 (11th
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`Cir. 1997) (breach of a covenant in a copyright license does no more than provide licensor
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`an opportunity to seek rescission of the license, but does not constitute an ab initio rescission
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 14 of 19 PageID 2451
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`of the licensee’s permission to use a copyrighted work); Edgenet, Inc. v. Home Depot U.S.A.,
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`Inc., 2010 WL 148389, at *6 (E.D.Wis. Jan. 12, 2010) (quoting and relying on Graham ); RT
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`Computer Graphics, Inc. v. U.S., 44 Fed.Cl. 747, 756-57 (Fed.Cl.1999) (same).
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`The Second Circuit held in Graham that, if a defendant’s conduct “‘constitutes a
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`breach of a covenant undertaken [by the defendant] and if such covenant constitutes an
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`enforceable contractual obligation’” in the defendant’s license agreement with the copyright
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`holder, then the copyright holder will have “‘a cause of action for breach of contract,’ not
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`copyright infringement.” 144 F.3d at 236 (quoting Nimmer § 10.15[A], at 10–120); see also
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`Madison River Mgmt. Co. v. Bus. Mgmt. Software Corp., 387 F. Supp. 2d 521, 534
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`(M.D.N.C. 2005) (holding that a licensee’s use of a copyright work in excess of that which
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`was authorized under the license was a breach of a covenant under the terms of the license
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`agreement between the parties, and therefore the copyright holder was only entitled to breach
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`of contract damages, and not copyright remedies).
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`“Generally, provisions in a contract are presumed to be covenants rather than
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`conditions precedent because the alternative often results in a forfeiture against one party or
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`another.” Russian Entertainment Wholesale, Inc. v. Close-Up Intern., Inc. 767 F. Supp. 2d
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`392, 408-09 (E.D.N.Y. 2011). In Jacob Maxwell, the Eleventh Circuit affirmed the district
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`court’s granting of the defendant’s motion for summary judgment of non-infringement,
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`holding that the defendant had a nonexclusive license to play a song. See generally 110 F.3d
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`749. Specifically, a songwriter named James Albion agreed to write a team song for the
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`Miracle, a minor league baseball team. See id. at 751. “Albion agreed to write the song free
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 15 of 19 PageID 2452
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`of charge, to provide the Miracle with the Digital Audio Tape master, and to grant the
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`Miracle an exclusive license.” Id. In return, Miracle had to pay his out-of-pocket production
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`costs and give him credit as the author any time the song was played at games or distributed
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`on cassette tapes. See id. Albion delivered the song to the Miracle, and the team proceeded
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`to play it at many games during the course of a summer. See id. Albion, however, was never
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`given the promised authorship credit, and he sued the team, alleging copyright infringement
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`and breach of contract. See id.
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`On appeal, the Eleventh Circuit noted that the payment of Albion’s costs and public
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`recognition of his authorship of the song were not made conditions precedent to the team’s
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`right to play the song. See id. at 753. The Eleventh Circuit stated that the songwriter had
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`“expressly granted the Miracle permission to play the song before payment was tendered or
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`recognition received.” See id. at 754. “Implicit in that permission was a promise not to sue
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`for copyright infringement.” Id. at 753. The Eleventh Circuit noted: “Albion did not
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`withdraw permission although he attended many games and heard the song played, still
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`without payment or recognition, on various occasions. Indeed, he ... encourag[ed] the
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`Miracle to continue to play the song. Under these circumstances, we cannot say that
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`[Albion’s] permission to play was conditioned on prior payment and public recognition.”
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`Id. at 754.
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`In this case, the record is clear that despite the conditions Davis may have placed on
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`the Forum’s use of his images on its Facebook page, Davis did not withdraw his permission
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`to allow the Forum to use his images on Facebook even after Davis was placed on notice
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`Page 15 of 19
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 16 of 19 PageID 2453
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`numerous times during the parties’ relationship that the Forum was not complying with the
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`conditions. Indeed, the record is undisputed that, as late as March 2011, which was after
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`Davis told Straub and Eckley that he did not want them using his images on Facebook, Davis
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`continued to e-mail the Forum’s marketing staff when he uploaded new images on the Ice
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`Box for their use on the Forum’s Facebook page. Davis’ testimony that he was waiting for
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`a new agreement during this time further demonstrates that the conditions were covenants,
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`not conditions precedent, and that, any breach of these covenants, amounted to a breach of
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`the implied license, not copyright infringement. Notably, Davis testified that Straub led him
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`to believe that the parties would negotiate a new agreement that compensated him for the use
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`of his images on Facebook.
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`According to Davis, he frequently informed the Forum that it was in violation of the
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`existing agreement. Again, this demonstrates that the Forum’s failure to abide by the terms
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`of the implied license constituted a breach of contract, not copyright infringement. It is also
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`notable that Davis did not attempt to rescind the implied license. In sum, Davis’ conduct in
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`this case demonstrates an implicit promise not to sue the Forum for copyright infringement.
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`Therefore, the appropriate remedy for any breach of the covenants is a breach of contract
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`action (which Davis has pled in Count V of his amended complaint), not a copyright
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`infringement action.
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`Accordingly, the Forum is entitled to summary judgment on Davis’ copyright
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`infringement claim.
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`Page 16 of 19
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 17 of 19 PageID 2454
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`II.
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`Davis’ Breach of Bailment, Conversion, and Replevin Claims
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`The Forum raises a number of arguments in its attempt to defeat Davis’ breach of
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`bailment, conversion, and replevin claims. The Court concludes that the record is rife with
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`disputed facts on these issues. As an initial matter, it is unclear whether the Forum still
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`possesses Davis’ property. Assuming it does, however, there are disputed facts regarding
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`who owns the slides and who has a right to possession of the slides. With respect to
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`“Ownership of Images”, the agreements state that: “The [Forum] agrees that the ownership
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`and copyright remains that of [Davis].” (Dkt. 86-1, Dkt. 86-2). The record reflects that it
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`was Davis’ understanding that he owned the slides and was simply lending them to the
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`Forum for its convenience in exercising its limited use rights. Davis’ understanding is
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`supported by Brown’s testimony that, had she been asked, she would have returned the slides
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`to Davis because they were his property. Babooram’s testimony also lends support to Davis’
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`claim that he was entitled to the slides.
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`With respect to bailment, the record is disputed whether a bailment contract exists
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`here. There is evidence to suggest that an implied bailment contract was created when Davis
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`provided the slides to the Forum for a particular purpose and that the purpose has now been
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`fulfilled.
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`The Court also disagrees with the Forum’s argument that Davis has not sufficiently
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`identified the property. The record reflects that Davis delivered between 23,000 and 33,000
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`slides to the Forum. The record reflects that various members of the Forum’s marketing staff
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`remembered the slides, what they looked like, and where they were stored. There is also
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`Page 17 of 19
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`Case 8:12-cv-00060-JSM-MAP Document 101 Filed 06/27/13 Page 18 of 19 PageID 2455
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`nothing in the record to suggest that the Forum has any other transparencies in its possession
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`that might be confused with Davis’ property; notably, the Forum was able to identify and
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`locate approximately 200 of Davis’ slides.
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`In sum, Davis’ claims of breach of bailment, conversion, and replevin must be
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`determined by the finder of fact. Accordingly, the Forum’s motion for summary judgment
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`with respect to these claims is denied.
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`III.
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`Supplemental Jurisdiction
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`Davis originally filed this action in the Circuit Court of the Thirteenth Judicial Circuit
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`in and for Hillsborough County, Florida, Case Number 11-15399 (K). On January 11, 2012,
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`the Forum removed the state-court action to this Court because Davis’ complaint essentially
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`pled a federal copyright claim (Dkt. 1). Thus, the basis for removal was federal jurisd