601 F.3d 1224 (11th Cir. 2010), 08-16665, Latimer v. Roaring Toyz, Inc.

Docket Nº:08-16665.
Citation:601 F.3d 1224, 94 U.S.P.Q.2d 1203
Opinion Judge:FAY, Circuit Judge:
Party Name:Todd LATIMER, Plaintiff-Appellant, v. ROARING TOYZ, INC., a Florida corporation, et al., Defendants, Kawasaki Motors Corp, USA, a foreign corporation, Hachette Filipacchi Media U.S., Inc., a foreign corporation, Defendants-Appellees.
Attorney:Frank Robert Jakes, Johnson, Blakely, Pope, Bokor, Ruppel, Zachary David Messa, Johnson, Pope, Bokor, Ruppel & Burns, P.A., Tampa, FL, for Plaintiff-Appellant. Michael C. Cessarano, Samuel Lewis, Feldman Gale, P.A., Miami, FL, for Defendants-Appellees.
Judge Panel:Before MARCUS, FAY and ANDERSON, Circuit Judges.
Case Date:April 02, 2010
Court:United States Courts of Appeals, Court of Appeals for the Eleventh Circuit
 
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Page 1224

601 F.3d 1224 (11th Cir. 2010)

94 U.S.P.Q.2d 1203

Todd LATIMER, Plaintiff-Appellant,

v.

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

Kawasaki Motors Corp, USA, a foreign corporation, Hachette Filipacchi Media U.S., Inc., a foreign corporation, Defendants-Appellees.

No. 08-16665.

United States Court of Appeals, Eleventh Circuit.

April 2, 2010

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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Frank Robert Jakes, Johnson, Blakely, Pope, Bokor, Ruppel, Zachary David Messa, Johnson, Pope, Bokor, Ruppel & Burns, P.A., Tampa, FL, for Plaintiff-Appellant.

Michael C. Cessarano, Samuel Lewis, Feldman Gale, P.A., Miami, FL, for Defendants-Appellees.

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

Before MARCUS, FAY and ANDERSON, Circuit Judges.

FAY, Circuit Judge:

This appeal arises out of an intellectual property dispute between a professional photographer and multiple defendants regarding the distribution and publication of photographs of a customized motorcycle. Todd Latimer sued Kawasaki Motors Corp., U.S.A. (" Kawasaki" ), Hachette Filipacchi Media U.S., Inc. (" Hachette" ), Roaring Toyz, Inc. (" Roaring Toyz" ), and Robert Fisher for copyright infringement and unfair competition, alleging that defendants copied and used his protected work without permission or authorization. Defendants maintain they were permitted to use the photographs and, as unauthorized derivative works, the photographs fail to qualify for copyright protection. The district court granted summary judgment to all defendants on the unfair competition claim and to Kawasaki and Hachette on the copyright infringement claims. The district court held that (1) Latimer's unfair competition claim is preempted by the Copyright Act,1 (2) the

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photographs are not unauthorized derivative works and thus they qualify for copyright protection, (3) Latimer granted Kawasaki an implied license to use the photographs in its press release materials, and (4) Hachette's subsequent publication of the photographs was fair use. We affirm in part and reverse in part.

I. BACKGROUND

A. Factual Background

We state the facts in the light most favorable to the non-moving party, plaintiff-appellant Todd Latimer, as required by the law controlling summary judgment.

Todd Latimer is a professional photographer who specializes in motorcycle photography. Latimer's passion for motorcycles and background in glamour and fashion photography helped him develop a reputation as a respected motorcycle photographer. Latimer is known for portraying motorcycles in a unique and artistic style. Latimer's photographs have appeared on the covers of motorcycle enthusiast magazines such as Two Wheel Tuner, Super Street Bike, and Cycle Scene.

In late 2004 or early 2005, Latimer was introduced to Roaring Toyz by his friend and Roaring Toyz employee, Bruce Casner. Roaring Toyz is a Florida based company that specializes in customizing sport motorcycles and manufacturing aftermarket2 parts for the same. Casner was familiar with Latimer's work and approached him to photograph aftermarket parts for a Roaring Toyz catalog. Several months later, Casner hired Latimer to help with the Roaring Toyz booth at the West Palm Beach Motorcycle Show. Casner arranged for models to appear in the booth and Latimer conducted several photo shoots during the show to generate interest in the Roaring Toyz display. During the show Latimer met Roaring Toyz president and founder, Robert Fisher.

In late 2005, Fisher retained John Del Cioppo, owner and operator of Graphics 2, a New Jersey corporation that had recently relocated to Florida, to manage Roaring Toyz websites and advise him on marketing and public relations issues. Prior to Del Cioppo's involvement, Fisher managed Roaring Toyz marketing efforts with assistance from his employees.

Kawasaki, a prominent motorcycle manufacturer, planned to unveil its highly anticipated ZX-14 sport motorcycle at Daytona Bike Week in March 2006. The ZX-14 promised to be the fastest production motorcycle ever built; and as such, news of its release generated a lot of excitement within the motorcycle community. While preparing for the introduction of the ZX-14, Kawasaki noted a trend developing in the marketplace for customized motorcycles. The ZX-14's main competition, the Suzuki Hayabusa, was particularly sought after for customization projects. In addition, many aftermarket parts were readily available for the Hayabusa, which increased its attractiveness to potential buyers. As a result, Kawasaki's marketing plan for the ZX-14 focused on the bike's customization potential and availability of aftermarket parts.

In an effort to further their marketing plan, Kawasaki engaged Roaring Toyz to customize two ZX-14 motorcycles. Kawasaki's Director of Product Planning, Patrick Kelly, discovered Roaring Toyz online and was impressed by their work. In January 2006, Kawasaki delivered two pre-production ZX-14 motorcycles to Roaring

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Toyz. The customized motorcycles were to be delivered to Daytona and displayed alongside the production model ZX-14 during Bike Week. Decisions regarding how the customization should be done, as well as what the final product should look like, were left to Roaring Toyz.

Roaring Toyz customized the mechanical features of motorcycles, leaving paint and body work to outside contractors. As such, Roaring Toyz commissioned Ryan Hathaway, an independent painter, to apply custom paint and graphics to the ZX-14 motorcycles. Hathaway had provided paint services to Roaring Toyz for five or six years, during which he also produced work for other companies and individuals. Fisher and Hathaway discussed graphic styles and color schemes but Hathaway made the final decisions as to the paint design and colors for the ZX-14s. During January and February 2006, Hathaway worked in his one-man shop designing the artwork, selecting the paint colors, and painting the bodywork for the ZX-14 motorcycles.

Meanwhile, Latimer was assigned by Two Wheel Tuner magazine to follow Roaring Toyz customization of the ZX-14 motorcycles. Specifically, Latimer's assignment was to provide photographs of the motorcycles at various stages of the customization process for inclusion with a magazine article. As a result of the assignment, Latimer was frequently present at the Roaring Toyz shop photographing the motorcycles. During one of his visits to Roaring Toyz, Latimer was approached by Fisher to photograph several other customized motorcycles for use on the Roaring Toyz website. On February 14 and 16, 2006, Latimer photographed three Yamaha R1s and three Suzuki Hayabusas, as requested by Fisher.

As Roaring Toyz worked to complete the ZX-14 project in time for Daytona Bike Week, Kawasaki was planning the ZX-14 World Press Introduction, to be held in late February 2006 in Las Vegas, Nevada. The ZX-14 World Press Introduction was an important event for Kawasaki and was carefully orchestrated to garner positive media exposure for the motorcycle's release. Kawasaki carefully selected its press invitees with a focus toward motorcycle enthusiast publications. One such publication in attendance was Cycle World magazine 3, which is owned by defendant-appellee Hachette.

As the press event approached, Kawasaki realized that in order to effectively implement its marketing plan, it needed to exhibit the customized ZX-14s to the media. The customized motorcycles were not scheduled to be completed until Daytona Bike Week in early March, and as such would not be available for the ZX-14 World Press Introduction in Las Vegas. Thus, Kawasaki's only alternative was to exhibit photographs of the customized motorcycles.

Kawasaki's public relations firm, Freeman & McCue, contacted Del Cippo to obtain photographs of the customized motorcycles. When Del Cippo responded with unsatisfactory images taken by the Roaring Toyz staff, Freeman McCue pleaded for " usable, reproducible photos" of the motorcycles. On February 23, 2006, Fisher contacted Latimer and explained Kawasaki's urgent request for photographs of the customized ZX-14s. Latimer agreed to conduct a photo shoot that evening to meet Kawasaki's February 24, 2006 deadline as long as he was paid for the photographs taken on February 14 and 16, 2006. Latimer claims that Fisher told

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him the ZX-14 photographs would be used on a placard to be displayed beside the ZX-14 motorcycles at Daytona Bike Week. However, Fisher and Del Cippo insist that they told Latimer the photographs would be used by Kawasaki for the press release in Las Vegas. Latimer denies being told this by either Fisher or Del Cippo. Latimer also claims that he made it clear to both Fisher and Del Cippo that the photographs could not be leaked before the publication of his article in Two Wheel Tuner.

Latimer worked throughout the night of February 23-24 photographing the customized ZX-14s, as requested by Fisher and Del Cippo. The photographs were taken at Roaring Toyz facility since there was only one kick stand for the two motorcycles. Due to the short deadline, Roaring Toyz employees assisted Latimer by running extension cords and power cables for lights and cameras and setting up the background and flooring. However, Latimer made all decisions regarding lighting, appropriate camera equipment and lens, camera settings and use of the white background, which was consistent with the industry practice he had noted in studying other advertising photographs.

When the photo session concluded on the morning of February 24, 2006, Latimer asked to be paid $800.00 for the photographs taken on February 14 and 16, 2006. Fisher gave Latimer...

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