Latimer v. Roaring Toyz, Inc., 2010 WL 1253090 (11th Cir. 2010)
The facts of this case are somewhat convoluted. Kawasaki engaged a motorcycle shop to customize two ZX-14 motorcycles for use in promotional material. The customization shop hired a third-party designer to paint the bikes using his own graphics and color scheme. The owner of the cycle customization shop also hired a noted motorcycle photographer, at the bequest of Kawasaki, to take pictures of the customized ZX-14s. The customization shop never entered into written agreements with either the paint job designer or the photog.
The defendants moved for summary judgment arguing that the photographs were “unauthorized derivative works based upon protectable preexisting works” of the third-party artist who painted the bikes. The district court granted summary judgment to Kawasaki and the publisher of Cycle World finding that the phtog granted Kawasaki an implied license to use the photographs in its press release materials, and that Cycle World’s subsequent publication of the photographs was fair use (the District Court raised the issue of fair use sua sponte). The District Court also found that the photographs were not derivative works of the third-party artist’s paint design.
The Eleventh Circuit delved into a discussion of whether a photograph is a derivative work but ultimately found that the third-party paint artist had granted a non-exclusive license to the photog. The Court found that the third-party artist knew that the ZX-14 that he was customizing was ultimately for Kawasaki’s promotional purposes. The Circuit found that it was “reasonable to infer” that the third-party artist intended that his artwork be photographed and distributed by Kawasaki, the motorcycle customization shop, and the media. The Circuit thus found that the photographs were not infringing, and sidestepped the need to answer the question of whether the photographs were derivative of the the third-party artist’s paint work.
The Court also addressed the issue of whether fair use can be raised by a court sua sponte. The defendant-appellees elected not to assert fair use in their answer or in their motion for summary judgment. In a series of rather peculiar events, fair use was first raised by the district court sua sponte in its summary judgment order. It later vacated the order to allow the parties to brief, among other things, the issue of fair use. In the defendants brief on the second motion for summary judgment they stated “Defendants respectfully suggest that this Court need not go as far as fair use analysis in order to determine, as a matter of law, that [Cycle World's] use of the photographs was lawful.” On reconsideration the district court for a second time entered summary judgment in favor of the publisher of Cycle World on the issue, finding its distribution of the photos were a non-infringing fair use.
The photog on appeal argued that, as an affirmative defense, fair use must be pled in an answer. The Eleventh Circuit found that the district court erred in raising the defense sua sponte. The Circuit, however, did not decide the question of whether the defense was waived. The Circuit found that although an affirmative defense usually must be raised in an answer, courts recognize exceptions to the general proposition. The Circuit also stated in a footnote that if factual questions in any resulting fair use analysis “are in dispute, these must be resolved by the jury.”