Davis v. Tampa Bay Arena, Ltd

Filing 101

ORDER: Defendant's Motion for Partial Summary Judgment 86 is granted in part and denied in part. The motion is granted to the extent that the Court grants summary judgment in Defendant's favor on Plaintiff's copyright infringement claim (Count I of Plaintiff's amended complaint). The motion is denied with respect to Plaintiff's breach of bailment, conversion, and replevin claims. The Clerk is directed to enter final judgment in Defendant's favor and against P laintiff solely on Plaintiff's copyright infringement claim (Count I of Plaintiff's amended complaint). After entering final judgment, the Clerk is directed to REMAND this case to the Circuit Court of the Thirteenth Judicial Circuit in and for Hillsborough County, Florida, and provide that court with a copy of this Order. The Clerk of Court is directed to close this case and terminate any pending motions as moot. Signed by Judge James S. Moody, Jr on 6/27/2013. (LN)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION

G. MITCHELL DAVIS,
Plaintiff,
v.

Case No. 8:12-cv-60-T-30MAP

TAMPA BAY ARENA, LTD.,
d/b/a St. Pete Times Forum,
Defendant.
_____________________________________/

ORDER
THIS CAUSE comes before the Court upon Defendant’s Motion for Partial Summary
Judgment (Dkt. 86) and Plaintiff’s Response in Opposition (Dkt. 97). The Court, having
considered the motion, response, record evidence, and being otherwise advised in the
premises, concludes that the motion should be granted in part and denied in part.
BACKGROUND
This action seeks damages and injunctive relief for copyright infringement and related
state law claims. Plaintiff G. Mitchell Davis is a professional photographer. Defendant
Tampa Bay Arena, Ltd d/b/a Tampa Bay Times Forum (the “Forum”)1 is in the business of
hosting and serving as an entertainment venue for various concerts, sports, shows, and other
events in the Tampa Bay area.

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.

In 1996, Davis first performed photographic services for the Forum pursuant to a
verbal agreement. When Sean Flynn became the Marketing Director in 1998, the Forum
continued to engage Davis verbally to produce photographs on an event-by-event basis.
From 1998 until some time in 2000, Davis photographed all of the Forum’s events on film.
During the film era, after photographing an event, Davis would send the film to a third-party
vendor to process the film and create photographic transparencies (slides). Davis would then
review the images embodied in the transparencies, remove any inferior shots, order prints of
the best images to include in his personal portfolio, and then deliver the transparencies along
with an invoice to the Forum for his fee and all expenses for film and processing costs.
In 2000, Davis typed the terms of a written agreement that he negotiated with Flynn
regarding the “terms and conditions” under which Davis “accepts and will complete the
assignment to produce photographs of events for the [Forum].” (Dkt. 86-1). Under the
agreement, Davis was entitled to $150 per event for his photographic services, and an hourly
rate of $20 for events lasting more than four hours. Id. The agreement provided the Forum
with limited use of Davis’ photographs, including the “rights to reproduce images for
newsletter, advertising, display prints, broadcast, and the [Forum] web site.” Id. The
agreement also provided, with respect to “Ownership of Images”, that: “The [Forum] agrees
that the ownership and copyright remains that of [Davis]. All images are copyrighted by
[Davis] and will remain so. Photo credit will be given when applicable.” Id. Under
“Reproduction Rights”, the agreement also provided that: “The [Forum] agrees to allow
[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
all images photographed at the [Forum] are not for sale without their permission.” Id.
Around the same time that the written agreement was executed, Davis began to use
both a film camera and a digital camera to photograph events. From March 24, 2003, until
the termination of the parties’ relationship, Davis used only a digital camera to photograph
the Forum’s events. Davis possesses all digital images on backup CDs he created and kept.
In February 2007, the parties executed a second agreement, almost identical to the
initial written agreement.2 The only substantive changes increased Davis’ fee to $350.00 per
event, increased Davis’ hourly rate to $130.00 per hour, and amended “Reproduction
Restriction” to delete the requirement that the Forum obtain Davis’ permission before using
the images in “[p]osters for sell.” (Dkt. 86-2).
At some point in 2009, or 2010, the Forum created a Facebook page and began to post
Davis’ pictures of its events on the Facebook page.3 The Forum uses their Facebook page
for advertising. The record reflects that Davis initially objected to the Forum posting his
pictures on the Forum’s Facebook page. Davis did not like the Forum using his pictures on
its Facebook page and viewed the usage as a violation of his agreement. According to Davis,
he conditioned the Forum’s use of his pictures on its Facebook page as follows: (1) the
Forum could upload only low-resolution photographs; (2) the Forum had to properly credit
Davis for each of his photographs; (3) the Forum had to preserve metadata showing Davis’

2

Davis negotiated the second agreement with Flynn’s successor, Holly Brown.

3

Facebook is a social networking site that connects people with friends.
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ownership information of the images; and (4) the Forum had to protect Davis’ photographs
from third parties (i.e., so that they could not make unauthorized copies of his work).
The record reflects that in September 2010, Davis began to assist the Forum in posting
low resolution digital versions of Davis’ images to the Forum’s Facebook page. Specifically,
Davis created a password protected web portal access to his photo-server, which Davis
referred to as the “Ice Box”. Davis established logons and passwords that granted certain
marketing staff4 of the Forum permission to upload Davis’ images to Facebook in a small
version without first having to manually resize them.
The record reflects that from September 2010 until approximately March 2011, Davis
uploaded event photos on the Ice Box for the Forum’s Facebook posts. An e-mail dated
September 16, 2010, from Davis to Eckley, Babooram, and Straub stated: “Jessica, Please
make sure that the intern gives me photo credit this time please.” (Dkt. 86-5). That same
day, Eckley replied to all and stated: “I will. She definitely does on all of our Facebook
posts.” Id. In an e-mail dated September 19, 2010, from Davis to Eckley, Davis stated:
“Please bookmark this website. From now on you will download the images from events for
your Facebook account from here.” (Dkt. 86-3) (emphasis added). On October 9, 2010,
Davis sent an e-mail to Babooram and Eckley, with the subject “Facebook photos STP” that
stated, in relevant part: “OK Ladies, I just uploaded the photos for your facebook post from
last night:” (Dkt. 86-4) (emphasis added). There are similar e-mails from Davis to the

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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Forum’s marketing staff dated October 25, 2010, November 17, 2010, November 27, 2010,
December 6, 2010, December 13, 2010, December 20, 2010, January 6, 2011, January 23,
2011, January 30, 2011, February 21, 2011, February 28, 2011, and March 6, 2011, in which
Davis indicated that he had uploaded or refilled event photos on the Ice Box. See (Dkt. 864). Davis does not state in any of these e-mails any limitations on the Forum’s use of the
uploaded event photos on the Forum’s Facebook page. See id.
The record reflects that Davis notified the Forum’s marketing staff when they failed
to use low resolution images from The Icebox for the Forum’s Facebook posts. For example,
on January 23, 2011, Davis sent an e-mail to Zion and Eckley, which stated:
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,
(Dkt. 86-6).
The next day, Eckley sent an e-mail, explaining that the reason high res versions from
the DVD were posted was because Davis had forgotten to upload the low res images to the
Ice Box, which prompted Davis to explain that the purpose for establishing the Ice Box was
to facilitate posting low res images to the Forum’s Facebook page. The following reflects
portions from their January 24, 2011 e-mails:
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.
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.
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.
(Dkt. 86-7) (emphasis added).
At his deposition, Davis admitted he was not telling the Forum in these e-mails that
it was prohibited from posting low-resolution images on Facebook, but was instead telling
the Forum how to post low-resolution images on Facebook using the Ice Box. Davis also
testified that he constantly told Eckley verbally that the Forum’s use of his images on
Facebook was a violation of his agreement.
According to Davis, on or about February 2011, he complained to Eckley and Straub
about the use of his images on the Forum’s Facebook page. Around this time, Davis
discovered that third parties could download his images from Facebook and considered this
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a violation of his agreement. Davis testified at his deposition that when he told Straub that
he did not want his images posted on the Forum’s Facebook page, Straub responded that the
Forum needed to be able to post his images to Facebook for advertising. Davis interpreted
Straub’s response to mean that if Davis prohibited the Forum from posting his images to
Facebook, Davis would lose his role as the Forum’s photographer. Davis testified: “I was
either to quit my job or to let them keep downloading the photos to Facebook. I had no other
choice. So Elmer kept stringing me along by saying, we’re going to work on it. We’re going
to work on it. We’re going to work on it.” (Deposition of Davis at 250:10-14). During his
deposition, Davis also testified: “The only reason I ever put up with them using any pictures
on Facebook was because they were lying to me [about changing the photography
agreement]”. Id. at 258:15-21. Davis stated that the Forum was going to include “some type
of bonus for allowing them to use [his] photos for Facebook.” Id. at 258:22-23.
Nothing in the record suggests that Davis ever told the Forum during any point in their
relationship that he considered the use of his images on Facebook to be copyright
infringement. According to Davis, he allowed the Forum to continue to post his images on
Facebook because Straub told him that he would provide Davis with a new contract fairly
compensating Davis for the Facebook usage.
On February 24, 2011, Straub sent an e-mail to Davis stating, in relevant part: “I have
asked Paul D [the Forum’s attorney] to draw up an agreement that is current so we are
operating from something that originated w/ us (you, me, jessica and brittany), not any
former marketing folks because ultimately we are the ones working together.” (Dkt. 86-9).

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The record reflects that, during this time, Davis continued to e-mail the Forum’s marketing
staff when he uploaded new event photos to the Ice Box.
On March 9, 2011, Straub sent Davis a draft of the new agreement by e-mail. (Dkt.
86-11). On April 15, 2011, Straub e-mailed Davis indicating that there was a “tweak” to the
draft contract. (Dkt. 86-12). When Davis responded to ask what the “tweak” was, Straub
replied: “Giving you the right to be able to do your portfolio and even sell pics while
allowing us to post o[n] Facebook, website, etc and promote our events day to day, etc, etc”.
Id.
The parties were unable to agree on the terms of a new agreement. According to
Davis, the new agreement drastically changed the terms of his previous agreements with the
Forum. Subsequently, on June 16, 2011, Straub met with Davis and informed him that the
Forum would no longer be using him to photograph its events.
On July 15, 2011, Davis’ attorney sent a letter to the Forum. The letter stated, in
pertinent part, that the Forum was “in breach of the terms of the agreement signed by [Davis]
and the Forum . . . as well as predecessor agreements.” The letter also stated, in pertinent
part, that Davis was the “lawful owner of all of the images taken over the entire course of his
work for the Forum” and stated that Davis “would like to make arrangements to obtain
possession of all hard copy original images, including negatives, which are in the possession,
custody, or control of the Forum.” The letter also stated, in part: “If the Forum wishes to
make use of such originals or negatives pursuant to the Agreement, [Davis] will agree to
coordinate with the Forum to facilitate such use.” (Dkt. 55-4) (emphasis added).

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Davis estimates that he delivered between 23,000 and 33,000 slides to the Forum.
(Dkt. 97-1). According to Davis, the Forum returned approximately 200 slides to him.
According to Davis, the Forum told him that the slides returned to Davis were the only slides
that the Forum was able to locate.
Davis testified during his deposition that he is operating under his photography
agreements with the Forum “[u]ntil this court case is over”. (Deposition of Davis at 407:79).
Davis’ amended complaint against the Forum alleges claims for: copyright
infringement (Count I); breach of bailment (Count II); conversion (Count III); replevin
(Count IV); and breach of contract (Count V). The Forum moves for summary judgment on
Davis’ copyright infringement claim (Count I), and Davis’ property claims (Counts II-IV).
For the reasons stated below, the Court grants the Forum’s motion with respect to the
copyright claim and denies the Forum’s motion with respect to the property claims.
SUMMARY JUDGMENT STANDARD OF REVIEW
Motions for summary judgment should be granted only when the pleadings,
depositions, answers to interrogatories, and admissions on file, together with the affidavits,
show there is no genuine issue as to any material fact and that the moving party is entitled
to judgment as a matter of law. Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317,
322 (1986). The existence of some factual disputes between the litigants will not defeat an
otherwise properly supported summary judgment motion; “the requirement is that there be
no genuine issue of material fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248

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(1986) (emphasis in original). The substantive law applicable to the claimed causes of action
will identify which facts are material. Id. Throughout this analysis, the court must examine
the evidence in the light most favorable to the non-movant and draw all justifiable inferences
in its favor. Id. at 255.
Once a party properly makes a summary judgment motion by demonstrating the
absence of a genuine issue of material fact, whether or not accompanied by affidavits, the
nonmoving party must go beyond the pleadings through the use of affidavits, depositions,
answers to interrogatories and admissions on file, and designate specific facts showing that
there is a genuine issue for trial. Celotex, 477 U.S. at 324. The evidence must be
significantly probative to support the claims. Anderson, 477 U.S. at 248-49 (1986).
This Court may not decide a genuine factual dispute at the summary judgment stage.
Fernandez v. Bankers Nat’l Life Ins. Co., 906 F.2d 559, 564 (11th Cir. 1990). “[I]f factual
issues are present, the Court must deny the motion and proceed to trial.” Warrior Tombigbee
Transp. Co. v. M/V Nan Fung, 695 F.2d 1294, 1296 (11th Cir. 1983). A dispute about a
material fact is genuine and summary judgment is inappropriate if the evidence is such that
a reasonable jury could return a verdict for the nonmoving party. Anderson, 477 U.S. at 248;
Hoffman v. Allied Corp., 912 F.2d 1379 (11th Cir. 1990). However, there must exist a
conflict in substantial evidence to pose a jury question. Verbraeken v. Westinghouse Elec.
Corp., 881 F.2d 1041, 1045 (11th Cir. 1989).

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DISCUSSION
I.

Davis’ Copyright Infringement Claim
The Forum argues, in part, that it is entitled to summary judgment on Davis’ copyright

claim because Davis granted the Forum an implied license to post his images to the Forum’s
Facebook page. The Court agrees that, taking the record in a light most favorable to Davis,
the non-movant, it is undisputed that Davis granted the Forum an implied license to post his
images to the Forum’s Facebook page.
Although the Copyright Act provides that the transfer of an exclusive license to a
work must be in writing, the statute exempts nonexclusive licenses from the writing
requirement. See 17 U.S.C. § 204; 17 U.S.C. § 101 (defining transfer of copyright ownership
to exclude a nonexclusive license). Thus, a nonexclusive license to use a copyrighted work
“may be granted orally, or may even be implied from conduct.” Jacob Maxwell, Inc. v.
Veeck, 110 F.3d 749, 752 (11th Cir. 1997) (internal quotations omitted).
An implied license is created when: “(1) a person (the licensee) requests the creation
of a work, (2) the creator (the licensor) makes that particular work and delivers it to the
licensee who requested it, and (3) the licensor intends that the licensee copy and distribute
his work.” Thornton v. J Jargon Co., 580 F. Supp. 2d 1261, 1281 (M.D. Fla. 2008) (quoting
Nelson–Salabes, Inc. v. Morningside Dev., LLC, 284 F.3d 505, 514 (4th Cir. 2002); Effects
Assocs., Inc. v. Cohen, 908 F.2d 555, 558-59 (9th Cir. 1990)).
As explained by the Eleventh Circuit in Wilchombe v. TeeVee Toons, Inc.
A nonexclusive license to use copyrighted material may be granted
orally or implied from conduct . . . An implied nonexclusive license is
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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.”
555 F.3d 949, 956 (11th Cir. 2009); see also Latimer v. Roaring Toyz, Inc., 601 F.3d 1224,
1235 (11th Cir. 2010). “[A]n implied license will be limited to a specific use only if that
limitation is expressly conveyed when the work is delivered.” Latimer, 601 F.3d at 1235.
The record is undisputed that Davis granted the Forum an implied license to post his
images to the Forum’s Facebook page. The agreements demonstrate that the Forum
requested Davis to “produce photographs” of its events. As requested, Davis took the
photographs and delivered them to the Forum by establishing logons and passwords for the
Forum’s marketing staff to access the Ice Box photo-server. Davis also instructed the
Forum’s marketing staff to download the images to Facebook through the hyperlink to the
Ice Box. Davis then sent e-mails to the Forum after he uploaded the images to the Ice Box
in order to notify the Forum’s marketing staff when the images were ready to be posted to
Facebook. Additionally, Davis never told anyone at the Forum that he would file suit for
copyright infringement if the images were not removed from Facebook. Moreover, Davis
continued uploading the images to the Ice Box after Facebook added a feature that made it
possible for visitors to the Facebook page to make unauthorized copies of images posted on
Facebook.
In his response, Davis argues that there are genuine disputes regarding the scope of
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
use of his images on Facebook. Davis argues that “[t]here is a genuine issue of material fact
regarding the scope of any implied license that may have been created and to what extent the
Forum complied with that scope.” (Dkt. 97).
Davis’ response misses the salient issue. Davis neglects to acknowledge that his
copyright infringement claim fails even if the Court assumes that Davis attached conditions
to the scope of the implied license and assumes that the Forum failed to comply with those
conditions. In other words, the Court interprets any disputed facts on these issues in Davis’
favor, as the Court must do. However, any disputes on these issues are not material because,
even assuming that Davis attached conditions to the Forum’s use of his images on Facebook,
the record is clear that these conditions were covenants, not condition precedents to the
granting of the implied license. Accordingly, any breach on the Forum’s part of these
covenants provides Davis with a breach of contract claim against the Forum, not a copyright
infringement claim.
Importantly, copyright law is clear that a licensee’s breach of a covenant in a
copyright license does not rescind the authorization to use the copyright work, but rather
provides the licensor with a cause of action for a breach of contract. See Graham v. James,
144 F.3d 229, 236-37 (2d Cir. 1998); Atlantis Info. Tech. v. CA, Inc., 485 F. Supp. 2d 224,
233-34 (E.D.N.Y. 2007); see also Jacob Maxwell, Inc. v. Veeck, 110 F.3d 749, 753-54 (11th
Cir. 1997) (breach of a covenant in a copyright license does no more than provide licensor
an opportunity to seek rescission of the license, but does not constitute an ab initio rescission

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of the licensee’s permission to use a copyrighted work); Edgenet, Inc. v. Home Depot U.S.A.,
Inc., 2010 WL 148389, at *6 (E.D.Wis. Jan. 12, 2010) (quoting and relying on Graham ); RT
Computer Graphics, Inc. v. U.S., 44 Fed.Cl. 747, 756-57 (Fed.Cl.1999) (same).
The Second Circuit held in Graham that, if a defendant’s conduct “‘constitutes a
breach of a covenant undertaken [by the defendant] and if such covenant constitutes an
enforceable contractual obligation’” in the defendant’s license agreement with the copyright
holder, then the copyright holder will have “‘a cause of action for breach of contract,’ not
copyright infringement.” 144 F.3d at 236 (quoting Nimmer § 10.15[A], at 10–120); see also
Madison River Mgmt. Co. v. Bus. Mgmt. Software Corp., 387 F. Supp. 2d 521, 534
(M.D.N.C. 2005) (holding that a licensee’s use of a copyright work in excess of that which
was authorized under the license was a breach of a covenant under the terms of the license
agreement between the parties, and therefore the copyright holder was only entitled to breach
of contract damages, and not copyright remedies).
“Generally, provisions in a contract are presumed to be covenants rather than
conditions precedent because the alternative often results in a forfeiture against one party or
another.” Russian Entertainment Wholesale, Inc. v. Close-Up Intern., Inc. 767 F. Supp. 2d
392, 408-09 (E.D.N.Y. 2011). In Jacob Maxwell, the Eleventh Circuit affirmed the district
court’s granting of the defendant’s motion for summary judgment of non-infringement,
holding that the defendant had a nonexclusive license to play a song. See generally 110 F.3d
749. Specifically, a songwriter named James Albion agreed to write a team song for the
Miracle, a minor league baseball team. See id. at 751. “Albion agreed to write the song free
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of charge, to provide the Miracle with the Digital Audio Tape master, and to grant the
Miracle an exclusive license.” Id. In return, Miracle had to pay his out-of-pocket production
costs and give him credit as the author any time the song was played at games or distributed
on cassette tapes. See id. Albion delivered the song to the Miracle, and the team proceeded
to play it at many games during the course of a summer. See id. Albion, however, was never
given the promised authorship credit, and he sued the team, alleging copyright infringement
and breach of contract. See id.
On appeal, the Eleventh Circuit noted that the payment of Albion’s costs and public
recognition of his authorship of the song were not made conditions precedent to the team’s
right to play the song. See id. at 753. The Eleventh Circuit stated that the songwriter had
“expressly granted the Miracle permission to play the song before payment was tendered or
recognition received.” See id. at 754. “Implicit in that permission was a promise not to sue
for copyright infringement.” Id. at 753. The Eleventh Circuit noted: “Albion did not
withdraw permission although he attended many games and heard the song played, still
without payment or recognition, on various occasions. Indeed, he ... encourag[ed] the
Miracle to continue to play the song. Under these circumstances, we cannot say that
[Albion’s] permission to play was conditioned on prior payment and public recognition.”
Id. at 754.
In this case, the record is clear that despite the conditions Davis may have placed on
the Forum’s use of his images on its Facebook page, Davis did not withdraw his permission
to allow the Forum to use his images on Facebook even after Davis was placed on notice

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numerous times during the parties’ relationship that the Forum was not complying with the
conditions. Indeed, the record is undisputed that, as late as March 2011, which was after
Davis told Straub and Eckley that he did not want them using his images on Facebook, Davis
continued to e-mail the Forum’s marketing staff when he uploaded new images on the Ice
Box for their use on the Forum’s Facebook page. Davis’ testimony that he was waiting for
a new agreement during this time further demonstrates that the conditions were covenants,
not conditions precedent, and that, any breach of these covenants, amounted to a breach of
the implied license, not copyright infringement. Notably, Davis testified that Straub led him
to believe that the parties would negotiate a new agreement that compensated him for the use
of his images on Facebook.
According to Davis, he frequently informed the Forum that it was in violation of the
existing agreement. Again, this demonstrates that the Forum’s failure to abide by the terms
of the implied license constituted a breach of contract, not copyright infringement. It is also
notable that Davis did not attempt to rescind the implied license. In sum, Davis’ conduct in
this case demonstrates an implicit promise not to sue the Forum for copyright infringement.
Therefore, the appropriate remedy for any breach of the covenants is a breach of contract
action (which Davis has pled in Count V of his amended complaint), not a copyright
infringement action.
Accordingly, the Forum is entitled to summary judgment on Davis’ copyright
infringement claim.

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II.

Davis’ Breach of Bailment, Conversion, and Replevin Claims
The Forum raises a number of arguments in its attempt to defeat Davis’ breach of

bailment, conversion, and replevin claims. The Court concludes that the record is rife with
disputed facts on these issues. As an initial matter, it is unclear whether the Forum still
possesses Davis’ property. Assuming it does, however, there are disputed facts regarding
who owns the slides and who has a right to possession of the slides. With respect to
“Ownership of Images”, the agreements state that: “The [Forum] agrees that the ownership
and copyright remains that of [Davis].” (Dkt. 86-1, Dkt. 86-2). The record reflects that it
was Davis’ understanding that he owned the slides and was simply lending them to the
Forum for its convenience in exercising its limited use rights. Davis’ understanding is
supported by Brown’s testimony that, had she been asked, she would have returned the slides
to Davis because they were his property. Babooram’s testimony also lends support to Davis’
claim that he was entitled to the slides.
With respect to bailment, the record is disputed whether a bailment contract exists
here. There is evidence to suggest that an implied bailment contract was created when Davis
provided the slides to the Forum for a particular purpose and that the purpose has now been
fulfilled.
The Court also disagrees with the Forum’s argument that Davis has not sufficiently
identified the property. The record reflects that Davis delivered between 23,000 and 33,000
slides to the Forum. The record reflects that various members of the Forum’s marketing staff
remembered the slides, what they looked like, and where they were stored. There is also

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nothing in the record to suggest that the Forum has any other transparencies in its possession
that might be confused with Davis’ property; notably, the Forum was able to identify and
locate approximately 200 of Davis’ slides.
In sum, Davis’ claims of breach of bailment, conversion, and replevin must be
determined by the finder of fact. Accordingly, the Forum’s motion for summary judgment
with respect to these claims is denied.
III.

Supplemental Jurisdiction
Davis originally filed this action in the Circuit Court of the Thirteenth Judicial Circuit

in and for Hillsborough County, Florida, Case Number 11-15399 (K). On January 11, 2012,
the Forum removed the state-court action to this Court because Davis’ complaint essentially
pled a federal copyright claim (Dkt. 1). Thus, the basis for removal was federal jurisdiction.
The Court has now awarded judgment in the Forum’s favor on the sole federal claim, i.e, the
copyright claim. Pursuant to 28 U.S.C. § 1367(c), the Court has discretion to decline to
exercise supplemental jurisdiction over the state-law claims once the federal claims are
dismissed. In this case, Davis’ state-law claims of breach of bailment, conversion, replevin,
and breach of contract, depend on interpretations of state law. The Court concludes that
judicial economy, fairness, convenience, and comity compel the Court to decline jurisdiction
over the state-law claims because these claims are best resolved by the state court. See
United Mine Workers v. Gibbs, 383 U.S. 715, 726 (1966) (dismissal of state law claims
strongly encouraged when federal law claims are dismissed prior to trial).

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Accordingly, Davis’ state-law claims shall be remanded to state court, rather than
dismissed, because this case was originally filed in state court and removed to federal court.
See Lewis v. City of St. Petersburg, Fla., 260 F.3d 1260, 1267 (11th Cir. 2001).
It is therefore ORDERED AND ADJUDGED that, for the reasons stated herein:
1.

Defendant’s Motion for Partial Summary Judgment (Dkt. 86) is granted in part

and denied in part. The motion is granted to the extent that the Court grants summary
judgment in Defendant’s favor on Plaintiff’s copyright infringement claim (Count I of
Plaintiff’s amended complaint). The motion is denied with respect to Plaintiff’s breach of
bailment, conversion, and replevin claims.
2.

The Clerk of Court is directed to enter final judgment in Defendant’s favor and

against Plaintiff solely on Plaintiff’s copyright infringement claim (Count I of Plaintiff’s
amended complaint).
3.

After entering final judgment as stated in paragraph 2. herein, the Clerk of

Court is directed to remand this case to the Circuit Court of the Thirteenth Judicial Circuit
in and for Hillsborough County, Florida, and provide that court with a copy of this Order.
4.

The Clerk of Court is directed to close this case and terminate any pending

motions as moot.
DONE and ORDERED in Tampa, Florida on June 27, 2013.

Copies furnished to:
Counsel/Parties of Record
S:\Even\2012\12-cv-60.MSJ.frm

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