Davis v. Tampa Bay Arena, Ltd

Filing 27

ORDER: Defendant's Motion to Dismiss Amended Complaint {20] is granted in part and denied in part. Defendant shall file an answer to the amended complaint within 14 days. Signed by Judge James S. Moody, Jr on 6/11/2012. (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 to Dismiss Amended
Complaint (Dkt. 20) and Plaintiff’s Response in opposition (Dkt. 23). The Court, having
considered the motion, response, and being otherwise advised of the premises, concludes that
the motion should be granted in part and denied in part.
BACKGROUND1
This action seeks damages and injunctive relief for copyright infringement and related
state law claims. Plaintiff G. Mitchell Davis alleges he is a professional photographer.
Defendant Tampa Bay Arena, Ltd (the “Forum”)2 is in the business of hosting and serving

1

The facts stated herein are taken from Davis’ amended complaint, and the exhibits thereto (Dkt. 16),
which the Court must assume to be true at the motion to dismiss stage.
2

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.

as an entertainment venue for various concerts, sports, shows, and other events in the Tampa
Bay area.
On or about November 20, 1996, Davis first performed photographic services for the
Forum. From this time through 1998, Davis took pictures for the Forum on an event-byevent basis, shooting approximately 17 shows. In 1998, Davis entered into a formal
agreement with the Forum to produce photographs of the Forum’s events. 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. The agreement provided the Forum with
limited use of Davis’ photographs, including the right to reproduce images for newsletter,
advertising, display prints, broadcast, and the venue web site.
From 1998 until January 2000, Davis photographed all of the Forum’s events on film.
From January 2000 until March 24, 2003, Davis photographed events with a digital camera,
in addition to film. As of March 24, 2003, Davis shot 262 concerts and used 922 rolls of film
and photographed between 23,000 and 33,000 usable separate images. These images were
developed and the originals were entrusted to the Forum to hold on Davis’ behalf in the form
of slides.
From March 24, 2003, until Davis’ termination on June 16, 2011, he used a digital
camera exclusively.
In August 2008, Davis entered into a successor contract with the Forum, which was
substantially similar to the 1998 contract, although Davis’ compensation per event was
increased to $350, with an hourly rate of $130 for events running longer than four hours.
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Under both contracts, Davis maintained full ownership and copyright of all
photographs he took at the Forum’s events.
At some point, the Forum created a Facebook page and posted Davis’ pictures of its
events on its Facebook page.3 In January 2011, Facebook added a feature that permitted the
automatic downloading of pictures posted on a Facebook page by simply clicking a button.
This feature allowed users to download Davis’ photographs from the Forum’s Facebook page
to their personal computers, free of charge and without restriction.
On January 23, 2011, Davis informed the Forum that its posting of Davis’
photographs to Facebook was a breach of the agreements. He also informed the Forum that
the posting of his photographs violated restrictive agreements between Davis and the artists
who were the subject of the photos.
Subsequently, Davis’ counsel sent a cease and desist letter to the Forum, demanding
that the Forum stop posting Davis’ photographs on Facebook, in violation of the contracts.
The letter, dated July 15, 2011 (Dkt. 16-4), outlined, in part, the Forum’s actions in breach
of the terms and conditions of their contract and requested the Forum to return to Davis any
original images, including negatives, in the possession, custody, or control of the Forum.
The Forum refused to remove Davis’ photos from its Facebook page. The Forum has
posted 255 of Davis’ photographs on Facebook.

3

Facebook is a social networking site that connects people with friends.
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In addition to the Facebook photographs, the Forum, without Davis’ permission, hung
large banners from the side of its building made from, or displaying, Davis’ photos. The
Forum also created lamp post banners from, or displaying, Davis’ photos. The use of Davis’
photos for these banners is in violation of artist agreements, in addition to a violation of
Davis’ contracts with the Forum.
On June 16, 2011, the Forum notified Davis that it would no longer use his
photographic services.
The instant action was originally filed in state court. On January 11, 2012, the Forum
removed Davis’ action to this Court. On March 15, 2012, Davis filed an amended complaint,
asserting a copyright claim and related state law claims against the Forum.
The Forum now moves to dismiss the entirety of Davis’ amended complaint for failure
to state a claim. For the reasons stated below, the Forum’s motion is granted in part.
MOTION TO DISMISS STANDARD OF REVIEW
Determining the propriety of granting a motion to dismiss requires courts to accept
all the factual allegations in the complaint as true and evaluate all inferences derived from
those facts in the light most favorable to the plaintiff. See Hunnings v. Texaco, Inc., 29 F.3d
1480, 1483 (11th Cir. 1994). Nonetheless, “conclusory allegations, unwarranted factual
deductions or legal conclusions masquerading as facts will not prevent dismissal.” Davila
v. Delta Air Lines, Inc., 326 F.3d 1183, 1185 (11th Cir. 2003). To survive a motion to
dismiss, a plaintiff’s complaint must include “enough facts to state a claim to relief that is
plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007).
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While in the ordinary case a plaintiff may find the bar exceedingly low to plead only
more than “a statement of facts that merely creates a suspicion [of] a legally cognizable right
of action,” it is clear that “a plaintiff’s obligation to provide the ‘grounds’ of his ‘entitlement
to relief’ requires more than labels and conclusions, and a formulaic recitation of the
elements of a cause of action will not do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555
(2007); see also Davis v. Coca-Cola Bottling Co. Consol., 516 F.3d 955, 974, n.43 (11th Cir.
2008) (noting the abrogation of the “no set of facts” standard and holding Twombly “as a
further articulation of the standard by which to evaluate the sufficiency of all claims”).
Absent the necessary factual allegations, “unadorned, the-defendant-unlawfully-harmed-me
accusation[s]” will not suffice. Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009).
DISCUSSION
I.

Davis’ Copyright Claim
The Forum raises several grounds for the dismissal of Davis’ copyright claim.

Notably, a number of the Forum’s arguments read like a summary judgment motion because
they rely on disputed facts and interpretations of the terms and conditions of the contracts;
these arguments are inappropriate at the motion to dismiss stage. For example, the Forum
argues that Davis has not properly alleged his exclusive rights to the photographs because,
under Fla. Stat. § 540.08, Davis is prohibited from publishing, printing, displaying, or
otherwise publicly using the photographs for purposes of trade or for any commercial or
advertising purpose unless Davis can demonstrate that he has obtained a release or waiver
from the artists he photographed. This argument requires an analysis of the facts and, in
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essence, serves as a denial or defense to Davis’ allegation that he owned the photographs.4
Thus, this argument in favor of dismissal is without merit.
The Forum also contends that, even if Davis acquired any of the exclusive rights in
the photographs, Davis subsequently divested himself of the very rights he claims the Forum
infringed because the two contracts for Davis’ photographic services provide the Forum with
reproduction and use rights. Again, this argument ignores Davis’ allegations that he owned
the exclusive rights to the photographs. Thus, this argument in favor of dismissal is without
merit.
And for the same reasons, the Forum’s argument that Davis failed to allege any acts
of copyright infringement is denied. Simply put, whether the Forum’s actions, such as
posting the photos on its Facebook page, fall within the contracts’ permitted use of
“newsletter, advertising, display prints, broadcast and the venue website” ignores the truth
of Davis’ allegations and is an issue that will have to be determined at summary judgment,
or at the trial of this case. Contrary to the Forum’s assertions, the contracts are not so clear
to constitute contradictions of the allegations.
The Forum’s next argument in favor of dismissal relates to the federal Copyright Act’s
registration requirement. The Forum contends that the Court must dismiss Davis’ copyright
infringement claim with respect to the 215 photographs that Davis failed to secure a federal
registration. The Court agrees that, although it is not a jurisdictional issue, registration of a

4

Notably, the attached contracts also state that the Forum agrees “that the ownership and copyright
remains that of [Davis]” (Dkts. 16-1 and 16-2).
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copyright is a mandatory precondition to suit for copyright infringement. See Marc Anthony
Builders, Inc. v. Javic Properties, LLC, 2011 WL 2709882, at *2 (M.D. Fla. July 12, 2011)
(discussing Reed Elsevier, Inc. v. Muchnick, 130 S.Ct. 1237 (2010) and the registration
requirement of 17 U.S.C. § 411(a)).
Here, Davis’ allegations admit that he has a registration certificate for only 40 of the
255 photographs that form the basis of his infringement claim. Thus, Count I is dismissed,
without prejudice, as to the 215 unregistered photographs. Davis may move to amend his
complaint to add these photographs once he meets this requirement.
The Forum’s final argument with respect to the copyright claim is that the Court
should dismiss Davis’ request for statutory damages and attorneys’ fees with respect to the
40 registered photographs. Upon consideration of the parties’ arguments on this issue, the
Court concludes that it would be inappropriate to strike or dismiss these claims for damages
at this stage. Although it is clear from the allegations and exhibits to the amended complaint
that the Forum’s alleged infringement of the photographs occurred before Davis registered
the 40 photographs (which precludes statutory damages and attorneys’ fees under 17 U.S.C.
§ 412(1)), whether any infringement of the photographs “commenced after first publication
of the work and before the effective date of its registration, unless such registration is made
within three months after the first publication of the work” cannot be determined without
further discovery on the issue. 17 U.S.C. § 412(2).
Thus, the Court reserves ruling on the issue of whether Davis can seek statutory
damages and attorneys’ fees as to the 40 registered photographs.
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In sum, Count I is dismissed without prejudice to amend as to the 215 unregistered
photographs.
II.

Davis’ Bailment, Conversion and Replevin Claims
The Forum’s arguments with respect to Davis’ state law claims of bailment,

conversion, and replevin are materially similar and without merit. The Forum applies an
overly strict analysis of the degree of specificity needed to state a claim and contends that
Davis fails to assert “the most basic elements” of the causes of action. The Court disagrees.
The bailment, conversion, and replevin claims relate to the Forum’s unlawful activity
with respect to Davis’ property, i.e., the photographs. The Forum argues with respect to each
claim that Davis failed to particularly identify the property. To the contrary, the common
allegations and the exhibits attached to the amended complaint identify with specificity that
the property consists of 23,050 usable transparencies from 262 events at the Forum.
Davis also alleges that he delivered the property to the Forum, that he was the owner
of the property, and that the Forum has retained the property, despite Davis’ demand for the
return of the property.
The allegations also support the element that the property was in the Forum’s care and
custody.
The Forum appears to dispute a number of Davis’ allegations, arguing that Davis
arrives at the number of 23,050 original photographic transparencies “through pure
speculation” and that Davis “has no idea how many slides exist or where those slides are
currently located.” The Forum argues that it returned some slides to Davis and does not have
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any additional slides in its possession. The Forum also argues that Davis did not demand the
return of the property. These arguments are inappropriate at the motion to dismiss stage.
In sum, the Forum’s motion to dismiss is denied with respect to Davis’ claims of
bailment, conversion, and replevin.
III.

Davis’ Breach of Contract Claim
The Forum argues that Davis does not identify the specific provisions of the contracts

that it allegedly breached. Upon review of the allegations and the attached contracts, the
Court concludes that Davis has pled sufficient allegations with respect to this claim.
Importantly, unlike other breach of contract claims before this Court where the Court
has ruled that the plaintiff did not identify the specific contractual provisions that were
breached, the two contracts at issue in this case are less than two pages in length, simply
written, and do not contain complex terms and conditions. Taken in this context, Davis’
allegations are sufficient.
Specifically, in paragraph 109 of the amended complaint, Davis identifies the Forum’s
breaches of the contracts (and in paragraph 108 references the contracts’ limited use rights
section) as follows: posting photographs on Facebook; had Banners made using photographs;
added corporate sponsorships to photographs; exceeded the authorized usage; refused to
return photographs; transferred certain ownership and usage rights to Facebook; failed to
secure permission of Davis for uses; failed to give photo credit; and used photos for the sale
of advertising to corporate partners without permission or compensation to Davis.

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In sum, these allegations state a claim for breach of contract and the Forum’s motion
to dismiss on this issue is denied.
The Forum also argues that the copyright infringement claim preempts the breach of
contract claim because the alleged breaches “fall squarely within those rights protected by
the federal Copyright Act.” This argument is without merit because the Eleventh Circuit has
held that a breach of contract claim is not preempted by the federal Copyright Act due to the
additional element of the existence of an agreement. Utopia Provider Sys., Inc. v. Pro-Med
Clinical Sys., L.L.C., 596 F.3d 1313, 1326-27 (11th Cir. 2010); Jaggon v. Rebel Rock
Entertainment, Inc., 2010 WL 3468101, at *3 (S.D. Fla. Sept. 1, 2010). Moreover, as Davis
points out, the allegations identify breaches that do not relate to the copyright infringement
claims.
IV.

Davis’ “Claim” for Permanent Injunction
The Forum argues that the Court should dismiss Count VI, a claim for permanent

injunction, because the law does not recognize a separate cause of action for permanent
injunction, which is a remedy.
Davis appears to concede this point, but argues that the allegations of Count VI can
be interpreted as bolstering the remedy portion of the copyright and breach of contract
claims.
The Court concludes that, to the extent the amended complaint asserts a separate
“claim” for permanent injunction, said claim is stricken. However, the allegations under this

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claim are not stricken to the extent that they relate to the remedy of a permanent injunction
with respect to the copyright and breach of contract claims.5
It is therefore ORDERED AND ADJUDGED that:
1.

Defendant’s Motion to Dismiss Amended Complaint (Dkt. 20) is granted in
part and denied in part as stated herein.

2.

Defendant shall file an answer to the amended complaint within fourteen (14)
days of this Order.

DONE and ORDERED in Tampa, Florida on June 11, 2012.

Copies furnished to:
Counsel/Parties of Record
S:\Even\2012\12-cv-60.mtdismiss20.frm

5

The Forum’s arguments with respect to whether Davis has met the elements of a permanent
injunction are inappropriate at this stage. Whether Davis can establish the lack of an adequate remedy at law
or the threat of irreparable harm is irrelevant at this stage.
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