Cite as 117 F.Supp.2d 301 (S.D.N.Y. 2000)
price for plaintiff’s services. The documents therefore fail to comply with the § 204(a) requirements.
B. Implied License
Alternatively, defendants argue that they had an implied license to use the photographs in a catalogue. (Defs.’ Br. at 8: Defs’ Reply Br. at 14–15; Defs’ Supp. Br. at 4.) However, given the extensive reproduction of the photographs in various media, the implied license would have to be broader than limited use in a catalogue.
Recently, the Second Circuit cautioned that implied licenses will be found, “only in ‘narrow’ circumstances where one party ‘created a work at the [other’s] request and handed it over, intending that [the other] copy and distribute it.’ ” Smith-Kline Beecham Consumer Healthcare, L.P. v. Watson Pharms., Inc., 211 F.3d 21, 25 (2d Cir.2000). An implied license can only exist where an author creates a copyrighted work with knowledge and intent that the work would be used by another for a specific purpose. Thus, in Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 558 (9th Cir.1990), the copyright owner created special effects for a horror movie. Following a monetary disagreement and distribution of the movie, the copyright owner sued for infringement. Relying on the parties’ course of dealing and the copyright owner’s registration which stated that the special effects footage was to be used in the movie, the Ninth Circuit found an implied license. Thus, defendants had the right to use the special effects in the matter intended by plaintiff, i.e., in the movie. See 908 F.2d at 559 & n. 6.
Courts have also found implied licenses where jingles or songs were created for use by a specific radio station or a sports team and were used in exactly the manner intended by the copyright owner over a lengthy period. In those cases, the passage of time afforded the copyright owner ample opportunity to terminate the implied license. See Korman v. HBC Florida, 182 F.3d 1291, 1293 (11th Cir.1999); Jacob Maxwell, Inc. v. Veeck, 110 F.3d 749, 761–762 (11th Cir.1997).[1]
However, no court has found an implied license where the nature of the use is contested. The absence of an implied license to reproduce the photographs for catalogues and computer generated images does not render the C-prints useless; they are useful as sales tools without implying a license.
Further, there is no evidence of a meeting of the minds between plaintiff and defendants. Defendants do not maintain that Lindner created the C-Prints with the intention that defendants use them in any manner they wished. Nor do defendants suggest that plaintiff knew or intended that the prints be scanned in a computer or used for “magazine comps.” Rather, defendants merely allege that Lindner suspected defendants might use the photographs for a catalogue. (See Ferron Dep. at 55–56.) This is not sufficient evidence to establish an implied license. As Judge Sweet observed, “an implied license to use a copyrighted work ‘cannot arise out of the unilateral expectations of one party.’ There must be objective conduct that would permit a reasonable person to conclude that ‘an agreement had been reached.’ ” Design Options, Inc. v. BellePointe, Inc., 940 F.Supp. 86, 92 (S.D.N.Y.1996) (quoting Allen-Myland v. International Bus. Mach. Corp., 746 F.Supp. 520, 549 (E.D.Pa.1990)). See also N.A.D.A. Servs. Corp. v. Business Data of Virginia, Inc., 651 F.Supp. 44, 49 (E.D.Va.1986) (“The creation of an implied license, as in the creation of any implied contract, requires a meeting of the minds”). Here, the record shows only that plaintiff created the photographs, sold them to defendants
- ↑ In the cited cases, the Eleventh Circuit appears to regard implied license as an equitable device, akin to equitable estoppel. This view has been rejected by the Ninth Circuit, see Effects Assocs., 908 F.2d at 559 n. 7, which regards them as a variety of a legal, implied-in-fact contract.
