Opinion

Yellow Pages Photos, Inc. v. YP, LLC

Court: Court of Appeals for the Eleventh Circuit
Filed: Aug 19, 2021
Status: Unpublished
Nature of suit: NEW
Cited by: 0 cases
Authority: More cited than 16.8%

stating that generally a licensor has a claim for breach of contract, not copyright infringement, where a licensee breaches a covenant

How later courts described this case

stating that generally a licensor has a claim for breach of contract, not copyright infringement, where a licensee breaches a covenant
“It is true that a defendant intending to assert an affirmative defense must raise it in a responsive pleading, and failure to do so typically results in a waiver of the defense.”

Written by the judges who cited it.

The opinion

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 1 of 39

[DO NOT PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

________________________

No. 20-13627

________________________

D.C. Docket No. 8:17-cv-00764-CEH-JSS

YELLOW PAGES PHOTOS, INC.,

Plaintiff-Counter Defendant-Appellant,

versus

YP, LLC,

d.b.a. The Real Yellow Pages,

PRINT MEDIA LLC,

d.b.a. Print Media Solutions LLC,

Defendants-Counter Claimants-Appellees.

________________________

Appeal from the United States District Court

for the Middle District of Florida

________________________

(August 19, 2021)

Before BRANCH, GRANT, and JULIE CARNES, Circuit Judges.

PER CURIAM:

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 2 of 39

Yellow Pages Photos, Inc., owns copyrights in stock image collections and

licenses the use of those images to other companies. Two of those companies were

L.M. Berry and AT&T Advertising, which used the licensed photos in phone

directory advertisements. Over the past fifteen years, those companies have been

acquired and repeatedly merged with different entities. And those merged

entities—the defendants here—believe that they (as L.M. Berry and AT&T

Advertising’s affiliates) still hold the licenses to use Yellow Pages Photos’ stock

images. Yellow Pages Photos disagrees and sued two of L.M. Berry and AT&T

Advertising’s affiliates—YP, LLC, and Print Media—for copyright infringement

after those entities used its photos in advertisements.

YP and Print Media moved for summary judgment, arguing that as affiliates

of L.M. Berry and AT&T Advertising, they were allowed to use Yellow Pages

Photos’ images under the licenses that those companies held. The district court

granted the defendants’ motion in part but decided that there was a genuine issue

of material fact over whether Print Media was an affiliate of L.M. Berry. Because

Print Media had used ten images that were covered only by the L.M. Berry license,

the district court denied summary judgment to Print Media on those ten images.

Print Media then filed a supplemental motion for summary judgment,

arguing that the L.M. Berry license still allowed it to use those ten images in its

advertisements because the license allowed anyone to use the images in “renewals,

republications, or reprints” of earlier permissibly created ads. That, it said, was the

only way it used those ten images. The district court agreed and granted summary

judgment for Print Media.

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Yellow Pages Photos now appeals both orders. We review the grant of

summary judgment de novo, considering the evidence in the light most favorable

to the nonmoving party. Tracy v. Fla. Atl. Univ. Bd. of Trs., 980 F.3d 799, 804–05

(11th Cir. 2020).

Yellow Pages Photos raises many of the same issues on appeal that it did

before the district court. The district court addressed those arguments in two

thorough and well-reasoned opinions. We conclude that the district court correctly

determined that the AT&T and L.M. Berry licenses allowed for YP’s and Print

Media’s uses of Yellow Pages Photos’ images. We therefore affirm for the reasons

given in the district court’s decisions, which are attached as Appendix A and

Appendix B.

AFFIRMED.

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APPENDIX A

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA

TAMPA DIVISION

YELLOWPAGES PHOTOS, INC.,

Plaintiff,

v. Case No: 8:17-cv-764-T-36JSS

YP, LLC and PRINT MEDIA LLC,

Defendants.

___________________________________/

ORDER

This matter comes before the Court upon Defendants YP LLC and Print Media LLC’s

Motion for Summary Judgment (Doc. 175), Plaintiff’s response thereto (Doc. 135),

Defendants’ reply (Doc. 141), Plaintiff’s Notice to Take Judicial Notice (Doc. 133), and

Defendants’ response thereto (Doc. 169). The Amended Complaint alleges two counts for

Media LLC. Doc. 45 ¶¶ 23-48. In their joint Motion for Summary Judgment, Defendants

argue that they are entitled to summary judgment and dismissal of Plaintiff’s Amended

Complaint with prejudice because they were permitted to use Plaintiff’s copyrighted

images under the licenses. Doc. 175. Plaintiff responds that Defendants are not among the

entities permitted to use the licenses and that, even if they were, Defendants exceeded the

scope of the licenses. Doc. 135.

In the Motion for Judicial Notice, Plaintiff requests that this Court judicially notice a

Quarterly Report that AT&T Inc. filed with the Securities and Exchange Commission

pursuant to Section 13 or 15(d) of the Securities and Exchange Act of 1934 for the

quarterly period that ended June 30, 2012. Doc. 133. Defendants do not object to the

motion. Doc. 169. The Court, having Case 8:17-cv-00764-CEH-JSS Document 196 Filed

11/27/19 Page 2 of 33 PageID 6113

considered the motions and being fully advised in the premises, will grant Defendants’

Motion for Summary Judgment in part and deny it in part, and grant Plaintiff’s Motion for

Judicial Notice.

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With respect to Defendant YP, LLC, the undisputed evidence shows that it was permitted to

use the licenses at issue in this case, and that none of its actions fell outside the scope of the

license or otherwise invalidated its use of the images under the license. Accordingly, the

Court will grant Defendants’ Motion for Summary Judgment on the issue of whether

Defendant YP, LLC was permitted to use the licenses. As a matter of law, Defendant YP,

LLC’s use of Plaintiff’s copyrighted images covered by the licenses did not constitute

Defendant YP, LLC used only images covered by the licenses, the Court cannot grant

summary judgment as to Count I of the Amended Complaint.

With respect to Defendant Print Media LLC, the undisputed evidence shows that it was

permitted to use images covered by the “Software License and Maintenance—Snap-Out

Agreement 20071211.071.C Between Yellow Pages Photo, Inc. And AT&T Services, Inc.”

(the “ATT License”), and, as a matter of law, any use of such images did not constitute

between L.M. Berry and Company, and all affiliates owned or owning the same, and

Yellow Pages Photos, Inc. (the “Berry License”) (Doc. 157-2) is ambiguous with respect to

whether all affiliates of L.M. Berry and Company were covered by the license. The Court,

therefore, cannot determine as a matter of law whether Defendant Print Media LLC’s use of

such images constituted copyright infringement. Additionally, the evidence is disputed as

to whether all images were covered by the licenses.

Accordingly, the Court will deny summary judgment as to Count II of the Amended

Complaint.

Regarding Plaintiff’s request for Defendants’ profits from any copyright infringement, the

undisputed evidence shows that Defendants did not profit from their use of YPPI’s

copyrighted Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 3 of 33

PageID 6114

images. Accordingly, the Court will grant summary judgment on this issue. Plaintiff may

not claim Defendants’ profits as damages.

Additionally, pursuant to Federal Rule of Civil Procedure 56(f), the Court directs the

parties to advise the Court (1) whether all images used by Defendant YP, LLC were

covered by the licenses; and (2) whether all images used by Defendant Print Media LLC

were covered by the ATT License, so that the Court may determine whether summary

judgment should be granted or denied, in whole or in part, as to the claims contained in the

Amended Complaint. The Court also directs Defendants to advise the Court whether it

intends to proceed on its counterclaims for declaratory judgment and attorneys’ fees and

costs. See doc. 51 at 13-14.

I. BACKGROUND AND FACTS 1

The Court has determined the facts, which are undisputed unless otherwise noted, based on

the parties’ submissions, including depositions, interrogatory responses, declarations, and

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A. The Claims

Plaintiff Yellowpages Photos, Inc. (“YPPI”) filed a Complaint against Defendants YP LLC

d/b/a “The Real Yellow Pages” (“Yellow Pages”) and Print Media LLC, d/b/a Print Media

Solutions, LLC (“Print Media”) (collectively, “Defendants”) alleging that Defendants

infringed on at least 230 of YPPI’s federally registered copyrighted images. Doc. 45 ¶ 1.

YPPI alleges that Defendants profited from such use by publishing ads in their telephone

directories using the images without license or permission from YPPI. Id.

Plaintiff alleges one count for direct copyright infringement against Yellow Pages. Id. ¶¶

23-36. In that count, Plaintiff alleges that since April 2014, Yellow Pages copied,

published, transmitted, and used at least 230 of YPPI’s copyrighted images in connection

with Yellow Pages’

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sale, publication, distribution, and use of advertisements in web-based telephone

directories. Id. ¶ 24. Additionally, YPPI alleges that Yellow Pages copied, published,

transmitted, and used YPPI’s copyrighted images in connection with Yellow Pages’

creation, publication, and sale of websites for Yellow Pages’ customers. Id. ¶ 25. YPPI

further alleges that between April and August 2014, Yellow Pages copied, published,

transmitted, and used YPPI’s copyrighted images in connection with Yellow Pages’ sale,

publication, distribution, and use of advertisements in print-based telephone directories. Id.

¶ 26. YPPI alleges that it did not license or otherwise authorize Yellow Pages to copy,

transmit, or use any of YPPI’s copyrighted images in connection with the infringing

advertisements, and that Yellow Pages’ actions were either knowing or due to willful

ignorance. Id. ¶¶ 31, 33. YPPI also alleges that Yellow Pages profited from its copyright

infringement. Id. ¶

35.

In addition, YPPI alleges one count for direct copyright infringement against Print Media.

Id. ¶¶ 37-48. YPPI alleges that since August 1, 2014, Print Media has copied, published,

transmitted, and used at least 230 of YPPI’s copyrighted images in connection with Print

Media’s sale, publication, distribution, and use of advertisements in print-based telephone

directories. Id. ¶ 38. Additionally, YPPI alleges that it did not license or otherwise

authorize Print Media to copy, transmit, or use any of YPPI’s images in connection with the

infringing advertisements, and that Print Media’s actions were either knowing or due to

willful ignorance. Id. ¶¶ 43, 45. YPPI also alleges that Print Media profited from its

exhibits (Doc. 119-122; Doc. 135; Doc. 141), as well as the parties’ Stipulation of Agreed

Material Facts (Doc. 143).

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In the Answer, jointly filed by Defendants, they admit that certain YPPI images have been

used in web-based advertisements bearing “YP” branding, but contend that all such uses

were permitted under one or more license agreements with YPPI, or its affiliates,

predecessors, or principal. Doc. 51 ¶¶ 24, 38. Defendants deny infringing on YPPI’s

copyrights, knowingly, Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19

Page 5 of 33 PageID 6116

willfully ignorantly, or otherwise. Id. ¶¶ 27-30, 39-43. Defendants also deny having

profited from any alleged copyright infringement. Id. ¶¶ 35-47.

Defendants assert two counterclaims against YPPI. Id. ¶¶ 1-27. Defendants contend in

their counterclaims that YPPI has been unable to sell a new license for its photos since

2008, so it has made its business litigation. Id. ¶ 3. Defendants list various cases filed by

YPPI, two of which were settled, two of which resulted in recovery for YPPI, and one of

which was dismissed on grounds of res judicata, judicial estoppel, and collateral estoppel.

Id. ¶ 4.

Defendants allege that they had rights to a license originally entered into between AT&T

Advertising, L.P. (“ATT Advertising”) and YPPI based on a series of mergers and name

changes of companies that made Defendants affiliates of the licensee, the ATT License. Id.

¶¶ 11-17. Defendants also allege that an additional license between YPPI and an affiliate

entitled Defendants to use the images identified in the Complaint, the Berry License. Id. ¶

18. Based on these allegations, Defendants seek a declaratory judgment regarding their

rights under the ATT License, and claim entitlement to attorneys’ fees under copyright law.

Id. ¶¶ 19-27.

B. Undisputed Facts

1. Corporate Structures

This case revolves around various businesses that have been involved in mergers and name

changes. Accordingly, the Court will begin by reviewing the relevant changes. In doing

so, the Court first notes the parties to the original two licenses that are at issue.

The first agreement, the Berry License, was entered into between L.M. Berry and Company

and YPPI. Doc. 119-2. YPPI is owned by W. Trent Moore, who is also the sole

stockholder, officer, and director. Doc. 45 ¶ 15. The Berry License was later amended to

partially assign L.M.

Berry’s rights to The Berry Company LLC, with the agreement of YPPI. Doc. 119-4.

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The second agreement, the ATT License, was entered into between YPPI and AT&T

Services, Inc (“ATT Services”). Doc. 119-6 at 1. The invoices for the ATT License were

to be sent to ATT Advertising. Id. ATT Advertising was the operating entity in AT&T

Inc.’s yellow pages business unit that was responsible for producing, publishing, and

creating advertisements for “The Real Yellow Pages” telephone directories. Doc. 121 ¶ 5.

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ATT Services was an AT&T, Inc. affiliate that procured contracts and provided

administrative services to AT&T Inc.’s subsidiaries. Id. ¶ 6.

Each of the below changes regarding the companies occurred after these licenses were

established.

As is relevant to the Berry License, L.M. Berry and Company was a part of the yellow

pages business unit of BellSouth, which was acquired by AT&T Inc. on December 29,

2006. Doc. 121 ¶ 8. On May 9, 2012, L.M. Berry and Company was converted to L.M.

Berry and Company LLC. Doc. 157-11 at 3. L.M. Berry and Company LLC merged into

and became YP Southeast

Advertising & Publishing LLC on December 31, 2014, a subsidiary owned by Defendant

Yellow

Pages. Doc. 121 ¶¶ 9-10; Doc. 157-14 at 3; Doc. 157-10 at 2. That same day, YP

Southeast Advertising & Publishing LLC changed its name to YP Advertising & Publishing

LLC. Doc. 157-

15 at 3.

As is relevant to the ATT License, on May 21, 2012, ATT Advertising amended its name to

YP Advertising LP, a subsidiary owned by Defendant Yellow Pages. Doc. 157-12 at 3;

Doc. 157-10 at 2. Subsequently, on December 31, 2014, YP Advertising LP merged into

and became

YP Southeast Advertising & Publishing LLC, or under its changed name, YP Advertising

& Publishing LLC. Doc. 157-13 at 3.

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According to AT&T, Inc.’s Form 10-Q, filed with the Securities and Exchange

Commission, on April 7, 2012, AT&T reached an agreement to sell its advertising solutions

business to Cerberus Capital Management, L.P, which is an affiliate of AT&T Inc. Doc.

135-4 at 9; Doc. 133-1 at 27. The sale was completed on May 8, 2012, and AT&T Inc.

obtained, as a result of the sale, a 47% equity interest in the new entity YP Holdings LLC.

Id. at 3. YP Holdings LLC is the holding company for Defendant Yellow Pages. Doc.

157-10.

Defendant Print Media was formed on August 1, 2014 under the common ownership of

L.M. Berry and Company LLC and YP Advertising L.P. Doc. 121 ¶ 11. As of January 1,

2015, YP Advertising & Publishing LLC, and Defendants were all under common

ownership with Yellow Pages as the sole member of YP Advertising & Publishing LLC.

Id. ¶¶ 12-13.

2. The Berry License

The Berry License was an agreement entered into between L.M. Berry and Company, “and

all affiliates owned or owning the same” (collectively referred to as “Berry”) and YPPI in

June 2006 for a one-year license for use of YPPI’s products and services which states it

would be governed by Ohio law. Doc. 157-2. Pursuant to the Berry License Agreement,

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Berry obtained “the non-exclusive right to copy, crop, manipulate, modify, alter, reproduce,

create derivative works of, transmit, and display the Digital Media an unlimited number of

times in any and all media for any purpose . . . .” Id. ¶ 1.2.1. The Digital Media could also

be reproduced by Berry’s subcontractors. Id. ¶ 1.2.2. Berry’s rights to the Digital Media,

and to use the Digital Media, were “worldwide and perpetual.” Id. ¶ 1.2.3.

The Berry License limited the number of users who could “be involved in the process of

creating modified images or templates” to 48 employees. Id. ¶ 1.3. However, Berry was

permitted to provide “any given number” of employees with a “view-only library” of the

Digital Media. Id.

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Additionally, the Berry License prohibited Berry from sublicensing, selling, assigning,

conveying, or transferring any of its rights under the Agreement. Id. ¶ 1.4.1.

The Berry License provided that it would be binding on the parties, their successors,

administrators, heirs, and permitted assigns. “Notwithstanding anything to the contrary in

th[e Berry License], the rights and obligations of either party under th[e] Agreement” were

permitted to “be assigned, sublicensed or otherwise transferred, without written consent of

the other party, to a third party that acquire[d] substantially all of the assets or business of a

party to th[e] Agreement or as the result of a merger, acquisition or other similar corporate

transaction involving one of the parties to th[e] Agreement.” Id. ¶ 9.

Berry and YPPI amended the Berry License on April 2, 2007 (the “First Amendment to the

Berry License”) to increase the number of seat licenses provided by the Agreement to 93

employees. Id. at 6.

The Berry License was inadvertently assigned to The Berry Company, LLC, on February

1, 2008. Doc. 157-4 at 3. Accordingly, on April 23, 2008, The Berry Company entered

into a

Partial Assignment of Agreement and Consent with L.M. Berry and Company (the “Berry

Assignment”) under which The Berry Company assigned 45 seat licenses back to L.M.

Berry and Company. Id. YPPI agreed to the assignment. Id.

3. The ATT License

On December 12, 2007, ATT Services and YPPI entered into the ATT License, which was

signed by ATT Services on behalf of ATT Advertising. Doc. 119-6. The agreement states

that “its performance and all disputes between the parties of any nature whatsoever arising

out of or in connection with the subject matter hereof shall be governed by the laws of the

State of Texas . . . .” Id. at 5. Additionally, the agreement provides that it was “the entire

integrated agreement Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 9

of 33 PageID 6120

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between [YPPI] and AT&T with respect to the subject matter hereof,” and that it would

“supersede all prior oral and written discussions, agreements and understandings of the

Parties, if any, with respect hereto.” Id.at 5. The ATT License has an expiration date of

December 31, 2010. Id. at 3.

The ATT License contains a description which provides: “The existing quantity of 2,150

photographs (“Digital Images”) is hereby extended with licensing for Unlimited Users.

The seat license applies to AT&T and its subsidiaries. . . .” Doc. 119-6 at 3. Additionally,

the ATT License states that subject to payment by “AT&T”, YPPI granted

to AT&T and its affiliates a non-exclusive, non-transferable, royalty-free,

perpetual license to: (i) copy the Digital Images on to AT&T’s server for

unlimited End Users (ii) use the Digital Images in AT&T’s business

locations and for AT&T’s business purposes only provided that such use is

in accordance with the Specifications detailed in this Agreement; (iii) make

copies of the Digital Images for archive or backup purposes.

Id. Additionally, “AT&T’s rights to the Digital Images [were] worldwide and perpetual.”

Id. The

ATT License further states that AT&T could

incorporate any Digital Image(s) into its own original work and publish,

display and distribute the work in any media provided that a copyright

notice [wa]s included in any electronic or digital work reflecting on the

Id. AT&T could also copy, crop, graphically alter, or combine the subject images with

other images, or creatively adapt the images to make a final image that would be

incorporated into a product or webpage. Id. However, AT&T could “not resell, sublicense

or otherwise make available the Digital Image(s) for use or distribution separately or

detached from a product or Web page.” Id. Similarly, AT&T was not permitted to “rent,

lease, sublicense or lend the digital images, or a copy thereof, to any other person or legal

entity.” Id. at 4.

Regarding access to the images, the ATT License states that “AT&T may place the Digital

Images on their internal intranet or other common server for access and use by licensed End

Users Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 10 of 33 PageID

6121

only.” Id. An “End User” is “defined as an individual that utilizes the high resolution

Digital Images for the specific purpose of creating a final image that will be used in a print

or electronic product(s). These End Users are generally defined as designers and artist.”

Id. However, AT&T was permitted to “copy any or all of the images to a browser CD

ROM or other catalog media for the specific purpose of allowing view only access, such as

but not limited to, AT&T’s Sales personnel or Advertising Customers.” Id.

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The ATT License was subsequently amended on October 31, 2008 to include a per image

download price. Id. at 11. The ATT License was amended a second time in March 2009 to

provide that YPPI would supply certain images “on the CD collection know[n] by the

parties as the ‘LMBerry/Nashville Collection.’ ” Id. at 15.

C. Disputed Issues 1. Evidence Regarding the ATT License

Moore testified that he recalled AT&T referring to the entity responsible for publishing the

AT&T yellow pages directories as the “Real Yellow Pages,” as well as various other

names, including ATT Services. Doc. 157-5 at 72:5-11. However, Moore also testified

that he believed ATT Advertising was the entity that would use the library to create

advertisements for yellow pages directories. Id. at 5-13. His understanding regarding ATT

Services’ involvement was based exclusively on the ATT License. Id. at 72:15-18. He

further testified that his discussions with AT&T led him to believe ATT Services were the

ones publishing phone books because “they were the one calling [him], they were the one

wanting images, they were the one wanting the license.”

Id. at 73:7-10. The people he communicated with included Terry Thornton, Mildred

Moore, Robyn Brown, and Denise Davis. Id. at 73:13-19.

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Moore testified that in his proposals for the license, he used the name ATT Advertising,

included statements such as that ATT Advertising would be able to enhance its library’s

dynamic growth, and proposed that ATT Advertising license YPPI images. Id. at 88:16-21,

89:15-20, 91:425, 92:13-23; 102:16-18, 105:4-6; see also 157-9 at 6, 9, 11. However,

Moore further testified that he was not sure that he knew which AT&T entity would

maintain the library of images, but that he understood that ATT Services would execute the

contract. Id. at 88:24-89:3. He stated that he did not believe ATT Advertising was the

name of the entity that would maintain the merged library, but that it would maintain the

library under a d/b/a or some other name. Id. at 90:1-6. Overall, Moore indicated that

AT&T used many names, he could not distinguish which entity was which, and that it

would be fair to say that AT&T would have more knowledge regarding its corporate

entities and which functions they performed. Id. at 94:13-18.

Thornton was the point person who communicated with Moore. Doc. 157-7 at 50:2-6. He

testified that the agreement was intended to be structured between YPPI and ATT

Advertising. Id. at 112:16-19. Thornton stated that ATT Advertising was the entity that

received YPPI’s images under the ATT License, used YPPI’s images and created ads, and

paid for the YPPI images. Id. at 264:9-17.

William Clenney, Defendants’ corporate representative, testified that ATT Services is a

subsidiary that provides administrative services to other ATT subsidiaries. Doc. 157-8 at

105:1517. He explained that ATT Advertising did most or all of the business negotiation

and work with YPPI, developed the terms and purchase price, then worked with ATT

Services to execute and put together the contract. Id. at 106:6-13

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2. Profits

Clenney explained that the prices for advertising appearing in YP-branded directories was

determined by several factors, including the placement of the advertisement in the

telephone directory, the size of the advertisement, the color of the advertisement, the

geographical distribution of the directory, the type of customer purchasing the

advertisement, and, in some circumstances, the number of leads an advertisement

generated. Doc. 121 ¶ 15. The use of an image in an advertisement or website was not a

factor that determined the price and inclusion of a stock image did not increase the price.

Id. ¶ 16.

Defendants removed or replaced imagery that YPPI alleges constitute copyright

infringement in this case. Doc. 120 ¶ 5. Robert Shawn Beard was responsible for such

removal. Id. He and his team removed alleged YPPI images from more than 400

advertisements. Id. ¶ 6. None of the customers who had an advertisement from which an

alleged YPPI image was removed complained about the removal, cancelled their

advertisement, demanded to pay less, or paid less for the advertisement after the alleged

YPPI images were removed. Id. ¶ 7.

YPPI retained Joseph J. Brown to provide an opinion as to whether revenue received from

the sale of an advertisement that contained one or more of YPPI’s copyrighted images

would be reasonably related to the use of the YPPI copyrighted images. Doc. 157-17.

Pursuant to this Court’s Order on Defendants’ Daubert 2 motion to exclude Brown’s

testimony (Doc. 191), which finds that Brown’s testimony does not meet the requirements

of Federal Rule of Evidence 702, the Court will not consider Brown’s testimony in support

of YPPI’s claims for lost profits.

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C. Motion for Summary Judgment

Defendants moved for summary judgment on both counts of YPPI’s Complaint. Doc. 157.

They did not move for summary judgment on their counterclaims for declaratory judgment

and attorneys’ fees. In the Motion for Summary Judgment, Defendants argue that YPPI’s

See Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993)

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use the YPPI images at issue under the Berry License and ATT License. Id. at 14-22.

Defendants argue that the Berry License granted L.M. Berry Company’s affiliates a

perpetual license to use 5,000 of YPPI’s images, including 256 of the 289 images that YPPI

claims were infringed by Defendants, and that Defendants were affiliates of L.M. Berry

Company. Id. at 14-15. Defendants also argue that the ATT License granted ATT

Advertising and its affiliates a license to use 2,150 images, including 267 of the 289 images

that YPPI claims were infringed by Defendants, and that Defendants were affiliates of ATT

Advertising. Id. at 15-16. Defendants state that between the two licenses, they were

authorized to use all images that YPPI claims were infringed. Id. at 17. Finally,

Defendants argue that YPPI’s claim for profits fail as a matter of law because YPPI could

show no nexus between Defendants’ profits and their use of YPPI’s images. Id. at 22-26.

YPPI opposes the Motion for Summary Judgment. Doc. 135. In response, YPPI argues

that the Berry License did not authorize use by all of L.M. Berry Company’s affiliates, but

only by affiliates “owned or owning” L.M. Berry Company. Id. at 3. Additionally, YPPI

argues that Defendants could not use the Berry License because it did not provide sufficient

seat licenses for Defendants’ use, Defendants would not have needed the ATT License if

they could use the Berry License, the ATT License contains a provision that superseded the

Berry License, and Defendants’ use of outsourcers made their use outside the scope of the

Berry License. Id. at 7-8, 11-13. YPPI argues that the ATT License did not apply to

Defendants because ATT Services, not ATT Case 8:17-cv-00764-CEH-JSS Document 196

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Advertising, was a party to the ATT License, and Defendants were not affiliates or

subsidiaries of ATT Services. Id. at 13-14. Additionally, YPPI argues that the ATT

License expired before corporate restructuring, the ATT License could not be transferred,

Defendants’ use of outsourcers fell outside the scope of the license, and use of images

without the required copyright language fell outside the scope of the ATT License. Id. at

14-18.

Additionally, YPPI opposes Defendants’ argument regarding YPPI’s claim for profits,

arguing that they sufficiently showed a causal connection between Defendants’

infringement and profits. Id. at 18-20. Finally, YPPI contends that the Motion for

Summary Judgment should be denied based on discovery violations by Defendants detailed

in YPPI’s Motion for Discovery Sanctions Against Defendants. Doc. 124; Doc. 135 at 20-

21.

II. LEGAL STANDARD

Summary judgment is appropriate 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 moving party bears the initial burden of stating the basis for its motion and identifying

those portions of the record demonstrating the absence of genuine issues of material fact.

Celotex, 477 U.S. at 323; Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1259-60 (11th

Cir. 2004). That burden can be discharged if the moving party can show the court that

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 14 of 39

there is “an absence of evidence to support the nonmoving party’s case.” Celotex, 477 U.S.

at 325.

When the moving party has discharged its burden, the nonmoving party must then

designate specific facts showing that there is a genuine issue of material fact. Id. at 324.

Issues of fact are “genuine only if a reasonable jury, considering the evidence present,

could find for the Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 15

of 33 PageID 6126

nonmoving party,” and a fact is “material” if it may affect the outcome of the suit under

governing law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). In

determining whether a genuine issue of material fact exists, the court must consider all the

evidence in the light most favorable to the nonmoving party. Celotex, 477 U.S. at 323.

However, a party cannot defeat summary judgment by relying upon conclusory allegations.

See Hill v. Oil Dri Corp. of Ga., 198 Fed. Appx 852, 858 (11th Cir. 2006).

III. DISCUSSION

17 U.S.C. § 501(b) allows “[t]he legal or beneficial owner of an exclusive right under a

while he or she is the owner of [the copyright].” A plaintiff in a copyright action must

establish two elements: (1) that he or she owned a valid copyright in the work alleged to be

infringed upon; and

(2) that the defendant copied protected elements from that work. Peter Letterese &

Assocs., Inc.

v. World Inst. Of Scientology Enters., 533 F.3d 1287, 1300 (11th Cir. 2008). The existence

of a license is an affirmative defense to copyright infringement. Id. at 1308. As an

affirmative defense, the defendant has the burden of proving the existence of the license.

Fodere v. Lorenzo, No. 09cv-23120, 2011 WL 465468, at *4 (S.D. Fla. Feb. 4, 2011).

The parties here do not dispute that YPPI had valid copyrights in the images, or that

Defendants used the images. The primary issue in this case is whether Defendants were

beneficiaries of the Berry License and ATT License.

A. Motion for Judicial Notice

Plaintiff requests, pursuant to Federal Rule of Evidence 201, that the Court take judicial

notice of AT&T Inc.’s Form 10-Q filed with the Securities and Exchange Commission

because it is a document that can be accurately and readily determined from sources whose

accuracy cannot Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 16 of

33 PageID 6127

reasonably be questioned. Doc. 133. Defendants do not object to the request, but argue

that it does not affect their Motion for Summary Judgment.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 15 of 39

Because Plaintiff’s motion is unopposed and documents publicly filed with the Securities

and Exchange Commission are the type that the Court may judicially notice pursuant to

Rule 201(b), see Bryant v. Avado Brands, Inc., 187 F.3d 1271, 1278-79 (11th Cir. 1999),

the Court will grant Plaintiff’s request to take judicial notice of AT&T Inc.’s form 10-Q.

B. Berry License

1. Whether Defendants were Permitted to Use the Berry License

The Berry License was “between L.M. Berry and Company, and all affiliates owned or

owning the same . . . and Yellow Pages Photos, Inc. . . . .” Doc. 157-2 at 2. The parties

dispute the meaning of the phrase “owned or owning.” Doc. 135 at 3; Doc. 141 at 6.

Although YPPI is not clear on what it asserts this phrase to mean, it implies in the Response

that it does not include all affiliates of L.M. Berry and Company. Doc. 135 at 3. In their

Reply, Defendants argue that although the phrase “is not a model of clarity,” (Doc. 141 at

6), the meaning of the phrase is later clarified in the indemnity provision of the Berry

License, which states that YPPI:

[S]hall defend, indemnify, and hold [L.M. Berry and Company] and its

parent, subsidiaries, and commonly owned or controlled affiliates and their

respective officers, directors and employees harmless from all damages . . . ,

liabilities, and expenses . . . , arising out of or connected with any actual or

threatened lawsuit, claim or legal proceeding alleging that the possession,

distribution or use of the Digital Media by [L.M. Berry and Company]

pursuant to and in accordance with this Agreement infringes on any [of the

subsequently enumerated] intellectual property or personal rights of any

third party . . . .

Doc. 157-2 at 3. Defendants contend that the language “commonly owned or controlled

affiliates” in the indemnity provision clarifies the “owned or owning” because, according to

Defendants, it would not make sense for YPPI to have indemnification obligations to L.M.

Berry and Company affiliates that were not allowed to use the images under the L.M. Berry

License. Doc. 141 at 6.

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 17 of 33 PageID 6128

The Court disagrees with Defendants’ reading of the Berry License. Notably, the

indemnity provision does not state that YPPI was required to indemnify the listed classes of

people and entities for those individuals’ or entities’ use of any images. Instead, the

provision states that those classes of people and entities would be indemnified for use and

distribution of the images by “Licensee,” which was defined as “L.M. Berry and Company,

and all affiliates owned or owning the same.” Doc. 157-2 at 2-3. The indemnity provision

could reasonably be read to require indemnification of commonly owned or controlled

affiliates that were sued based on use or distribution by “Licensee” where such affiliates

were not the users or distributors of the images. Indeed, a reader of the entire contract

could argue that because the Berry License later includes the language “commonly owned

or controlled affiliates” in the indemnification provision, but not in the definition of

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 16 of 39

“Licensee,” such entities were deliberately excluded from inclusion as entities permitted to

use the license.

At best, the Berry License is clear that entities that owned or were owned by L.M. Berry

and Company were included as Licensees, but is unclear as to whether affiliates who had

common ownership with L.M. Berry and Company were included as Licensees. Under

Ohio law, “it is presumed that the intent of the parties to a contract resides in the language

they chose to employ in the agreement.” Brandon/Wiant Co. v. Teamor, 708 N.E.2d 1024,

1028 (Ohio Ct. App. 1998). Accordingly, “[c]ourts will not construe contract language that

is clear and unambiguous on its face,” but will “give effect to the language of the contract.”

Id. However, “ ‘where the language of a contract is reasonably susceptible of more than

one interpretation, the meaning of ambiguous language is a question of fact’ to be

determined by a jury.” Geczi v. Lifetime Fitness, 973 N.E.2d 801, 805 (Ohio Ct. App.

2012). Because of this, the Court will examine whether Defendants are either owned by or

own L.M. Berry and Company, which became YP Advertising & Publishing Case 8:17-cv-

00764-CEH-JSS Document 196 Filed 11/27/19 Page 18 of 33 PageID 6129

LLC and are therefore clearly intended as Licensees, or whether they are simply affiliates

with common ownership, which are not clearly included as Licensees and whose inclusion

is subject to determination by a jury.

a. Defendant Yellow Pages

AT&T Inc. purchased the business unit of BellSouth that included L.M. Berry and

Company in 2006, before the alleged copyright infringement occurred. Doc. 121 ¶ 8. Also,

before the alleged infringement, L.M. Berry and Company became L.M. Berry and

Company LLC, which became a wholly-owned subsidiary of YP Subsidiary Holdings LLC,

which was a subsidiary of Defendant YP LLC. Doc. 157-10. Thus, before the alleged

infringement, L.M. Berry and Company was owned by Defendant Yellow Pages, making

Defendant Yellow Pages an affiliate 3 owning L.M. Berry and Company, and included

within the scope of the Berry License.

YPPI asserts several arguments that Yellow Pages did not enjoy the benefits of a licensee

under the Berry License, none of which create a genuine issue of material fact as to this

matter. The first three arguments rely on the connection between L.M. Berry and Company

and AT&T, which is the original connection that granted Yellow Pages access to the Berry

License. First, YPPI argues that AT&T would not have had to expressly license, pursuant

to the ATT License, images known by the parties as the “LM Berry/Nashville Collection”

if it already enjoyed the benefits of the Berry License. Doc. 135 at 11 (citing Doc. 119-6).

An “affiliate” is “[a] corporation that is related to another corporation by shareholdings or

other means of control; a subsidiary, parent, or sibling corporation.” Affiliate, Blacks Law

Dictionary (11th ed. 2019). Similarly, under Texas law, which governs the ATT License, an

“affiliate” is “a person who controls, is controlled by, or is under common control with

another person.” Tex. Bus. Organization Code, § 1.002(1).

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 17 of 39

The Court disagrees. As noted by both parties, AT&T required more than the 45 seat

licenses provided for in the Berry License.

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 19 of 33 PageID 6130

Doc. 135 at 7; Doc. 141 at 4. Moreover, YPPI does not explain how acquisition of rights to

the images under a second license would automatically render the first license invalid. As

explained by Defendants, such facts simply show that the second license was unnecessary.

Second, YPPI argues that AT&T could not use the Berry License because it would need far

more than 45 seat licenses. Doc. 135 at 12. This argument answers the issue raised by

YPPI’s first argument—Yellow Pages could use the Berry License, but would need

additional resources.

Third, YPPI argues that even if Yellow Pages could use the Berry License, a provision in

the ATT License superseded the Berry License. Specifically, the ATT License has an

“entire agreement” provision that states as follows:

The terms contained in this Agreement . . . will constitute the entire

integrated agreement between Supplier and AT&T with respect to the

subject matter hereof. This Agreement will supersede all prior oral and

written discussions, agreements and understandings of the Parties with

respect hereto.

Doc. 157-6 at 5. YPPI’s argument is misplaced.

The clause is simply a merger clause. When a contract has a merger clause, it is

“presume[d] that all prior negotiations and agreements relating to the transaction have been

merged into the contract, and it will be enforced as written and cannot be added to, varied,

or contradicted by parol evidence.” ISG State Operations, Inc. v. Nat’l Heritage Ins. Co.,

Inc., 234 S.W.3d 711, 719 (Tex. App. 2007). The merger clause simply relates to the

“subject matter” of the ATT License, which is a different subject matter from the Berry

License. Additionally, although L.M. Berry and Company may have been owned by

AT&T Inc., and an affiliate of other subsidiaries, it was not a party to the ATT License.

Accordingly, the merger clause in the ATT License did not supersede the Berry License.

Finally, YPPI argues that Yellow Pages lost its right to use YPPI’s images by allowing

outsourcers to use images in violation of the Berry License. Doc. 135 at 12. YPPI

contends that Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 20 of 33

PageID 6131

the use of outsourcers fell outside the scope of the license, whereas Defendants contend that

if such a breach occurred—which they do not concede—it was merely a breach of a

covenant, which would not give rise to a copyright infringement claim. Compare Davis v.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 18 of 39

Tampa Bay Arena, Ltd., No. 8:12-cv-60-T-30MAP, 2013 WL 3285278, at *7 (M.D. Fla.

June 27, 2013) (stating that “copyright law is clear that a licensee’s breach of a covenant in

a copyright license does not rescind the authorization to sue the copyright work, but rather

provides the licensor with a cause of action for breach of contract.”); with Virtual Studios,

Inc. v. Royalty Carpet Mills, Inc., No. 4:12-CV0077-HLM, 2014 WL 12495340, at *8

(N.D. Ga. Feb. 10, 2014) (explaining that when a licensee acts outside the scope of the

license, the licensor may bring an action for copyright infringement); see also Eberhard

Architects, LLC v. Bogart Architecture, Inc., 314 F.R.D. 567, 572 (N.D. Ohio 2016)

(stating that generally a licensor has a claim for breach of contract, not copyright

infringement, where a licensee breaches a covenant).

“A covenant is a contractual promise, i.e., a manifestation of intention to act or refrain from

acting in a particular way, such that the promisee is justified in understanding that the

promisor has made a commitment.” MDY Indus., LLC v. Blizzard Entm’t, 629 F.3d 928,

939 (9th Cir. 2010). Contractual terms that limit a licensee’s scope are known as

“conditions.” Id. State law applies in determining whether a matter is a condition or a

covenant. Id.; see also Eberhard Architects, 314 F.R.D. at 572. “Ohio law disfavors

conditions, and ‘whenever possible courts will avoid construing provisions to be such

unless the intent of the agreement is plainly to the contrary.’ ” Eberhard Architects, 314,

F.R.D. at 572 (quoting Evans, Mechwart, Hambleton & Tilton, Inc. v. Triad Architects,

Ltd., 196 Ohio App. 3d 784, 965, N.E.2d 1007 (2011)).

Here, the portion of the Berry License purportedly violated is the provision that limits the

use of the license to “no more than 48 employees” for purposes of “creating modified

images or Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 21 of 33

PageID 6132

templates.” Doc. 157-2 at 2-3. Nothing in the contract plainly indicates that this was a

condition and not a covenant. Accordingly, the proper remedy for any breach of the

provision would be breach of contract, not copyright infringement.

Based on the above, the undisputed evidence demonstrates that Defendant Yellow Pages

was entitled to use the Berry License. Accordingly, the Court will grant summary

judgment in favor of Defendant YP, LLC with respect to the issue of whether it was

permitted to use the Berry License. As a matter of law, Defendant YP, LLC’s use of images

covered by the Berry License did not constitute copyright infringement.

b. Defendant Print Media

Defendants contend that Print Media was formed “under common ownership with L.M.

Berry and AT&T Advertising,” and that as of January 1, 2015 Defendants “were affiliates

of YP Advertising & Publishing LLC,” which L.M. Berry and Company (as originally

named) had merged into, with “common ownership.” Id. ¶¶ 11-12. Thus, although it is

clear that Print Media was an affiliate of L.M. Berry and Company, and owned by the same

entity, it is not clear that it qualified as an “affiliate[] owned or owning same” as required

by the Berry License. Doc. 157-2 at 2. Accordingly, for purposes of summary judgment,

Defendants have failed to establish the existence of a license for Print Media based on the

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 19 of 39

Berry License. The Court, therefore, will deny Defendants’ motion for summary judgment

on YPPI’s claim of copyright infringement against Print Media.

2. Whether the Images Fell Under the Berry License

According to Defendants, YPPI identified to Defendants advertisements that contained 289

unique image IDs in response to Defendants’ interrogatory requesting YPPI identify each

advertisement and/or website that it contended constituted an infringing use of a YPPI

image. Doc.

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 22 of 33 PageID 6133

122 ¶¶ 4-5. Defendants contend that 256 of the 289 YPPI images were covered by the

Berry License. Id. ¶ 6.

In response to the Motion for Summary Judgment, YPPI submitted a declaration by Moore,

who states that he identified over 330 different YPPI copyrighted images used by

Defendants. Doc. 135-1 ¶ 4. Moore asserts that in addition to those more than 330 images,

he identified 365 YPPI images in Defendants’ document production. Id. ¶ 6. The

declaration does not address whether these images, or some portion of these images, fall

under the Berry License or the ATT License.

In their Reply, Defendants provided a declaration, of Kuangyan Huang, stating that Moore

has not identified to Defendants any images other than those 289 referenced in the Motion

for Summary Judgment. Doc. 142 ¶ 7. Additionally, the Huang declaration further

provides that each of the images identified by YPPI are covered by either the Berry License

or the ATT License.

Determining whether Yellow Pages used images not covered by the Berry License would

require the Court to weigh the credibility between the conflicting affidavits, which the

Court cannot do on summary judgment. Accordingly, the Court cannot grant summary

judgment in whole on YPPI’s copyright infringement claim against Yellow Pages.

Nonetheless, this is a matter that may not genuinely be in dispute. YPPI is, therefore,

directed to respond within fourteen (14) days of the date of this Order and advise the Court

as to whether some or all of the images used by Defendants were covered by the Berry

License. YPPI’s response should be supported by any appropriate evidence. Defendants

may file a response within fourteen (14) days of the date of YPPI’s submission.

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 23 of 33 PageID 6134

C. ATT License 1. Whether Defendants were Permitted to Use the

ATT License

“For a court to be able to construe a contract as a matter of law, the contract must be

unambiguous.” Dynamic Pub. & Distrib. L.L.C. v. Unitec Indus. Ctr. Prop. Owners Ass’n,

Inc., 167 S.W.3d 341, 345 (Tex. App. 2005). “Whether an instrument is ambiguous is a

question of law that must be decided by reviewing the covenant as a whole in light of the

circumstances present when the covenant was entered.” Id. “[I]f the contract is subject to

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 20 of 39

two or more reasonable interpretations after applying the pertinent rules of construction, the

contract is ambiguous, which creates a fact issue on the parties’ intent.” Id. Ordinarily,

summary judgment is not proper where the contract is ambiguous because “interpretation of

ambiguous contracts is a question for the jury.” Id. However, “[t]he court may construe as

a matter of law an ambiguous contract by considering undisputed evidence of the parties’

intent. If there is a conflict in the parol evidence, however, the question of the parties’

intent becomes one of fact, appropriate for consideration by the jury.” Corley v. Entergy

Corp., 246 F. Supp. 2d 565, 574 (E.D. Tex. 2003) (citing Trinity Universal Ins. Co. v.

Ponsford Bros., 423 S.W.2d 571, 575 (Tex. 1968)).

The cover page to the ATT License states that it is an agreement “Between Yellow Pages

Photo, Inc. And AT&T Services, Inc.” Doc. 157-6 at 2. On the first page of the ATT

License, it lists “AT&T Advertising, L.P. d/b/a/ AT&T Advertising and Publishing” as the

entity to whom invoices should be sent, and states the “AT&T: Affiliate Name” as ATT

Services. Id. at 3. Additionally, questions were to be addressed to Davis at ATT Services.

Id. The Agreement does not have a defined “Licensee.” On the signature line, the

signatory is typed into the agreement as “AT&T Affiliate Name: AT&T Services, Inc. On

behalf of AT&T Advertising, L.P. dba AT&T Advertising and Publishing.” Id. at 4.

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 24 of 33 PageID 6135

The cover page for the first and second amendments to the ATT License states that they are

amendments “Between Yellow Pages Photo, Inc. And AT&T Services, Inc.” Id. at 10, 14.

The first page of the amendments states that they are between YPPI and ATT Services. Id.

at 11, 15. ATT Services signed the first amendment and is listed as the signatory for the

second amendment. Id. at 13, 16.

Based on the above, the ATT License could reasonably be interpreted as being between

either ATT Advertising and YPPI, or ATT Services and YPPI. Although Defendants

contend that ATT Services was clearly an agent to a disclosed principal, the cover page and

amendments suggest that ATT Services may have been the intended party. Defendants are

simply cherrypicking the signature line that is convenient for their purposes while ignoring

the remainder of the license. Nor is Defendants argument persuasive that because ATT

Advertising is the first AT&T entity used in the ATT License, it must be the entity intended

any time the license uses the name “AT&T”. Defendants cite to no law to support this

proposition. The term AT&T is not a word used earlier in a contract that should be given

the same meaning in a subsequent portion of the contract because the license specifically

spells out ATT Advertising’s name and does not refer to it as AT&T. Doc. 157-6 at 3.

Moreover, the cover page first lists ATT Services, making ATT Advertising the second use

of “AT&T”. Id. at 2. Finally, no evidence supports Defendants’ proposition that ATT

Services is an agent that is also a party to the contract, because no evidence shows that ATT

Services and YPPI agreed to such an arrangement.

Defendants argue that, in the event the Court finds the ATT License to be

ambiguous, the

Court should interpret the contract as being between YPPI and ATT Advertising because

the ATT License was clearly intended to be with ATT Advertising. In support of this,

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 21 of 39

Defendants cite to testimony and evidence that (1) ATT Services was simply a contract

procurement entity that Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19

Page 25 of 33 PageID 6136

provided administrative services to other AT&T subsidiaries; (2) ATT Advertising was the

subsidiary responsible for producing, publishing, and creating advertisements; (3) Moore

had no understanding of the difference between ATT Services and ATT Advertising, but

communicated with ATT Advertising; (4) proposals sent from YPPI/Moore to ATT

Advertising listed ATT Advertising as the party to the license; and (5) ATT Advertising

negotiated the pricing and paid the invoices. Doc. 157 ¶¶ 14-19, pg. 21.

YPPI did not address the extrinsic evidence in its Response, but relies on the language of

the ATT License and amendments to argue that ATT was the party to the license. As the

Court explained, the ATT License is ambiguous as to whether ATT Services or ATT

Advertising was the intended party. Thus, the Court examines whether undisputed extrinsic

evidence resolves this ambiguity.

Moore’s testimony regarding the intended party to the ATT License is not entirely

consistent. Moore testified that he believed ATT Advertising would use the library of

images to create advertisements. He also testified that he believed ATT Services was

responsible for publishing AT&T’s yellow pages directories. Doc. 157-5 at 72:5-14; 94:5-

12. However, Moore also testified that he did not know, from a legal perspective, which

AT&T entity was going to maintain the merged library and could not distinguish between

the different AT&T entities.

Other evidence supports the conclusion that Moore—and therefore YPPI—did know that

ATT Advertising was the entity intended to use the license. YPPI provided ATT

Advertising with a proposal for using YPPI’s stock photographs. The proposal specifically

states that the options offered “AT&T Advertising & Publishing the ability to: 1. Achieve

significant image library value across the new merged enterprise[;] 2. Enhance the libraries

dynamic growth[; and] 3. Realize substantial savings while positioning itself for greater

revenue opportunities.” Doc. 157-9 at 6.

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 26 of 33 PageID 6137

YPPI also provided an addendum to the proposal, to ATT Advertising, with proposed pricing.

Id. at 9, 13. The addendum states that YPPI “appreciates the opportunity to serve AT&T

Advertising & Publishing and looks forward to a long lasting business relationship.” Id. at

10. Moore drafted the proposals. Doc. 157-5 at 101:8-9.

Based on the undisputed evidence, the most favorable interpretation for YPPI that can

reasonably be made is that YPPI was indifferent to which AT&T entity was the party to the

license, but intended for ATT Advertising to use the license. None of the extrinsic

evidence is conflicting. All of the evidence is consistent with ATT Advertising being the

party to the ATT License, and no extrinsic evidence supports the conclusion that ATT

Servicing was the intended party to the ATT License. Therefore, based on the undisputed

evidence, the Court concludes that ATT Advertising is the party to the ATT License.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 22 of 39

The Court will next examine whether Defendants could use the ATT License with ATT

Advertising as the licensee. In the “description” portion of the ATT License, it states that

the seat license applies to AT&T and its subsidiaries. Doc. 157-6 at 3. In the

“specifications” portion of the license, it states that the “Licensor License Grant” is “to

AT&T and its affiliates.” Id. Because the language in the description stating AT&T and its

subsidiaries differs from the language in the specifications stating AT&T and its affiliates,

YPPI contends that the ATT License is unclear as to who enjoys rights under the license—

AT&T subsidiaries, AT&T affiliates, or both. Doc. 135 at 4. The Court disagrees. The

ATT License plainly states when specifying who is covered under the license that it applies

to AT&T and its affiliates, which would include subsidiaries. NuStar Energy, L.P. v.

Diamond Offshore Co., 402 S.W. 461, 466 (Tex. App. 2013) (stating that more specific

contractual provisions govern over general provisions). Thus, for summary judgment Case

8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 27 of 33 PageID 6138

purposes and based on the ambiguity in the ATT License, Defendants fall within the scope

of the ATT License if they are affiliates of ATT Services and ATT Advertising.

Both Defendants were affiliates to ATT Advertising. Defendants were under common

ownership with ATT Advertising. Doc. 121 ¶¶ 10-12; see also Vision Capital Real Estate,

LLC v. Wurzak Hotel Grp., No. 05-15-00917-CV, 2016 WL 6093977, at *4 (Tex. App. Oct.

19, 2016) (“ ‘Affiliate’ is generally defined as a . . . ‘company effectively controlled by

another or associated with others under common ownership or control.’ ”). Accordingly,

they were affiliates of ATT

Advertising and enjoyed rights under the ATT License to use images covered by the ATT

License.

2. Whether the Images Used Were Covered by the ATT License

As explained above, Defendants submitted a declaration stating that the ATT License

covers 267 of 289 images identified by YPPI as purportedly infringing on its copyrights.

Doc. 122 ¶ 6. The Berry License covers the remaining 22 images. Id. YPPI responded by

filing a declaration by Moore stating that 365 YPPI images were used. Doc. 135-1 ¶ 6.

The declaration does not address whether these images, or some portion of these images,

fall under the Berry License or the ATT License. Defendants replied that YPPI identified

only 289 images to them.

Doc. 142 ¶ 7.

Although the Court cannot determine as a matter of law based on these affidavits whether

Defendants used only images covered by the ATT License, the Berry License, or both, this

is a matter that may not genuinely be in dispute. As previously directed, YPPI shall file a

response within fourteen (14) days of the date of this Order advising the Court whether

some or all of the images used by Defendants were covered by the Berry License. YPPI

shall also address whether some or all of the images used by Defendants were covered by

the ATT License. Defendants may file a response within fourteen (14) days of the date of

YPPI’s submission.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 23 of 39

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 28 of 33 PageID 6139

3. Expiration or Transfer of the License

YPPI argues that, even if Defendants could use the ATT License, the ATT License contains

an expiration date of December 31, 2010, resulting in a genuine issue of material fact as to

whether the license expired prior to any corporate restructuring. Doc. 135 at 15. YPPI

further argues that the expiration occurred before AT&T Inc. sold its advertising

businesses, and that the license did not survive the sale because no document shows an

assignment or transfer of the ATT License.

Id.

Defendants contend that this argument is a red herring because the license states that it is

“perpetual.” Id. at 3, 7. Additionally, the ATT License states that “[o]bligations and rights

under this Agreement . . . which by their nature would reasonably continue beyond the

Termination, Cancellation or expiration of this Agreement (including in those Sections

entitled . . . “Specifications” [where the perpetual provision is found] . . . ) will survive the

Termination, Cancellation or expiration of this Agreement . . . .” Id. at 4.

The ATT License does, in fact, provide an expiration date of December 31, 2010. Doc.

157-6 at 3. However, the ATT License indicates that the license is perpetual, which is

indisputably an obligation or right that would, by its nature, continue beyond the expiration

of the ATT License. By reading the expiration date in conjunction with the remainder of

the contract, which the Court must do, there is no dispute of material fact regarding the

perpetuity of the ATT License. Seagull Energy E&P, Inc. v. Eland Energy, Inc., 207 S.W.

3d 342, 345 (Tex. 2006).

YPPI’s argument regarding the 2012 “spin-off,” in which AT&T Inc. placed its yellow

pages business unit into a newly formed holding company named YP Holdings LLC, in

which AT&T Inc. held a 47% equity interest, is also misplaced. Doc. 135 at 15; Doc. 135-

4 at 5. YPPI contends that neither Defendant or their related entities are “affiliates” of ATT

Services or AT&T Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 29

of 33 PageID 6140

Inc. under Texas law. YPPI is correct that no evidence demonstrates that ATT Services or

AT&T Inc. are affiliates of Defendants, but that is irrelevant. The undisputed evidence

shows that ATT Advertising is the intended party to the ATT License, and Defendants are

affiliates to ATT Advertising.

ATT Advertising became YP Advertising L.P. through a name change, which later merged

with YP Southeast Advertising & Publishing LLC. Docs. 157-12, 157-13. YP Southeast

Advertising, formerly ATT Advertising, was owned by Defendant Yellow Pages. Doc.

157-10. Both Defendants shared common ownership with ATT Advertising. Thus, the

ATT License would not need to be transferred or assumed, because the entities remained

affiliates in the yellow pages business unit.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 24 of 39

4. Breach of Covenants

YPPI further argues that Defendants’ use of outsourcers fell outside the scope of the

ATT

License, which restricted use of YPPI images to “AT&T’s business locations.” Doc. 135 at

17.

YPPI also argues that Defendants’ failure to use the required copyright notice delineated by

the

ATT License demonstrates that Defendants do not have rights under the license. Doc. 135

at 1718. As previously explained, where a licensee acts outside the scope of a license by

violating a condition to the license, the licensor may claim copyright infringement.

Fantastic Fakes, Inc. v. Pickwick Int’l, Inc., 661 F.2d 479, 483-84 (5th Cir. 1981). Texas

law disfavors conditions, and courts should construe contract language as covenants rather

than conditions, where possible. PAJ, Inc. v. Hanover Ins. Co., 243 S.W.3d 630, 636 (Tex.

2008).

YPPI has not shown that the provisions cited by it—that images should be used in AT&T

business locations only and that images were required to contain a copyright notice—are a

condition and not a covenant. No clear language in the ATT License establishes that these

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 30 of 33 PageID 6141

provisions are a condition, as is required for a provision to be a condition under Texas law.

W.F. White Land Co. v. Christenson, 14 S.W.2d 369, 371 (Tex. App. 1928). Thus, the only

reasonable interpretation is that the provision is a covenant, not a condition, which YPPI

cannot claim as the basis for copyright infringement. Instead, any use of outsourcers by

Defendants would give rise only to a claim for breach of contract. Accordingly, arguments

that Defendants used outsourcers or failed to include the requisite copyright notice do not

support a claim for copyright infringement. Based on the above, the Court will grant

summary judgment on the issue of whether Defendants were permitted to use the licensed

images under the ATT License, and their use of such images did not constitute copyright

infringement. D. Claim for Profits

In a claim for copyright infringement:

The copyright owner is entitled to recover the actual damages suffered by

him or her as a result of the infringement, and any profits of the infringer

that are attributable to the infringement and are not taken into account in

computing the actual damages. In establishing the infringer’s profits, the

revenue, and the infringer is required to prove his or her deductible expenses

and the elements of profit attributable to factors other than the copyrighted

work.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 25 of 39

17 U.S.C. § 504(b). In a claim for profits, “the plaintiff must show a causal relationship

between the infringement and profits . . . .” Pronman v. Styles, 676 F. App’x 846, 848

(11th Cir. 2017). The initial burden placed on the copyright holder to show some causal

connection is low. Latimer v. Roaring Toys, Inc., No. 8:06-cv-1921-T-30AEP, 2010 WL

3747148, at *5 (M.D. Fla. Sept. 21, 2010). However, “a plaintiff may not seek gross

revenues based entirely on a speculative connection to the plaintiff’s claim.” Id. (quoting

Thornton v. J Jargon Co., 580 F. Supp. 2d 1261, 1280 (M.D. Fla. 2008)).

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 31 of 33 PageID 6142

Here, Defendants move for summary judgment on YPPI’s claim for profits and argue that

YPPI cannot show a causal relationship between their profits and any alleged infringement.

Doc. 157 at 22-26. YPPI argues that “the causal relationship between the use of YPPI’s

images in Defendants’ ads and the revenue Defendants received from the sale of those ads

is evident by simply observing the Defendants’ ads containing YPPI images.” Doc. 135 at

19. Additionally,

YPPI relies on Defendants’ training materials which state that a picture is worth a thousand

words. Id. at 19-20. Although YPPI also relies on the opinion of an expert, Joseph J.

Brown, the Court found that the expert did not meet the Rule 702 and Daubert

requirements for providing expert testimony. Thus, the Court has not considered Brown’s

opinion in opposition to Defendants’ motion.

Defendants provide unrebutted evidence that their profits are not affected by use of YPPI’s

images. Specifically, their pricing structure is not reliant on it, and their profits were not

affected by discontinuing use of YPPI’s images. Doc. 120 ¶ 7; Doc. 121 ¶¶ 15-16.

With respect to evidence that Defendants find images to be vital to advertisements, such

evidence does not show a connection specifically between use of YPPI’s images and profits

from advertisements. Defendants could—and did—use non-YPPI images with no effect on

their profits.

Doc. 120 ¶ 7.

Based on the above, YPPI has failed to meet its burden to show a causal relationship

between Defendants’ use of YPPI images and their profits. Accordingly, the Court will

grant summary judgment in favor of Defendants with respect to YPPI’s claim for profits.

YPPI may pursue its claim for actual damages.

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 32 of 33 PageID 6143

E. Defendants’ Discovery Deficiencies

YPPI’s final argument in opposition to summary judgment is that Defendants

violated this

Court’s discovery orders by not producing information critical to YPPI’s claims and

damages, or

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 26 of 39

Defendants’ license defense. Doc. 135 at 20-21. YPPI relies on the arguments made in

YPPI’s Motion for Discovery Sanctions against Defendants (Doc. 124), in which YPPI

requested the Court sanction Defendants, including by precluding them from raising the

licenses as a defense in this case (id. at 17). The Court denied the motion and need not re-

address its reasons for doing so here. 4 Accordingly, it is

ORDERED:

1. Plaintiff’s Notice to Take Judicial Notice (Doc. 133) is GRANTED.

2. Defendants YP LLC and Print Media LLC’s Motion for Summary Judgment

(Doc. 119) is GRANTED-in-part and DENIED-in-part.

3. The Court grants summary judgment in favor of Defendant YP, LLC with

respect to the issue of whether it was permitted to use the licenses referred to herein as the

Berry License and the ATT License. As a matter of law, any use of Plaintiff’s copyrighted

images covered by these licenses did not constitute copyright infringement.

4. The Court grants summary judgment in favor of Defendant Print Media LLC

with respect to the issue of whether it was permitted to use the license referred to herein as

the ATT License. As a matter of law, any use of Plaintiff’s copyrighted images covered by

this license did not constitute copyright infringement. The Court denies summary judgment

with respect to the

Case 8:17-cv-00764-CEH-JSS Document 196 Filed 11/27/19 Page 33 of 33 PageID 6144

issue of whether Defendant Print Media LLC was permitted to use the license referred to

herein as the Berry License.

Additionally, at the Final Pretrial Conference, YPPI acknowledged that all discovery

issues have been resolved.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 27 of 39

5. The Court grants summary judgment in favor of Defendants on the issue of

whether Plaintiff may claim Defendants’ profits as damages. Plaintiff may not claim

Defendants’ profits as damages.

6. The Court denies summary judgment as to Counts I and II of the Amended

Complaint because the evidence is disputed as to whether the images used by Defendants

were covered by the licenses.

7. Within FOURTEEN (14) DAYS of the date of this Order, YPPI shall advise the

Court as to whether some or all of the images used by Defendants were covered by the

Berry License, the ATT License, or both. YPPI’s response should be supported by any

appropriate evidence. Defendants may file a response within FOURTEEN (14) DAYS of

the date of YPPI’s response.

8. As discussed at the Final Pretrial Conference, in light of the Court’s ruling on

the motion for summary judgment, on or before December 20, 2019, the parties may file an

Amended Pretrial Statement.

DONE AND ORDERED in Tampa, Florida on November 27, 2019.

Copies to:

Counsel of Record and Unrepresented Parties, if any

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 28 of 39

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 1 of 16 PageID 8008

APPENDIX B

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA

TAMPA DIVISION

YELLOWPAGES PHOTOS, INC.,

Plaintiff,

v. Case No: 8:17-cv-764-T-36JSS

YP, LLC and PRINT MEDIA LLC,

Defendants.

___________________________________/

ORDER

This matter comes before the Court upon Defendant Print Media LLC’s Supplemental

Motion for Summary Judgment (Doc. 220), Plaintiff’s response thereto (Doc. 228), and

Defendant’s reply (Doc. 231). In the motion, Defendant argues that only ten of Plaintiff’s

copyrighted images remain in dispute following the Court’s Order on Defendants YP LLC

and Print Media LLC’s Motion for Summary Judgment (Doc. 196). Doc. 220 at 2.

Defendant contends that these images were encompassed by the License Agreement

between L.M. Berry and Company and Plaintiff (“Berry License”), which authorizes use of

an image in renewal, republication, and reprint of an advertisement. Id. at 2-3. Defendant

further argues that all disputed advertisements containing Plaintiff’s copyrighted images

were renewals, republications, or reprints of authorized advertisements and that, because of

this, it is entitled to summary judgment on Plaintiff’s copyright infringement claim. Id. at

3. Plaintiff responds that a disputed issue of material fact exists as to whether the images

were originally used in advertisements under the Berry License, and whether alterations to

the advertisements prevent Defendant’s use from qualifying as renewals, republications, or

reprints. Doc. 228. The Court, having considered the motion and being fully advised in the

premises, will grant Defendant’s Supplemental Motion for Summary Judgment.

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 2 of 16 PageID 8009

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 29 of 39

I. FACTS 5 A. Background

This is the second time that this case is before the Court on a Motion for Summary

Judgment. The facts of this case are set forth in detail in the Court’s prior Order and will

not be repeated at length here. Doc. 196. This Order is limited to the pertinent facts

required for resolution of this Supplemental Motion for Summary Judgment. The only

remaining issue is Plaintiff Yellow Pages Photos, Inc.’s (“YPPI”) claim that Defendant

Print Media LLC (“Print Media”) infringed on ten of YPPI’s copyrighted stock images.

Doc. 211 at 2.

B. Undisputed Facts 1. The Berry License

YPPI, which is owned and operated by William Trent Moore, owns the copyrights

to various images. Doc. 143 ¶¶ 1, 3. YPPI is in the business of licensing images to

publishers of yellow pages directories. Id. ¶ 3. In conducting its business, in June 2006,

YPPI entered into The Berry License with L.M. Berry and Company (“Berry”). Doc. 157-

2. The Berry License states that “Licensor [YPPI], in consideration of the one-time

payment by Berry of $32,435.00, grants Berry a one-year license, from the date this

Agreement was duly executed, for the use of Licensor products and services pursuant to the

terms and conditions set forth herein.” Id. at 2.

The Berry License provides that the “[l]icensee,” which is defined as Berry “and all

affiliates owned or owning same,”

Has the non-exclusive right to copy, crop, manipulate, modify, alter,

reproduce, create derivative works of, transmit, and display the Digital

Media an unlimited number of times in any and all media for any purpose,

including, but not limited to

• Yellow-pages directories (including print and electronic directories);

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 3 of 16 PageID 8010

• Advertising and promotional materials;

• Online- or electronic-distribution systems, including web-page design;

• Broadcast and theatrical exhibitions; and

• Publications and products.

Id. at 2. These “rights to the Digital Media and to use the Digital media as specified in

th[e] Agreement are worldwide and perpetual.” Id.

The Berry License contains a provision that governs termination and revocation of

the agreement. Doc. 157-2 at 4. The agreement states, in pertinent part, that:

The Court has determined the facts, which are undisputed unless otherwise noted, based

on the parties’ submissions, including declarations, and exhibits. Docs. 220-222, 228-231.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 30 of 39

Nothing in this Agreement shall be construed to affect that Digital Media

used in end-client’s applications (such as directory advertisements) prior to

the termination of this Agreement; by way of example, should Digital Media

be used in an endclient’s directory advertisement prior to the termination of

this Agreement, the Digital Media used in the original advertisement may

continue to be used in renewals, republications or reprints of the

advertisement.

Id. This is the provision pursuant to which Print Media contends it could print the disputed

images.

Doc. 220 at 4, 6, 8-9.

2. Print Media’s Predecessors

The Berry License was entered into in 2006 between YPPI and Berry. In 2008, The

Berry Company LLC (“Berry Company”) acquired assets of Berry and the Berry License

was included in the transaction. Doc. 220-2 at 2. Berry Company contacted YPPI to obtain

its consent to the Berry License “being transferred and assigned to” Berry Company. Id.

YPPI, through Moore, granted consent to the transfer and assignment. Id.

Berry Company was owned, through various subsidiaries and transactions, by YP,

LLC (“YP”), which was authorized to use YPPI’s images pursuant to the Berry License.

Doc. 196 at

18-21. Between late 2014 and June 2015, YP published “The Real Yellow Pages.” Doc.

222 ¶ 7. Print Media took the publishing functions of “The Real Yellow Pages” over from

YP in June 2015.

Id. ¶ 8.

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 4 of 16 PageID 8011

3. The Images

The parties’ dispute concerns ten images. The first image is a dinner plate with

barbeque foods on it, titled “BBQ-A0120 Food 4.” Doc. 228-1 at 4. This image will be

referred to as the “BBQ Image”.

The second image is of a gold or tan vehicle resembling a sedan and is titled “CRA-

A0110

CRASH.” Doc. 228-3 at 5. This image will be referred to as the “Gold Vehicle Crash

Image.”

The third image is of a black vehicle resembling a sports utility vehicle and is titled

“CRAA0117 CRASH.” Doc. 228-5 at 5. This image will be referred to as the “Black

Vehicle Crash Image.”

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 31 of 39

The fourth, fifth, and sixth images all appear in the same advertisement. The fourth

image is of a gutter and is titled “GUT-A0116 GUTTERS.” Doc. 220-4 at 38. This image

will be referred to as the “Gutter Image.” The fifth image is of siding for a house and is

titled “SID-A0112 SIDING.” Id. This image will be referred to as the “Siding Image.”

The sixth image is also of siding, is titled “SID-A0102 SIDING,” and will be referred to as

the “Second Siding Image.” Id.

Collectively, these will be referred to as the “Gutter and Siding Images.”

The seventh image is of a home and is titled “HOM-C0146 HOMES 3.” Doc. 220-

5 at 4.

This image will be referred to as the “Home Image.”

The eighth image is of a larger home and is titled “HOM-D0120 HOMES 4.” Doc.

220-6 at 5. This image will be referred to as the “Second Home Image.”

The ninth image is of a screen enclosure outside of a home and is titled “SCE-

A0141

SCREEN ENCLOSURES.” Id. at 34. This image will be referred to as the “Screen

Image.”

The tenth image is of a tree stump and is titled “TRE-A0180E TREE SERVICE.”

Id. at

45. This image will be referred to as the “Tree Image.”

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 5 of 16 PageID 8012

C. Disputed Facts

With the exception of the Screen Image, YPPI disputes that the above-referenced

images were published in advertisements by YP before Print Media took over the

publishing functions of “The Real Yellow Pages” from YP in June 2015. Doc. 228 at 6-9,

11, 13, 16, 18. With respect to the BBQ Image, YPPI points to the cover of the directory

containing the purported YP advertisement, which states “February 2015-2016.” Doc. 220-

4 at 3. Because this timeframe is inclusive of dates for which Print Media was the

publisher, YPPI claims there is a genuine dispute of material fact as to whether the

advertisement containing the BBQ Image was actually published by YP. Doc. 228 at 6-7.

Other images similarly have cover pages that include dates after June 2015. The

purported YP covers for the Gold Vehicle Crash Image and Black Vehicle Crash Image

reflect dates of June 2014-2015 (doc. 228-3 at 3; doc. 228-5 at 3); the cover for the Gutter

and Siding Images reflects dates of February 2015-2016 (doc. 228-7 at 3); the cover for the

Tree Image reflects dates of September 2014-2015 (doc. 228-14 at 3). For the Home

Image, Print Media provided eight directories purported to have been issued by YP, the

covers of which reflect dates of April 20152016, September 2014-2015, August 2014-2015,

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 32 of 39

and January 2015-2016. 6 Doc. 228-9 at 3, 6, 8, 11, 14, 17, 20, 23. Likewise, the Second

Home Image appeared in seven directories purported to be issued by YP, and those

directories reflect the dates of September 2014-2015, June 2014-2015, and December 2014-

2015. 7 Doc. 228-11 at 3, 6, 9, 12, 15, 18. Because of this, YPPI contends a genuine issue

of material fact exists as to whether YP issued the advertisements.

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 6 of 16 PageID 8013

In reply to this argument, Print Media submitted the declaration of Shawn Beard,

who has worked in ad production for both print and online products for the YP-branded

family of companies that includes YP and Print Media for more than twenty years. Doc.

230. Because of his experience, he is familiar with the creation and publication process of

“The Real Yellow Pages” directories by YP and Print Media. Id. ¶ 4. Beard explains in his

declaration that these “directories are typically distributed on an annual basis,” and “[t]he

date range listed on the front of [the] directories reflects the time period covered by the

particular edition of the directory.” Id. ¶ 5. Additionally, “[t]he directories are completed

roughly a month before the time period starts to allow time for printing” and “[t]he printed

directories are then published and distributed at the beginning of the time period reflected

on the cover page.” Id.

II. LEGAL STANDARD

Summary judgment is appropriate only when the court is satisfied that “there is no

genuine issue of material fact and that the moving party is entitled to judgment as a matter

of law” after reviewing the “pleadings, the discovery and disclosure materials on file, and

any affidavits[.]” Fed. R. Civ. P. 56(c)(2). In determining whether a genuine issue of

material fact exists, the court must consider all the evidence in the light most favorable to

the nonmoving party. Shotz v. City of Plantation, Fla., 344 F.3d 1161, 1164 (11th Cir.

2003).

Issues of fact are “genuine only if a reasonable jury, considering the evidence

presented, could find for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S.

242, 249, 106 S. Ct. 2505, 91 L. Ed.2d 202 (1986). A fact is “material” if it may affect the

outcome of the suit under governing law. Id. The moving party bears the initial burden of

stating the basis for its motion and identifying those portions of the record demonstrating

the absence of genuine issues of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323-

Two of the directories reflect the date of April 2015-2016 and three reflect the date

January 20152016.

Five of the directories reflect the date of December 2014-2015.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 33 of 39

24, 106 S. Ct. 2548, 91 L. Ed. 2d 265 Case 8:17-cv-00764-CEH-JSS Document 235 Filed

06/19/20 Page 7 of 16 PageID 8014

(1986); Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1259-60 (11th Cir. 2004). That

burden can be discharged if the moving party can show the court that there is “an absence

of evidence to support the nonmoving party’s case.” Celotex, 477 U.S. at 325, 106 S. Ct.

2548.

III. DISCUSSION 8 A. Waiver

YPPI contends that Print Media’s argument that it was entitled to print the

copyrighted images as renewals, reprints, or republications is an affirmative defense that

Print Media waived by failing to raise it in its Answer or Counterclaims. Doc. 228 at 2.

YPPI argues that “Print Media could have (and should have) asserted as at least a partial

defense its new argument that ads containing YPPI copyrighted images that were

previously published by YP are covered by the scope of the Berry License,” and that Print

Media “did not do so.” Id. at 4.

Federal Rule of Civil Procedure 8(c) requires that “in responding to a pleading, a

party must affirmatively state any avoidance or affirmative defense, including . . . license . .

. .” “The purpose of requiring that an affirmative defense be pled in the answer . . . is to

provide notice to the opposing party of the existence of certain issues.” Bergquist v. Fid.

Info. Services, Inc., 197 Fed. Appx. 813, 814 (11th Cir. 2006) (internal quotation omitted).

As a result of Rule 8(c), affirmative defenses that are not pled are typically considered to be

waived, unless the omission does not prejudice the plaintiff. Edwards v. Fulton Cty., Ga.,

509 Fed. Appx. 882, 887 (11th Cir. 2013) (“It is true that a defendant intending to assert an

affirmative defense must raise it in a responsive pleading, and failure to do so typically

results in a waiver of the defense.”).

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 8 of 16 PageID 8015

In its Answer, Print Media denied YPPI’s claims that it committed copyright

infringement, stating that it admitted to using images in advertisements, but averring “that

all such uses of YPPI’s images were permitted under one or more license agreements with

YPPI, or its affiliates, predecessors, or principal.” Doc. 51 ¶¶ 24-26, 38. Additionally,

In its Supplemental Motion for Summary Judgment, Print Media anticipated various

arguments that it expected YPPI to present based on statements made during the Final

Pretrial Conference. Doc. 220 at 9-13. These arguments do not appear in YPPI’s response.

See generally doc. 228.

Accordingly, they will not be addressed by the Court.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 34 of 39

Print Media raised as a defense that “YPPI granted express licenses that permit [Print

Media] to copy, transmit, and use the YPPI images in question in the manner alleged in the

Amended Complaint.” Id. at 7. The Answer clearly reflects that Print Media claimed that

it was authorized to print the images pursuant to a license agreement.

To the extent that the Answer did not specifically identify the Berry License, YPPI

has not been prejudiced. The Berry License was extensively discussed in the prior Motion

for Summary Judgment, response, reply, and Order with no argument by YPPI that it had

no notice that Print Media was claiming it was authorized to use the images under the Berry

License. YPPI has not identified any law indicating that an affirmative defense must detail

every argument or aspect of a defense. Accordingly, the Court rejects YPPI’s claim that

Print Media waived its argument that it was entitled to use the disputed images as reprints,

republications, or renewals pursuant to the Berry License.

B. Renewals, Reprints, and Republications 9

YPPI makes two arguments against Print Media’s assertion that the advertisements

containing YPPI images were authorized renewals, reprints, or republications: (1) the

advertisements were not published by YP prior to being published by Print Media; and (2)

many

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 9 of 16 PageID 8016

of the advertisements contain differences from the prior publications that prevent them

from qualifying as renewals, reprints, or republications. These arguments will be addressed

in turn.

1. Publication by YP

YPPI’s argument that YP did not publish the directories containing the

advertisements prior to Print Media taking over the publication of directories is without

merit. YP published the directories prior to June 2015. Doc. 222 ¶ 8. Each of the

directories had covers reflecting a beginning date prior to June 2015. Doc. 220-4 at 3;

Docs. 228-3 at 3; 228-5 at 3; 228-7 at 3; 22814 at 3; 228-9 at 3, 6, 8, 11, 14, 17, 20, 23;

228-11 at 3, 6, 9, 12, 15, 18. Beard explained that the directories would be completed

approximately a month before the date reflected on the covers. Doc. 230 ¶ 5. Accordingly,

YP published advertisements containing the disputed images prior to Print Media

publishing the images. Because YP was authorized to use these images under the Berry

License, the images could continue to be used “in renewals, republications or reprints of the

[original] advertisement.” Doc. 157-2 at 4.

The Berry License states that it “shall be governed in all respects by the laws of the State

of Ohio, U.S.A., without reference to its laws relating to conflicts of law”. Doc. 157-2 at 4.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 35 of 39

2. Changes to the Advertisements

As an initial matter, no dispute exists with respect to the Second Home Image and

Tree Image. 10 YPPI presents no argument that the advertisements published by YP are in

any way different from the advertisements published by Print Media for these two images.

Doc. 228 at 16, 18. Accordingly, Print Media is entitled to summary judgment on YPPI’s

Minor differences exist between YP’s publication and Print Media’s publication of

the remaining images. Print Media published the images in advertisements for the same

companies

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 10 of 16 PageID 8017

and in advertisements that are substantially the same as those published by YP, but with

differences such as formatting, size, updated company information, or minor text changes.

For example, for the BBQ Image, YP published an advertisement for “Gibson’s Bar-B-Q.”

Doc. 220-4 at 4. The advertisement contains a web address, two telephone numbers, and

two location addresses, and includes various statements about the restaurant, such as “Old

Fashioned Breakfast Daily,” “Huntsville Tradition Since 1956!,” “Catering Available for

Corporate Meetings & Picnics,”

“Catering For Up To 5,000,” “Specializing in: • Barbecue Pork • Beef • Chicken • Ribs •

Delicious Catfish • Barbecue Potatoes & Salads,” and “See Our Menu In The Menu

Section.” Id. The advertisement is in a rectangular landscape format. Id.

In Print Media’s publication of the Gibson’s Bar-B-Q Advertisement, in lieu of the

“See Our Menu In the Menu Section” text, the advertisement contains an image resembling

the shape of a shield, filled in black, with a fork and knife on the left and right sides of the

image, respectively, and stating in white print “SEE OUR RESTAURANT,” at the top,

with a white banner crossing the middle/lower region stating in bold black print

“MENU.” 11 Id. at 9. The location of this image is slightly lower in the advertisement than

the location of the statement “See Our Menu In the Menu Section.” Id. Otherwise, the

advertisement is the same: it contains the same statements, the same web address, the same

telephone numbers, and the same addresses. Id. at 4, 9.

As previously discussed, YPPI contested whether the images were published by YP in

the first instance, but the Court’s resolution of this issue leaves no further dispute between

the parties with respect to the Second Home Image and the Tree Image. Doc. 228 at 16,

18.

It is not entirely clear whether this advertisement was published by YP or Print Media.

This analysis assumes that the altered version was printed by Print Media so as to construe

the facts in the light most favorable to the non-moving party. Whether YP printed a copy

of the advertisement using the shield image, or printed only “See Our Menu In The Menu

Section” does not alter the analysis or conclusion.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 36 of 39

Also in one of its advertisements, Print Media’s version contains the shield image

and the formatting of the publication is changed to fit a larger, more square space. Id. at 14.

Nonetheless,

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 11 of 16 PageID 8018

all of the information is the same, the fonts used are the same, and the BBQ Image is the

same. Id. The sole change is formatting for the advertisement to fit the provided space.

Likewise, another more square advertisement of Gibson’s Bar-B-Q was published by Print

Media containing the statement “See Our Menu In The Menu Section,” instead of the shield

image. Id. at 15.

The other images in dispute contain similarly minor changes. With respect to the

Gold Vehicle Crash Image, it is an attorney advertisement in which the YP publication

stated “CELEBRATING 20 YEARS!” Id. at 19. The Print Media publications contain a

different number of years of celebration, such as “CELBRATING 24 YEARS!” Id. at 22.

The use of the

Gold Vehicle Crash Image is the same and the other information on the advertisements is

the same.

The advertisements containing the Black Vehicle Crash Image are for “PERSONAL

INJURY” and “CRIMINAL DEFENSE” by the law firm “REZA SEDGHI ATTORNEY

LAW.” Doc. 228-5 at 3-4. The advertisement published by YP is a two-page

advertisement that lists “Recent Recoveries” and types of injuries the firm handles, as well

as other information about the attorneys and firm on the first page. Id. at 3. The first page

contains a photo of the firm’s attorneys, stating that one attorney was a judge for the Macon

Municipal Court. Id. The second page pertains to criminal defense and lists the types of

charges the firm handles and in which jurisdictions the attorneys are licensed to practice.

Id. at 4. The second page also contains the law firm’s web address and states the firm

provides “SAME DAY FREE CONSULTATION.” Id.

The telephone number is listed on both the first and second pages. Id. at 3-4.

The advertisement published by Print Media is substantially similar to that

published by YP. Doc. 228-6 at 4-5. The color scheme is the same and the use of the

Black Vehicle Crash Image is the same. Id. The information contained in the

advertisement is the same, although the telephone number is different. Id. The photo of the

firm’s attorneys is also different. Id. at 4.

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 12 of 16 PageID 8019

Similarly, the Gutter and Siding Images published by YP contain a different

telephone number than those published by Print Media, and the Print Media version is

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 37 of 39

larger than the YP version. Doc. 228-7; Doc. 228-8. The advertisements are otherwise the

same.

With respect to the Home Image, there are two relevant advertisements, both of

which are for Abe’s. The first is a two-page advertisement, referred to as a “double truck.”

In YP’s publication of this advertisement, the color is a grey-scale. Additionally, on the

first page, where the Home Image is used, there is an image with a gate and a family of four

with a dog standing in front of it superimposed in front of the bottom right hand corner of

the Home Image. Doc. 228-9 at 4. In the Print Media version of this advertisement, the

color is full color, and the photo of the family of four with a dog in front of a gate shows a

different gate, the same family, the same dog, and contains a border around it to appear as

an inset photo. Doc. 228-10 at 4. The location of the photo in front of the Home Image

and at the bottom right corner is the same. Id. The first page of the advertisement is

otherwise the same. Id.

The second page of the advertisement has the most alteration. In YP’s print of this

advertisement, the Home Image does not appear on the second page. Instead, there is an

image of a different home. Doc. 228-9 at 4. By contrast, Print Media used the Home

Image on the second page of the advertisement. Doc. 228-10 at 4. An additional change is

that in YP’s print of the advertisement, there is a text box in greyscale that states “Broken

Springs Our Specialty.” Doc. 228-9 at 4. In the Print Media version of the advertisement,

the text box is yellow. Doc. 228-10 at 4. This same text-box color change also appears in

the second advertisement.

Other than replacement of the photo of the home used in the YP advertisement and

the color change, there are no alterations between the second page of the YP advertisement

and the Print Media advertisement. The use of the Home Image is in the same context as

the use of the Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 13 of 16

PageID 8020

previous home image, and does not alter the substance or particularly change the

appearance of the advertisement.

Regarding the Screen Image, the only difference between the YP published

advertisement and the Print Media published advertisement is the size. The content,

coloring, and use of the photo is identical between the advertisements. Doc. 228-12; Doc.

228-13.

Here, the Berry License states that

Nothing in this Agreement shall be construed to affect that Digital Media

used in end-client’s applications (such as directory advertisements) prior to

the termination of this Agreement; by way of example, should Digital Media

be used in an endclient’s directory advertisement prior to the termination of

this Agreement, the Digital Media used in the original advertisement may

continue to be used in renewals, republications or reprints of the

advertisement.

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 38 of 39

Doc. 157-2 at 4. YPPI argues that because of the changes described above, a genuine

dispute of material fact exists as to whether Print Media’s use of the images constitutes

“reprints” “renewals” or “republications.” To determine this, the Court will examine the

language of the contract. Under Ohio law, “it is presumed that the intent of the parties to a

contract resides in the language they chose to employ in the agreement.” Brandon/Wiant

Co. v. Teamor, 708 N.E.2d 1024, 1028 (Ohio Ct. App. 1998). Accordingly, “[c]ourts will

not construe contract language that is clear and unambiguous on its face,” but will “give

effect to the language of the contract.” Id. However, “ ‘where the language of a contract is

reasonably susceptible of more than one interpretation, the meaning of ambiguous language

is a question of fact’ to be determined by a jury.” Geczi v. Lifetime Fitness, 973 N.E.2d

801, 805 (Ohio Ct. App. 2012).

The Berry License does not define the terms renewal, republication, or reprint. See

generally doc. 157-2. Nor have the parties provided, or the Court located, any pertinent

caselaw. Print Media cites to an Ohio case that defines a renewal as “a reconstruction of

the entirety or a substantial part of the whole.” Doc. 231 at 5 (quoting Statler Arms, Inc. v.

APCOA, Inc., 92 Ohio Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page

14 of 16 PageID 8021

Misc. 2d 45, 63 (Ohio Ct. Common Pleas 1997). However, that case is inapposite because

it deals specifically with obligations for repairing or renewing structures on real property,

and the difference between a repair or a renewal. Statler Arms, 92 Ohio Misc. 2d at 63. In

context, the case states: “Repair frequently involves a renewal of a subordinate part. It is a

restoration by renewal or replacement of subsidiary parts of a structure. As distinguished

from repair, renewal is a reconstruction of the entirety or a substantial part of the whole.”

Id. When this definition is read in context, it’s applicability to this case is dubious.

Accordingly, the Court will look to the definition of these words to determine

whether their meaning clearly allows minor changes in advertisements printed for the same

end-client. Renewal is defined as “[t]he act of restoring or reestablishing.” Renewal,

Black’s Law Dictionary (11th ed. 2019). Republication is “[t]he act or an instance of

publishing again or anew.” Republication,

Black’s Law Dictionary (11th ed. 2019). Anew is defined as “[o]ver again; once more;

afresh <let’s start anew>. 2. In a new and changed form <let’s fashion this book anew>.

The word always implies some previous act or activity of the same kind.” Anew, Black’s

Law Dictionary (11th ed. 2019).

The Berry License is clear that an end-user may continue to use its previously-

created advertisement after termination of the Berry License. Looking at the meaning of

the words used, the only reasonable reading of the Berry License allows minor formatting

and size changes in reprints, renewals, and republications as long as the reprint, or renewal,

or republication is the same advertisement for the same client. Based on the definition of

these words, and common sense, it would be absurd to read the Berry License as

disallowing updates to changes of telephone numbers, or reformatting an advertisement to

fit in a larger or smaller space. Indeed, the definition Case 8:17-cv-00764-CEH-JSS

Document 235 Filed 06/19/20 Page 15 of 16 PageID 8022

USCA11 Case: 20-13627 Date Filed: 08/19/2021 Page: 39 of 39

of republication contemplates a freshening in the publication. Republication, Black’s Law

Dictionary (11th ed. 2019).

Each of the uses in this case qualify for use by Print Media as a renewal, reprint, or

republication based on the clear language of the Berry License. The largest change is to the

double truck advertisement that contains the Home Image. Nonetheless, the Home Image

was used in the same context and manner in Print Media’s version of the publication as it

was in YP’s publication. It was the same advertisement for the same end-user. It is not a

new advertisement. No genuine dispute exists as to the fact that this type of minor change

to an original advertisement by the same client is permitted by the Berry License. As no

genuine issue of material fact exists, Print Media is entitled to summary judgment on

YPPI’s copyright claim against it, Count II of YPPI’s Amended Complaint. Accordingly, it

ORDERED:

1. Defendant Print Media LLC’s Supplemental Motion for Summary Judgment

(Doc. 220) is GRANTED.

2. The Court grants summary judgment in favor of Defendant Print Media LLC.

As a matter of law, Defendant Print Media LLC’s use of Plaintiff Yellow Pages Photos,

Inc.’s, copyrighted images discussed herein did not constitute copyright infringement

because the use fell within the scope of the license entered into between Plaintiff and L.M.

Berry and Company.

3. A final judgment in favor of Defendants YP LLC and Print Media LLC will be

entered by separate Order.

DONE AND ORDERED in Tampa, Florida on June 19, 2020.

Case 8:17-cv-00764-CEH-JSS Document 235 Filed 06/19/20 Page 16 of 16 PageID 8023

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