          United States Court of Appeals
                        For the First Circuit


No. 19-1452

                PHOTOGRAPHIC ILLUSTRATORS CORPORATION,

                        Plaintiff, Appellant,

                                  v.

                            ORGILL, INC.,

                         Defendant, Appellee,

                       FARM & CITY SUPPLY, LLC,

                              Defendant.


          APPEAL FROM THE UNITED STATES DISTRICT COURT
                FOR THE DISTRICT OF MASSACHUSETTS

              [Hon. Patti B. Saris, U.S. District Judge]


                                Before

                         Howard, Chief Judge,
                  Lynch and Kayatta, Circuit Judges.


     Charles E. Fowler, Jr., with whom Gary Cruciani, McKool Smith,
PC, Craig R. Smith, Eric P. Carnevale, and Lando & Anastasi, LLP
were on brief, for appellant.
     Virginia H. Snell, with whom Byron E. Leet, Thomas E. Travis,
Wyatt, Tarrant & Combs, LLP, James F. Radke, and Murtha Cullina
LLP were on brief, for appellee.


                            March 13, 2020
            KAYATTA, Circuit Judge. In this case of first impression

in the circuit courts, we hold that a copyright licensee given the

unrestricted right to grant sublicenses may do so without using

express language.

                                         I.

            Photographic        Illustrators           Corp.       ("PIC")     provides

commercial photography services -- primarily photos of consumer

goods -- through its principal photographer, Paul Picone.                         Osram

Sylvania,    Inc.     ("Sylvania")       is     one    of    the    world's     leading

manufacturers    of       lightbulbs.         PIC     owns    valid   copyrights     to

thousands of photographs of Sylvania lightbulbs.                       Sylvania uses

the photos in marketing and selling its products, as do Sylvania's

dealers and distributors.

            After     a    dispute      arose       between     PIC    and     Sylvania

concerning the scope of Sylvania's permission to use the photos,

PIC   and   Sylvania      negotiated    a     detailed,       sixteen-page      license

setting forth the precise terms of the parties' agreement.                          The

license was to be effective from 2006 to 2012.                           For present

purposes, the key provision in the license concerns the use of the

photos by those dealers and distributors who market and sell

Sylvania products.         That provision states as follows:                 "PIC (and,

to any extent necessary, Paul Picone) hereby grants [Sylvania] a

non-exclusive, worldwide license in and to all the Images and the

copyrights thereto to freely Use, sub-license Use, and permit Use,


                                        - 2 -
in its sole and absolute discretion, in perpetuity, anywhere in

the   world."    Sylvania   paid    PIC    approximately   $3 million   in

consideration for this license.      The license also stipulated that,

"[t]o the extent reasonably possible and practical, [Sylvania]

shall . . . include a copyright notice indicating PIC as the

copyright owner and/or include proper attribution indicating Paul

Picone as the photographer," including "as a side note or footnote

for Images appearing in published advertisements."           We refer to

this requirement in the license as the "attribution restriction."

            Orgill, Inc., a global hardware distributor, is one of

those third parties that markets and sells Sylvania lightbulbs

through a network of dealers.      Orgill's inventory includes nearly

1,000 Sylvania products.     At issue here is Orgill's use of PIC

photos of Sylvania lightbulbs in Orgill's electronic and paper

catalogs. As best the record shows, it would have been unrealistic

to try to market and sell the lightbulbs without pictures of the

product. To obtain those pictures, Orgill's catalog editor, Dennis

Sills, told Sylvania which photos Orgill wanted to use.         Sylvania

then sent the photos to Sills, who used them as he told Sylvania

he would.   On occasion, instead of sending the photos to Sills in

response to his requests, Sylvania directed him to copies of the

photos maintained on Sylvania's website from which Sills then cut

and pasted copies for Orgill's use.




                                   - 3 -
             Sylvania   did    not   tell    Orgill   (or   other     Sylvania

customers)    that    Orgill   needed   to    abide   by    the    attribution

restriction in Sylvania's license.              Deeming this omission to

violate the PIC–Sylvania license, PIC commenced more than thirty

separate lawsuits against Orgill and other Sylvania dealers and

distributors.    A number of those actions filed in the District of

Massachusetts (not including this one) were consolidated, with

Sylvania intervening as an interested party.           The district court,

with the consent of the parties, referred those consolidated cases

to arbitration.      Sylvania also moved to intervene in the present,

unconsolidated case lodged by PIC against Orgill and one of

Orgill's dealers, Farm & City Supply, LLC ("Farm & City").                 The

district court denied that motion.

             PIC's claims against Orgill and Farm & City included

copyright infringement under 17 U.S.C. § 501, violations of the

Digital Millennium Copyright Act (DMCA), and false designation of

origin and false advertising under the Lanham Act.                The district

court granted the defendants' motion for summary judgment as to

the DMCA and Lanham Act claims.             See Photo. Illust'rs Corp. v.

Orgill, Inc. ("PIC I"), 118 F. Supp. 3d 398, 408, 410–11 (D. Mass.

2015). As to the copyright claim, the court determined that Orgill

had a sublicense from Sylvania to use the photos.                 Id. at 403.

Left unresolved by that ruling on summary judgment was the scope

of that sublicense and whether Orgill exceeded it.                Id. at 403–


                                     - 4 -
05.    The court also found Farm & City to be an innocent infringer.

Id. at 406.    At that point, PIC dropped Farm & City from the case,

and the court granted the parties' motion to stay proceedings

pending the outcome of the arbitration.

            Thereafter, the arbitrator issued a partial final award

in    the   dispute    between     PIC,   Sylvania,   and   the    non-Orgill

distributors.    A key ruling in that decision framed the remainder

of this litigation.         The arbitrator construed the attribution

restriction in Sylvania's license to be a "covenant," rather than

a "condition."        This matters because a licensee who violates a

condition of a license (and thus exceeds the license's scope)

cannot claim the license as a defense to copyright infringement,

but if the licensee merely violates a covenant, the licensor's

only remedy is for breach of contract.             See MDY Indus., LLC v.

Blizzard Entm't, Inc., 629 F.3d 928, 939 (9th Cir. 2010); Graham

v. James, 144 F.3d 229, 236 (2d Cir. 1998).            The arbitrator went

on to determine that Sylvania breached this covenant by permitting

its distributors to reproduce PIC's photos without attribution.

As    compensation    for   that   breach,   the   arbitrator     awarded   PIC

approximately $8.5 million.          As to the other distributors, the

arbitrator briefly noted -- apparently based on a concession by

PIC -- that they had sublicenses from Sylvania, so the arbitrator

awarded no damages from those parties.




                                     - 5 -
          Following the arbitrator's decision, Orgill renewed its

motion in this case for summary judgment on the sublicense defense

and on the new ground of defensive, nonmutual issue preclusion.

The district court held that the arbitral award precluded PIC from

relitigating the arbitrator's construction of the PIC–Sylvania

license, including the finding that the license permitted Sylvania

to grant "implied sublicenses" to its distributors.       See Photo.

Illust'rs Corp. v. Orgill, Inc. ("PIC II"), 370 F. Supp. 3d 232,

243–44 (D. Mass. 2019).   The district court viewed that finding as

implicitly assuming that a copyright sublicense could be implied

in the absence of an express grant.     Id. at 244.    Nevertheless,

because the parties to the arbitration did not raise and contest

that assumption, the district court allowed PIC to argue in this

case that, as a matter of law, sublicenses of copyrights are

ineffective absent language expressly granting permission to use

the copyrighted work.     Id.    Having allowed PIC to make that

argument, the district court then rejected it.        Id. at 245–47.

The district court also reaffirmed its prior ruling that Sylvania

impliedly granted Orgill a sublicense and then construed the scope

of that sublicense as having an attribution restriction that was

merely a covenant, not a condition.       Id. at 244–45, 247–49.

Accordingly, PIC could not recover from Orgill for copyright

infringement.   Nor could PIC recover on a contract theory because




                                - 6 -
Orgill made no promise to PIC. The court thus granted full summary

judgment in favor of Orgill.      Id. at 251.        PIC timely appealed.

                                   II.

             We begin by narrowing the scope of the issues before us.

This is not a case in which there is any contention that Orgill

acquired ownership of PIC's copyrights.          Hence the provision of

the Copyright Act that such a transfer of ownership must be in

writing is not at issue.       See 17 U.S.C. § 204(a) ("A transfer of

copyright ownership . . . is not valid unless an instrument of

conveyance . . . is in writing and signed by the owner of the

rights conveyed."); see also id. § 101 (defining "transfer of

copyright ownership" to exclude "nonexclusive license[s]").               Nor

does   PIC   argue   that   Sylvania   could   not    orally   grant   Orgill

effective permission to use the photos.

             Instead, on appeal PIC makes two more narrowly tailored

arguments.     First, PIC argues that any sublicense of the right to

use a copyrighted work must as a matter of law be "express," and

that here Sylvania's permission to Orgill was at most implied.

Second, PIC argues that even if a jury might find an express grant

of permission in this case, or even if an implied grant is

sufficient, there are issues of fact that would allow a jury to




                                  - 7 -
find that Orgill obtained no permission, either express or implied.

We address each argument in turn.1

                                A.

          PIC frames its first argument by claiming that an implied

sublicense is a legal impossibility.      We will assume without

deciding that, as the district court determined, the arbitral award

does not preclude PIC from making this argument.   See PIC II, 370

F. Supp. 3d at 244 (deciding that the issue was not "actually

litigated" in arbitration).

          Nothing in the Copyright Act requires that two parties'

agreement to a sublicense be expressed in any specific language.

And no circuit court has ever addressed whether such a requirement

exists.   In fact, it appears that only one other district court

besides the court below has ever published an opinion considering

an implied copyright sublicense.   See Catalogue Creatives, Inc. v.

Pac. Spirit Corp., No. CV 03-966-MO, 2005 WL 1950231, at *2 (D.

Or. Aug. 15, 2005) (calling an implied sublicense granted from an

implied licensee a "legal impossibility").   So we are for the most

part in uncharted waters.

          To find our way, we consider first how the common law

treats the making of a license itself between the owner and the


     1  PIC does not appeal the district court's ruling that Orgill
cannot be held liable to PIC for any breach of the attribution
restriction in Sylvania's license. PIC also does not appeal the
district court's earlier rulings on the DMCA and Lanham Act claims.


                              - 8 -
original licensee.   Both parties presume that federal common law

applies, so we shall as well.       See Christopher M. Newman, "What

Exactly Are You Implying?":     The Elusive Nature of the Implied

Copyright License, 32 Cardozo Arts & Ent. L.J. 501, 552 (2014)

(canvassing the applicable case law and declaring that "[t]here is

indisputably a federal common law of implied copyright licenses").

But cf. Foad Consulting Grp., Inc. v. Azzalino, 270 F.3d 821, 827

(9th Cir. 2001) ("[S]o long as it does not conflict with the

Copyright Act, state law determines whether a copyright holder has

granted [an implied] license."). Certainly at common law generally

a license (or, frankly, an agreement of most types) could be

manifest and proven by the parties' conduct short of any magic

words of assent.   See License, 2 Bouvier's Law Dictionary (2d ed.,

photo. reprint 2006) (1843) ("An implied license is one which

though not expressly given, may be presumed from the acts of the

party having a right to give it."); see also Restatement (Third)

of   Prop.:   Servitudes   § 2.16    cmt. f   (Am.   Law   Inst.   2000);

Restatement (Second) of Contracts § 4 (Am. Law Inst. 1981).2           At

the same time, at least some courts tended to be somewhat demanding

in the type of proof required to show an implied license.            See

Weldon v. Phila., Wilmington & Balt. R.R. Co., 43 A. 156, 159 (Del.

Super. Ct. 1899) ("Such a license must be established by proof,


      2 The issue of an implied sublicense does not appear to have
come up much at common law.


                                - 9 -
and is not to be inferred from equivocal declarations or acts of

the owner of the land."); see also Zellers v. State, 285 P.2d 962,

965 (quoting id.).

            The    case   law   dealing     with   copyrights     accepts   the

possibility of implied licenses.           See, e.g., Effects Assocs., Inc.

v. Cohen, 908 F.2d 555, 558 (9th Cir. 1990). See generally Newman,

supra.     And many courts have been rather demanding of parties

claiming    an     implied   copyright      license   in    cases    involving

transactions between the owner and a putative licensee. See Estate

of Hevia v. Portrio Corp., 602 F.3d 34, 41 (1st Cir. 2010)

("[I]mplied licenses are found only in narrow circumstances.");

accord John G. Danielson, Inc. v. Winchester–Conant Props., Inc.,

322 F.3d 26, 40 (1st Cir. 2003) (same).

            Our    circuit   has   had    two   implied-license     cases   that

typify the general approach.             In the first case, Danielson, we

stated that "[t]he touchstone for finding an implied license . . .

is intent."       322 F.3d at 40.        Other circuits, we observed, have

"beg[un] their analysis with a three-part test . . . requir[ing]

that the licensee request the creation of the work, the licensor

create and deliver the work, and the licensor intend that the

licensee distribute the work."           Id. at 41.   However, those courts

"quickly pass over the 'request' and 'delivery' issues to focus on

manifestations of the [creator's] intent."            Id.    "We will do the

same here," we said, id., and we did so by determining that the


                                    - 10 -
creator did not intend to grant a license, so there was no need to

evaluate the other elements, id. at 41–42.       In assessing the

creator's intent, we considered three factors:

          (1) whether the parties were engaged in a
          short-term discrete transaction as opposed to
          an ongoing relationship; (2) whether the
          creator utilized written contracts, such as
          the   standard    [American   Institute    of
          Architects]    contract,    providing    that
          copyrighted materials could only be used with
          the creator's future involvement or express
          permission; and (3) whether the creator's
          conduct during the creation or delivery of
          the copyrighted material indicated that use
          of the material without the creator's
          involvement or consent was permissible.

Id. at 41 (quoting Nelson–Salabes, Inc. v. Morningside Dev., LLC,

284 F.3d 505, 516 (4th Cir. 2002)).

          In our second case, Estate of Hevia, we repeated much of

the same legal framework as quoted in Danielson, including that

the "request" and "delivery" elements can be "quickly pass[ed]

over" and that the three-factor Nelson–Salabes test guides the

analysis of intent.   Estate of Hevia, 602 F.3d at 41.    We found,

under this framework, that the creator's intent was manifest, so

we affirmed summary judgment for the defendant based on an implied

license. Id. at 41–42. We did not analyze the request and delivery

elements, perhaps because they were obviously satisfied under the

facts of the case.3


     3  As PIC points out, Estate of Hevia perhaps could have been
resolved without resort to the implied-license analysis at all,


                              - 11 -
           At least two other circuits are arguably less flexible

in determining whether the owner of a copyright has impliedly

granted a license.   In the Second and Seventh Circuits, the three

elements (request, delivery, and intent) seem to be absolute

requirements for establishing an implied license between the owner

and a licensee.   See Muhammad-Ali v. Final Call, Inc., 832 F.3d

755, 763 (7th Cir. 2016) (stating that, "[t]o establish an implied

license, a party must show" request, delivery, and intent (emphasis

added)); SmithKline Beecham Consumer Healthcare, L.P. v. Watson

Pharm., Inc., 211 F.3d 21, 25 (2d Cir. 2000) ("[C]ourts have found

implied licenses only in 'narrow' circumstances where one party

'created a work at [the other's] request and handed it over,

intending that [the other] copy and distribute it.'" (second and

third alterations in original) (emphasis added) (quoting Effects

Assocs., 908 F.2d at 558)).     Two leading copyright treatises,

however, suggest that this test is too rigid, and that implied

licenses can sometimes be found if one or more of these elements

is lacking.   See 3 Melville B. Nimmer & David Nimmer, Nimmer on

Copyright § 10.03[A][7]; 2 William F. Patry, Patry on Copyright

§ 5:131.   And the Fifth and Ninth Circuits appear to have found

implied licenses in cases where the three elements were not



since the defendant in that case might have owned the copyright ab
initio under the "works made for hire" rule.        See 17 U.S.C.
§ 201(b). The parties to the case, however, did not argue that
point. See Estate of Hevia, 602 F.3d at 40 n.4.


                              - 12 -
strictly satisfied.   See Falcon Enters., Inc. v. Publ'rs Serv.,

Inc., 438 F. App'x 579, 581 (9th Cir. 2011) (mem.); Baisden v. I'm

Ready Prods., Inc., 693 F.3d 491, 500–01 (5th Cir. 2012).

          Against this background, PIC insists that the three-part

test employed by many courts for assessing claims of an implied

license from the copyright owner must be applied literally and

inflexibly to assessing claims of an implied sublicense between a

licensee and a sublicensee.   Such a literal application would mean

that there could rarely if ever be an implied sublicense because,

for example, the putative sublicensee generally deals only with

the licensee, and likely would not have requested the owner to

create the copyrighted work.    But it makes no more sense to use

this test to assess the making of a sublicense than it would to

require that an assignment of a mortgage meet the same requirements

that might apply to the granting of a mortgage.      See generally

Restatement (Third) of Prop.:     Mortgages §§ 1.5, 5.4 (Am. Law.

Inst. 1997).   One would not, for example, deem an assignment by

the mortgagee to a third party invalid because the owner/mortgagor

did not sign it.4




     4  PIC similarly contends that the multi-factor analysis of
intent from Danielson and Estate of Hevia, which focuses on the
state of mind of the copyright holder, similarly makes an implied
license granted by anyone else impossible. Again, that analysis
was developed in a different context -- implied licenses, not
implied sublicenses -- so it is inapposite to this case.


                               - 13 -
             Practical          considerations          counsel      against      treating

implied sublicenses as legally impossible.                           In the case of a

sublicense,       the       copyright      owner   has      the   ability   to    set   the

conditions of sublicensing, at least where, as here, the initial

license     is       in     writing,    is     highly       detailed,   and      expressly

contemplates              sublicensing.               Cf.      Catalogue       Creatives,

2005 WL 1950231, at *2 (finding no implied sublicense where the

original    license          was    also    implied).         With    ordinary    implied

licenses, it is the courts rather than the owner who sets the rules

for establishing the agreement, so the courts may fairly be more

protective of the owner's property rights in deciding whether the

owner impliedly gave away some of those rights. With a sublicense,

though, there is first a license, and the owner can set forth in

the license the ground rules of the license itself -- including

the rules by which the licensee may permit others to distribute

the work.        Here, for example, no party cites any reason why PIC,

had it wished, could not have insisted in the license to Sylvania

that a condition of that license was that sublicenses must be

express, or perhaps even in writing.                        Or PIC could have instead

negotiated       a        license   that      forbade       sublicensing      altogether.

Instead, PIC and Sylvania agreed that Sylvania could "sub-license

Use, and permit Use, in its sole and absolute discretion."                          So PIC

already affirmatively gave away many of its rights, and courts

need not protect it as much as they would otherwise.


                                             - 14 -
            We are also not persuaded by PIC's remaining policy

arguments for why copyright sublicenses must be express.                   PIC

argues that forbidding implied copyright sublicenses would further

an "artist's right to control the work during the term of the

copyright protection," Stewart v. Abend, 495 U.S. 207, 228 (1990),

which in turn furthers "[t]he primary objective of the Copyright

Act"   by   "encourag[ing]    the    production      of   original   literary,

artistic, and musical expression for the good of the public,"

Fogerty v. Fantasy, Inc., 510 U.S. 517, 524 (1994).                But, as the

case law notes, the "artist's right to control the work" must be

"balance[d]" against "the public's need for access to creative

works," and "dissemination of creative works is [also] a goal of

the Copyright Act."        Stewart, 495 U.S. at 228.           Besides, this

argument can be made in essentially any copyright dispute:                   a

ruling in favor of the copyright holder increases the value of

copyrights generally and thus promotes creativity. But that cannot

mean that copyright holders always win.         And the issue here -- the

level of formality required for a sublicense -- is far more removed

from the heart of copyright law than the kind of dispute directly

dealing with what copyright law protects, like whether a work is

copyrightable,      see,   e.g.,    Star   Athletica,     L.L.C.   v.   Varsity

Brands,     Inc.,   137    S. Ct.    1002,    1016    (2017)   (cheerleading

uniforms); Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53,

58–60 (1884) (photographs), or whether fair use applies as a


                                    - 15 -
defense to copyright infringement, see, e.g., Campbell v. Acuff–

Rose Music, Inc., 510 U.S. 569, 594 (1994) (musical parodies).                   So

we do not think the policy of promoting creativity helps PIC much

in this case.

              PIC also contends that requiring the extra formality

that sublicenses be expressly granted would further the Copyright

Act's      policy    of     "enhancing    predictability      and   certainty     of

copyright ownership."           Cmty. for Creative Non-Violence v. Reid,

490 U.S. 730, 749 (1989).           But as we have already noted, PIC had

an opportunity to set the conditions of sublicensing when it

negotiated the well-defined license to Sylvania.                    We think that

opportunity         sufficiently    enhances      predictability       while    also

leaving the parties with more choice than would a judicial rule

that sublicenses must be expressly granted.

              As an illustration of its policy arguments, PIC points

to   the    fact     that    Sylvania    failed   to   tell   Orgill    about    the

attribution restriction.           PIC argues that if we require licensees

in   Sylvania's       position     to    communicate    expressly      with    their

sublicensees, this sort of issue may be less likely to arise.                   But

the proposed solution does not quite fit the problem. For whatever

reason, Sylvania may well have neglected to relay the restriction

even if it had expressly granted Orgill a sublicense.                   PIC, after

all, concedes that an express sublicense can be oral.                   And in any

event, as the arbitrator found, the attribution restriction was a


                                         - 16 -
covenant between PIC and Sylvania, so the failure to abide by it

is a bone that PIC needs to pick (and did pick) with Sylvania, not

Orgill.

             In sum, we hold that, where a licensor grants to a

licensee the unrestricted right to sublicense and permit others to

use a copyrighted work, a sublicense may be implied by the conduct

of     the   sublicensor    and   sublicensee.       So       although   implied

sublicenses, like implied licenses, are probably not "an everyday

occurrence in copyright matters," Estate of Hevia, 602 F.3d at 41,

we reject the contention that they are a legal impossibility.

                                       B.

             We now turn to PIC's second argument, which is that

summary judgment in favor of Orgill was not warranted because a

reasonable jury could have found that Sylvania did not grant an

implied sublicense to Orgill.           We look to evidence of whether

Sylvania by its actions sufficiently manifested an intent to grant

such a sublicense.         Ultimately we agree with the district court

that no reasonable jury could find against Orgill on this point.

             Initially, though, we must deal with two side issues.

The first side issue arises from the fact that the district court

based its ruling on the existence of a sublicense in this case in

part    on   a   perception   that   "PIC     conceded   at    the   [May   2015]

hearing[ that] the defendants have borne their burden of showing

that [Sylvania] impliedly licensed Orgill's use of the images."


                                     - 17 -
PIC I, 118 F. Supp. 3d at 403; see also PIC II, 370 F. Supp. 3d at

244. PIC contends that it made no such concession. The transcript

of the hearing is arguably mixed on whether PIC actually made an

effective waiver/concession, although PIC's delay of nearly three

years5 in asking the court to withdraw its waiver finding cuts

quite heavily against PIC.        Nevertheless, we will again assume

without deciding that there was no waiver.                  See Butynski v.

Springfield Terminal Ry. Co., 592 F.3d 272, 277 (1st Cir. 2010)

(remarking   that    a   concession   by   counsel   must    be   "clear   and

unambiguous" to bind a party).6

          The second side issue concerns the standard of review.

A license (implied or otherwise) is an affirmative defense to

copyright infringement.       See Danielson, 322 F.3d at 34, 40.            As

such, Orgill (the moving party) bears the burden of proof at trial

on this issue.      See id.   So summary judgment is warranted only if

Orgill has provided "conclusive" evidence proving the license.

Torres Vargas v. Santiago Cummings, 149 F.3d 29, 35 (1st Cir.

1998); see also Leone v. Owsley, 810 F.3d 1149, 1153–54 (10th Cir.


     5  The district court's first opinion in this matter was
published on July 29, 2015. PIC I, 118 F. Supp. 3d 398. PIC did
not object to the district court's concession finding until its
opposition to Orgill's renewed motion for summary judgment, which
PIC filed on March 7, 2018, despite the fact that PIC updated the
district court about other matters during the intervening period.
     6  Arguably, a contrary decision on our part would moot the
preceding legal discussion as well, since the legal possibility of
implied sublicenses would seem to be a necessary antecedent to
Orgill's having been granted one.


                                  - 18 -
2015) (collecting cases applying similar standards).               In other

words, the familiar framework that a movant who does not bear the

burden of proof need only initially "point[] out . . . that there

is an absence of evidence to support the nonmoving party's case,"

Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986), is inapplicable

here.    PIC argues that the district court in this case appears to

have lost sight of this distinction, see PIC II, 370 F. Supp. 3d

at 241–42 (citing cases applying the Celotex standard); PIC I, 118

F. Supp. 3d at 402 (same), but since our review on appeal is de

novo, see Pac. Indem. Co. v. Deming, 828 F.3d 19, 22 (1st Cir.

2016), we may affirm under the correct standard so long as the

record supports such a ruling.         At the end of the day, the basic

standard -- that summary judgment is warranted if "there is no

genuine dispute as to any material fact" -- remains the same.

Fed. R. Civ. P. 56(a).

            Having dealt with the side issues, we now turn to PIC's

main argument that the evidence was mixed enough to generate a

jury    question    on   whether   Sylvania   actually   granted   Orgill   a

sublicense.        For the following reasons, we find that argument

unconvincing.

            First, the very nature of the business at hand makes it

obvious that Sylvania wanted its distributors to use the photos,

just as one might confidently say that Sylvania wanted Orgill to

sell lots of Sylvania products. It would be effectively impossible


                                    - 19 -
for Sylvania to expect its distributors to have much success in

selling its lightbulbs without also permitting them to use photos

of those lightbulbs.

          Second,    Sylvania   paid   a   substantial   sum --   roughly

$3 million -- for its sixteen-page license granting it, among

other things, the authority to "sub-license Use, and permit Use,

in its sole and absolute discretion."          A principal reason for

Sylvania's paying so much for this agreement was precisely to allow

its dealers and distributors to continue using the photos.           Cf.

Effects Assocs., 908 F.2d at 559 (remarking that the nonexistence

of an implied license would be "a conclusion that can't be squared

with the fact that [the defendant] paid [the plaintiff] almost

$56,000 for" the work).

          Third, as a matter of common sense, when Sills called up

Sylvania and said he needed copies of the photos to use in selling

Sylvania's lightbulbs, and Sylvania subsequently sent along the

photos (or pointed Sills to where to find them), Sylvania surely

manifested its permission for Sills (and Orgill) to use the photos

in the proposed way, even though Sylvania never uttered some magic

words that made express its permission.           PIC objects to our

consideration of this fact on the grounds that "the copyright

statute forbids courts from inferring a transfer of copyright or

a license from mere delivery of the material object in which the

work is embodied."     Corbello v. DeVito, 777 F.3d 1058, 1067 (9th


                                - 20 -
Cir. 2015) (citing 17 U.S.C. § 202).         But we rely on the fact of

delivery not in isolation, but as "'a relevant factor' to determine

the existence of an implied [sub]license."            Id. (quoting Asset

Mktg. Sys., Inc. v. Gagnon, 542 F.3d 748, 755 n.4 (9th Cir. 2008));

see also Effects Assocs., 908 F.2d at 558 n.6 ("While delivery of

a copy 'does not of itself convey any rights in the copyrighted

work,' 17 U.S.C. § 202, it is one factor that may be relied upon

in   determining    that   an   implied    license   has   been   granted."

(emphasis in original)).         Sylvania's delivery of the photos,

combined with the context in which they were given, makes clear

that Sylvania intended to allow Orgill to use them.

           Fourth, Sylvania knew that Orgill was using the photos.

Twice per year, Orgill provided Sylvania a copy of Orgill's catalog

for Sylvania to review for accuracy.             Although Sylvania has

periodically responded to make various corrections to the listings

in the catalog, Sylvania never objected that Orgill was using

copyrighted photos without permission. See I.A.E., Inc. v. Shaver,

74 F.3d 768, 775 (7th Cir. 1996) (recognizing that consent to an

implied license can be "given in the form of mere permission or

lack of objection").

           Fifth, Sylvania and Orgill entered into a "Confirmatory

Copyright Sublicense Agreement" in July 2014, after PIC initiated

this lawsuit.      This document purports to be effective "nunc pro

tunc as of June 1, 2006" and states that Sylvania "hereby confirms


                                  - 21 -
that it previously granted permission to Orgill to Use and to

sublicense the right to Use the Images to its dealers."               PIC calls

this agreement a "sham" intended to frustrate this litigation.

And at least one court has held that, "[a]lthough the Copyright

Act itself is silent on the issue of retroactive transfer or

license, . . .    such   retroactive    transfers . . .       undermine    the

policies embodied by the Copyright Act."           Davis v. Blige, 505 F.3d

90, 97–98 (2d Cir. 2007); see also PIC I, 118 F. Supp. 3d at 403

n.3.    But the issue here is not whether the agreement by itself

can operate as a retroactive sublicense, but rather whether it is

evidence of Sylvania's prior intent to grant a sublicense.                 And

certainly a statement by Sylvania itself provides such evidence.

           Sixth, PIC successfully held Sylvania liable for breach

of its covenant precisely because Sylvania permitted its third-

party   dealers   and    distributors    to    use    the    photos    without

attribution.   Although the arbitrator did not explicitly call out

Orgill as one of those distributors, the notion that Sylvania would

have permitted (i.e., sublicensed) only some of these third parties

to use the photos but not Orgill makes no sense.

           For its part, PIC attempts to counter Orgill's strong

evidence with evidence of its own.        PIC first notes that Sylvania

at some point prepared a "Photograph/Illustration Permission" form

specifically   requiring    attribution       to   Picone,    that    Sylvania

referred to this form in a "Do's and Don't's" statement, and that


                                 - 22 -
Sylvania did not give Orgill either document.   So, PIC says, "[a]

jury could infer that had Sylvania intended to grant Orgill a

sublicense, it would have followed its policies and used its

permission form."    But the arbitrator found that the "Do's and

Don't's" statement was created after the license from PIC expired

in 2012, so this document provides no insight into Sylvania's

intent to grant permission (or not) during the contested period.

In fact, the arbitrator stated, "[d]uring the six-year period of

the [PIC–Sylvania] Agreement, [Sylvania] had no policies in place

to ensure that its customers were using the PIC Images with the

copyright notice" (emphasis added).     Furthermore, there is no

evidence that Sylvania gave these forms to any of its distributors,

and we know from the arbitrator that those other distributors had

sublicenses.     So Sylvania's failure to diligently give out the

permission form is at best evidence of Sylvania's "poor management"

(in the arbitrator's words) of copyrighted images, rather than

evidence that Sylvania did not intend to permit Orgill to use the

images at all.

          Along the same lines, PIC notes that Sylvania's public

website states that "[t]his site or any portion of this site may

not be reproduced, duplicated, copied, sold, resold, visited, or

otherwise exploited for any commercial purpose without express

written consent of [Sylvania]."   Since Sills obtained some images

from the website without this written consent, PIC argues, a jury


                               - 23 -
might   assume   that    no   permission   was     given.     But   again,   the

arbitrator foreclosed this when it determined that, during the

contested period, Sylvania had no policy in place, or at least did

not follow any purported policy, to control the images that it was

sublicensing.    And PIC's argument is strongly undercut by the fact

that Orgill was using the photos with Sylvania's knowledge in

furtherance of both of it and Sylvania's shared business objective

(to sell more lightbulbs).         So it is unsurprising in this context

that Sylvania did not hold Orgill fast to the "written consent"

statement.

             PIC also tries to show that Orgill might not have

"assent[ed] to a sublicense."         It points to two facts in support

of this:   first, that Sills did not have "authority" to enter into

contracts on Orgill's behalf, and second, that Orgill apparently

did not know about Sylvania's copyright license or that PIC even

existed.   But PIC offers no explanation for why Orgill would have

turned down Sylvania's grant of permission to use the photos

Sylvania had of its own products in any event.                And PIC's second

point appears to defeat the first one anyway; if Orgill was unaware

that the photos belonged to PIC, then there is no reason to think

that    Orgill   would    insist    that     one   of   its    employees     with

"contracting authority" accept them.             More to the point, Orgill,

as defendant in this lawsuit, is clearly content to say that

Sills's actions were binding on it in accepting a sublicense, and


                                    - 24 -
it would be very peculiar for a jury to take PIC's word to the

contrary in interpreting Orgill's intent, especially in view of

the foregoing facts we have already discussed.

            Having   considered   the     entire   record,   we   find   it

indisputable that Sylvania intended -- indeed, wanted -- Orgill to

use the photos, and gave the photos to Orgill for precisely that

purpose, just as the license itself anticipated and allowed.             We

therefore    agree   with   the   district    court   that    Orgill     has

conclusively proven the existence of a sublicense and that no

reasonable jury could find otherwise.

                                   III.

            For the foregoing reasons, we affirm the grant of summary

judgment in favor of Orgill.




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