                   Case: 12-14176            Date Filed: 01/22/2014            Page: 1 of 5


                                                                                    [DO NOT PUBLISH]

                     IN THE UNITED STATES COURT OF APPEALS

                                 FOR THE ELEVENTH CIRCUIT
                                   ________________________

                                           No. 12-14176
                                     ________________________

                                D.C. Docket No. 5:11-cv-01511-IPJ

KEITH KARLSON,

                                                                                                 Plaintiff-
                                                                                        Counter Defendant-
                                                                                                Appellant,

                                                     versus


RED DOOR HOMES, LLC,
SMA OPERATIONS MANAGEMENT, LLC,
RDH ADVISING, LLC,

                                                                                              Defendants-
                                                                                        Counter Claimants-
                                                                                                Appellees.
                                     ________________________

                          Appeal from the United States District Court
                             for the Northern District of Alabama
                                 ________________________
                                      (January 22, 2014)

Before HILL and COX, Circuit Judges, and MIDDLEBROOKS, ∗ District Judge.

PER CURIAM:
        ∗
           Honorable Donald M. Middlebrooks, United States District Judge for the Southern District of Florida,
sitting by designation.
               Case: 12-14176    Date Filed: 01/22/2014    Page: 2 of 5


       The Plaintiff, Keith Karlson, challenges on appeal the district court’s grant

of summary judgment in favor of the Defendants. We conclude that the district

court granted summary judgment on a ground the court raised sua sponte—a

ground the Defendants had not argued—without adequate notice to the Defendants

enabling them to respond. This was error. See Imaging Bus. Machines, LLC v.

BancTec, Inc., 459 F.3d 1186, 1191 (11th Cir. 2006).

                          I. FACTUAL BACKGROUND

   Keith Karlson, an artist, prepares drawings of finished homes from blueprint

plans in order to show how those homes will look once built. The Defendants

license custom-home blueprint plans to third parties who then use those plans to

build finished homes. Seeing a need, the Defendants commissioned Karlson to

create illustrations of finished homes from their stock of various blueprint plans.

Karlson obliged and invoiced Defendants for his work. He included in his invoices

a copyright notice stating: “I transfer to you a limited copyright to reproduce the

artwork I have produced for you in unlimited quantities on any media you choose,

royalty-free, but only for use directly by you and [the artwork] may not be

transferred to another business entity without my expressed permission.” (Doc. 39-

4 at 2).

       Despite this limitation, Defendants licensed Karlson’s illustrations to third

parties without Karlson’s knowledge or permission. After learning of the


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Defendants’ actions, Karlson filed an application for copyright on his illustrations

and demanded that the Defendants compensate him for his illustrations they had

licensed to third parties. Defendants refused to compensate Karlson and continued

licensing his illustrations.

                           II. PROCEDURAL POSTURE

   After Defendants’ refusal to compensate him, Karlson filed suit against the

Defendants for copyright infringement. Defendants filed a response and

subsequently moved for summary judgment on four grounds. The district court

sua sponte granted summary judgment in favor of the Defendants on the ground

that Karlson granted Defendants an implied non-exclusive license to use his

images. But Defendants had not argued that Karlson had granted them an implied

non-exclusive license to use his images. Karlson filed a motion to alter or amend

the judgment, and the district court denied it. Karlson appeals.

                                 III. DISCUSSION

   We review a district court’s grant of summary judgment de novo. Haves v. City

of Miami, 52 F.3d 918, 921 (11th Cir. 1995). Under Federal Rule of Civil

Procedure 56(f), a court may “grant the [summary judgment] motion on grounds

not raised by a party,” but only “[a]fter giving [the parties] notice and a reasonable

time to respond.” Fed. R. Civ. P. 56(f); see also Byars v. Coca-Cola Co., 517 F.3d

1256, 1264–65 (11th Cir. 2008) (stating that “[a]lthough a court may sua sponte


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grant summary judgment on a claim not presented in a summary judgment motion,

the court is required to give notice to the parties that it intends to address the claim

on summary judgment”).

   Karlson argues on appeal that the district court committed reversible error by

granting summary judgment in favor of the Defendants. (Appellant’s Br. at 5).

The Defendants disagree, arguing: (1) The district court did not sua sponte grant

summary judgment against Karlson’s claims, but even if it had, doing so was not

erroneous. (Appellees’ Br. at 12). (2) The district court correctly granted summary

judgment on the merits because the evidence showed that Karlson intended the

Defendants use and distribute the rendering. (Appellees’ Br. at 21). (3) The district

court properly granted summary judgment in favor of the Defendants because of

Karlson’s fraud on the copyright office and the “first sale doctrine.” (Appellees’

Br. at 28). We need only address the Defendants’ first argument.

   It is clear that the district court granted summary judgment sua sponte on the

implied-license ground. Neither party denies that the district court failed to provide

adequate notice to the parties that it intended to address the implied-license

question when deciding whether to grant summary judgment. Instead, Defendants

argue that the district court did not need to provide formal notice that it was

considering the implied-license issue because the issue was fully developed and the

evidentiary record was complete. (Appellee’s Br. at 15–16).


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   Defendants misunderstand our binding precedent. We have always required a

district court to provide some minimum notice to the parties under circumstances

like this. BancTec, 459 F.3d at 1191. And here, the district court provided no

notice to the parties. In those rare instances where we excused the district court

from providing formal notice to the parties, something in the record placed the

parties on notice that the district court could consider the issue when deciding

whether to grant summary judgment. See, e.g., Artistic Entm’t, Inc. v. City of

Warner Robins, 331 F.3d 1196, 1201–02 (11th Cir. 2003) (order requiring parties

to brief argument in question sufficed for notice); Burton v. City of Belle Glade,

178 F.3d 1175, 1204–05 (11th Cir. 1999) (prior summary judgment motion on the

same issue sufficed for notice). Here, nothing in the record placed the parties on

notice that the district court would consider the implied-license issue when

deciding whether to grant summary judgment.

                               IV. CONCLUSION

   Accordingly, we VACATE the district court’s grant of summary judgment and

REMAND the case to the district court for further proceedings consistent with this

opinion.

   VACATED and REMANDED.




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