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 
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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, 
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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.
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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–
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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.
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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 
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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 
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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. 
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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. 
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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 
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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, 
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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. 
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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. 
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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. 
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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 
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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 
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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." 
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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.
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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 
- 20 -

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 
- 21 -

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 
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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 thirdparty 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 
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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 
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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 
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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.