Yellow Pages Photos, Inc. v. Yellow Pages Group, LLC
795 F.3d 1255
| 11th Cir. | 2015Background
- YPPI (Yellow Pages Photos, Inc.) created and licensed a library of 10,411 photos organized into 178 subject-matter collections ("headings") marketed and registered as collections to directory publishers.
- In 2004 YPPI and Ziplocal executed a one-page SLPA and used a two-page EULA (enclosed with delivered media) that YPPI says together formed the license restricting use to Ziplocal employees and prohibiting transfers to outside parties.
- Ziplocal later outsourced production work in 2010 to Yellow Pages Group, LLC (YPG), which used YPPI photos in building ads; YPPI sued Ziplocal and YPG for copyright infringement and breach of contract (against Ziplocal).
- At trial the jury found the EULA a valid contract term, found Ziplocal breached the contract, found willful infringement by both Ziplocal and YPG (123 of 178 works infringed), awarded statutory damages of $123,000 against YPG and $0 statutory / $1 actual (direct) plus $100,000 actual (contributory) against Ziplocal.
- YPG appealed denial of JMOL; YPPI cross-appealed discovery/evidentiary rulings and the district court’s determination that each collection (178 works) — not each individual photo (10,411) — was a single "work" for statutory damages. Court affirmed on all issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing / may YPG litigate contract interpretation in defense | YPPI argued non-parties lack standing to litigate contract terms | YPG argued it may defend by challenging scope/validity of Ziplocal–YPI contract | Court: YPG has Article III standing to defend; interpreting a third‑party contract as a defense is permissible (not a jurisdictional bar) |
| Contract scope: SLPA vs EULA — were both part of the operative agreement? | YPPI: SLPA and EULA were agreed contemporaneously and construed together; EULA limits transfers and users to Ziplocal employees | Ziplocal/YPG: only SLPA is binding; EULA is invalid or not part of the contract | Court: Reasonable evidence supported construing SLPA+EULA together; jury could find EULA binding and that Ziplocal breached by transferring to YPG |
| Validity/acceptance of the EULA (consideration, acceptance for subsequent shipments) | YPPI: continued acceptance/payments and consistent delivery of EULA with shipments shows consideration and acceptance | YPG: no additional consideration; some shipments (initial hard drive) lacked affixed EULA; recipients may lack authority | Court: Evidence supports consideration (payments/delivery); Woodall’s initial assent and subsequent acceptance by Ziplocal agents bind Ziplocal; EULA could govern all shipments |
| Willfulness of infringement | YPPI: YPG acted willfully / recklessly by using images without authorization and continuing after notice | YPG: outsourcing common; lacked knowledge of license; no willfulness | Court: Evidence (no due diligence, continued use after notice, transfers to third parties, indifference to source) supports reckless/willful infringement finding |
| Number of "works" for statutory damages (178 collections v. 10,411 photos) | YPPI: each individual photo is a separate work (would multiply statutory damages) | YPG/Ziplocal: collections/registrations show compilations; treat each collection as one work | Court: Mixed fact-law question; affirmed that collections are compilations/works — 178 works — because of how YPPI created, marketed, registered, and delivered photos |
| Discovery / evidence (letters rogatory, proffer re: Canadian affiliate) | YPPI: denial to issue letters rogatory and exclusion of speculative testimony about YPG Canada prejudiced damages recovery | YPG: requests were overbroad, speculative, and irrelevant (YPG Canada not a party) | Court: District court did not abuse discretion; requests were speculative or cumulative and post‑discovery record confirmed no transfer to YPG Canada |
| Jury awards / invited error over inconsistent statutory damages | YPPI: jury’s $0 statutory award against Ziplocal is legally insufficient; court should correct | YPG/Ziplocal: jury completed form; verdict process was followed | Court: YPPI invited/waived review by proposing the verdict form/instructions and agreeing to supplemental instruction; invited-error bars relief |
Key Cases Cited
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (standing requires concrete injury, causation, redressability)
- Baker v. Carr, 369 U.S. 186 (litigant must have a personal stake to invoke judicial power)
- Interface Kanner, LLC v. JPMorgan Chase Bank, N.A., 704 F.3d 927 (11th Cir.) (non-intended third-party beneficiaries lack contract standing in suit to enforce contract)
- Feltner v. Columbia Pictures Television, Inc., 89 F.3d 766 (11th Cir.) (analysis whether units are separate "works" for statutory damages — "independent economic value" approach)
- Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (patent exhaustion/interpretation of upstream license bears on downstream defendant rights)
- UMG Recordings, Inc. v. Augusto, 628 F.3d 1175 (9th Cir.) (downstream user can litigate original agreement characterization under first-sale doctrine)
- Safeco Ins. Co. of Am. v. Burr, 551 U.S. 47 (willfulness may include reckless conduct; statutory terms take common-law meaning)
- Graper v. Mid-Continent Casualty Co., 756 F.3d 388 (5th Cir.) (willfulness under civil statutes can include reckless disregard)