Capture Eleven LLC v. Otter Products, LLC et al

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Charlotte N. Sweeney
Lead Civil Action No. 1:20-cv-02551-CNS-KAS
Consolidated with Civil Action No. 1:21-cv-00068-CNS-KAS
THE CAPTURE ELEVEN GROUP, a California corporation,
Plaintiff/Counter-Defendant,
v.
OTTER PRODUCTS, LLC, a Colorado limited liability company,
Defendant/Counter-Plaintiff/Cross-Claimant,
v.
VERITY HOSKINS PRODUCTION, INC.,
Third-Party Defendant.
ORDER
The Court has thoroughly analyzed the parties’ dueling post-trial briefs on the
issues of revocation. ECF No. 319 (Plaintiff’s Opening Brief); ECF No. 320 (Defendant’s
Opening 	Brief); 	ECF 	No. 	321 	(Defendant’s 	Response); 	ECF 	No. 	322 	(Plaintiff’s
Response). For the reasons below, the Court agrees with Plaintiff The Capture Eleven
Group that the jury’s verdict should not be disturbed.
I. BACKGROUND
Plaintiff filed its complaint in this matter on August 24, 2020, alleging infringement
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of photographs taken at productions planned, organized, and funded by Defendant Otter
Products, LLC. Plaintiff pursued claims limited to images taken at four productions:
Riverside, Oceanside, San Diego, and Vancouver (the Asserted Images). The trial
proceeded to verdict on March 12, 2024, where the jury found that “Otter use[d] the
images asserted in the ’648 Registration and its ’728 Supplement outside the scope of
any implied license.” See ECF No. 309 (verdict form) at 2, question 4. The jury also found
that “Otter use[d] the images asserted in the ’647 Registration and its ’732 Supplement
outside the scope of any implied license.” Id. at 3, question 9. The jury went on to find
that “the amount of Otter’s profit attributable, if any, to the use of the asserted images
listed above that was outside the scope of an implied license for the time periods listed
below.” Id. at 5, question 11. The jury found the value of actual damages for, and profits
attributable to, use of the Asserted Images to be $114,000 and $3 million, respectively.
Id. at 2, question; id. at 4, question 10; id. at 5, question 11.
Following the verdict, the Court determined that it would be prudent to determine
the issue of revocation before judgment enters. ECF No. 310. It thus directed the parties
to brief the issue of revocability, which the parties did in ECF Nos. 319–22. That issue is
now ripe.
II. ANALYSIS
Plaintiff argues 	that any 	determination 	regarding revocation is 	unnecessary
because whether any implied license was revoked will not affect the jury’s verdict in this
case. ECF No. 319 at 1–2. Defendant argues that the Court must reach a decision on
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revocation because the license is irrevocable and thus the jury’s verdict must be
overturned. The Court agrees with Plaintiff.
Following a week-long trial, the jury determined that Defendant used the asserted
images outside the scope of any implied license. ECF No. 309 at 2, question 4; id. at 5,
question 11. It thus follows that there was nothing Plaintiff needed to revoke because
outside of scope uses were not allowed by any implied license in the first place. Stated
differently, whether the implied license was revoked is irrelevant because use outside the
scope of an implied license is by definition unlicensed and not permitted use and, thus,
there is nothing to revoke. This is consistent with the Court’s jury instruction number 26
regarding “Revocation of Implied License,” which states, “[i]f you find that an implied
license existed and that Otter’s use did not exceed its scope, the Court will determine
whether that implied license was revoked.” See ECF No. 307 at 29 (emphasis added).
Defendant does not explain any legal basis for the Court to expand the scope of
the implied license beyond the jury’s factual finding or to reverse the jury’s finding that
Defendant’s use of the Asserted Images was outside the scope. Indeed, Defendant’s
argument centers around the damage time frames that it suggested. Though tempting,
the 	Court 	remains 	convinced 	that 	the 	jury 	understood 	and 	followed 	the 	Court’s
instructions. In that vein, Defendant fails to demonstrate that the jury’s verdict was not
supported by substantial evidence. Absent such a finding, the Court cannot set aside the
jury’s findings.
Further, the Court is convinced that there are multiple possible bases for the jury’s
determinations. Four examples bear this out. First, a juror asked Mr. L’Heureux a question
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related to the subject time periods and was unrelated to revocation: “Can you provide
dates or date ranges of the screenshots presented as evidence of improper use?” See
ECF No. 322 at 3. Mr. L’Heureux responded that he believed it was May 28 or June 28,
2018. Id. It is reasonable that the jury could have found that Plaintiff only proved
infringement after May 28, 2018. Second, the Court instructed the jury that it would decide
whether any implied license was revoked. Instruction number 26 asked, “[i]f you find that
an implied license existed and that Otter’s use did not exceed its scope, the Court will
determine whether that implied license was revoked.” ECF No. 327 at 29. The jury found
that Otter’s use did exceed the scope of any implied license, and there is no basis to
conclude that the jury ignored the Court’s explicit instructions.
Third, Defendant’s closing argument explicitly referenced and reminded the jury of
the Court’s instruction for them to not to determine the issue of revocation: “[t]he judge is
reserving that question [of revocation], so you’re not going to see that on your verdict
form. When you think about implied license, you should think about that separate from
that issue.” And fourth, the verdict form question concerning profits explicitly asked the
jury to make its award for “the use of the asserted images listed above that was outside
the scope of an implied license for the time periods listed below.” ECF No. 309 at 5,
question 11 (emphasis added). This question is expressly limited to outside of scope
uses, for which revocation is irrelevant.
Lastly, the Court finds that Defendant waived any claim of inconsistency by not
objecting to the verdict before the jury was discharged because the verdict was a general
verdict with interrogatories.
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Because the jury determined that Otter’s use did exceed the scope of any implied
license, it is not necessary for the Court to reach the issue of revocation.1
IV. CONCLUSION
Consistent with the above analysis, the Court declines to disturb the jury’s verdict.
The Court orders as follows:
(1) 	The Clerk of Court is directed to deny as moot the pending post-trial briefs, ECF
Nos. 319 and 320, and enter judgment in favor of Plaintiff The Capture Eleven
Group against Defendant Otter Products, LLC.
(2) 	The Clerk of Court is directed to close the consolidated case 1:21-cv-00068-
CNS-KAS, Capture Eleven Group, The et al v. Otter Products, LLC et al.
(3) 	The Court orders that Defendant Otter Products, LLC confer with Third-Party
Defendant Verity Hoskins Production, Inc. and then provide the Court with a
Status Report by November 15, 2024, to include if it is requesting that stay
entered at ECF No. 98 be lifted.
DATED this 5th day of November 2024.
BY THE COURT:
______________________________
Charlotte N. Sweeney
United States District Judge
1 Because the jury determined that Otter’s use exceeded the scope any implied license, the Court declines
to consider whether Plaintiff revoked the implied licenses.
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