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Comerica Bank & Trust, N.A. v. Habib

United States District Court, D. Massachusetts

January 6, 2020

COMERICA BANK & TRUST, N.A. as Personal Representative of the Estate of Prince Rogers Nelson, Plaintiff,
v.
KIAN ANDREW HABIB, Defendant.

          ORDER ON CROSS MOTIONS FOR SUMMARY JUDGMENT (DOC. NOS. 77, 84)

          LEO T. SOROKIN UNITED STATES DISTRICT JUDGE

         This federal copyright law case concerns several audiovisual recordings of the now-deceased international superstar Prince Rogers Nelson (“Prince”) performing his own musical compositions live in concert. Plaintiff Comerica Bank & Trust, N.A., in its capacity as the appointed Personal Representative of Prince's Estate (“Comerica”), alleges that several videos recorded and uploaded to YouTube by Defendant Kian Andrew Habib (“Habib”) constitute copyright infringement under 17 U.S.C. § 501 and violate the civil anti-bootlegging statute, 17 U.S.C. § 1101. Doc. No. 27 at 4-5. In response, Habib raises multiple defenses to Comerica's two claims and counterclaims that takedown notices sent on behalf of Comerica to YouTube were “knowingly, material misrepresent[ations]” in violation of 17 U.S.C. § 512(f). Doc. No. 30. For the following reasons, Comerica's Motion for Partial Summary Judgment (Doc. No. 77) is ALLOWED IN PART and Habib's Cross Motion for Summary Judgment (Doc. No. 84) is DENIED.

         I. BACKGROUND[1]

         Prince is one of the best-selling musical artists of all time. Doc. No. 81-7 at 2 (representing that Prince has sold over 100 million records worldwide). A virtuosic performer and prolific songwriter, Prince crafted a unique amalgam of funk, rock, rhythm and blues, and soul, yielding chart-topping studio recordings and electrifying live shows. Id.; see also Press Release, The White House, Statement by the President on the Passing of Prince (Apr. 21, 2016), https://obamawhitehouse.archives.gov/the-press-office/2016/04/21/statement-president-passing-prince (“He was a virtuoso instrumentalist, a brilliant bandleader, and an electrifying performer.”). Over the course of his 38-year career, Prince also earned a reputation as a musician who demanded control over the release and use of his music, “enforc[ing] his intellectual property rights aggressively” to achieve that end. Doc. No. 81-7 at 2-3 (noting that Prince “employed staff whose sole task was to send take-down notices to [alleged] online infringers”).

         After Prince's untimely April 21, 2016 death, Comerica was appointed Personal Representative of Prince's Estate and assumed its current role as a “fiduciary charged with monetizing and protecting the Estate's intellectual property for the benefit of [Prince's] heirs.” Doc. No. 83 at 2. In that capacity, Comerica now operates an official Prince YouTube channel, which includes live concert videos. Id. at 4. According to Comerica, the official Prince YouTube channel has yielded “well over $1 million” in revenue for the Estate. Id. Given the YouTube channel's success, Comerica “expects to monetize additional [Prince] concert videos in the future.” Id.

         As Comerica aims to maximize the impact of the official Prince YouTube channel, it also “makes a concerted effort to identify and remove unauthorized Prince videos on other channels” that might divert interest and revenue away from the Estate. Id at 5. To that end, from March 2017 to March 2019, Comerica utilized the services of MarkMonitor, which deploys a “proprietary software [that] scours the internet for potential infringements of [] clients' trademarks and copyrights” and employs “experienced analyst[s]” who then review potential infringements before further action is taken. Doc. No. 81-8 ¶¶ 2, 5. Over the course of those two years, MarkMonitor “sent over 2, 800 takedown notices” to YouTube on behalf of the Estate. Id. ¶ 4.

         Five of those notices were sent in response to videos uploaded by Habib-the recordings at issue in this case. Id ¶ 11. Habib filmed those recordings from his vantage point as an audience member at two different Prince performances, a December 27, 2013 concert at the Mohegan Sun Arena in Connecticut, and a May 23, 2015 concert at the Bell Centre in Montreal. Doc. No. 30 at 6-7. Habib concedes he did not have express authorization from Prince to record any portion of either performance. Doc. No. 110 ¶ 20.[2] Habib later uploaded five discrete portions of the two performances on YouTube: First, on February 28, 2014, Habib uploaded a 2 minute and 49 second audiovisual clip of Prince performing the song “Glam Slam” at the Mohegan Sun Arena, Doc. No. 30 at 7; next, on April 25, 2016, Habib uploaded a 4 minute and 48 second video including Prince's performance of “Nothing Compares 2 U” at the Mohegan Sun Arena concert, id.; finally, on May 24, 2016, Habib uploaded (1) a 2 minute and 23 second video of Prince performing the song “Guitar” live in Montreal, Doc. 80-8 at 35, (2) a 2 minute and 25 second video of Prince performing the song “Take Me With U” in concert in Montreal, Doc. No. 30 at 8, and (3) a 3 minute and 25 second video of Prince performing the songs “Sign o' the Times, ” “Most Beautiful Girl in the World, ” and “Hot Thing, ” id.

         These five audiovisual recordings-fairly described as “grainy, ” “blurry, ” and “poor quality”-each contain significant and recognizable portions of six musical compositions that Prince composed and registered with the United States Copyright Office. Doc. Nos. 78-1-78-8 (providing copies of U.S. Copyright Office Registration Certificates for “Nothing Compares 2 U, ” “Take Me With U, ” “Glam Slam, ” “Sign o' the Times, ” “The Most Beautiful Girl in the World, ” and “Hot Thing”).[3] For example, Habib's audiovisual recording of “Nothing Compares 2 U” begins in the middle of the first verse of the song and continues until the end of the composition. Doc. No. 79-3 (Habib's video on file with the Court); Doc. No. 81-6 (highlighting the substantial portion of the song's lyrics captured by Habib's video). In each video, the camera is focused on Prince and his band, with Habib intermittently panning between the stage and a jumbotron screen that magnified the featured performers. See, e.g., Doc. No. 79-3; Doc. No. 79-6 (videos of “Nothing Compares 2 U” and “Sign o' the Times” on file with the Court). The parties do not dispute that Habib did not alter any aspect of the musical performances or the visuals captured by his recordings before he uploaded the videos to YouTube. Doc. No. 80-8 at 32; Doc. No. 81-4 at 22 (“I didn't add anything to the music or anything.”). In addition, the parties do not dispute that Habib's videos do not capture any spoken commentary and merely feature Prince's “spontaneous interactions with his fellow band members and the audience, as well as the singing of the crowd.” Doc. No. 108 at 7.

         Habib uploaded the five videos to the “PersianCeltic” YouTube channel that he operates. Doc. No. 110 at 11. When he did so, Habib gave titles to the various videos, see Doc. No. 83 at 6 (including titles like “Prince - Nothing Compares 2 U - Amazing LIVE rare performance - 2013” and “Prince showing off all his talents! LIVE at Mohegan Sun, Connecticut 2013”), but did not otherwise include any written commentary or criticism. Additionally, the parties do not dispute that Habib's “PersianCeltic” YouTube page included an “About” section that described his channel as containing “[e]clectic” and “awesome content, ” and encouraged YouTube users to “subscribe and comment.” Doc. No. 80-7. As of November 6, 2018, Habib's channel had received 405, 336 views, including thousands of views for each of the videos at issue in this case. Id.; Doc. No. 80-3.

         In 2017, MarkMonitor identified Habib's videos as potentially infringing Prince's musical composition copyrights. Doc. No. 81-8 at 4. According to Erika Vergara, Client Services Manager at MarkMonitor, after Habib's five videos were flagged as potentially infringing, “a MarkMonitor analyst watched the videos and applied [the company's] standard practices, including an assessment of fair use.”[4] Id. After concluding that the videos were infringing, MarkMonitor then sent takedown notices to YouTube on Comerica's behalf for each of Habib's five videos. Id.[5]

         Upon receiving the takedown notices, YouTube removed the five videos and notified Habib. Doc. Nos. 79-8-79-10. Those notifications explained that, amongst other reasons, takedown notifications might have been issued because “[o]ne or more of [Habib's] videos contained copyrighted material.” Doc. No. 79-1. YouTube further explained that “[c]opyright owners can choose to take down videos that contain their content” and informed Habib that YouTube had “disabled [access to the five videos] as a result of a third-party notification from [MarkMonitor] claiming that [the videos are] infringing.” Doc. No. 78-11. Moreover, YouTube advised Habib that his account would be terminated if he did not “delete any videos to which [he] did not own the rights, ” id., and asked him to refrain from “upload[ing] videos that contain copyrighted content that you aren't allowed to use.” Doc. No. 79-1.

         In response, Habib submitted five identical counter-notifications, in each instance averring that his videos were “fair use” because the videos were, in Habib's view, “noncommercial and transformative in nature . . . use[d] no more of the original than necessary, and ha[d] no negative effect on the market for the work.” Doc. No. 79-11. According to Habib, he submitted these counter-notifications “casually, ” Doc. No. 81-4 at 11 (transcript of Habib's deposition), and the parties do not dispute that Habib did not seek legal advice before submitting his counter-notifications. Doc. No. 80-8 at 10 (transcript of Habib's deposition). In fact, Habib explained in his deposition that he used “a prewritten legal description of fair use” that he submitted because he “agree[d] with it.” Id. at 16.

         After receiving Habib's counter-notifications, YouTube provided Comerica with Habib's counter-notifications and informed Comerica that YouTube “await[ed] evidence . . . that [Comerica had] filed an action seeking a court order against [Habib] to restrain the allegedly infringing activity.” Doc. No. 79-11. In response, Comerica filed the instant lawsuit, alleging musical composition copyright infringement and violations of the anti-bootlegging statute. Doc. No. 27. Notwithstanding the commencement of this case, Habib has continued to post videos that he recorded at live musical performances. Doc. No. 80-8 at 6 (stating in his deposition that “[t]here's nothing wrong with posting concert videos”).

         II. LEGAL STANDARD

         Summary judgment is appropriate when “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). Once a party “has properly supported its motion for summary judgment, the burden shifts to the non-moving party, who ‘may not rest on mere allegations or denials of his pleading, but must set forth specific facts showing there is a genuine issue for trial.'” Barbour v. Dynamics Research Corp., 63 F.3d 32, 37 (1st Cir. 1995) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986)). The Court is “obliged to [] view the record in the light most favorable to the nonmoving party, and to draw all reasonable inferences in the nonmoving party's favor.” LeBlanc v. Great Am. Ins. Co., 6 F.3d 836, 841 (1st Cir. 1993). Even so, the Court is to ignore “conclusory allegations, improbable inferences, and unsupported speculation.” Prescott v. Higgins, 538 F.3d 32, 39 (1st Cir. 2008) (quoting Medina-Muñoz v. R.J. Reynolds Tobacco Co., 896 F.2d 5, 8 (1st Cir. 1990)). A court may enter summary judgment “against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). When cross-motions for summary judgment are presented, the Court “must consider each motion separately” and draw all inferences against each moving party in turn. Reich v. John Alden Life Ins. Co., 126 F.3d 1, 6 (1st Cir. 1997).

         III. DISCUSSION

         The Court considers, in turn, Comerica's two allegations: (1) that Habib's videos infringed Prince's copyrights; and (2) that Habib's videos violated the anti-bootlegging statute, 17 U.S.C. § 1101. Then, the Court addresses Habib's sole counterclaim, alleging that takedown notices sent on Comerica's behalf were violative of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 512(f).

         A. Comerica's Claims

         As to Comerica's claims-copyright infringement and violation of the anti-bootlegging statute-and Habib's affirmative defenses, the Court first considers Comerica's motion for summary judgment, drawing all reasonable inferences in Habib's favor. Then, the Court considers Habib's cross-motion for summary judgment on Comerica's two claims, as well as his motion for summary judgment on his affirmative defenses, drawing all reasonable inferences in Comerica's favor. Mandel v. Boston Phoenix, Inc., 456 F.3d 198, 205 (1st Cir. 2006) (“The presence of cross-motions for summary judgment neither dilutes nor distorts [the familiar summary judgment] standard of review.”).

         1. Count I: Infringement of Prince's Musical Composition Copyrights

         a. Infringement

         “To establish copyright infringement, a plaintiff must concurrently proceed down two roads and prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Soc'y of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, 39 (1st Cir. 2012) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)).

         The Copyright Act provides that copyright protection for musical compositions-like all other instances of copyright protection-vests initially in the composer. See 17 U.S.C. § 201(a) (“Copyright in a work . . . vests initially in the author or authors of the work.”); see also 17 U.S.C. § 102 (listing musical compositions as protectable subject matter under the Copyright Act and defining “musical works” to include “accompanying words”). Additionally, the Copyright Act states that “ownership of a copyright . . . may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.” 17 U.S.C. § 201(d). Finally, “certificates of copyright [issued by the U.S. Copyright Office] are prima facie evidence of [a plaintiff's] ownership of valid copyright interests in [their] works.” Situation Mgmt. Sys., Inc. v. ASP. Consulting LLC, 560 F.3d 53, 58 (1st Cir. 2009) (quoting 17 U.S.C. § 410(c)).

         Here, there can be no dispute that Comerica, in its capacity as appointed Personal Representative of Prince's Estate, has demonstrated its ownership of valid copyrights in the six musical compositions at issue in its infringement claim. See Doc. Nos. 78-1-78-8 (providing copies of U.S. Copyright Office Registration Certificates); Minn. Stat. Ann. § 524.3-709 (West 2019) (providing that, under Minnesota law, “every personal representative has a right to, and shall take possession or control of, the decedent's property . . . unless or until, in the judgment of the personal representative, possession of the property by the personal representative will be necessary for purposes of administration”). Rather than dispute valid ownership, Habib argues that his videos do not infringe the six copyrights at issue in this case because he did not record Prince performing “studio versions” of his musical compositions. Doc. No. 85 at 4. Further, Habib argues that the copyright registrations in Comerica's possession do not “cover the live performances at issue in this suit.” Id. at 4 n.1.[6]

         Habib's arguments misunderstand both the nature and scope of copyright protection for musical compositions. First, as the U.S. Copyright Office explains, “[s]ound recordings and musical compositions are considered two separate works for copyright purposes.” U.S. Copyright Office, Circular 56A: Copyright Registration of Musical Compositions and Sound Recordings (Mar. 2019), https://www.copyright.gov/circs/circ56a.pdf (noting that “[e]ven though a sound recording is a derivative work of the underlying musical composition, a copyright in a sound recording is not the same as, or a substitute for, copyright in the underlying musical composition”); accord Conway v. Licata, 104 F.Supp.3d 104, 120 (D. Mass. 2015). Comerica correctly observes that “copyrights in musical compositions cover the music (the melody, rhythm, and/or harmony) and accompanying words (lyrics).” Doc. No. 83 at 2. In fact, “if words and music have been integrated into a single work, the copyright in a ‘musical work' protects against unauthorized use of the music alone or of the words alone, or of a combination of music and words.” 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.05[C]. Copyright protection for these components of a musical composition grants copyright owners- here, Prince's Estate-the exclusive right to “reproduce the copyrighted work in copies or phonorecords” and to “distribute copies or phonorecords of the copyrighted work to the public.” 17 U.S.C. § 106. To that end, courts have consistently “recognized a copyright holder's right to control the synchronization of musical compositions with the content of audiovisual works and have required parties to obtain synchronization licenses from copyright holders.” Leadsinger, Inc. v. BMG Music Pub., 512 F.3d 522, 527 (9th Cir. 2008); see also ABKCO Music, Inc. v. Stellar Records, Inc., 96 F.3d 60, 63 n.4 (2d Cir. 1996) (“A synchronization license is required if a copyrighted musical composition is to be used in ‘timed-relation' or synchronization with an audiovisual work.”) (citation omitted), abrogated on other grounds by Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010); 6 Nimmer on Copyright § 30.02 [F][3].

         It is of no moment that the performances recorded by Habib were “far removed from, and not recognizable as, the studio version[s] of . . . particular song[s].” Doc. No. 85 at 4. Indeed, each performance of a given musical composition-whether fixed in a specific sound recording or played with a live band at a concert venue-falls well within the scope of the copyright protection afforded to musical compositions.[7] Notably, courts have consistently held that an arrangement of a musical composition may not be considered a separate derivative work if the arrangement is “merely a stylized version of the original song . . . [that] may take liberties with the lyrics or the tempo” and regurgitates “basically the original tune.” Woods v. Bourne Co., 60 F.3d 978, 991 (2d Cir. 1995); accord 1 Nimmer on Copyright § 2.05[D]. And courts have long held that the right to create new versions of a composition is an entitlement that lies at the core of the Copyright Act's protection of musical works. See Edward B. Marks Music Corp. v. Foullon, 79 F.Supp. 664, 665-66 (S.D.N.Y. 1948) (“There is no doubt that the copyright owner of a musical composition has a right to make a version and arrangement.”), aff'd, 171 F.2d 905 (2d Cir. 1949). Accordingly, Comerica need not “separately register for copyright protection . . . every live performance of every [Prince] song” in order to avail itself of the Copyright Act's remedies, Doc. No. 83 at 3, nor does Comerica's infringement claim seek to “mold[] [the musical composition copyrights] beyond the material they actually protect, ” as Habib claims. Doc. No. 85 at 10.

         Thus, drawing all reasonable inferences in Habib's favor, Comerica has firmly established copyright infringement as to the six copyrighted musical compositions.

         b. Affirmative Defenses

         Habib raises several affirmative defenses in his Answer to Comerica's Amended Complaint. Doc. No. 30. Like all defendants, Habib “bears the burden of proving such defenses.” Getty Images (US), Inc. v. Her Campus Media, LLC, No. 19-CV-11084-LTS, 2019 WL 5552332, at *1 (D. Mass. Oct. 28, 2019). First, the Court considers whether, as Habib claims, his videos constitute “fair use” of the copyrighted musical compositions. 17 U.S.C. § 107; Doc. No. 30 at 5 ...


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