United States District Court, D. Massachusetts
COMERICA BANK & TRUST, N.A. as Personal Representative of the Estate of Prince Rogers Nelson, Plaintiff,
KIAN ANDREW HABIB, Defendant.
ORDER ON CROSS MOTIONS FOR SUMMARY JUDGMENT (DOC.
NOS. 77, 84)
SOROKIN UNITED STATES DISTRICT JUDGE
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.
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),
(“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
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.
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.
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 ¶
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.
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”). 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.
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.
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.” 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.
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.
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
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
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).
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.
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
Count I: Infringement of Prince's Musical Composition
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)).
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)).
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.
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].
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. 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.
drawing all reasonable inferences in Habib's favor,
Comerica has firmly established copyright infringement as to
the six copyrighted musical compositions.
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 ...