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.
[Copyrighted Material Omitted]
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Barbara Marchevsky, Pro Hac Vice, Lora Friedemann, Pro Hac
Vice, Fredrikson & Byron, P.A., Minneapolis, MN, Craig R.
Smith, Eric P. Carnevale, Lando & Anastasi, LLP,
Cambridge, MA, for Plaintiff.
H. Salinger, Newton, MA, for Defendant.
Andrew Habib, pro se.
ON CROSS MOTIONS FOR SUMMARY JUDGMENT
United States District Judge.
federal copyright law case concerns several audiovisual
recordings of the nowdeceased 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 charttopping
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 ¶
20. 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
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
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 16.
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, 106 S.Ct. 2505, 91 L.Ed.2d 202
(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, 106 S.Ct. 2548, 91 L.Ed.2d
265 (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 ...