Comerica Bank & Trust, NA as Personal Representative of the Estate of Prince Rogers Nelson et al v. Habib (17-cv-12418).

Comerica Bank, on behalf of the estate of musician Prince, filed suit against Kian Andrew Habib after Habib posted footage he had filmed of two Prince concerts to Habib’s “PersianCeltic” YouTube page. Comerica operates an official Prince YouTube channel, and utilizes MarkMonitor to actively monitors the internet for potential infringements. When Comerica discovered the Habib videos, which included portions of five different Prince-written songs, it sent takedown notices to YouTube, which removed the videos. Habib filed counter-notifications, asserting that his videos constituted “fair use,” and Comerica filed suit, asserting copyright infringement and violation of the civil anti-bootlegging statute, 17 U.S.C. §1101. Habib in turn asserted that the takedown notices were “knowingly, material misprepresent[ations]” in violation of 17 U.S.C. § 512(f). The parties each moved for summary judgment.

Judge Sorokin granted Comerica summary judgment on the copyright claim, rejecting Habib’s argument that Prince’s copyright did not extend to live performances. Judge Sorokin disagreed, noting that in addition to the copyright in the sound recording, which covers the studio recordings, Prince had copyright in the musical compositions themselves. He further noted that courts have consistently held that live performances that differ somewhat in lyrics, temp, or arrangement are still protected by the copyright in the musical composition. Judge Sorokin rejected Habib’s fair use defense, finding that Habib’s videos had no educational or historic, and were essentially verbatim copying that was not transformative. He further noted that, while Habib had not monetized his YouTube account, lack of monetization does not affect liability, and that Habib’s use of the videos to drive traffic to his channel provides sufficient benefit to weigh against a finding of fair use. Judge Sorokin agreed that Comerica would lose revenue when someone viewed the Prince videos on Habib’s site, as well as lose control over the ability to preserve the reputation for excellence that Prince himself had established in strictly controlling his output. Judge Sorokin further granted Comerica summary judgment that the infringement was willful, finding that Habib’s continued posting of concert videos (of Prince and others) despite receiving multiple takedown notices demonstrated an unreasonable disregard for the rights of the performers, and his custom of filing counter-notifications parroting the statutory fair use factors without factual basis likewise is unreasonable.

Judge Sorokin further found in Comerica’s favor on the elements of the anti-bootlegging statute. This statute protects performances that are not themselves “fixed” in a tangible medium and thus entitled to copyright protection. He rejected Habib’s sole defense of implied license, which Habib asserted from a 2014 BBC interview in which Prince stated “[n]obody sues their fans… fans sharing music with each other, that’s cool.” Judge Sorokin agreed with Comerica that such a broad statement to the general public does not set out any license terms, does not demonstrate an intent to contract with Habib and has no relation to Habib himself, and thus did not create an implied license. While Judge Sorokin agreed that the elements of the statute were met, he withheld summary judgment to allow further briefing on whether the protections under the statute are inheritable such that Comerica has standing, an issue not yet addressed by the courts.

Judge Sorokin denied Habib’s request for summary judgment on his assertion that the takedown notices contained material misrepresentations, noting that MarkMonitor had, on Comerica’s behalf, had established at least a good faith belief that the Habib videos were infringing, including performing a fair use analysis, before the notices were sent. Finally, Judge Sorokin granted Comerica’s request for a permanent injunction prohibiting the posting of any videos of Prince performances.

Congratulations to Craig Smith and Eric Carnevale of my firm, Lando &Anastasi, who represent Comerica in this case!

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