Paisley Park Enters., Inc. v. Boxill, Case No. 17–cv–1212 (WMW/TNL)
| Citation | 299 F.Supp.3d 1074 |
| Decision Date | 26 October 2017 |
| Docket Number | Case No. 17–cv–1212 (WMW/TNL) |
| Parties | PAISLEY PARK ENTERPRISES, INC.; and Comerica Bank & Trust, N.A., as Personal Representative of the Estate of Prince Rogers Nelson, Plaintiffs, v. George Ian BOXILL; Rogue Music Alliance, LLC; and Deliverance, LLC, Defendants. |
| Court | U.S. District Court — District of Minnesota |
Anne E. Rondoni Tavernier, Christopher D. Pham, Grant D. Fairbairn, Joseph J. Cassioppi, Lora Mitchell Friedemann, Fredrikson & Byron, PA, Minneapolis, MN, for Plaintiffs.
Anthony R. Zeuli, Brent E. Routman, Paige S. Stradley Merchant & Gould PC, Minneapolis, MN, Christopher L. Brown, Brown & Rosen LLC, Boston, MA, for Defendants.
ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS' MOTION TO DISMISS AND DENYING PLAINTIFFS' MOTION FOR AN ORDER TO SHOW CAUSE FOR CIVIL CONTEMPT
This lawsuit arises from a dispute over the release of recordings of musical performances by Prince Rogers Nelson (Prince) that were not released during his lifetime. On May 22, 2017, the Court issued an Order enjoining Defendants from distributing the disputed recordings while this lawsuit is pending. Two motions are now before the Court. Defendants move to dismiss several counts of Plaintiffs' Amended Complaint. (Dkt. 70.) Plaintiffs move for an order to show cause for civil contempt, asserting that Defendants have failed to comply with the Court's May 22, 2017 Order in certain material respects. (Dkt. 88.) For the reasons addressed below, Defendants' motion to dismiss is granted in part and denied in part, and Plaintiffs' motion for an order to show cause for civil contempt is denied.
This lawsuit pertains to previously unreleased recordings of the internationally renowned recording artist Prince, who died in April 2016. Plaintiffs Paisley Park Enterprises, Inc., and Comerica Bank & Trust, N.A., as Personal Representative of the Estate of Prince Rogers Nelson, allege that Defendants George Ian Boxill, Rogue Music Alliance, LLC (RMA), and Deliverance, LLC (Deliverance), unlawfully possess and have attempted to commercially exploit several sound recordings of Prince.
Boxill is a sound engineer who worked with Prince during Prince's lifetime. In 2004, Boxill executed a Confidentiality Agreement with Paisley Park Enterprises. The Confidentiality Agreement provides that recordings and other physical materials that resulted from Boxill's work with Prince "shall remain Paisley's sole and exclusive property, shall not be used by [Boxill] in any way whatsoever, and shall be returned to Paisley immediately upon request." The Confidentiality Agreement provides that the term "Paisley" includes "Paisley Park Enterprises and all its affiliated and related entities, and the confidentiality obligations to ‘Paisley’ hereunder shall extend and apply equally to any information or material of any kind concerning Prince Rogers Nelson or any of his family members, agents, business managers, and other representatives."
In 2006, Boxill recorded Prince's performances that comprise the five songs at issue in this lawsuit: "Deliverance," "No One Else," "I Am," "Touch Me," and "Sunrise Sunset" (collectively, the "Prince Recordings"). Plaintiffs assert that they own copyrights in the Prince Recordings, and Plaintiffs filed applications to register those copyrights in April 2017. Paisley Park Enterprises also owns the trademark PRINCE® for use in connection with "phonograph records, audiotapes, compact discs, and videotapes embodying musical performances." In April 2017, Defendants began distributing the Prince Recordings through the website www.princerogersnelson.com, using the name "Prince" to promote and sell the Prince Recordings via the website.
Based on these allegations, Plaintiffs commenced this lawsuit and sought a temporary restraining order. Plaintiffs' Amended Complaint asserts fourteen counts against Defendants. Count One seeks permanent injunctive relief against all Defendants. Count Two asserts a breach-of-contract claim against Boxill for his alleged violations of the Confidentiality Agreement. Counts Three and Four assert conversion and replevin claims against all Defendants, alleging that Defendants wrongfully possess the Prince Recordings and demanding their return. Count Five alleges that Boxill is liable for damages resulting from theft of the Prince Recordings. Count Six alleges that all Defendants have misappropriated Plaintiffs' trade secrets by providing copies of the Prince Recordings to third parties. Count Seven alleges that RMA and Deliverance tortuously interfered with the Confidentiality Agreement between Boxill and Paisley Park Enterprises. Count Eight asserts a copyright-infringement claim against all Defendants. Counts Nine and Ten assert trademark-infringement claims against RMA and Deliverance. Count Eleven alleges that RMA and Deliverance violated the Minnesota Deceptive Trade Practices Act, Minn. Stat. § 325D.44 (2016). Count Twelve asserts that RMA and Deliverance violated Prince's common-law right of publicity. Count Thirteen alleges cybersquatting against RMA. Finally, Count Fourteen seeks a declaratory judgment that Prince is the sole author of the Prince Recordings and Boxill has no right to produce or distribute derivative works.2
Plaintiffs sought a preliminary injunction to prevent Defendants from distributing the Prince Recordings. On May 22, 2017, this Court issued an Order enjoining Defendants from "publish[ing] or otherwise disseminat[ing] any unreleased recordings that comprise the work of Prince Rogers Nelson that are alleged to be within the scope of the Confidentiality Agreement." The Order also requires Defendants to "deliver all recordings acquired through Boxill's work with Paisley Park Enterprises, Inc., including original recordings, analog and digital copies, and any derivative works," to Plaintiffs' counsel for use in this litigation. Finally, the Order requires Defendants to "cease the use of the trademark PRINCE® in connection with the promotion, sale, and distribution of the song ‘Deliverance.’ "
Defendants now move to dismiss the Amended Complaint for lack of personal jurisdiction or, alternatively, to dismiss certain claims for failure to state a claim on which relief can be granted. Plaintiffs move for an order to show cause for civil contempt, in which they assert that Defendants have failed to comply with the Court's May 22, 2017 Order.
Defendants' motion to dismiss asserts that Plaintiffs' right-of-publicity, breach-of-contract, conversion, theft, tortious-interference-with-contract, copyright-infringement, and trademark-infringement claims all fail to state a claim on which relief can be granted. Defendants also contend that this lawsuit must be dismissed because the Court lacks personal jurisdiction over the Defendants.
The Court first addresses the contention of Defendants, who are not residents of Minnesota, that the Court lacks personal jurisdiction over them. If the Court lacks jurisdiction, the Amended Complaint must be dismissed and Defendants' remaining arguments are moot. The parties contest whether Plaintiffs have alleged sufficient facts to establish personal jurisdiction over Defendants in Minnesota. Plaintiffs maintain that Defendants waived their challenge to personal jurisdiction by failing to raise it in response to Plaintiffs' motions for a temporary restraining order and a preliminary injunction. Alternatively, Plaintiffs argue that each Defendant is subject to specific personal jurisdiction in Minnesota.
If a party fails to challenge personal jurisdiction in a Rule 12 motion or responsive pleading, the defense is waived. Fed. R. Civ. P. 12(h)(1) ; Yeldell v. Tutt , 913 F.2d 533, 539 (8th Cir. 1990). But the parties' dispute regarding waiver need not be resolved because, even if properly challenged, personal jurisdiction exists here. When personal jurisdiction is challenged, a plaintiff must plead facts sufficient to "support a reasonable inference that the defendant can be subjected to jurisdiction within the state." K–V Pharm. Co. v. J. Uriach & CIA, S.A. , 648 F.3d 588, 591–92 (8th Cir. 2011) (internal quotation marks and alteration omitted). A federal court applies state law when determining the bounds of its personal jurisdiction. Walden v. Fiore , 571 U.S. 277, 134 S.Ct. 1115, 1121, 188 L.Ed.2d 12 (2014). Minnesota's long-arm statute extends jurisdiction to the maximum limit permitted by due process. Wessels, Arnold & Henderson v. Nat'l Med. Waste, Inc. , 65 F.3d 1427, 1431 (8th Cir. 1995) (citing Minn. Stat. § 543.19 ). Therefore, a federal district court in Minnesota need only determine whether its exercise of personal jurisdiction comports with due process. Id. Personal jurisdiction over the defendant may be general or specific. Toomey v. Dahl , 63 F.Supp.3d 982, 989 (D. Minn. 2014). "Specific jurisdiction is jurisdiction over causes of action arising from or related to the defendant's actions in the forum state." Wessels, Arnold & Henderson , 65 F.3d at 1432 n.4. Here, Plaintiffs assert specific personal jurisdiction.
Due process requires that a nonresident defendant have sufficient minimum contacts with the forum state such that the maintenance of the lawsuit does not offend "traditional notions of fair play and substantial justice." World–Wide Volkswagen Corp. v. Woodson , 444 U.S. 286, 291–92, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980) (internal quotation marks omitted). This legal standard requires an act by which the defendant purposely avails itself of the privilege of conducting activities within the forum state so as to invoke the benefits and protections of the forum state's laws. Fastpath, Inc. v. Arbela Techs. Corp. , 760 F.3d 816, 821 (8th Cir. 2014). This Court employs the following five factors to determine the sufficiency of a nonresident defendant's contacts with the forum state: (1) the nature and...
To continue reading
Request your trial
-
Untiedt's Vegetable Farm, Inc. v. S. Impact, LLC, Case No. 20-CV-0597 (PJS/DTS)
...of the alleged breach even if "the aggrieved party is unaware of the facts constituting the breach." Paisley Park Enters., Inc. v. Boxill , 299 F. Supp. 3d 1074, 1085 (D. Minn. 2017) ; see also Dalton v. Dow Chem. Co. , 280 Minn. 147, 158 N.W.2d 580, 584 (1968) ("[I]gnorance of a cause of a......
- W. Va. Pipe Trades Health & Welfare Fund v. Medtronic, Inc.
-
Int'l Decision Sys., Inc. v. JDR Sols., Inc.
...(D. Minn. 2000)), and even though "the aggrieved party is unaware of the facts constituting the breach," Paisley Park Enters., Inc. v. Boxill, 299 F. Supp. 3d 1074, 1085 (D. Minn. 2017) (citing Jacobson v. Bd. of Trs. of the Teachers Ret. Ass'n, 627 N.W.2d 106, 110 (Minn. Ct. App. 2001)). S......
-
Schwan's Co. v. Cai, CIVIL 20-2157 (JRT/HB)
...waiver is generally an affirmative defense. See Minn. R. Civ. P. 8.03; Fed. R. Civ. P. 8(c); Paisley Park Enters., Inc. v. Boxill, 299 F.Supp. 3d 1074, 1085 (D. Minn. 2017). Therefore, the party asserting waiver bears the burden of proving both knowledge and intent. White, 840 N.W.2d at 51.......