United States District Court, D. Minnesota
Paisley Park Enterprises, Inc. and Comerica Bank & Trust, N.A. as Personal Representatives of the Estate of Prince Rogers Nelson, Plaintiffs,
Eric Ziani; Marcel Peters; Piet Van Ryckeghem; Frederic Bianco; DOE 1 d/b/a Eye Records; DOE 2 d/b/a Lovesigne; DOE 3 d/b/a House Quake; and DOEs 4-20, Defendants.
D. Fairbairn, (for Plaintiffs); and
appearance made by or on behalf of Defendants.
N. Leung United States Magistrate Judge
matter is before the Court on Plaintiffs' Motion for
Expedited Discovery. (ECF No. 6). Because, with one
exception, Plaintiffs have established that good cause exists
for early discovery, the Court will grant Plaintiffs'
motion in part and deny it in part.
August 31, 2018, Plaintiffs filed a complaint asserting
violations of state and federal deceptive trade practice,
trademark, and copyright laws. Compl. ¶¶ 118-69.
(ECF No. 1). Plaintiffs allege that Defendants conspired to
violate intellectual property rights related to the musician
Prince Rogers Nelson (“Prince”). Compl.
¶¶ 21-35. Plaintiffs are the personal
representatives of Prince's estate (“Prince
Estate”). Compl. ¶ 2.
Prince Estate owns copyrights to musical works written by
Prince, as well as the trademark PRINCE® for use with
entertainment services and musical performances. Compl.
¶¶ 24-27. The Prince Estate also owns the trademark
for the Prince Symbol. Compl. ¶ 30. Plaintiffs also
assert that the right of publicity protects Prince's
name, image, and likeness. Compl. ¶ 23. Plaintiffs spend
considerable time and resources monitoring and enforcing
their rights to the intellectual property owned by the Prince
Estate. Compl. ¶ 34. Through their efforts, they
determined that Defendants had repeatedly infringed upon the
Prince Estate's intellectual property. Compl. ¶ 40.
DOE 1, d/b/a Eye Records, has been identified by Plaintiffs
as a music label that sells bootleg copies of Prince Music.
Compl. ¶. 41. Eye Records advertises itself as a
“Bootleg label dedicated to Prince” on
Discogs.com, an online music database and marketplace. Compl.
¶ 42. Eye Records claims to have released 18
compilations of Prince music since 2016. Comp. ¶ 45.
purposes of their complaint, Plaintiffs identified several
compilations of unreleased Prince Music that Eye Records
released without permission. Compl. ¶ 46. Three of those
compilations, entitled Blast From The Past 4.0, Blast
From The Past 5.0, and Blast From The Past 6.0,
contain at least 100 songs of unreleased studio recordings.
Compl. ¶¶ 47-55. Through their investigation,
Plaintiffs obtained album covers for each compilation. Compl.
¶¶ 47, 50, 53. Each cover contains images of
Prince, the PRINCE® trademark, or the Prince Symbol.
Compl. ¶¶ 47, 49, 50, 52, 53, 55. Each of these
compilations bears the logo for the Eye Records label. Compl.
¶¶ 47, 50, 53.
Records has also released multiple compilations of live
Prince performances without permission. Compl. ¶ 57, 59,
61, 62, 65, 66, 67, 68, 70. Each of those compilations also
contains images of Prince, the PRINCE® trademark, or the
Prince Symbol. Compl. ¶ 57, 60, 61, 63, 64, 66, 67, 69,
70, 72. Each compilation also bears the logo for the Eye
Records Label. Compl. ¶¶ 57, 61, 64, 66, 67, and
compilations of Prince music released under the Eye Records
label are available for sale through the website
newlovesigne.com. Compl. ¶ 74. To purchase music from
newlovesigne.com, a person must request a user name and
password by sending an e-mail to firstname.lastname@example.org. Compl.
¶ 80. Once the user is able to log-in, he or she can
access the website, which contains a number of images of
Prince, the PRINCE® trademark, or the Prince Symbol.
Compl. ¶ 81.
used a DNS WHOIS lookup to obtain the information that the
owner of the domain name newlovesigne.com entered when
registering it. Compl. ¶ 75. Through their research,
Plaintiffs determined that newlovesigne.com was registered to
Eric Ziani, that it had a registered street address of 112
quai Pierre Scize, Lyon, France, and that it had a registered
e-mail address of email@example.com. Compl. ¶ 75.
buyers ordered a number of different Prince bootleg
compilations from newlovesigne.com and downloaded Prince
music directly from the website. Compl. ¶¶ 79, 83,
86. Payment for those orders was processed through a PayPal
account registered to the e-mail address of firstname.lastname@example.org
and sent to Ziani. Compl. ¶ 84, 86. When the bootleg
compilations arrived in Minnesota, the return address
indicated that the package came from Ziani. Compl. ¶ 85.
Marcel Peters and Piet Van Rychekhem promote the sale of Eye
Records' bootlegged Prince music through their respective
e-mails email@example.com and
firstname.lastname@example.org. Compl. ¶ 104, 106. Promotional
e-mails obtained by Plaintiffs indicate that each defendant
uses Prince's name, image, works, the PRINCE®
trademark, or the Prince Symbol to advertise Eye Records
recordings. Compl. ¶¶ 105, 107. Plaintiffs also
allege that Frederic Bianco is one of the “main
conspirators” behind Eye Records. Compl. ¶ 111.
DOE 2, d/b/a Lovesigne, promotes the Eye Records label
through a Facebook page and Twitter handle. Compl.
¶¶ 91, 93. Lovesigne uses Prince's name image,
and works to promote the sale of the bootlegged Prince Music.
Compl. ¶ 96. Lovesigne also uses the e-mail address
email@example.com to arrange for the sale and distribution of
bootlegged Prince music through the Eye Records label. Compl.
DOE 3, d/b/a House Quake, promotes the sale of bootlegged
Prince music through a Google Plus community. Compl. ¶
99. In a July 14, 2017 post, House Quake identified itself as
Lovesigne and instructed users to e-mail firstname.lastname@example.org if
they wish to purchase bootlegged Prince music. Compl. ¶
101. As with the other Defendants, House Quake uses images of
Prince, the PRINCE® trademark, and the Prince Symbol to
promote the sale of bootlegged Prince Music. Compl. ¶
100. Plaintiffs allege that Defendants DOEs 4-20 are
additional co-conspirators to the trafficking of Prince
bootlegged music through Eye Records. Compl. ¶ 113.
filing suit, Plaintiffs sent copies of their complaint to two
street addresses associated with Ziani and provided courtesy
copies to Ziani, Peters, and Van Ryckeghem by e-mail. (ECF
No. 9-1). Plaintiffs requested that each individual provide a
street address so that they could formally serve them with
the complaint. (ECF No. 9-1). Approximately one month later,
after no response, Plaintiffs again contacted Ziani, Peters,
and Van Ryckeghem by ...