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Paisley Park Enterprises, Inc. v. Boxill

United States District Court, D. Minnesota

February 22, 2019

Paisley Park Enterprises, Inc. and Comerica Bank & Trust, N.A., as Personal Representative of the Estate of Prince Rogers Nelson, Plaintiffs,
George Ian Boxill; Rogue Music Alliance, LLC; Deliverance, LLC; David Staley; Gabriel Solomon Wilson; Brown & Rosen, LLC; and Sidebar Legal, PC, Defendants.


          Wilhelmina M. Wright United States District Judge

         This case was initiated by Plaintiffs Paisley Park Enterprises, Inc., and Comerica Bank & Trust, N.A., after a dispute arising from the posthumous release of several sound recordings by internationally renowned recording artist Prince Rogers Nelson. Several motions are pending before the Court. Defendant Brown & Rosen, LLC, moves to dismiss the claims against it in Plaintiffs' third amended complaint. (Dkt. 330.) Plaintiffs oppose this motion and move to supplement the record. (Dkt. 360.) In addition, Plaintiffs move to dismiss the tortious interference counterclaim brought by Defendants George Ian Boxill; Rogue Music Alliance, LLC; Deliverance, LLC; David Staley; and Gabriel Solomon Wilson. (Dkts. 188, 306.) For the reasons addressed below, the Court grants Brown & Rosen's motion to dismiss the claims against it and grants Plaintiffs' motion to supplement the record. The Court also grants in part and denies in part Plaintiffs' motion to dismiss the tortious interference counterclaim.


         This lawsuit arises from the attempted commercialization of previously unreleased recordings of the acclaimed recording artist Prince Rogers Nelson (Prince), who died in 2016. Plaintiffs are Paisley Park Enterprises, Inc., and Comerica Bank & Trust, N.A., as Personal Representative of the Estate of Prince Rogers Nelson. Defendants are George Ian Boxill, Rogue Music Alliance, LLC (RMA); Deliverance, LLC; David Staley; Gabriel Solomon Wilson; Brown & Rosen, LLC (B&R); and Sidebar Legal, PC.[1] Plaintiffs allege that Defendants unlawfully possess and have commercially exploited several of Prince's sound recordings (Prince Recordings). Defendants counter that Plaintiffs have interfered with Defendants' lawful attempts to release these recordings.

         Boxill is a sound engineer who worked with Prince during his lifetime, both as a remodeling consultant for Paisley Park and a sound engineer. RMA is a music labelling service company operated by Staley and Wilson. Boxill, RMA, and Sidebar Legal jointly own Deliverance, LLC, an entity created to market and release the Prince Recordings. B&R is a Massachusetts law firm that provided legal advice to RMA and Boxill regarding the authorship status of the Prince Recordings.

         Plaintiffs allege that Boxill executed a Confidentiality Agreement with Paisley Park Enterprises in 2004. 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.”[2] Two years later, in 2006, Boxill provided sound engineering services to Prince with respect to the recordings at issue in this lawsuit. Plaintiffs assert that they own copyrights in the Prince Recordings and filed applications to register those copyrights.

         After Prince's death in 2016, Defendants sought to distribute the previously unreleased Prince Recordings. On March 16, 2017, B&R drafted a letter to Sidebar Legal, opining that the Prince Recordings were a joint work by Prince and Boxill, and that both Prince and Boxill had rights to the recordings. To support their position that Boxill is not a joint author of the Prince Recordings, Plaintiffs sent a copy of the 2004 Confidentiality Agreement to B&R on March 21, 2017. As relevant to Plaintiffs' claims against B&R, Plaintiffs allege that B&R allowed Defendants to circulate the March 16, 2017 opinion letter to third parties, even after being put on notice of the Confidentiality Agreement. Plaintiffs contend that Defendants, in turn, used the opinion letter to convince third parties to advertise and distribute the Prince Recordings. Boxill, RMA, and Deliverance began distributing the Prince Recordings online in April 2017.

         Plaintiffs initiated a lawsuit and removed the state-court action to this Court on April 18, 2017. Plaintiffs filed the third amended complaint, the subject of B&R's pending motion, on June 14, 2018. In the third amended complaint, Plaintiffs assert four claims against B&R: tortious interference with contract, indirect copyright infringement, and requests for a declaratory judgment and injunctive relief. B&R moves to dismiss Plaintiffs' claims against it for lack of personal jurisdiction or, alternatively, for failure to state a claim on which relief can be granted. Boxill, RMA, Deliverance, Wilson and Staley have answered Plaintiffs' third amended complaint and asserted counterclaims against Plaintiffs. Plaintiffs move to dismiss Defendants' tortious interference counterclaim for failure to state a claim on which relief can be granted.[3]


         There are four pending motions before the Court. The Court first addresses the two motions related to the third amended complaint, B&R's motion to dismiss and Plaintiffs' motion to supplement the record.[4] The Court then addresses Plaintiffs' two motions to dismiss Defendants' counterclaim.

         I. Motion to Dismiss Plaintiffs' Third Amended Complaint

         Defendant B&R moves to dismiss Plaintiffs' third amended complaint for lack of personal jurisdiction. Fed.R.Civ.P. 12(b)(2). To survive a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction, a “plaintiff must make a prima facie showing that personal jurisdiction exists.” K-V Pharm. Co. v. J. Uriach & CIA, S.A., 648 F.3d 588, 591-92 (8th Cir. 2011). This showing requires the plaintiff to plead “sufficient facts to support a reasonable inference that the defendant can be subjected to jurisdiction within the state.” Id. (alteration omitted) (internal quotation marks omitted). Although the evidence necessary to make this prima facie showing is minimal, this evidence must be tested by the affidavits and exhibits supporting or opposing the motion, and not by the pleadings alone. Id. at 592. When deciding whether the plaintiff has succeeded in making this requisite showing, the district court views the evidence in the light most favorable to the plaintiff and resolves all factual conflicts in the plaintiff's favor. Digi-Tel Holdings, Inc. v. Proteq Telecommunications (PTE), Ltd., 89 F.3d 519, 522 (8th Cir. 1996).

         A federal court follows state law when determining the bounds of the federal court's personal jurisdiction. Walden v. Fiore, 134 S.Ct. 1115, 1121 (2014). Because Minnesota's long-arm statute extends jurisdiction to the maximum limit permitted by due process, a federal court in Minnesota must determine only whether its exercise of personal jurisdiction comports with due process. Wessels, Arnold & Henderson v. Nat'l Med. Waste, Inc., 65 F.3d 1427, 1431 (8th Cir. 1995).

         Due process requires a non-resident defendant to 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 (1980) (internal quotation marks omitted). Such minimum contacts are sufficient when the defendant has engaged in an act “by which the defendant purposely avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws.” Fastpath, Inc. v. Arbela Techs. Corp., 760 F.3d 816, 821 (8th Cir. 2014) (internal quotation marks omitted). The nature of the contact with the forum state must be “such that [the defendant] should reasonably anticipate being haled into court there.” World-Wide Volkswagen, 444 U.S. at 297. When, as here, a plaintiff asserts that a defendant is subject to specific personal jurisdiction, a district court may adjudicate causes of action “arising from or related to the defendant's actions in the forum state.” Wessels, 65 F.3d at 1432, n.4.

         A. Minimum Contacts

         B&R argues that Plaintiffs have not made a prima facie showing of specific personal jurisdiction over B&R. Plaintiffs counter that B&R's contact with Minnesota-through sales, conversations with the Prince Estate, and client advice-establish sufficient minimum contacts with the forum. Specifically, Plaintiffs allege that (1) with knowledge that the nationwide distribution would include sales to Minnesota, B&R advised Boxill and RMA to distribute the Prince Recordings; (2) B&R engaged in license negotiations and discussed Boxill's authorship status with the Prince Estate on multiple occasions; and (3) B&R authored an opinion letter regarding a contract involving a Minnesota entity.

         The United States Court of Appeals for the Eighth Circuit considers five factors to determine the sufficiency of a defendant's contacts with the forum state: (1) the nature and quality of contacts, (2) the quantity of contacts, (3) the relation of the cause of action to the contacts, (4) the interest of the forum state in providing a forum for its residents, and (5) the convenience of the parties. Land-O-Nod Co. v. Bassett Furniture Indus., Inc., 708 F.2d 1338, 1340 (8th Cir. 1983). The first three factors are given “primary” importance, whereas the last two are “secondary.” See Johnson v. Arden, 614 F.3d 785, 794 (8th Cir. 2010); accord Burlington Indus., Inc. v. Maples Indus., Inc., 97 F.3d 1100, 1102 (8th Cir. 1996). For the analysis here, factors one and two warrant further explanation.

         The first factor, the nature and quality of a defendant's contacts with the forum state, considers how purposeful the defendant's contact is. A defendant's indirect sale to a forum state generally is insufficient to establish personal jurisdiction. See Asahi Metal Indus. Co. v. Superior Court of Cal., 480 U.S. 102, 112 (1987) (plurality) (“The placement of a product into the stream of commerce, without more, is not an act of the defendant purposefully directed toward the forum State.”); Stanton v. St. Jude Med., Inc., 340 F.3d 690, 694 (8th Cir. 2003) (holding that a company's sale to a manufacturer, which in turn sold a product to Minnesota, was insufficient to establish personal jurisdiction over company). But a defendant's direct sale to the forum state satisfies the first ...

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