United States District Court, D. Minnesota
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.
ORDER GRANTING DEFENDANT'S MOTION TO DISMISS,
GRANTING PLAINTIFFS' MOTION TO SUPPLEMENT THE RECORD, AND
GRANTING IN PART AND DENYING IN PART PLAINTIFFS' MOTION
Wilhelmina M. Wright United States District Judge
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.
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. 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.
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
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.” 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.
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.
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
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. The Court then addresses Plaintiffs'
two motions to dismiss Defendants' counterclaim.
Motion to Dismiss Plaintiffs' Third Amended
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).
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).
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.
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
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.
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