United States District Court, D. Minnesota
Paisley Park Enterprises, Inc. and Comerica Bank & Trust, N.A. as Personal Representative for 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,
R. Rondoni Tavernier, Grant D. Fairbairn, and Lora Mitchell
Friedemann, Fredrikson & Byron, PA, (for Plaintiffs);
D. Hartley, Rastegar Law Group, and Paul Allen Godfread,
Godfread Law Firm, (for Defendants George Ian Boxill, Rogue
Music Alliance, LLC, Deliverance, LLC, David Staley, and
Gabriel Solomon Wilson); and
Gregory Simpson, Meagher & Geer, PLLP, (for Defendant
Brown and Rosen LLC).
N. Leung United States Magistrate Judge
matter is before the Court on Plaintiffs' Motion for
Sanctions Due to Spoliation of Evidence (ECF No. 383) and
Plaintiffs' Motion to Compel Discovery from Defendant
Brown & Rosen, LLC (ECF No. 408). For the reasons set
forth below, the Court will grant in part and deny in part
Plaintiffs' Motion for Sanctions Due to Spoliation of
Evidence and deny as moot Plaintiffs' Motion to Compel
Discovery from Defendant Brown & Rosen.
Comerica Bank & Trust, N.A. is the personal
representative for the estate of the late internationally
known musician Prince Rogers Nelson (“Prince” and
“Prince Estate”). Third Amend. Compl. ¶ 2
(ECF No. 262). The Prince Estate owns Plaintiff Paisley Park
Enterprises, Inc. Id. The Prince Estate has an
interest in various songs created by Prince, including those
not released to the public. Id. at ¶ 3.
Plaintiffs allege that Defendants have taken steps to release
songs that Prince created but did not previously release to
the public without the permission of the Prince Estate. In
particular, Plaintiffs allege that Defendant George Ian
Boxill, a sound engineer who worked with Prince previously,
took tracks of certain songs that he worked on with Prince,
edited, and released those songs with the assistance of
Defendant Rogue Music Alliance (“RMA”), an LLC
whose principals are David Staley and Gabriel Solomon Wilson.
(ECF No. 388, p. 1-2). Plaintiffs also allege that Boxill,
Staley, and Wilson formed Deliverance, LLC to release the
music and that the law firms Sidebar Legal, PC and Brown
& Rosen, LLC (“Brown”) assisted in the
infringement. (Id. at pp. 1-2).
February 11, 2017, before releasing the music at issue in
this lawsuit, Staley sent an e-mail to Nate Yetton of
Sensibility Music wherein Staley indicated that Boxill had
indemnified RMA in case the Prince Estate chose to challenge
the release of the music. (ECF No. 389). On March 16, 2017
after learning that Defendants intended to release the music,
the Prince Estate sent a cease and desist letter. (ECF No.
388, p. 2). Plaintiffs followed up with a second letter
demanding that the music be returned. (ECF No. 388, p. 2).
They then filed suit against Boxill in state court on April
14, 2017. (ECF No. 388, p. 2; ECF No. 2). Boxill removed the
lawsuit to federal court on April 18, 2017. (ECF No. 1).
Plaintiffs filed an amended complaint on April 24, 2017, in
which they also named RMA and Deliverance as defendants (ECF
No. 36), a second amended complaint on December 21, 2017 (ECF
No. 150), and a third amended complaint on June 14, 2018, in
which they added Staley, Wilson and the two law firms as
defendants. (ECF No. 262).
December 2017, after Plaintiffs filed their first amended
complaint, they, RMA, Deliverance, and Boxill, stipulated to
certain protocols regarding the discovery of electronically
stored information (“ESI”). (ECF No. 141). In
that stipulation, the parties indicated that they had taken
“reasonable steps to preserve reasonably accessible
sources of ESI.” (ECF No. 141, p. 1). The Court
indicated that it would enforce the parties' agreement
but did not enter an order concerning the stipulation. (ECF
No. 145, p. 1).
Court then issued its pretrial scheduling order on January
10, 2018, (ECF No. 156). In that order, the Court directed
the parties to preserve “all electronic documents that
bear on any claims, defenses, or the subject matter of this
lawsuit.” (ECF No. 156, p. 2). The Court warned failure
to comply with any provision of this order would subject the
non-complying party to “any and all appropriate
remedies, ” including sanctions, assessment of costs,
fines and attorneys' fees and disbursements, and any
other relief the Court might deem appropriate. (ECF No. 156,
p. 5). The Court issued amended pretrial scheduling orders on
June 27, 2018 and October 4, 2018. (ECF Nos. 282 & 357).
Each order contained language regarding ESI discovery and the
potential consequences of a violation of the Court's
order. (ECF Nos. 282 & 357).
served written discovery on RMA and Deliverance on December
1, 2017. (ECF No. 388, p. 2). Included in their discovery
were requests for the production of all documents related to
the timing, circumstances, format, and content of the music
at issue in this lawsuit, communications with any third-party
regarding Boxill, Prince, and items at issue in this lawsuit,
and all documents related to Boxill, Prince, the music at
issue here, Paisley Park Enterprises, and this lawsuit. (ECF
No. 388-1, pp. 8, 9, 11, 21, 22, 24). Plaintiffs indicated in
their requests that the term document had the broadest
possible meaning ascribed to it under Rule 34. (ECF No.
388-1, p. 2, 15). Plaintiffs sent a letter outlining certain
deficiencies with RMA and Deliverance's responses on
March 2, 2018, including the failure to produce text messages
responsive to their requests. (ECF No. 388-1, pp. 28-29).
thereafter, Plaintiffs received a third-party production of
documents from a public relations firm that Defendants had
hired. (ECF No. 388, p. 3). Included in that production were
text messages that Wilson sent to an employee of the public
relations firm. (ECF No. 388, p. 3). Plaintiffs then filed a
motion to compel discovery from RMA, seeking production of
text messages that Staley and Wilson sent to each other and
third parties (ECF No. 266, p. 5). The Court ordered that
Defendants produce all responsive text messages on July 19,
2018. (ECF No. 388-2, p. 32).
for Plaintiffs, Wilson, Staley, RMA and Deliverance then held
a meet-and-confer on September 21, 2018. (ECF No. 388, p. 3).
There, counsel for Wilson, Staley, RMA and Deliverance
indicated that they could not produce responsive text
messages because they had not preserved their text messages.
(ECF No. 388, pp. 3-4). They indicated that text messages had
not been preserved because Staley and Wilson did not
disengage the auto-delete function on their phones and
because Staley had wiped and discarded his phone in October
2017 and Wilson had wiped and discarded his phone in January
2018 and then wiped and discard his new phone in May 2018.
(ECF No. 388, p. 4; ECF No. 395-2, p. 4). They also indicated
that no back-up data existed for either phone, though they
were later able to produce a screenshot captured from
Staley's phone, which he had uploaded to his cloud
storage space. (ECF No. 388, p. 4; ECF No. 395-1, p. 8-9). An
e-discovery lawyer for Plaintiffs' law firm indicates
that had Staley and Wilson not wiped and discarded their
phones, it might have been possible to recover the deleted
messages. (ECF No. 387, p. 2).
also served written discovery on Brown, the law firm that
issued an opinion letter regarding Boxill's right to
release the music. (ECF No. 411-1, p. 2-3). In those
requests, Plaintiffs sought discovery regarding information
and documents that Brown considered prior to writing the
opinion letter, identification of evidence regarding
Prince's intent, research and analysis that Brown
conducted regarding the music at issue here, and issues
related to Brown's competency to author the opinion. (ECF
no. 411-1, pp. 5, 7-14). Plaintiffs also sought the
production of documents related to Brown's experience in
teaching intellectual property law. (ECF No. 411-1, ECF Nos.
28-29). Brown objected to each of those requests on grounds
of irrelevancy, privilege, or the fact that the opinion
letter spoke for itself.
have filed a motion for sanctions against RMA, Deliverance,
Staley, and Wilson and a motion to compel against Brown. RMA,
Deliverance, Staley, and Wilson filed a memorandum in
response on November 6, 2018 (ECF No. 394) and Brown filed a
response on January 4, 2019. (ECF No. 416). The Court heard
argument on both matters on January 15, 2019 and took both
Motion for Sanctions
first move to sanction RMA, Deliverance, Staley, and Wilson
(“RMA Defendants”) for the destruction of text
messages. They seek sanctions under Rule 37(e)(1), 37(e)(2)
and 37(b)(2)(A). The RMA Defendants argue that they took
reasonable steps to preserve relevant evidence, that
Plaintiffs failed to show prejudice, and that the record
shows that they did not act with intent to deprive Plaintiffs
of relevant evidence. The ...