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George Ian Boxill is a sound engineer who worked with the late recording artist Prince Rogers Nelson between 2004 and 2008. When Boxill was engaged in early 2004 as a consultant to assist in selecting and testing recording equipment for the recording studios at Prince's residence in Chanhassen, Minnesota, known as Paisley Park, Boxill executed a Confidentiality Agreement with Paisley Park Enterprises, Inc. Paisley Park is a Minnesota corporation that Prince owned during his lifetime and is now owned by his estate. The Confidentiality Agreement provided that recordings and other physical materials that resulted from Boxill's work with Prince were to remain the sole and exclusive property of Paisley Park, were not be used by Boxill in any way whatsoever, and were to be returned to Paisley Park immediately upon request.
Boxill began recording music with Prince in 2004 and is credited as a sound engineer on Prince's album titled 3121, which was released in 2006. In 2006, Boxill worked with Prince to record the songs "Deliverance," "No One Else," "I Am," "Touch Me," and "Sunrise Sunset." Between 2006 and 2008, Boxill edited these five recordings and communicated with Prince regarding their progress. These recordings were not released during Prince's lifetime. Boxill and Prince stopped working together regularly in December 2008. After Prince's death in April 2016, and ten years after Boxill worked with Prince to record the songs, Boxill mixed and edited the songs. Boxill negotiated with representatives of Prince's estate regarding the release of these songs, but Boxill and the estate were unable to reach an agreement. Boxill began to work with the record companies Rogue Music Alliance, LLC, and Deliverance, LLC, on a commercial release of the disputed Prince recordings in Boxill's possession. In March 2017, representatives of Prince's estate learned that Boxill was planning an independent release of "Deliverance" and demanded the immediate return of any recordings of Prince in Boxill's possession. Boxill refused.
On April 18, 2017, Rogue Music Alliance issued a press release announcing the April 21, 2017 nationwide release of an EP titled DELIVERANCE that included six previously unreleased songs featuring Prince—the five songs which Boxill edited plus an extended version of the song titled "I Am."
Paisley Park and Comerica Bank & Trust, N.A., as personal representative of the estate of Prince, initiated a lawsuit to enjoin Boxill, Rogue Music Alliance, and Deliverance from promoting and distributing the disputed recordings and to secure the return of those recordings to Prince's estate. Paisley Park and Comerica brought claims for breach of contract, conversion, misappropriation of trade secrets, copyright infringement, and trademark infringement.
Paisley Park and Comerica contended that Boxill breached the Confidentiality Agreement by retaining recordings, refusing to return those recordings to Paisley Park on demand, and attempting to exploit those recordings for his own gain at the expense of Prince's estate. They also asserted that Boxill committed conversion by depriving Paisley Park of use and possession of the disputed recordings. Finally, they claimed that Rogue Music Alliance and Deliverance engaged in trademark infringement because the promotional materials for the song "Deliverance" used the PRINCE® trademark, and, based on the use of the trademark, consumers could believe that the release of "Deliverance" was authorized by Prince's estate. The United States District Court for the District of Minnesota found that the interpretation of the Confidentiality Agreement by Paisley Park and Comerica was plausible and gave them a fair chance of prevailing on the merits of their breach of contract claim. They, therefore, also had a fair chance of prevailing on the merits of their conversion claim because their interpretation of the Confidentiality Agreement made them the sole owners of the disputed recordings. Finally, Paisley Park and Comerica established that they had a fair chance of prevailing on the merits of their trademark-infringement claim.
However, the district court found that Paisley Park and Comerica did not have any likelihood of succeeding on the merits of their misappropriation-of-trade-secrets claim because they did not demonstrate that the disputed recordings were a trade secret. Furthermore, they did not have any likelihood of succeeding on the merits of their copyright-infringement claim because, although they presented evidence that they had filed applications for copyright registrations in the disputed recordings, Boxill possessed certificates of copyright registration for the disputed recordings that listed Boxill and Prince as co-authors.
The district court enjoined Boxill, Rogue Music Alliance, Deliverance, and others acting in concert with them, from publishing or disseminating any previously unreleased recordings that comprised the work of Prince, including but not limited to the four-part medley titled "Man Opera" and the extended version of the track titled "I Am." The court further enjoined Boxill, Rogue Music Alliance, Deliverance, and others acting in concert with them, from using the PRINCE® trademark in connection with the promotion and sale of the song "Deliverance." Because the song "Deliverance" already had been released, Paisley Park and Comerica could be compensated in damages for any ongoing harm resulting from that distribution. For this reason, injunctive relief as to the continued sale of the song "Deliverance" based on the Confidentiality Agreement was not warranted. Although Paisley Park and Comerica suggested that a bond in the amount that Rogue Music Alliance and Deliverance had invested in the promotion of DELIVERANCE—$378,000—would be adequate, the court found that the position of Paisley Park and Comerica that the damages were likely to be millions of dollars strongly suggested that a bond in the amount of $378,000 was not sufficient to compensate Boxill, Rogue Music Alliance, and Deliverance if they were later found to have been wrongfully enjoined. Accordingly, the preliminary injunction issued by the district court was to be secured by a bond in the amount of $1 million.
Lexis Advanced subscribers can access the full opinion at: Paisley Park Enters. v. George Ian Boxill, Rogue Music Alliance, LLC, 253 F. Supp. 3d 1037, 2017 U.S. Dist. LEXIS 84038, 2017 WL 2257386
Author: Daniel Duncan, Lexis-Nexis Case Law Editor
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