By Pamela C. Maloney, J.D.
An individual’s fair use defense to infringement claims involving the posting of Prince concert videos on his YouTube channel was rejected, as was his anti-bootlegging defense, should such a claim lie, and his DCMA counterclaim.
The federal district court in Boston rejected the fair use defense raised by an individual who had been sued by Prince’s estate for uploading to his YouTube channel six videos which recorded portions of the superstar’s performances at various concerts. The district court also rejected the individual’s defense of implied license to the estate’s anti-bootlegging claim, while preserving the issue of whether such a claim was valid in this context. Finally, the individual’s Digital Millennium Copyright Act claim, which was based on allegations of material misrepresentations by the estate, was denied (Comerica Bank & Trust, N.A. v. Habib, January 6, 2020, Sorokin, L.).
Comerica Bank & Trust, as the personal representative for the estate of Prince Rogers Nelson (Prince), was charged with monetizing and protecting the estate’s intellectual property, which it did so by operating an official Prince YouTube channel that included live concert videos. To maximize the impact of the official YouTube channel, which garnered more than one million dollars in revenue for the estate, Comerica made a concerted effort to identify and remove unauthorized Prince videos on other channels. To that end, Comerica utilized the services of MarkMonitor, a proprietary software that scours the Internet for potential infringements of trademarks and copyrights. Mark Monitor identified five potentially infringing videos that had been uploaded by Kian Habib, who had upload personal recordings of Prince taken at various concert venues to his "PersianCeltic" YouTube channel. Takedown notices were sent to YouTube on Comerica’s behalf and although YouTube removed the videos, Habib submitted counternotifications averring that his videos were fair use and continued to post videos recorded at Prince’s live musical performances. Comerica filed a lawsuit against Habib in which it alleged that the videos constituted copyright infringement and violated the anti-bootlegging statute.
Copyright infringement. In response to the infringement claim, Habib did not dispute Comerica’s ownership in the copyrights in the six works at issue. Instead, he argued that his videos did not infringe those copyrights because he did not record Prince performing "studio versions" of his musical compositions and that the copyright registrations did not cover the live performances at issue. In rejecting these arguments, the district court explained that each performance of a given musical composition—whether fixed in a specific sound recording or played with a live band at a concert venue—fell within the scope of the copyright protection afforded to musical compositions. In addition, each arrangement of a musical composition could not be considered a separate derivative work. Instead, the right to create new versions of a composition was an entitlement essential to the core principle of the Copyright Act’s protection of musical works. The district court concluded that Comerica had firmly established that Habib had infringed the estate’s copyright in the six musical compositions at issue.
Fair use defense. The district court also found that Habib’s affirmative defense of fair use was not supported by the evidence. Despite Habib’s arguments to the contrary, his videos were not transformative in that they were not imbued with new meaning nor did he add any of his own expression to the underlying works. There was no evidence that his videos were educational or historical in nature; instead, they did nothing more that repackage or republish the original copyrighted works. In addition, the fact that Habib’s use was non-commercial did not constitute fair use because "profit" was not limited to money, but included other calculable benefits or advantages such as driving traffic to his YouTube channel.
It was also undisputed that the copyrighted works were both creative and published and, therefore, the second factor, which looked to whether the musical compositions were factual or creative and whether the compositions had been published previously, also weighed against a finding of fair use. In addition, the videos copied significant and valuable portions of the six musical compositions, capturing multiple verses and recognizable refrains. In appropriating the "heart" of these musical compositions, Habib provided his subscribers with the best parts of each copyrighted work, making his use of the compositions substantial under the third factor.
Finally, Habib’s uploading of the videos to his own channel effectively diverted traffic away from the authorized reproductions of the musical composition, thus depriving the estate of advertising revenue. Furthermore, the decidedly poor quality of Habib’s recordings harmed the estate’s interest in policing the caliber of secondary uses of Prince’s musical compositions. Thus, the fourth factor—effect on the market—weighed against a finding of fair use.
Other affirmative defenses. The district court found that Habib’s remaining affirmative defenses were groundless as well. Specifically, his claim that relief was limited by the Copyright Act merely referenced the applicable statutory regime for determining damages in an infringement action and, thus was not a defense. His good faith defense was irrelevant to the issue of liability for infringement and his claim that he should not be held liable because he did not profit from his use of Prince’s compositions was not a complete defense but was a factor to be considered as part of his fair use defense. Finally, there was no evidence to support Habib’s defenses based on waiver and estoppel, and Comerica’s claim was plainly filed within the applicable limitations period.
Willful infringement. Citing the fact that Habib had received multiplenotices that his audiovisual recordings of Prince’s live musical performances contained copyrighted material and that he continued to post similar videos, the district court granted Comerica’s motion for summary judgment on its claim that Habib had engaged in willful infringement. The district court further found that Habib’s counternotification parroting the statutory factors of the fair use doctrine was not an adequate substitute for obtaining legal advice or for carefully evaluating the applicability of the fair use doctrine. Finally, Habib presented no mitigating evidence to support a finding that his belief that the videos were fair use was reasonable.
Anti-bootlegging statute. The district court preserved the threshold questions of whether the protections of the anti-bootlegging statute were capable of being passed down through inheritance and,if they were not, whether an estate had standing to assert claims under the statute, directing the parties to file a supplemental brief and response with regard to these issues.
Notwithstanding the lack of resolution on these threshold questions, the district court did find that Habib’s implied license defense to the anti-bootlegging claim would fail should such a claim be valid. Habib argued that Prince’s statement, "fans sharing music with each other, that’s cool" had granted fans an implied license to record and distribute Prince’s live musical performances. However, this alleged statement failed to satisfy any of the factors outlined by the courts for determining the existence of an implied license. The broad statement, which was made to the general public, did not set out any license terms, nor did it demonstrate an intent to contract with Habib. In fact, it clearly had no relation to Habib directly. Thus, there was no implied license for Habib to use the video recordings.
DCMA counterclaim. According to Habib, the takedown notices sent by Comerica’s agent, MarkMonitor, contained knowingly material misrepresentations in violation of the DCMA. However, the undisputed evidence, which described MarkMonitor’s process for identifying potentially infringing material, indicated that MarkMonitor had a good faith belief that the videos infringed Prince’s copyrighted music compositions. Habib offered no evidence to contradict the record and did not even take discovery from MarkMonitor.
Injunctive relief. Finding that Habib’s repeated, current, and past acts of posting infringing videos posed a threat of future infringement, the district court granted Comerica’s request for injunctive relief.
This case is No. 17-12418-LTS.
Attorneys: Barbara Marchevsky (Fredrikson & Byron, P.A.) and Craig R. Smith (Lando & Anastasi, LLP) for Comerica Bank & Trust, N.A. Kian Andrew Habib, pro se.
Companies: Comerica Bank & Trust, N.A.
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