District court grants summary judgment to representative of estate of pop icon Prince, holding plaintiff’s posting of videos of Prince concerts shot with plaintiff’s cell phone on his YouTube channel infringed on Prince’s copyrights and did not constitute fair use.
Comerica Bank & Trust, N.A., the appointed representative of the estate of pop icon Prince Rogers Nelson, sued Kian Andrew Habib, the creator of a YouTube channel posting concert videos, for copyright infringement, willful infringement and violations of the U.S. anti-bootlegging statute. In response, Habib brought a counterclaim against Comerica under the Digital Millennium Copyright Act for knowingly making material misrepresentations. Comerica currently operates Prince’s official YouTube channel, which includes live concert videos. After computer software designed to detect copyright infringement notified Comerica of multiple videos containing Prince concerts that Habib had uploaded to YouTube, Comerica sent five takedown notices to YouTube, which Habib disputed without first obtaining legal advice. Habib’s videos were listed with titles such as “Prince – Nothing Compares 2 U – Amazing LIVE rare performance – 2013,” and displayed blurry cell phone footage shot from different angles with no commentary. The dispute prompted Comerica’s suit, and, throughout the litigation, Habib continued to post more concert videos.
Comerica moved for summary judgment on its claims that Habib’s conduct constituted willful copyright infringement and violated the civil anti-bootlegging statute. Habib countered that his concert postings were fair use of the recordings and that Comerica lacked a good faith belief that Habib’s postings constituted copyright infringement. The court granted Comerica’s motion on its copyright infringement claim but did not issue a ruling on the anti-bootlegging violation, due to a lack of published case law on the subject. The court invited Comerica to submit a supplemental brief. The court denied Habib’s affirmative defense that he had an implied license.
To establish copyright infringement, a plaintiff must show ownership of a valid copyright and that the defendant copied constituent, original elements of the plaintiff’s work. Copyrights initially vest with the author of the work but may be transferred as personal property. For musical compositions, copyrights cover the music (melody, rhythm and/or harmony) and the accompanying words (lyrics). Each performance of a musical composition, in turn, falls within copyright protection. Accordingly, Habib’s videos of Prince’s concerts fell under the copyright protection provided to Prince’s estate as a result of the copyrights on the original songs.
The court also found Habib’s videos did not constitute fair use. The fair use doctrine is a statutory exception to copyright infringement that allows others to use copyrighted material in a reasonable manner despite the lack of the owner’s consent. It primarily applies when a work is used for purposes such as criticism, comment, news reporting, teaching, scholarship or research. When evaluating a fair use defense, courts consider the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use upon the potential market for or value of the copyrighted work. The court determined that in Habib’s case, the videos simply repackaged Prince’s work and had no creative value on their own. It also found that Habib benefited sufficiently to trigger Prince’s copyright protection because the videos drew visitors to his YouTube channel.
The court further determined that Habib’s infringement was willful. Courts consider infringement to be willful if the defendant knew or should have known that his conduct constituted copyright infringement, or acted in reckless disregard of the copyright holder’s rights. In Habib’s case, his failure to consult with a legal expert after being notified of his potential infraction, continued posting of copyrighted content on his channel after proceedings in his case commenced, and general lack of mitigating evidence tending to show he held a reasonable belief that his videos were not infringing all indicated that he acted recklessly regarding Prince’s copyrights. Willful infringement permits a court to increase the award of statutory damages by up to $150,000.
The court was not persuaded by Habib’s counterclaim that the takedown notices sent by Comerica were “knowingly material misrepresent[ations]” in violation of the DMCA. Under the DMCA, an agent of a copyright holder may send “take-down notifications” to a service provider so long as the notification contains identification of the copyrighted work and a statement that the complaining party has a good faith belief that use of the material is not authorized by the copyright owner. Habib provided no evidence that Comerica’s belief was not in good faith, so the court denied Habib’s counterclaim.
To prevent Habib from further infringing on Prince’s copyrights, the court also granted Comerica a permanent injunction preventing Habib from posting future videos of Prince concerts.
Summary prepared by Melanie Howard and Michael Segal