Paisley Park Enterprises, Inc. v. Boxill
253 F. Supp. 3d 1037
D. Minnesota2017Background
- George Ian Boxill, a sound engineer, worked with Prince from 2004–2008 and signed a 2004 Confidentiality Agreement with Paisley Park Enterprises that required return of materials and prohibited use of recordings.
- Boxill recorded and later edited five unreleased Prince tracks (including “Deliverance” and an extended “I Am”); recordings were not released during Prince’s lifetime.
- After Prince’s 2016 death, Boxill sought to commercially release the tracks and negotiated with the Estate and third parties but no agreement was reached; Rogue Music Alliance announced an EP release in April 2017.
- Plaintiffs Paisley Park Enterprises and Comerica (as Personal Representative of the Estate) sued and obtained a TRO and then moved for a preliminary injunction to stop distribution and recover recordings; the Court converted and extended relief pending this ruling.
- The court evaluated Dataphase factors and granted a limited preliminary injunction: enjoining further publication of unreleased Prince recordings covered by the Confidentiality Agreement, directing delivery of recordings to plaintiffs’ counsel for litigation use, and prohibiting use of the PRINCE® trademark to promote “Deliverance.” Plaintiffs posted a $1,000,000 bond.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Breach of contract (Confidentiality Agreement) | Confidentiality Agreement makes Paisley Park sole owner; Boxill breached by retaining and seeking to exploit recordings | Agreement didn’t apply to Boxill’s later role as sound engineer; language conflicts with recording activity | Court: Plaintiffs have a fair chance to prevail; factor favors injunction (cannot resolve meaning on limited record) |
| Conversion (possession/ownership of masters) | Boxill deprived Paisley Park of recordings created/covered by the Agreement | Boxill contends Prince knew and permitted removal; asserts ownership or co-ownership | Court: Conversion claim tied to contract claim; Plaintiffs have a fair chance to prevail; supports injunction |
| Misappropriation of trade secrets | Unreleased recordings are confidential trade secrets with economic value from secrecy | Recordings are not trade-secret-type information; value derives only from sale, not competitive advantage | Court: Plaintiffs did not show recordings qualify as trade secrets; no likelihood of success on this claim |
| Trademark/copyright issues (use of PRINCE® and copyright ownership) | Unauthorized use of PRINCE® risks consumer confusion; plaintiffs seek to enjoin trademark use and distribution | Defendants claim nominative fair use; Boxill has copyright registrations listing him and Prince as co-authors (co-owner defense) | Court: Likelihood of success as to trademark claim (injunction against use of PRINCE® for “Deliverance”); cannot find likelihood of success on copyright claim because Boxill holds registrations naming co-authors |
Key Cases Cited
- Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d 109 (8th Cir. 1981) (sets the four-factor preliminary injunction test)
- Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7 (2008) (injunction requires likelihood of irreparable harm)
- Kroupa v. Nielsen, 731 F.3d 813 (8th Cir. 2013) (preliminary injunction requires a "fair chance" of prevailing on merits)
- CDI Energy Servs., Inc. v. W. River Pumps, Inc., 567 F.3d 398 (8th Cir. 2009) (discusses when preliminary relief is appropriate)
- Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984) (a co-owner cannot sue another co-owner for copyright infringement)
- Rathmann Grp. v. Tanenbaum, 889 F.2d 787 (8th Cir. 1989) (scope of preliminary injunction should be no broader than necessary)