Case 1:17-cv-12418-LTS Document 111 Filed 01/06/20 Page 1 of 31
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`COMERICA BANK & TRUST, N.A. as
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`Personal Representative of the Estate of
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`Prince Rogers Nelson,
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`Plaintiff,
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`KIAN ANDREW HABIB,
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`Defendant.
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`Civil No. 17-12418-LTS
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`ORDER ON CROSS MOTIONS FOR SUMMARY JUDGMENT (DOC. NOS. 77, 84)
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`January 6, 2020
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`SOROKIN, J.
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`This federal copyright law case concerns several audiovisual recordings of the now-
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`deceased international superstar Prince Rogers Nelson (“Prince”) performing his own musical
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`compositions live in concert. Plaintiff Comerica Bank & Trust, N.A., in its capacity as the
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`appointed Personal Representative of Prince’s Estate (“Comerica”), alleges that several videos
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`recorded and uploaded to YouTube by Defendant Kian Andrew Habib (“Habib”) constitute
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`copyright infringement under 17 U.S.C. § 501 and violate the civil anti-bootlegging statute, 17
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`U.S.C. § 1101. Doc. No. 27 at 4-5. In response, Habib raises multiple defenses to Comerica’s
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`two claims and counterclaims that takedown notices sent on behalf of Comerica to YouTube
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`were “knowingly, material misrepresent[ations]” in violation of 17 U.S.C. § 512(f). Doc. No.
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`30. For the following reasons, Comerica’s Motion for Partial Summary Judgment (Doc. No. 77)
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`is ALLOWED IN PART and Habib’s Cross Motion for Summary Judgment (Doc. No. 84) is
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`DENIED.
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`Case 1:17-cv-12418-LTS Document 111 Filed 01/06/20 Page 2 of 31
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`I.
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`BACKGROUND1
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`Prince is one of the best-selling musical artists of all time. Doc. No. 81-7 at 2
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`(representing that Prince has sold over 100 million records worldwide). A virtuosic performer
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`and prolific songwriter, Prince crafted a unique amalgam of funk, rock, rhythm and blues, and
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`soul, yielding chart-topping studio recordings and electrifying live shows. Id.; see also Press
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`Release, The White House, Statement by the President on the Passing of Prince (Apr. 21, 2016),
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`https://obamawhitehouse.archives.gov/the-press-office/2016/04/21/statement-president-passing-
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`prince (“He was a virtuoso instrumentalist, a brilliant bandleader, and an electrifying
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`performer.”). Over the course of his 38-year career, Prince also earned a reputation as a
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`musician who demanded control over the release and use of his music, “enforc[ing] his
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`intellectual property rights aggressively” to achieve that end. Doc. No. 81-7 at 2-3 (noting that
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`Prince “employed staff whose sole task was to send take-down notices to [alleged] online
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`infringers”).
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`After Prince’s untimely April 21, 2016 death, Comerica was appointed Personal
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`Representative of Prince’s Estate and assumed its current role as a “fiduciary charged with
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`monetizing and protecting the Estate’s intellectual property for the benefit of [Prince’s] heirs.”
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`Doc. No. 83 at 2. In that capacity, Comerica now operates an official Prince YouTube channel,
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`which includes live concert videos. Id. at 4. According to Comerica, the official Prince
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`YouTube channel has yielded “well over $1 million” in revenue for the Estate. Id. Given the
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`YouTube channel’s success, Comerica “expects to monetize additional [Prince] concert videos in
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`the future.” Id.
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`1 Unless specifically noted, these facts are undisputed.
`2
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`As Comerica aims to maximize the impact of the official Prince YouTube channel, it also
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`“makes a concerted effort to identify and remove unauthorized Prince videos on other channels”
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`that might divert interest and revenue away from the Estate. Id. at 5. To that end, from March
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`2017 to March 2019, Comerica utilized the services of MarkMonitor, which deploys a
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`“proprietary software [that] scours the internet for potential infringements of [] clients’
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`trademarks and copyrights” and employs “experienced analyst[s]” who then review potential
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`infringements before further action is taken. Doc. No. 81-8 ⁋⁋ 2, 5. Over the course of those
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`two years, MarkMonitor “sent over 2,800 takedown notices” to YouTube on behalf of the Estate.
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`Id. ⁋ 4.
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`Five of those notices were sent in response to videos uploaded by Habib—the recordings
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`at issue in this case. Id. ⁋ 11. Habib filmed those recordings from his vantage point as an
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`audience member at two different Prince performances, a December 27, 2013 concert at the
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`Mohegan Sun Arena in Connecticut, and a May 23, 2015 concert at the Bell Centre in Montreal.
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`Doc. No. 30 at 6-7. Habib concedes he did not have express authorization from Prince to record
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`any portion of either performance. Doc. No. 110 ⁋ 20.2 Habib later uploaded five discrete
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`portions of the two performances on YouTube: First, on February 28, 2014, Habib uploaded a 2
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`minute and 49 second audiovisual clip of Prince performing the song “Glam Slam” at the
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`Mohegan Sun Arena, Doc. No. 30 at 7; next, on April 25, 2016, Habib uploaded a 4 minute and
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`48 second video including Prince’s performance of “Nothing Compares 2 U” at the Mohegan
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`Sun Arena concert, id.; finally, on May 24, 2016, Habib uploaded (1) a 2 minute and 23 second
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`video of Prince performing the song “Guitar” live in Montreal, Doc. 80-8 at 35, (2) a 2 minute
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`2 Habib does contend that Prince granted Habib an “implied license” to record and post the
`performances, citing a 2014 BBC article with statements attributed to Prince. See infra Part
`III.A.2.
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`3
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`and 25 second video of Prince performing the song “Take Me With U” in concert in Montreal,
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`Doc. No. 30 at 8, and (3) a 3 minute and 25 second video of Prince performing the songs “Sign
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`o’ the Times,” “Most Beautiful Girl in the World,” and “Hot Thing,” id.
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`These five audiovisual recordings—fairly described as “grainy,” “blurry,” and “poor
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`quality”—each contain significant and recognizable portions of six musical compositions that
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`Prince composed and registered with the United States Copyright Office. Doc. Nos. 78-1–78-8
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`(providing copies of U.S. Copyright Office Registration Certificates for “Nothing Compares 2
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`U,” “Take Me With U,” “Glam Slam,” “Sign o’ the Times,” “The Most Beautiful Girl in the
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`World,” and “Hot Thing”).3 For example, Habib’s audiovisual recording of “Nothing Compares
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`2 U” begins in the middle of the first verse of the song and continues until the end of the
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`composition. Doc. No. 79-3 (Habib’s video on file with the Court); Doc. No. 81-6 (highlighting
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`the substantial portion of the song’s lyrics captured by Habib’s video). In each video, the camera
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`is focused on Prince and his band, with Habib intermittently panning between the stage and a
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`jumbotron screen that magnified the featured performers. See, e.g., Doc. No. 79-3; Doc. No. 79-
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`6 (videos of “Nothing Compares 2 U” and “Sign o’ the Times” on file with the Court). The
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`parties do not dispute that Habib did not alter any aspect of the musical performances or the
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`visuals captured by his recordings before he uploaded the videos to YouTube. Doc. No. 80-8 at
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`32; Doc. No. 81-4 at 22 (“I didn’t add anything to the music or anything.”). In addition, the
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`parties do not dispute that Habib’s videos do not capture any spoken commentary and merely
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`3 While the parties do not dispute that Prince also composed the song “Guitar,” Comerica does
`not have in its possession the copyright registration that likely encompasses that song. See Doc.
`No. 81-9; Doc. No. 78-9. Comerica notes that it is not asserting a copyright infringement claim
`based on Habib’s use of “Guitar.” Doc. No. 83 at 7 n.2. However, Comerica does assert that
`Habib’s video of “Guitar” violated the anti-bootlegging statute, 17 U.S.C. § 1101. Id.
`4
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`feature Prince’s “spontaneous interactions with his fellow band members and the audience, as
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`well as the singing of the crowd.” Doc. No. 108 at 7.
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`Habib uploaded the five videos to the “PersianCeltic” YouTube channel that he operates.
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`Doc. No. 110 at 11. When he did so, Habib gave titles to the various videos, see Doc. No. 83 at
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`6 (including titles like “Prince – Nothing Compares 2 U – Amazing LIVE rare performance –
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`2013” and “Prince showing off all his talents! LIVE at Mohegan Sun, Connecticut 2013”), but
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`did not otherwise include any written commentary or criticism. Additionally, the parties do not
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`dispute that Habib’s “PersianCeltic” YouTube page included an “About” section that described
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`his channel as containing “[e]clectic” and “awesome content,” and encouraged YouTube users to
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`“subscribe and comment.” Doc. No. 80-7. As of November 6, 2018, Habib’s channel had
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`received 405,336 views, including thousands of views for each of the videos at issue in this case.
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`Id.; Doc. No. 80-3.
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`In 2017, MarkMonitor identified Habib’s videos as potentially infringing Prince’s
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`musical composition copyrights. Doc. No. 81-8 at 4. According to Erika Vergara, Client
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`Services Manager at MarkMonitor, after Habib’s five videos were flagged as potentially
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`infringing, “a MarkMonitor analyst watched the videos and applied [the company’s] standard
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`practices, including an assessment of fair use.”4 Id. After concluding that the videos were
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`infringing, MarkMonitor then sent takedown notices to YouTube on Comerica’s behalf for each
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`of Habib’s five videos. Id.5
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`4 “Fair use,” as discussed at length below, is an affirmative defense to copyright infringement.
`17 U.S.C. § 107.
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` This was not the first time that Habib had received notice that videos uploaded to his YouTube
`channel might contain infringing material. In fact, several other copyright owners—including
`copyright owners of songs performed by the rock band Arcade Fire and the pop star Miley
`Cyrus—had previously issued Content ID claims regarding Habib’s videos of live musical
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`Upon receiving the takedown notices, YouTube removed the five videos and notified
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`Habib. Doc. Nos. 79-8–79-10. Those notifications explained that, amongst other reasons,
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`takedown notifications might have been issued because “[o]ne or more of [Habib’s] videos
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`contained copyrighted material.” Doc. No. 79-1. YouTube further explained that “[c]opyright
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`owners can choose to take down videos that contain their content” and informed Habib that
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`YouTube had “disabled [access to the five videos] as a result of a third-party notification from
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`[MarkMonitor] claiming that [the videos are] infringing.” Doc. No. 78-11. Moreover, YouTube
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`advised Habib that his account would be terminated if he did not “delete any videos to which
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`[he] did not own the rights,” id., and asked him to refrain from “upload[ing] videos that contain
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`copyrighted content that you aren’t allowed to use.” Doc. No. 79-1.
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`In response, Habib submitted five identical counter-notifications, in each instance
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`averring that his videos were “fair use” because the videos were, in Habib’s view,
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`“noncommercial and transformative in nature . . . use[d] no more of the original than necessary,
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`and ha[d] no negative effect on the market for the work.” Doc. No. 79-11. According to Habib,
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`he submitted these counter-notifications “casually,” Doc. No. 81-4 at 11 (transcript of Habib’s
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`deposition), and the parties do not dispute that Habib did not seek legal advice before submitting
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`his counter-notifications. Doc. No. 80-8 at 10 (transcript of Habib’s deposition). In fact, Habib
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`performances. See Doc. No. 80-6 (notifying Habib that “[c]opyrighted content was found in your
`video” and that “[t]he claimant is allowing their content to be used in your YouTube video” so
`that it could be monetized); see also Bryan E. Arsham, Monetizing Infringement: A New Legal
`Regime for Hosts of User-Generated Content, 101 Geo. L.J. 775, 791 (2013) (noting that
`YouTube’s Content ID system “gives [copyright] holders three choices for how to deal with
`uploaded content that matches their work: monetize the content, track usage, or block the content
`altogether.”). Habib did not dispute any of the claimants’ Content ID claims “because [the
`claimants] weren’t trying to remove the video forever from the channel.” Doc. No. 80-8 at 24.
`Habib also stated that claimants’ decisions to permit videos to remain on YouTube and generate
`revenue for the claimants, in his mind, “raise[d] the suspicion that the video is . . . not
`copyrighted.” Id. at 24-25.
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`explained in his deposition that he used “a prewritten legal description of fair use” that he
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`submitted because he “agree[d] with it.” Id. at 16.
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`After receiving Habib’s counter-notifications, YouTube provided Comerica with Habib’s
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`counter-notifications and informed Comerica that YouTube “await[ed] evidence . . . that
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`[Comerica had] filed an action seeking a court order against [Habib] to restrain the allegedly
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`infringing activity.” Doc. No. 79-11. In response, Comerica filed the instant lawsuit, alleging
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`musical composition copyright infringement and violations of the anti-bootlegging statute. Doc.
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`No. 27. Notwithstanding the commencement of this case, Habib has continued to post videos
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`that he recorded at live musical performances. Doc. No. 80-8 at 6 (stating in his deposition that
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`“[t]here’s nothing wrong with posting concert videos”).
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`II.
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`LEGAL STANDARD
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`Summary judgment is appropriate when “the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.
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`R. Civ. P. 56(a). Once a party “has properly supported its motion for summary judgment, the
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`burden shifts to the non-moving party, who ‘may not rest on mere allegations or denials of his
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`pleading, but must set forth specific facts showing there is a genuine issue for trial.’” Barbour v.
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`Dynamics Research Corp., 63 F.3d 32, 37 (1st Cir. 1995) (quoting Anderson v. Liberty Lobby,
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`Inc., 477 U.S. 242, 256 (1986)). The Court is “obliged to [] view the record in the light most
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`favorable to the nonmoving party, and to draw all reasonable inferences in the nonmoving
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`party’s favor.” LeBlanc v. Great Am. Ins. Co., 6 F.3d 836, 841 (1st Cir. 1993). Even so, the
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`Court is to ignore “conclusory allegations, improbable inferences, and unsupported speculation.”
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`Prescott v. Higgins, 538 F.3d 32, 39 (1st Cir. 2008) (quoting Medina–Muñoz v. R.J. Reynolds
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`Tobacco Co., 896 F.2d 5, 8 (1st Cir. 1990)). A court may enter summary judgment “against a
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`party who fails to make a showing sufficient to establish the existence of an element essential to
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`that party’s case, and on which that party will bear the burden of proof at trial.” Celotex Corp. v.
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`Catrett, 477 U.S. 317, 322 (1986). When cross-motions for summary judgment are presented,
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`the Court “must consider each motion separately” and draw all inferences against each moving
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`party in turn. Reich v. John Alden Life Ins. Co., 126 F.3d 1, 6 (1st Cir. 1997).
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`III.
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`DISCUSSION
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`The Court considers, in turn, Comerica’s two allegations: (1) that Habib’s videos
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`infringed Prince’s copyrights; and (2) that Habib’s videos violated the anti-bootlegging statute,
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`17 U.S.C. § 1101. Then, the Court addresses Habib’s sole counterclaim, alleging that takedown
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`notices sent on Comerica’s behalf were violative of the Digital Millennium Copyright Act
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`(“DMCA”), 17 U.S.C. § 512(f).
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`A.
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`Comerica’s Claims
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`As to Comerica’s claims—copyright infringement and violation of the anti-bootlegging
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`statute—and Habib’s affirmative defenses, the Court first considers Comerica’s motion for
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`summary judgment, drawing all reasonable inferences in Habib’s favor. Then, the Court
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`considers Habib’s cross-motion for summary judgment on Comerica’s two claims, as well as his
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`motion for summary judgment on his affirmative defenses, drawing all reasonable inferences in
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`Comerica’s favor. Mandel v. Boston Phoenix, Inc., 456 F.3d 198, 205 (1st Cir. 2006) (“The
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`presence of cross-motions for summary judgment neither dilutes nor distorts [the familiar
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`summary judgment] standard of review.”).
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`1.
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`Count I: Infringement of Prince’s Musical Composition Copyrights
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`a.
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`Infringement
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`“To establish copyright infringement, a plaintiff must concurrently proceed down two
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`roads and prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent
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`elements of the work that are original.” Soc’y of Holy Transfiguration Monastery, Inc. v.
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`Gregory, 689 F.3d 29, 39 (1st Cir. 2012) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499
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`U.S. 340, 361 (1991)).
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`The Copyright Act provides that copyright protection for musical compositions—like all
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`other instances of copyright protection—vests initially in the composer. See 17 U.S.C. § 201(a)
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`(“Copyright in a work . . . vests initially in the author or authors of the work.”); see also 17
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`U.S.C. § 102 (listing musical compositions as protectable subject matter under the Copyright Act
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`and defining “musical works” to include “accompanying words”). Additionally, the Copyright
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`Act states that “ownership of a copyright . . . may be bequeathed by will or pass as personal
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`property by the applicable laws of intestate succession.” 17 U.S.C. § 201(d). Finally,
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`“certificates of copyright [issued by the U.S. Copyright Office] are prima facie evidence of [a
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`plaintiff’s] ownership of valid copyright interests in [their] works.” Situation Mgmt. Sys., Inc. v.
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`ASP. Consulting LLC, 560 F.3d 53, 58 (1st Cir. 2009) (quoting 17 U.S.C. § 410(c)).
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`Here, there can be no dispute that Comerica, in its capacity as appointed Personal
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`Representative of Prince’s Estate, has demonstrated its ownership of valid copyrights in the six
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`musical compositions at issue in its infringement claim. See Doc. Nos. 78-1–78-8 (providing
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`copies of U.S. Copyright Office Registration Certificates); Minn. Stat. Ann. § 524.3-709 (West
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`2019) (providing that, under Minnesota law, “every personal representative has a right to, and
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`shall take possession or control of, the decedent’s property . . . unless or until, in the judgment of
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`the personal representative, possession of the property by the personal representative will be
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`necessary for purposes of administration”). Rather than dispute valid ownership, Habib argues
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`that his videos do not infringe the six copyrights at issue in this case because he did not record
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`Prince performing “studio versions” of his musical compositions. Doc. No. 85 at 4. Further,
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`Habib argues that the copyright registrations in Comerica’s possession do not “cover the live
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`performances at issue in this suit.” Id. at 4 n.1.6
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`Habib’s arguments misunderstand both the nature and scope of copyright protection for
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`musical compositions. First, as the U.S. Copyright Office explains, “[s]ound recordings and
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`musical compositions are considered two separate works for copyright purposes.” U.S.
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`Copyright Office, Circular 56A: Copyright Registration of Musical Compositions and Sound
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`Recordings (Mar. 2019), https://www.copyright.gov/circs/circ56a.pdf (noting that “[e]ven
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`though a sound recording is a derivative work of the underlying musical composition, a
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`copyright in a sound recording is not the same as, or a substitute for, copyright in the underlying
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`musical composition”); accord Conway v. Licata, 104 F. Supp. 3d 104, 120 (D. Mass. 2015).
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`6 Additionally, Habib argues, in passing, that he “is the only person who can legally claim
`ownership of the copyright on his recording of Prince’s live performance” because he is the
`“creator” of the videos at issue in this case. Doc. No. 85 at 9. While it is possible that Habib
`might enjoy copyright protection in aspects of videos that “satisf[y] the low threshold of
`originality required to earn copyright protection,” Greene v. Ablon, 794 F.3d 133, 160 (1st Cir.
`2015), any protection that Habib might enjoy in his “selection of . . . lighting, timing,
`positioning, angle, and focus,” Harney v. Sony Pictures Television, Inc., 704 F.3d 173, 180 (1st
`Cir. 2013), or “where [he] put the microphones” of his cellphone, Panel III: United States v.
`Martignon-Case in Controversy, 16 Fordham Intell. Prop. Media & Ent. L.J. 1223, 1280 (2006)
`(quoting Professor Jane C. Ginsburg), most certainly does not extend to Prince’s underlying
`copyrighted musical compositions captured by Habib’s recordings. See 17 U.S.C. § 103(b)
`(providing that the “copyright in [a derivative work] is independent of, and does not affect . . .
`any copyright protection in the preexisting material”); Gamma Audio & Video, Inc. v. Ean-Chea,
`11 F.3d 1106, 1112 (1st Cir. 1993) (noting that “[a]ny elements that the author of the derivative
`work borrowed from the underlying work . . . remain protected by the copyrights in the
`underlying work”).
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`Comerica correctly observes that “copyrights in musical compositions cover the music (the
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`melody, rhythm, and/or harmony) and accompanying words (lyrics).” Doc. No. 83 at 2. In fact,
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`“if words and music have been integrated into a single work, the copyright in a ‘musical work’
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`protects against unauthorized use of the music alone or of the words alone, or of a combination
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`of music and words.” 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.05[C].
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`Copyright protection for these components of a musical composition grants copyright owners—
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`here, Prince’s Estate—the exclusive right to “reproduce the copyrighted work in copies or
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`phonorecords” and to “distribute copies or phonorecords of the copyrighted work to the public.”
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`17 U.S.C. § 106. To that end, courts have consistently “recognized a copyright holder’s right to
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`control the synchronization of musical compositions with the content of audiovisual works and
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`have required parties to obtain synchronization licenses from copyright holders.” Leadsinger,
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`Inc. v. BMG Music Pub., 512 F.3d 522, 527 (9th Cir. 2008); see also ABKCO Music, Inc. v.
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`Stellar Records, Inc., 96 F.3d 60, 63 n.4 (2d Cir. 1996) (“A synchronization license is required if
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`a copyrighted musical composition is to be used in ‘timed-relation’ or synchronization with an
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`audiovisual work.”) (citation omitted), abrogated on other grounds by Salinger v. Colting, 607
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`F.3d 68 (2d Cir. 2010); 6 Nimmer on Copyright § 30.02 [F][3].
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`It is of no moment that the performances recorded by Habib were “far removed from, and
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`not recognizable as, the studio version[s] of . . . particular song[s].” Doc. No. 85 at 4. Indeed,
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`each performance of a given musical composition—whether fixed in a specific sound recording
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`or played with a live band at a concert venue—falls well within the scope of the copyright
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`protection afforded to musical compositions.7 Notably, courts have consistently held that an
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`7 For example, the copyright registration for Prince’s composition “Nothing Compares 2 U”—
`one of the songs at issue in this case, Doc. No. 78-2 (reproducing the relevant certificate of
`registration)—protects (1) the “studio version” recorded by Prince in 1984 (but unreleased until
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`arrangement of a musical composition may not be considered a separate derivative work if the
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`arrangement is “merely a stylized version of the original song . . . [that] may take liberties with
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`the lyrics or the tempo” and regurgitates “basically the original tune.” Woods v. Bourne Co., 60
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`F.3d 978, 991 (2d Cir. 1995); accord 1 Nimmer on Copyright § 2.05[D]. And courts have long
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`held that the right to create new versions of a composition is an entitlement that lies at the core of
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`the Copyright Act’s protection of musical works. See Edward B. Marks Music Corp. v. Foullon,
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`79 F. Supp. 664, 665–66 (S.D.N.Y. 1948) (“There is no doubt that the copyright owner of a
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`musical composition has a right to make a version and arrangement.”), aff’d, 171 F.2d 905 (2d
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`Cir. 1949). Accordingly, Comerica need not “separately register for copyright protection . . .
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`every live performance of every [Prince] song” in order to avail itself of the Copyright Act’s
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`remedies, Doc. No. 83 at 3, nor does Comerica’s infringement claim seek to “mold[] [the
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`musical composition copyrights] beyond the material they actually protect,” as Habib claims.
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`Doc. No. 85 at 10.
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`Thus, drawing all reasonable inferences in Habib’s favor, Comerica has firmly
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`established copyright infringement as to the six copyrighted musical compositions.
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`2018), see Matthew Strauss, Listen to Prince’s Original Version of “Nothing Compares 2 U,”
`Pitchfork (Apr. 19, 2018), https://pitchfork.com/news/listen-to-princes-original-version-of-
`nothing-compares-2-u/; (2) the chart-topping 1990 version of the song recorded by Sinéad
`O’Connor, see Sinéad O’Connor, I Do Not Want What I Haven’t Got (Chrysalis Records 1990);
`Gil Kaufman, Prince Estate Unveils Previously Unreleased Original ‘Nothing Compares 2 U’
`Recording: Listen, Billboard (Apr. 19, 2018),
`https://www.billboard.com/articles/columns/rock/8351077/prince-previously-unreleased-
`original-nothing-compares-2-u-listen (noting that “the heartbreak anthem . . . became a breakout
`Billboard Hot 100 No. 1 hit” for O’Connor in 1990); and (3) Prince’s December 27, 2013
`performance of the song that Habib recorded at the Mohegan Sun Arena in Connecticut. See
`Doc. No. 79-6.
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`b.
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`Affirmative Defenses
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`Habib raises several affirmative defenses in his Answer to Comerica’s Amended
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`Complaint. Doc. No. 30. Like all defendants, Habib “bears the burden of proving such
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`defenses.” Getty Images (US), Inc. v. Her Campus Media, LLC, No. 19-CV-11084-LTS, 2019
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`WL 5552332, at *1 (D. Mass. Oct. 28, 2019). First, the Court considers whether, as Habib
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`claims, his videos constitute “fair use” of the copyrighted musical compositions. 17 U.S.C. §
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`107; Doc. No. 30 at 5 (providing that Habib’s third affirmative defense is “fair use”). Then, the
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`Court takes up Habib’s additional defenses.
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`1.
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`Fair Use
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`“The fair use doctrine is a statutory exception to copyright infringement.” Bill Graham
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`Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 608 (2d Cir. 2006). The doctrine “creates a
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`privilege for others to use . . . copyrighted material in a reasonable manner despite the lack of the
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`owner’s consent.” Gregory, 689 F.3d at 59 (1st Cir. 2012) (quoting Weissmann v. Freeman, 868
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`F.2d 1313, 1323 (2d Cir.1989)). It also “serves to mediate ‘the inevitable tension between the
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`property rights’ lying in creative works ‘and the ability of authors, artists, and the rest of us to
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`express them,’ providing a degree of protection to each where merited.” Id. (quoting Blanch v.
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`Koons, 467 F.3d 244, 250 (2d Cir.2006)).
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`Section 107 of the Copyright Act codifies the fair use doctrine and sets forth the four
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`familiar factors that a court must consider when the fair use defense is raised. See 17 U.S.C. §
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`107 (noting that fair use may be found when a work is used “for purposes such as criticism,
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`comment, news reporting, teaching, . . . scholarship, or research”). The four fair use factors are:
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`(1) “the purpose and character of the use;” (2) “the nature of the copyrighted work;” (3) “the
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`amount and substantiality of the portion used in relation to the copyrighted work as a whole;”
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`Case 1:17-cv-12418-LTS Document 111 Filed 01/06/20 Page 14 of 31
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`and (4) “the effect of the use upon the potential market for or value of the copyrighted work.”
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`Id. While “[f]air use is a mixed question of law and fact,” Harper & Row Publishers, Inc. v.
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`Nation Enterprises, 471 U.S. 539, 560 (1985), a court may properly resolve fair use at the
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`summary judgment stage where, as here, “no material historical facts are at issue” and “[t]he
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`parties dispute only the ultimate conclusions to be drawn from the admitted facts.” Fitzgerald v.
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`CBS Broad., Inc., 491 F. Supp. 2d 177, 183 (D. Mass. 2007) (quoting Fisher v. Dees, 794 F.2d
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`432, 436 (9th Cir.1986)). Accordingly, the Court now considers each of the four fair use factors
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`in turn.
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`a.
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`Purpose and Character of the Use
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`Under the first prong of the fair use analysis, the Court must assess “whether and to what
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`extent the new work is ‘transformative.’” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,
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`579 (1994) (quoting Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111
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`(1990)). That is, the Court must determine “whether the new work merely supersedes the objects
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`of the original creation . . . or instead adds something new, with a further purpose or different
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`character, altering the first with new expression, meaning, or message.” Id.; accord Folsom v.
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`Marsh, 9 F. Cas. 342, 345 (No. 4,901) (C. C. D. Mass. 1841) (Story, J.) (holding that a work is
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`transformative when there is “real, substantial condensation of the materials, and intellectual
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`labor and judgment bestowed thereon; and not merely the facile use of the scissors; or extracts of
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`the essential parts, constituting the chief value of the original work”).
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`Habib posits that his videos are “transformative in nature because Habib specifically
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`chose the vantage point to record from and alternated between shots of the performance and
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`reactions from the crowd.” Doc. No. 85 at 12. Additionally, he avers that the faint “bantering
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`and [crowd] interactions” captured by his videos render them transformative. Id. Finally, he
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`argues that his “own comments and descriptions of the performances themselves”—ostensibly
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`referring to his chosen titles for the videos, see, e.g., Doc. No. 83 at 6 (reporting that Habib gave
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`his videos titles like “Prince – Nothing Compares 2 U – Amazing LIVE rare performance –
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`2013” and “Prince showing off all his talents! LIVE at Mohegan Sun, Connecticut 2013”)—
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`weigh in favor of recognizing his videos as transformative. Id.
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`These arguments miss the mark. Critically, Habib did not imbue Prince’s musical
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`compositions with new meaning or add any of his own expression to the underlying works. See
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`Doc. No. 81-4 at 22 (“I didn’t add anything to the music or anything.”). As the First Circuit has
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`held, this type of “verbatim” copying “reflects minimal intellectual labor and judgment.”
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`Gregory, 689 F.3d at 60. Typically, such “verbatim” copying may only be considered
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`transformative when the copying serves “a purpose separate and distinct from the original artistic
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`. . . purpose for which the [works] were created,” like news reporting or documentary
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`filmmaking. Bill Graham Archives, 448 F.3d at 610; see also Elvis Presley Enters., Inc. v.
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`Passport Video, 349 F.3d 622, 628–29 (9th Cir. 2003) (finding the use of television clips of
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`Elvis’ musical performances to be transformative where “the clips play[ed] for only a few
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`seconds and [were] used for reference purposes while a narrator talk[ed] over them or
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`interviewees explain[ed] their context in Elvis’ career,” but not to be transformative where the
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`clips “play[ed] without much interruption, [and t]he purpose of showing these clips likely [went]
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`beyond merely making a reference for a biography, but instead serve[d] the same intrinsic
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`entertainment value that is protected by Plaintiffs’ copyrights”); Hofheinz v. A & E Television
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`Networks, Inc., 146 F. Supp. 2d 442, 446–47 (S.D.N.Y. 2001) (holding that unauthorized use of
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`film clips in an actor’s biographical film was protected by the fair use doctrine because the clips
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`were “not shown to recreate the creative expression reposing in plaintiff’s [copyrighted] film,
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`Case 1:17-