Wilhelmina M. Wright, United States District Judge.
This lawsuit involves a dispute over the ownership of previously unreleased recordings of five songs by the internationally known recording artist Prince Rogers Nelson (Prince). Defendant George Ian Boxill is a sound engineer who worked with Prince during Prince's lifetime to record and edit the five songs at issue. After Prince's death in 2016, Boxill worked with Defendants Rogue Music Alliance, LLC, and Deliverance, LLC, on a commercial release of the disputed Prince recordings in Boxill's possession. Plaintiffs Paisley Park Enterprises, Inc., and Comerica Bank & Trust, N.A., as Personal Representative of the Estate of Prince Rogers Nelson, initiated this lawsuit to enjoin Defendants from promoting and distributing the disputed recordings and to secure the return of those recordings to Prince's estate.
Plaintiffs moved for a temporary restraining order, which the Court issued on April 19, 2017. (Dkts. 30, 34.) Thereafter, Defendants filed a motion to modify the temporary restraining order and for early discovery. Plaintiffs also filed a motion for a preliminary injunction. The Court extended the temporary restraining order in a May 3, 2017 Order, which effectively granted some of the relief sought by Defendants' motion to modify the temporary restraining order. For the reasons addressed below, the Court grants Plaintiffs' motion for a preliminary injunction and denies as moot Defendants' motion to modify the temporary restraining order and for early discovery.
Boxill is a sound engineer who worked with Prince on several music recordings
In early 2004, Boxill was engaged 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 in March 2004. That Confidentiality Agreement provides that recordings and other physical materials that resulted from Boxill's work with Prince "shall remain Paisley's sole and exclusive property, shall not be used by [Boxill] in any way whatsoever, and shall be returned to Paisley 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 five songs at issue in this lawsuit: "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 "Deliverance," "No One Else," "I Am," "Touch Me," and "Sunrise Sunset." 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. In September 2016, attorneys for Boxill and for Prince's estate also jointly attempted to reach a negotiated agreement with Atlantic Records to include "Deliverance" on the movie soundtrack for Birth of a Nation. But the parties also were unable to reach an agreement on that contract.
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. Plaintiffs subsequently initiated this lawsuit in Minnesota state court, seeking possession of the disputed recordings. Plaintiffs filed a motion for a temporary restraining order in the state-court proceeding on April 14, 2017.
On April 18, 2017, Rogue Music Alliance, LLC, issued a press release announcing the April 21, 2017 nationwide release of an EP
Boxill moved to modify the temporary restraining order and for expedited discovery. Plaintiffs filed an amended complaint, which added two defendants — Rogue Music Alliance, LLC, and Deliverance, LLC — and a variety of claims, including copyright and trademark violations. Plaintiffs also moved for a preliminary injunction to enjoin Defendants from selling or promoting any of the songs on the DELIVERANCE EP.
The Court held a consolidated hearing on the parties' pending motions. After the hearing, the Court extended the duration of the temporary restraining order, modified the temporary restraining order to require the disputed recordings to be retained by counsel for each party for use only in this litigation, and ordered Plaintiffs to post a bond.
When determining whether a preliminary injunction is warranted, a district court considers four factors: (1) the probability that the movant will succeed on the merits, (2) the threat of irreparable harm to the movant, (3) the balance between this harm and the injury that the injunction will inflict on other parties, and (4) the public interest. Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d 109, 114 (8th Cir. 1981) (en banc). "While the absence of a likelihood of success on the merits strongly suggests that preliminary injunctive relief should be denied, a finding of a likelihood of success on the merits only justifies preliminary relief if there is a risk of irreparable harm and the balance of the factors support an injunction." CDI Energy Servs., Inc. v. W. River Pumps, Inc., 567 F.3d 398, 402 (8th Cir. 2009). The burden to establish the propriety of injunctive relief rests with the movant. Watkins Inc. v. Lewis, 346 F.3d 841, 844 (8th Cir. 2003). The purpose of a preliminary injunction is to "preserve the relative positions of the parties until a trial on the merits can be held." Univ. of Texas v. Camenisch, 451 U.S. 390, 395, 101 S.Ct. 1830, 68 L.Ed.2d 175 (1981).
The Court first considers the probability that Plaintiffs will succeed on the merits of their claims. See Dataphase, 640 F.2d at 114. To demonstrate that a preliminary injunction is warranted, Plaintiffs "need only show a reasonable probability of success, that is, a fair chance of prevailing" on the merits. Kroupa v. Nielsen, 731 F.3d 813, 818 (8th Cir. 2013) (emphasis added) (internal quotation marks omitted); see also Planned Parenthood Minn., N.D., S.D. v. Rounds, 530 F.3d 724, 732 (8th Cir. 2008) (en banc) ("[W]e emphasize that district courts should still apply the familiar `fair chance of prevailing' test where a preliminary injunction is sought to enjoin something
In support of their motion for a preliminary injunction, Plaintiffs assert that they are likely to succeed on the merits of five of their legal claims — breach of contract, conversion, misappropriation of trade secrets, copyright infringement, and trademark infringement. The Court addresses Plaintiffs' likelihood of success as to each of these claims.
As to the breach-of-contract claim, Plaintiffs contend that Boxill breached the Confidentiality Agreement by retaining recordings, refusing to return those recordings to Paisley Park Enterprises on demand, and attempting to exploit those recordings for his own gain at the expense of Prince's estate. Boxill counters that Plaintiffs are not likely to succeed on the merits of their breach-of-contract claim because the Confidentiality Agreement does not apply to Boxill's work with Prince as a sound engineer.
To prevail on a breach-of-contract claim under Minnesota law, Plaintiffs must prove formation of a contract, performance of any conditions precedent to the right to demand performance by the defendant, and breach of the contract by the defendant.
Boxill argues that the plain language of the Confidentiality Agreement demonstrates that the parties could not have intended the Confidentiality Agreement to apply to Boxill's work as a sound engineer. The Confidentiality Agreement expressly provides that Boxill "shall not photograph, tape, film or otherwise record any likenesses, performances or activities of [Prince]," yet Boxill argues that he could not have performed his work as a sound engineer without violating this provision of
Plaintiffs dispute Boxill's interpretation of the Confidentiality Agreement and assert that it applies, without limitation, to all of the work that Boxill performed for Prince. At the hearing on the pending motions, Plaintiffs' counsel conceded that Paisley Park Enterprises had waived the provision of the Confidentiality Agreement prohibiting Boxill from recording Prince when Boxill was hired as a sound engineer whose job was to record Prince. Despite that concession, Plaintiffs assert that the remainder of the Confidentiality Agreement continued to apply to Boxill's sound engineering work with Prince because the terms of the Confidentiality Agreement are not limited to Boxill's work as a consultant on the remodeling of Paisley Park's recording studios. Although Boxill offers a plausible interpretation of the Confidentiality Agreement, the Court cannot finally resolve the meaning of the Confidentiality Agreement on the limited record presented at this stage of the proceedings.
Plaintiffs also assert that they are likely to prevail on their common-law conversion claim because Boxill has deprived Paisley Park Enterprises of use and possession of the disputed recordings. Minnesota law defines conversion as "an act of willful interference with [the personal property of another], done, without lawful justification, by which any person entitled thereto is deprived of use and possession" or "the exercise of dominion and control over goods inconsistent with, and in repudiation of, the owner's rights in those goods." Christensen v. Milbank Ins. Co., 658 N.W.2d 580, 585 (Minn. 2003) (alteration in original) (quoting Larson v. Archer-Daniels-Midland Co., 226 Minn. 315, 32 N.W.2d 649, 650 (1948) and Rudnitski v. Seely, 452 N.W.2d 664, 668 (Minn. 1990)). Plaintiffs' theory as to conversion appears to be that the disputed recordings were created at Paisley Park, subject to the Confidentiality Agreement, and Boxill, therefore, had no legal right to take the recordings from the premises in the first instance. But through his sworn declarations with attached emails from Prince, Boxill presents testimony that his work with Prince required Boxill to take the original recordings from the studio and that Prince knew Boxill possessed the recordings. To the extent that Plaintiffs' claim to lawful ownership of the recordings is based on the Confidentiality Agreement, the likelihood that Plaintiffs can succeed on their conversion claim is closely tied to Plaintiffs' likelihood of success on their breach-of-contract claim. Based on the record presented at this early stage of the proceedings, Plaintiffs have a fair chance of prevailing on their conversion claim because Plaintiffs also have a fair
Plaintiffs contend that they also are likely to succeed on the merits of their misappropriation-of-trade-secrets claim. Minnesota law requires that a party seeking protection under the Minnesota Uniform Trade Secrets Act "show both the existence and the misappropriation of a trade secret." Wilson v. Corning, Inc., 171 F.Supp.3d 869, 881 (D. Minn. 2016) (applying Minnesota law). A trade secret is defined as
Minn. Stat. § 325C.01, subd. 5 (2016). The statutory requirement that a trade secret must derive independent economic value from secrecy "carries forward the common law requirement of competitive advantage." Electro-Craft Corp. v. Controlled Motion, Inc., 332 N.W.2d 890, 900 (Minn. 1983). Information creates a competitive advantage if a prospective competitor could use the information to obtain a valuable share of the market. Id. at 900-01.
At this stage, Plaintiffs have not demonstrated that the disputed recordings are a trade secret. Instead, Plaintiffs ask the Court to accept at face value the proposition that the recordings are a "trade secret" because they are secret. Although, as Plaintiffs suggest, the economic value of the disputed recordings might increase as those recordings are kept secret as a result of pent-up demand for unreleased Prince music, Paisley Park Enterprises does not derive any competitive advantage in the marketplace from the secrecy of the unreleased Prince recordings. The recordings differ fundamentally from the type of information that is subject to trade-secret protection to permit a party in possession of the information to produce a superior product. See, e.g., Wilson, 171 F.Supp.3d at 881-83 (gas permeable cell culture technology used in development of a new product); Inline Packaging, LLC v. Graphic Packaging Int'l, Inc., 164 F.Supp.3d 1117, 1138-40 (D. Minn. 2016) (packaging design to permit improved cooking of microwaveable food). No other artist or record company could take market share from Paisley Park Enterprises by discovering the contents of the disputed recordings. The only economic value of the recordings derives from the right to sell the recordings to the public. Certainly, the timing of any sale might affect the value of the recordings, but Plaintiffs cannot realize any independent economic value by keeping the contents of the recordings secret. Because Plaintiffs have not demonstrated that the disputed recordings are a trade secret within the meaning of the statute, Plaintiffs at this stage have not demonstrated a likelihood of succeeding on the merits of their trade-secret claim.
Plaintiffs also assert that a preliminary injunction is warranted because they are likely to succeed on the merits of their copyright-infringement claim against each defendant. As a threshold matter, Defendants assert that Plaintiffs' copyright-infringement claim is premature because Plaintiffs have applied for copyright registrations in the disputed recordings but the Copyright Office has not yet rendered
17 U.S.C. § 411(a). The United States Court of Appeals for the Eighth Circuit has not directly addressed whether a plaintiff can institute an action for infringement under the Copyright Act once the plaintiff has filed an application for copyright registration. See Asche & Spencer Music, Inc. v. Principato-Young Entm't, Inc., 147 F.Supp.3d 833, 835 (D. Minn. 2015). Other circuits are divided as to whether the application for copyright registration satisfies the statutory requirement of registration of the copyright claim as a prerequisite to filing a copyright-infringement lawsuit. See id. (citing cases). At least one other court in this District has concluded that an application for copyright registration does not satisfy the statutory requirement of registration as a prerequisite to filing an infringement lawsuit. Id. at 838.
The Court need not resolve the question of whether an application for copyright registration is sufficient to permit a plaintiff to institute a civil action for copyright infringement because, based on the present record, the Court cannot conclude that Plaintiffs have any likelihood of succeeding on the merits of their copyright-infringement claim. A certificate of copyright registration is "prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). Authors who create a joint work are co-owners of the copyright in that work. 17 U.S.C. § 201(a). "A co-owner of a copyright cannot be liable to another co-owner for infringement of the copyright." Oddo v. Ries, 743 F.2d 630, 632-33 (9th Cir. 1984); accord Cortner v. Israel, 732 F.2d 267, 271 (2d Cir. 1984) ("It is elementary that the lawful owner of a copyright is incapable of infringing a copyright interest that is owned by him; nor can a joint owner of a copyright sue his co-owner for infringement."). Although Plaintiffs have presented evidence that they filed applications for copyright registrations in the disputed recordings, Boxill possesses certificates of copyright registration for the disputed recordings that list Boxill and Prince as co-authors. Plaintiffs dispute that Prince intended to create joint works with Boxill. But at this stage of the proceedings, the Court cannot conclude that the facts stated in the certificates of copyright registration are erroneous. As a result, the Court also cannot conclude that Plaintiffs have even a "fair chance of prevailing" on the merits of their copyright-infringement claim. See Kroupa, 731 F.3d at 818.
Plaintiffs also contend that a preliminary injunction is warranted because they are likely to succeed on their trademark-infringement claims against Defendants Rogue Music Alliance, LLC, and Deliverance, LLC. To prevail on a trademark-infringement claim, a plaintiff must prove that the plaintiff owns a valid trademark and that a likelihood of confusion exists between the registered mark and the alleged infringing use by the defendant. Davis v. Walt Disney Co., 393 F.Supp.2d 839, 843 (D. Minn. 2005). When
Defendants argue that Plaintiffs cannot demonstrate a likelihood of success on the merits of the trademark-infringement claim because Defendants' use of Plaintiffs' trademarks in the promotion and distribution of the song "Deliverance" are nominative "fair use." But Defendants' arguments as to fair use, like their arguments regarding the interpretation of the Confidentiality Agreement, seek a decision on the merits of the parties' dispute without a fully developed factual record. Plaintiffs have established that they have a "fair chance of prevailing" on the merits of their trademark-infringement claim, which is all that is required to demonstrate a likelihood of success on the merits. See Kroupa, 731 F.3d at 818. That Defendants also have a colorable defense to Plaintiffs' allegations does not undermine this conclusion.
The Court's conclusion that Plaintiffs have demonstrated a likelihood of success on the merits with respect to their breach-of-contract, conversion, and trademark-infringement claims does not mean that Plaintiffs "will ultimately win." Glenwood Bridge, Inc. v. City of Minneapolis, 940 F.2d 367, 371 (8th Cir. 1991) (internal quotation marks omitted). Likewise, the Court's conclusion that Plaintiffs cannot demonstrate a likelihood of success on the merits of their misappropriation-of-trade-secret and copyright-infringement claims does not mean that Defendants ultimately will prevail on those claims. See id. At this stage of the proceedings, however, this factor weighs in favor of granting in part Plaintiffs' motion for a preliminary injunction.
A party seeking a preliminary injunction also must establish that the party faces a threat of irreparable harm. See Dataphase, 640 F.2d at 114. A possibility of irreparable harm in the absence of an injunction is not sufficient; rather, a plaintiff seeking a preliminary injunction must "demonstrate that irreparable injury is likely in the absence of an injunction." Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 22, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008). An alleged harm that can be remedied through damages is not irreparable. See CDI Energy Servs. v. W. River Pumps, Inc., 567 F.3d 398, 403 (8th Cir. 2009).
Here, many of the harms alleged by Plaintiffs address the monetary
To the extent Plaintiffs have alleged that the publication of previously unreleased recordings of Prince violates the Confidentiality Agreement, however, the disclosure of such confidential information cannot be adequately compensated in damages. See Hosp. Staffing Sols., LLC v. Reyes, 736 F.Supp.2d 192, 200 (D.D.C. 2010) (stating that "the disclosure of confidential information can constitute an irreparable harm because such information, once disclosed, loses its confidential nature"). Plaintiffs assert that the right to decide whether and when to release songs that Prince recorded, but did not release during his lifetime, belongs solely to the estate. If Defendants are not enjoined from further publication and dissemination of the disputed recordings, Plaintiffs will be permanently deprived of the right to decide whether, when and in what manner the release of the disputed songs will benefit Prince's public image and reputation.
Because any further disclosure of confidential information protected by the Confidentiality Agreement threatens to irreparably damage Plaintiffs' right to control Prince's confidential information, reputation and public persona, this factor weighs in favor of granting Plaintiffs' motion for a preliminary injunction. However, because the song "Deliverance" already has been released, Plaintiffs can be compensated in damages for any ongoing harm resulting from that distribution.
Plaintiffs offer two additional arguments in support of their contention that Defendants should be enjoined from continuing to promote or distribute the song "Deliverance." First, Plaintiffs assert that their business relationship with Universal Music Group will be irreparably damaged because the release of an unauthorized song "greatly devalues the rest of the catalog." In turn, Plaintiffs contend that damage to their business relationship with Universal Music Group will irreparably damage Plaintiffs' reputation in the marketplace. But to the extent that the release of an unauthorized song has caused a loss in value of other Prince music or damaged Plaintiffs' relationship with Universal Music Group, those harms already have occurred. Plaintiffs offer no reason why the continued sale of the song "Deliverance," which has been available for sale online for weeks, will cause additional irreparable harm for which damages are not an adequate remedy.
Second, Plaintiffs argue that Defendants are using Plaintiffs' PRINCE® trademark to promote the disputed recordings, which causes customer confusion as to whether "Deliverance" was released by Plaintiffs and may damage both public perception of the disputed recordings and the consumer goodwill associated with the PRINCE® trademark. The Court agrees that Defendants' use of Plaintiffs' trademark without authorization to sell Prince's music, when Plaintiffs are not involved in the production, promotion, or distribution of that music, risks damaging Plaintiffs' reputation. See Buffalo Wild Wings Int'l, Inc. v. Grand Canyon Equity Partners, LLC, 829 F.Supp.2d 836, 845-46 (D. Minn. 2011) (enjoining former franchisee from continued use of franchisor's trademarks after termination of franchise agreement to prevent damage to brand reputation and goodwill). But this reasoning supports only an injunction prohibiting Defendants from continuing to use Plaintiffs' trademark to sell the song "Deliverance."
Defendants contend that Plaintiffs' decision to negotiate with Boxill and Warner Brothers as to the inclusion of "Deliverance" on a movie soundtrack without disputing Boxill's co-ownership weakens Plaintiffs' claim that Prince's reputation or Plaintiffs' business relationship with Universal Music Group will be irreparably damaged in the absence of an injunction. But this argument does not undermine the Court's conclusion that an injunction is warranted to prevent Defendants' continued use of Plaintiffs' trademark or the disclosure of additional material that arguably is subject to the Confidentiality Agreement. Neither Plaintiffs' negotiations with Boxill nor Boxill's assertions that he is a co-owner of the disputed recordings give Defendants the right to use Plaintiffs' trademarks. Furthermore, nothing about Plaintiffs' negotiations with Boxill impairs whatever rights Plaintiffs have under the Confidentiality Agreement. And Boxill's claim of co-ownership, despite the Confidentiality Agreement, goes to the merits of the parties' dispute and does not undermine Plaintiffs' assertion that they will be irreparably damaged if the unreleased recordings are released but later found to be subject to the terms of the Confidentiality Agreement.
For these reasons, this factor weighs in favor of granting Plaintiffs' motion for a preliminary injunction to the extent the relief sought is based on legal claims on which Plaintiffs have established a likelihood of success on the merits.
When deciding whether a preliminary injunction should issue, a district court also weighs the threat of irreparable
Finally, when deciding whether a preliminary injunction should issue, the Court considers the interests of the public. See Dataphase, 640 F.2d at 114. The public has a strong interest in preserving the ability to enter contracts and in the availability of a forum for the enforcement of contract and property rights. Cf. Cherne Indus., Inc. v. Grounds & Assocs., Inc., 278 N.W.2d 81, 94 (Minn. 1979) (acknowledging public interest in judicial enforcement of contracts). Although the competing interests at stake in this case are predominately private economic interests, because Plaintiffs have demonstrated a likelihood of success on their breach-of-contract claim, this factor weighs in favor of issuing a preliminary injunction to preserve the availability of a meaningful remedy pending the resolution of the merits of the dispute.
On balance, the Dataphase factors weigh in favor of granting Plaintiffs' motion for a preliminary injunction. However, the scope of a preliminary injunction should not be greater than necessary to protect the movant until the dispute can be resolved on the merits. See Rathmann Grp. v. Tanenbaum, 889 F.2d 787, 790 (8th Cir. 1989). As such, the Court will not issue an injunction broader than necessary to protect Plaintiffs from irreparable harm that likely would result from additional breaches of the Confidentiality Agreement or infringement of Plaintiffs' trademark.
The Court enjoins Boxill, Rogue Music Alliance, LLC, Deliverance, LLC, and others acting in concert with them, from publishing or disseminating any previously unreleased recordings that comprise 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 enjoins Boxill, Rogue Music Alliance, LLC, Deliverance, LLC, 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 Court concludes that Plaintiffs have not demonstrated a likelihood of success on the merits of misappropriation-of-trade-secret and copyright-infringement claims, a preliminary injunction is not warranted to prevent any alleged irreparable harm related to those claims. This Order preserves the parties' respective positions pending the resolution of the merits of this dispute.
Rule 65(c), Fed. R. Civ. P., provides that a district court "may issue a preliminary injunction ... only if the movant gives security in an amount that the court considers proper to pay the costs and damages sustained by any party found to have been wrongfully enjoined or restrained." The amount of the bond required by Rule 65(c) is in the discretion of the district court. Rathmann Grp., 889 F.2d at 789. Defendants assert that, if Plaintiffs' motion for a preliminary injunction is granted, Plaintiffs should be required to post a bond in the amount of $1 million. Plaintiffs do not take a position on the appropriate amount of the bond but suggest that a bond in the amount that Defendants have invested in the promotion of DELIVERANCE — $378,000 — would be adequate. But Plaintiffs' position that its damages are likely to be millions of dollars strongly suggests that a bond in the amount of $378,000 would not be sufficient to compensate Defendants if Defendants are later found to have been wrongfully enjoined. Accordingly, the May 3, 2017 Order extending the temporary restraining order required Plaintiffs to post a bond in the amount of $1 million by May 12, 2017, and Plaintiffs did so. This preliminary injunction similarly shall be secured by a bond in the amount of $1 million.
After the Court issued its order granting Plaintiffs' motion for a temporary restraining order, Boxill moved to modify the temporary restraining order and for early discovery. Specifically, Boxill sought modification of the temporary restraining order to permit him to deposit the disputed recordings with the Court, a third-party escrow agent, or Plaintiffs' counsel, rather than with Plaintiffs. Boxill also sought early discovery of five categories of materials for use in responding to Plaintiffs' motion for a preliminary injunction.
To the extent Boxill's motion sought a modification of the temporary restraining order to require the disputed recordings to be deposited with Plaintiffs' counsel, rather than with Plaintiffs, pending resolution of the parties' dispute over ownership of the recordings, the motion was addressed in the Court's May 3, 2017 Order extending and modifying the temporary restraining order. The May 3, 2017 Order directed Boxill to deposit the copies of the disputed recordings in his possession with Plaintiffs' counsel for use only in this litigation and permitted defense counsel to retain a copy of the recordings for this limited purpose. This Order, which supersedes the temporary restraining order, imposes the same requirement. But because the temporary restraining order is no longer in effect upon the issuance of this Order, Boxill's motion to modify the temporary restraining order is denied as moot.
To the extent Boxill's motion seeks expedited discovery to support his response to Plaintiffs' motion for a preliminary injunction, the motion is denied as moot. Boxill sought discovery to respond to Plaintiffs' motion for a preliminary injunction, but in light of the expedited briefing schedule, it was not practical to require Plaintiffs to produce documents in time for Boxill to rely on them in his response. If any party believes that early discovery is warranted in this case for another purpose, that party may raise the issue by separate motion.
Based on the foregoing analysis and all the files, records and proceedings herein,
1. The motion to modify the temporary restraining order and for early discovery filed by Defendant George Ian Boxill,
2. The motion for a preliminary injunction filed by Plaintiffs Paisley Park Enterprises, Inc., and Comerica Bank & Trust, N.A., as Personal Representative of the Estate of Prince Rogers Nelson, (Dkt. 45), is
3. Defendants George Ian Boxill, Rogue Music Alliance, LLC, Deliverance, LLC, and others acting in concert with them, shall not publish or otherwise disseminate any unreleased recordings that comprise the work of Prince Rogers Nelson that are alleged to be within the scope of the Confidentiality Agreement between Boxill and Paisley Park Enterprises, Inc.
4. Defendants George Ian Boxill, Rogue Music Alliance, LLC, Deliverance, LLC, and others acting in concert with them, shall deliver all recordings acquired through Boxill's work with Paisley Park Enterprises, Inc., including original recordings, analog and digital copies, and any derivative works, to Plaintiffs' counsel — not Plaintiffs — for use only in this litigation. Counsel for Defendants may retain a copy of any recordings deposited with Plaintiffs' counsel for use only in this litigation.
5. Defendants George Ian Boxill, Rogue Music Alliance, LLC, Deliverance, LLC, and others acting in concert with them, shall cease the use of the trademark PRINCE® in connection with the promotion, sale, and distribution of the song "Deliverance."
6. The preliminary injunction issued by this Order shall be secured by a bond in the amount of $1,000,000 posted by Plaintiffs Paisley Park Enterprises, Inc., and Comerica Bank & Trust, N.A., as Personal Representative of the Estate of Prince Rogers Nelson.
