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DISTRICT COURT
STATE OF MINNESOTA
FIRST JUDICIAL DISTRICT
COUNTY OF CARVER
Paisley Park Enterprises, Inc.,
and Comerica Bank & Trust, N .A.,
as Personal Representative of
the Estate of Prince Rogers
Nelson,
Plaintiffs,
Case Type: Other Contracts
Court File No.:
Judge Kevin W. Eide
PLAINTIFFS' MEMORANDUM OF
LAW IN SUPPORT OF MOTION FOR
TEMPORARY RESTRAINING ORDER
v.
George Ian Boxill,
Defendant.
INTRODUCTION
During the summer and fall of2006, Defendant George Ian Boxill performed sound
engineering services for Prince Rogers Nelson (collectively, the "Prince Recordings"). Before
doing so, Mr. Boxill executed a Confidentiality Agreement, pursuant to which he agreed that (1)
all recordings that he worked on with Prince would remain Prince's sole and exclusive property;
(2) he would not use any recordings or property in any way whatsoever; and (3) he would return
any such recordings or property to Prince immediately upon request.
Mr. Boxill is now trying to exploit the Prince Recordings unlawfully in his possession in violation of the Confidentiality Agreement and the Minnesota Uniform Trade Secrets Act
("MUTSA") - for his own personal gain at the expense of Plaintiffs Paisley Park Enterprises,
Inc. ("Paisley Park") and Comerica Bank & Trust, N.A., as Personal Representative of the Estate
of Prince Rogers Nelson ("Personal Representative") (collectively, "Plaintiffs").
Accordingly, Plaintiffs commenced this action against Mr. Boxill for injunctive relief and
damages. Plaintiffs hereby respectfully request that the Court (1) issue a temporary restraining
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order ("TRO") against Mr. Boxill to prohibit him from using or distributing any of the Prince
Recordings in violation of the Confidentiality Agreement; and (2) issue an order requiring Mr.
Boxill to specifically perform under the Confidentiality Agreement and immediately return the
Prince Recordings, including any masters, copies or reproductions thereof, to Plaintiffs.
FACTUAL BACKGROUND
Plaintiffs incorporate by reference the factual allegations contained in their Complaint,
and assert the following additional facts.
I.
THE PARTIES
Prince Rogers Nelson, the international superstar and renowned artist known as "Prince,"
died on April 21, 2016, at Paisley Park in Chanhassen, Minnesota. Affidavit of Andrea Bruce
(hereafter "Bruce Aff."), ~ 2. A probate matter for the estate of Mr. Nelson ("Estate") was
commenced on April 27, 2016 and is pending in Carver County, Minnesota, Court File No. 10PR-16-46. Id. By appointment of the probate court, PlaintiffComerica Bank & Trust, N.A. is
the Personal Representative for the Estate. Id. at ~ 3. Plaintiff Paisley Park Enterprises, Inc.
("Paisley") is a Minnesota corporation that was owned by Prince during his lifetime and is now
owned by the Estate. Id. at ~ 5.
George Ian Boxill is one of many sound engineers who worked with Prince in his
lifetime. Affidavit of Kirk Johnson (hereafter, "Johnson Aff."), ~ 4.
II.
PRINCE ROGERS NELSON
Prince Rogers Nelson is one of the best-selling artists of all time, having sold over 100
million records worldwide. Johnson Aff., ~ 3. Prince was a musical innovator who integrated a
wide variety of styles in his work, including funk, rock, R&B, new wave, soul, psychedelia, and
pop. Id. Prince was inducted into the Rock and Roll Hall of Fame in 2004. Id.
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A prodigious and successful songwriter and musician, Prince wrote and recorded
thousands of songs during his lifetime. Id. at ~ 5. Prince chose which songs to release and when
to release them. Id. Prince selected songs and placed them in the specific order he wanted in the
albums he released. Id. Prince wrote and recorded some songs that were not included in an
album and have not been released to the public. Id. Since his untimely death, there is
tremendous public interest in Prince and, in particular, in Prince songs that were not released to
the public. Id.; Bruce Aff., ~ 6.
Prince often recorded in one of the studios at Paisley Park in Chanhassen, Minnesota.
Johnson Aff., ~ 6. When a song is recorded in studio, each individual part is usually recorded
separately. Id. A sound engineer records the sounds the artists make, and then mixes and edits
them. Id. A "master" is a recorded song that contains the final mix from which all other copies
will be made. Id.
III.
CONFIDENTIALITY AGREEMENT
On March 13, 2004, Mr. Boxill executed a Confidentiality Agreement with Paisley "in
consideration of your engaging me to render services and enter the private premises." See
Exhibit C to the Affidavit of Lora M. Friedemann (hereafter "Friedemann Aff."). The
Confidentiality Agreement begins with a promise to maintain confidentiality and refrain from
disclosing information. Specifically, Mr. Boxill "acknowledge[d] and agree[d] that the privacy
of Paisley is highly valued and that all efforts are made to maintain confidentiality with respect
to all information and other material of every kind concerning Paisley." Id. at ~ 1. Mr. Boxill
further agreed that he "shall not at any time use or disclose, directly or indirectly, any
information in any way relating to Paisley." Id..
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The Confidentiality Agreement establishes that all materials and information relating to
Mr. Boxill's work are owned by Paisley and cannot be used by Mr. Boxill for any purpose:
NO INTEREST IN PROPERTY
Any and all information described in paragraph 1 above, including without
limitation, records, documents, photographs or other physical material, including
all copyright, trademark and other rights therein, relating to Paisley obtained by
me in the course of my employment ... whether prepared by me or otherwise
coming into my possession through or as a result of my employment, shall
remain Paisley's sole and exclusive property, shall not be used by me in any
way whatsoever, and shall be returned to Paisley immediately upon request.
Without limiting the generality of the foregoing, I shall not ... tape . .. or
otherwise record any likenesses, performances or activities of Paisley.
Id. at ~ 2 (emphasis added).
In the Confidentiality Agreement, Mr. Boxill acknowledged that Prince and Paisley
would be irreparably harmed ifhe breached his obligations. Specifically, Paragraph 4(a) of the
Confidentiality Agreement provides:
INJURY TO ARTIST; LEGAL REMEDIES
(a)
I acknowledge that any disclosure or dissemination by me of any of the
information or material described in this agreement will cause severe and
irreparable harm to Paisley.
I also acknowledge that any disclosure or
dissemination by me of any of the information or material described in this
agreement will deprive Paisley of the right to use such information or material or
otherwise result in a depletion of its value to Paisley. Therefore, it would be
important and necessary to prevent me from disclosing or disseminating such
information and material. I also understand that it may be necessary to have a
court or neutral arbitrator to order me to stop from doing such acts.
Id. at~ 4.
Mr. Boxill agreed that the commitments he made in the Confidentiality Agreement were
"essential to your engaging me." Id.
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IV.
CONFIDENTIALITY AT PAISLEY PARK
Mr. Boxill's Confidentiality Agreement reflects the practice and understanding among
those who performed services for Prince. See Johnson Aff., 1 7. Prince valued privacy and
required that those working with him treat all aspects of their work as confidential. Id.
V.
BOXILL KEEPS PRINCE RECORDINGS IN VIOLATION OF THE
CONFIDENTIALITY AGREEMENT
Plaintiffs recently learned that Mr. Boxill possesses sound recordings from his work with
Prince, and that he is attempting to exploit them for his own gain. Friedemann Aff., 12.
Mr. Boxill executed an affidavit on March 16, 2017, apparently in an effort to justify his
actions. See Exhibit D to Friedemann Aff. (hereinafter "Boxill Aff."). According to Mr. Boxill,
he recorded five tracks with Prince in 2006 entitled (1) Deliverance, (2) No One Else, (3) I am,
(4) Touch Me, and (5) Sunrise Sunset. Boxill Aff., 1 2. Mr. Boxill recorded "the basic
instruments (drums, bass, electric guitars, [and] some keyboards played by Prince" for each
song. Id., 1 3. Mr. Boxill also recorded Prince's guitar and lead vocal. Id,11 12, 13.
Mr. Boxill asserts that "Prince and I initially recorded the five tracks ... at the Paisley
Park studio with live musicians on two-inch tape and I transferred the songs to a digital format
for editing and portability." Id., 14. Mr. Boxill acknowledges that he "ha[s] the tracks ...
stored on a Hard Drive in my possession." Id., 17. Indeed, Mr. Boxill contends that "[s]ince
2006, I have solely possessed the files associated with the tracks ... and strongly believe I am
the only person with custody over the files associated with these tracks." Id., 140. Mr. Boxill
admits that he is the "only person" in possession of the masters. Id., 141.
VI.
BOXILL ATTEMPTS TO USE AND BENEFIT FROM PLAINTIFFS'
PROPERTY
In 2016 after Prince passed away, Mr. Boxill manipulated the sound recordings in his
possession and began trying to exploit the works. Id., 1121-26. Mr. Boxill claims he "co-
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authored" the songs with Prince. Id., 1 2. On March 16, 2017, Mr. Boxill's lawyer, Christopher
Brown, wrote a letter opining that Mr. Boxill and Prince are "joint owners," and that Mr. Boxill
may therefore "sell or license the compositions and masters." See Exhibit E to Friedemann Aff.
Notably, Mr. Brown's letter makes no mention of the Confidentiality Agreement. See id. Mr.
Brown's letter also fails to address Prince's rights in the recordings of his vocals, guitar and
keyboard under Section 1101 of the Copyright Act.
VII.
INSTEAD OF RETURNING PLAINTIFFS' PROPERTY, BOXILL PLANS TO
EXPLOIT IT
When Plaintiffs learned that Mr. Boxill was attempting to exploit songs written and
recorded by Prince, they immediately demanded that Mr. Boxill return all recordings he obtained
through his work with Prince. Friedemann Aff., 11 6-10. On March 16, counsel for Plaintiffs
sent Mr. Boxill a cease and desist letter notifying him of the Estate's concerns regarding his
activities and requesting additional information regarding the recordings in his possession.
Exhibit B to Friedemann Aff. On March 21, 2017, Plaintiffs provided a copy of the
Confidentiality Agreement to Mr. Boxill's counsel and demanded that Mr. Boxill return all
property relating to his work with Prince and Paisley. Friedemann Aff.,
1 9.
When Mr. Boxill
did not respond, Plaintiffs followed up on March 27, 2017 and requested that Mr. Boxill
"[p]lease confirm that you will send the masters and any derivative works to me at the address
below immediately." Id., 1 10.
Mr. Boxill refused to return the recordings and is continuing to attempt to exploit them.
Friedemann Aff.,
1 12.
On March 30, 2017, Plaintiffs learned that Lionhawk Records, Inc. intended to release
the song "Deliverance," having obtained access to it from Mr. Boxill. Friedemann Aff., 115.
The next day, Plaintiffs sent Lionhawk Records a cease and desist letter. See Exhibit F to
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Friedemann Aff. Lionhawk Records later confirmed that it is "no longer involved in this album
release." Friedemann Aff., ~ 16.
On April 11, 2017, Plaintiffs learned that Mr. Boxill intends to release "Deliverance"
through Moniker Music Group and CD Baby, with an intended release date of April 21, 2017.
Friedemann Aff., ~ 17. Plaintiffs also learned that Mr. Boxill was promoting the song to radio
stations in the Chicago area. Id. Plaintiffs promptly filed this motion and sent cease and desist
letters to Moniker Music Group and CD Baby. See Exhibits G and H to Friedemann Aff.
VIII.
BOXILL'S ACTIONS THREATEN TO IRREPARABLY HARM PLAINTIFFS
If Mr. Boxill releases the Prince Recordings in his possession, the Estate's interests will
be permanently and irreparably damaged. Bruce Aff., ~ 7. First, the Personal Representative is
charged with maximizing the value of undisclosed recordings, and is in a far better position to
maximize their value than Mr. Boxill. Id. at ~ 8.
Second, Mr. Boxill's threatened actions are contrary to confidential agreements the Estate
has with business partners. Id., ~ 9. Although the Estate's business agreements are confidential,
Universal Music Group published a press release indicating that the agreement it has with the
Estate "provides for UMG and the Estate to collaborate with regard to Prince's vault of prized
unreleased works from throughout his career, including outtakes, demons and live recordings."
See Exhibit I to Friedemann Aff. Mr. Boxill will damage the Estate's contractual relationship
with UMG ifhe releases the Prince works without authorization. Bruce Aff., ~ 10.
Third, Mr. Boxill is threatening to exploit a deceased person's personal interests that do
not belong to him. The sound recordings in Mr. Boxill's possession contain recordings of Prince
singing and playing the guitar and keyboard. The Estate has not granted permission to Mr.
Boxill to use or distribute Prince's performances. Bruce Aff., ~ 11. A sound recording of a
musical performance is uniquely personal. If Mr. Boxill publishes sound recordings Prince made
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before he died without his authorization, it deprives Prince (and now the Estate) from choosing
what is released to the public and when. Id.
Finally, Mr. Boxill does not have the right to use Prince's name, image or likeness in any
manner. Bruce Aff., , 12. A planned and authorized song release generally includes the artist's
image and trademarks. Id. Either Mr. Boxill intends to trade upon Prince's trademarks and
image in releasing the recordings (which would itself be actionable), or he intends to release the
recordings without using Prince's name, likeness or trademarks. Either way, the value of the
recordings and the public's perception of them would be irreparably damaged. Id. If the Estate
later wanted to release the songs, they would not be as valuable if Mr. Boxill had already
publicized them. Id.
IX.
PLAINTIFFS COMMENCED ARBITRATION AND FILED THIS MOTION
The Confidentiality Agreement contains an arbitration clause which requires that any
"disputes, or other matters regarding unauthorized disclosure between the parties to this
agreement arising out of or relating to this agreement or breach thereof shall be subject to and
decided by arbitration in accordance with the arbitration rules of the American Arbitration
Association ... " Exhibit C to Friedemann Aff. at, 4(a). As noted above, the agreement also
contemplates that "it may be necessary to have a court ... order me to stop" taking actions in
violation of the agreement. Id.
Plaintiffs commenced an arbitration proceeding against Mr. Boxill on April 13, 2017. A
copy of the Demand for Arbitration and Statement of Claim is attached to the Friedemann Aff. as
Exhibit 1. Because an arbitrator has not yet been appointed and will not be appointed for some
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time, Plaintiffs moved for a temporary restraining order in this Court based on Minn. Stat. §
572B.08, which permits the Court to enter injunctive reliefbefore an arbitrator is appointed.'
LEGAL ARGUMENT
Plaintiffs seek a TRO to prevent Mr. Boxill from exploiting the Prince Recordings in
violation of Mr. Boxill's obligations under the Confidentiality Agreement and the MUTSA. In
addition, Plaintiffs respectfully request that the Court order Mr. Boxill to return to Plaintiffs the
Prince Recordings in his possession, including any and all masters, copies or reproductions
thereof.
I.
LEGAL STANDARD FOR ISSUING A TEMPORARY RESTRAINING ORDER
In determining whether to grant a TRO, the Court must analyze the following five
Dahlberg factors:
1.
The nature and background of the relationship between the
parties pre-existing the dispute giving rise to the request for
a TRO;
2.
The harm to be suffered by the moving party if the TRO is
denied as compared to that inflicted on the non-moving
party if the TRO is granted;
3.
The likelihood of success on the merits;
4.
Consideration of public policy; and
5.
The administrative burdens involved in judicial supervision
and enforcement of the TRO.
Dahlberg Bros., Inc. v. Ford Motor Co., 137 N.W.2d 314, 321-22 (Minn. 1965). Granting a
TRO is a matter of judicial discretion, based on the facts and applicable principles of equity.
Specifically, Minn. Stat. § 572B.08 (a) (2016) states as follows: "Before an arbitrator is
appointed and is authorized and able to act, the court, upon motion of a party to an arbitration
proceeding and for good cause shown, may enter an order for provisional remedies to protect the
effectiveness of the arbitration proceeding to the same extent and under the same conditions as if
the controversy were the subject of a civil action."
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Cramondv. Am. Fed'n of Labor & Congo of Indus. Organizations, 126 N.W.2d 252,257 (Minn.
1964).
II.
PLAINTIFFS ARE ENTITLEDTO A TEMPORARYRESTRAININGORDER
The Dahlberg factors and principles of equity warrant the issuance of a TRO. As set
forth herein, Plaintiffs can readily meet each and everyone of the Dahlberg factors.
A.
The parties' prior relationship.
Mr. Boxill is one of many sound engineers who worked with Prince, and who voluntarily
agreed and promised to maintain strict confidentiality in rendering his services to Prince. In
return, Prince and Paisley Park provided Boxill with employment, as a consultant, and access to
confidential information and materials. The past employer-employee relationship favors
protecting Plaintiffs from Mr. Boxill's breach of his obligations under the unambiguous
Confidentiality Agreement, undisputedly executed by Mr. Boxi11. See Medtronic, Inc. v.
Advanced Bionics Corp., 630 N.W.2d 438,451 (Minn. Ct. App. 2001) (affirming temporary
injunction restraining former employee from violating employment contract he signed "of his
free will").
B.
The balance of harms favors Plaintiffs.
This factor focuses on the harm Plaintiffs may suffer if injunctive relief is denied, as
compared to the harm suffered by Mr. Boxill from the grant of injunctive relief.
As a threshold consideration, Mr. Boxill has already acknowledged that Plaintiffs would
be irreparably harmed if he breached his obligations under the Confidentiality Agreement. See
Paragraph 4(a) of the Confidentiality Agreement ("[Boxill acknowledges] that any disclosure or
dissemination by [him] of any of the information or material described in this agreement will
cause severe and irreparable harm to [paisley Park]."). The irreparable harm provision of the
Confidentiality Agreement "[lends] weight" to Plaintiffs' position because it shows "that the
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parties contemplated that a breach of the [Confi.dentiality Agreement] could cause irreparable
harm." Minnesota Vikings Football Stadium, LLC v. Wells Fargo Bank, 157 F.Supp.3d 834, 841
(D. Minn. 2016) (citing Allan Block Corp. v. E. Dillon & Co., No. CIV 04-3511 (JNE/JGL),
2005 WL 1593010, at *6 (D. Minn. July 1,2005), aff'd, 170 F.App'x 130 (Fed. Cir. 2006).i
Under Minnesota law, a party seeking a temporary injunction must show that legal
remedies are inadequate and that an injunction is necessary to prevent irreparable injury.
Medtronic, Inc., 630 N. W.2d at 451. "[T]he mere fact that an action for damages is available to
the movant does not, necessarily, 'preclude issuance ofa preliminary injunction, because
damages relief may not fully compensate the movant for being denied its rights. '" College Craft
Companies, Ltd. v. Perry, No. CIV 3-95-5831995 WL 783612, at *7 (D. Minn. Aug. 9, 1995)
("Simply put, some intangible injuries, such as the movant's loss of good will, cannot be
adequately compensated owing to the difficulty in computing the loss and, when properly
evidenced, will constitute an adequate showing of irreparable harm[.]"); Iowa Uti/so Bd.
V.
F.CC, 109 F.3d 418, 426 (8th Cir. 1996) ("potential loss of consumer goodwill qualifi.es as
irreparable harm."); Retek, Inc. v. Cox, No. CIV 03-4345 (JRTIFLN), 2003 WL 22037709, at *5
(D. Minn. Aug. 29, 2003) (movant "will suffer irreparable harm if confidential information is
disclosed that harms its competitive position in the marketplace.").
In the present case, if Mr. Boxill releases the Prince Recordings unlawfully in his
possession, Plaintiff's interests will be permanently and irreparably damaged. See Bruce Aff.,
~ 7. The Personal Representative is charged with maximizing the value of unreleased recordings,
and is in a far better position to maximize their value than Mr. Boxill. Id. at ~ 8. Indeed, in
Copies of all unpublished opinions cited in this memorandum are attached as Exhibit K to
the April 14, 2017 Affidavit of Lora M. Friedemann.
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flagrant disregard of his contractual promises, Mr. Boxill is acting for his own self-interest - not
in the Estate's best interests. Id.
In addition, Mr. Boxill's threatened actions will damage the business relationship the
Estate has with Universal Music Group - a business collaboration with the specific intent of
exploiting "prized unreleased works" from Prince's vault of music throughout his career.
Damaging such a business relationship will have an adverse impact on the Prince Recordings'
reputation and competitive position in the marketplace. Id. at ~ 9; see also United Healthcare
Ins. Co. v. AdvancePCS, 316 F.3d 737, 741 (8th Cir. 2002) (under Minnesota law, "[l]oss of
intangible assets such as reputation and goodwill can constitute irreparable injury.").
Third, Mr. Boxill is threatening to exploit the personal interests of a deceased person that
do not belong to him. The Estate has not granted permission to Mr. Boxill to use or distribute
any recordings of Prince singing, or playing any instrument. If Mr. Boxill publishes sound
recordings Prince made before he died without his authorization, it deprives Prince (and now the
Estate) from choosing what is released to the public and when.
Finally, the value of the Prince Recordings and the public's perception of them would be
irreparably damaged if Mr. Boxill distributes them. Mr. Boxill does not have the right to use
Prince's name, image, or likeness in any manner. The release of Prince Recordings without the
use of Prince's name, image, likeness, or trademark will result in market confusion as to whether
the music is actually a Prince record, and ultimately result in the loss of consumer goodwill. If
Mr. Boxill did use Prince's name, image, likeness, or trademark without authorization, the result
would be the same because Mr. Boxill is not in the best position to maximize the value of the
Prince Recordings. Viewed from any angle, the result would be irreparable harm to Plaintiffs.
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In addition, where injunctive relief is specifically authorized by statute, it should be
awarded when the elements are met and issuing injunctive relief "would fulfill the legislative
purpose." Equus Computer Sys., Inc. v. N. Computer Sys., Inc., No. ClV 01-657 (DWF/AJB),
2002 WL 1634334, at *4 (D. Minn. July 22,2002). The MUTSA specifically authorizes
injunctive relief to address the threatened misappropriation of trade secrets, and thus threatened
misappropriation may constitute irreparable harm. See id. at *4 (citing Minn. Stat. § 325C.02)
(2016) ("[a]ctual or threatened misappropriation may be enjoined."). Mr. Boxill's threatened
misappropriation of the Prince Recordings constitutes irreparable harm under MUTSA.
Finally, the balance of harms favors Plaintiffs because granting a TRO will not cause any
harm to Mr. Boxill. Requiring Mr. Boxill to honor the Confidentiality Agreement that he
willingly entered into is not a legal injury. See Medtronic, Inc., 630 N.W.2d at 453. In fact, by
simply honoring his contractual obligations with Plaintiffs, Mr. Boxill could have avoided any
hardship altogether. In any event, Mr. Boxill is not precluded from continuing his musical career
or releasing any of his own performances. Accordingly, the balance of harms favors maintaining
the status quo and prohibiting Mr. Boxill from releasing any of the Prince Recordings.
c.
Plaintiffs have a strong likelihood of success on the merits.
The probability of success on the merits is a "primary factor" in determining whether to
issue a temporary injunction. Minneapolis Fed'n of Teachers, AFL-CIO, Local 59 v.
Minneapolis Pub. Schs., Special Sch. Dist. No.1, 512 N.W.2d 107,110 (Minn. Ct. App. 1994).
A party need not demonstrate that it will win at trial in order to establish a likelihood of success
on the merits. E.g., Lano Equip., Inc. v. Clark Equip. Co., 399 N.W.2d 694,699 (Minn. Ct. App.
1987). An injunction still may be warranted where the moving party raises substantial issues that
call for more detailed exploration. Id.
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1.
Breach of Contract
Mr. Boxill is breaching the Confidentiality Agreement. A contract is breached when
there is a failure, without legal justification, to perform a substantial part of the contract. Park
Nicollet Clinic v. Hamann, 808 N.W.2d 828,833 (Minn. 2011); Associated Cinemas of America,
Inc. v. WorldAmusement Co., 276 N.W. 7, 10 (Minn. 1937). A breach occurs when one party
fails to carry out a term of the contract, prevents or hinders the term from being completed, or
denies that the contract exists. Park Nicollet Clinic, 808 N.W.2d at 837.
Pursuant to the Confidentiality Agreement, which is a valid and enforceable contract, Mr.
Boxill promised to maintain confidentiality and refrain from disclosing information.
Specifically, Mr. Boxill "acknowledge[d] and agree[d] that the privacy of Paisley is highly
valued and that all efforts are made to maintain confidentiality with respect to all information
and other material of every kind concerning Paisley." See Friedemann Aff., Exh. C. Mr. Boxill
further agreed that he "shall not at any time use or disclose, directly or indirectly, any
information in any way relating to Paisley." Id The Confidentiality Agreement further
establishes that all materials and information relating to Mr. Boxill's work are owned by Paisley
Park and cannot be used by Mr. Boxill for any purpose. Id.
Mr. Boxill failed to maintain confidentiality and refrain from using information he
obtained while rendering services to Prince. In fact, Mr. Boxill presented the Prince Recordings
to third parties, including Lionhawk Records, Inc., Moniker Music Group and CD Baby, and is
now attempting to exploit them for his own gain.
To be clear, the Prince Recordings are owned by Paisley Park, so Mr. Boxill has no right
to use them for any purpose. Nevertheless, Mr. Boxill executed an affidavit on March 16,2017,
acknowledging that (l) he recorded five tracks with Prince at Paisley Park; (2) he has the tracks
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stored on a Hard Drive in his possession; (3) since 2006, he has had sole possession of the files
associated with the tracks and is the only person with custody over the files associated with the
tracks; and (4) is the only person in possession of the masters. Mr. Boxill' s possession of the
Prince Recordings and failure to return them on demand are clear violations of the
Confidentiality Agreement.
2.
Conversion
Under Minnesota law, conversion is "an act of willful interference with personal
property, done without lawful justification by which any person entitled thereto is deprived of
use and possession." DLN, Inc. v. Russ, 566 N.W.2d 60, 71 (Minn. 1997).
Mr. Boxill has deprived Plaintiffs of the use and possession of the Prince Recordings. He
admitted that the Prince Recordings were recorded at Paisley Park, which means they were
recorded subject to the Confidentiality Agreement, and that he is the only person in possession of
the files associated with the tracks and the masters. Mr. Boxill's unlawful possession of the files
and masters deprives Plaintiffs, as the rightful owners pursuant to the Confidentiality Agreement,
of possession and use of the Prince Recordings.
3.
Misappropriationof Trade Secrets
To show a likelihood of success on the merits for a claim of misappropriation under the
MUTSA, a plaintiff must demonstrate both that the information at issue qualifies as a trade secret
and that this information has or will be misappropriated. Lexis-Nexis v. Beer, 41 F.Supp.2d 950,
958 (D. Minn. 1999) (applying Minnesota law).
MUTSA protects certain types of information through an action for misappropriation.
MUTSA defines misappropriation as improper acquisition, disclosure or use of a ''trade secret."
Minn. Stat. § 325C.Ol, subd. 3 (2016). The court analyzes three factors to determine whether a
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particular item constitutes a trade secret: (1) the information must not be generally known or
readily ascertainable; (2) the information must derive independent economic value from secrecy;
and (3) the party asserting misappropriation must have made reasonable efforts to maintain the
secrecy of the item. See Nordale, Inc. v. Samsco, Inc., 830 F. Supp. 1263, 1273 (D. Minn. 1993)
aff'd, 86 F.3d 1179 (Fed. Cir. 1996); Electro-Craft Corp. v. Controlled Motion, Inc., 332
N.W.2d 890,899-901 (Minn. 1983). The party asserting misappropriation must establish each
factor to sustain its claim. See id. Further, to obtain an injunction under MUTSA, the moving
party must "show that there is 'a high degree of probability of inevitable disclosure.?' IBM
Corp. v, Seagate Tech., Inc., 941 F.Supp. 98, 100 (D. Minn. 1992).
The Prince Recordings and other proprietary and confidential information obtained by
Mr. Boxill through his work with Prince constitute proprietary trade secrets because they are
original information, compilations, products, techniques and processes that derive independent
economic value, and are not generally known to, or readily or widely ascertainable by proper
means.
(i)
The Prince Recordings are not generally known or readily
ascertainable.
Prince valued privacy and required those working with him treat all aspects of their work
as confidential. See Johnson Aff., ~ 7. The Confidentiality Agreement reflects the practice and
understanding among those who performed services for Prince. Id. Under the Confidentiality
Agreement, all recordings that Mr. Boxill worked on with Prince" whether prepared by Mr.
Boxill or otherwise coming into his possession as a result of his work as a consultant, are the sole
and exclusive property of Paisley Park. In addition, Mr. Boxill could not use any recordings or
property in any way whatsoever.
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Given the strict confidentiality requirements in working with Prince, the Prince
Recordings are not generally known or readily ascertainable by proper means. Mr. Boxill's
possession of the Prince Recordings is in violation of the Confidentiality Agreement, and is
therefore unauthorized and unlawful.
(ii)
The Prince Recordings derive independent economic value from
secrecy.
There is no dispute the unreleased Prince Recordings that have been kept a secret for all
these years derive substantial economic value from their secrecy. There is tremendous public
interest in Prince and, in particular, in Prince Recordings that were not released to the public.
Johnson Aff. ~ 5. Mr. Boxill is trying to use Prince's passing to his advantage.
(iii) Plaintiffs have made reasonable efforts to maintain the secrecy
of the Prince Recordings.
Plaintiffs took reasonable steps to maintain the secrecy of the Prince Recordings and
other proprietary and confidential information to Mr. Boxill by requiring that Mr. Boxill execute
the Confidentiality Agreement, and by not giving Mr. Boxill permission or authority to make use
of the Prince Recordings or other proprietary and confidential information belonging to Paisley
Park. Mr. Boxill knew and understood that he had a duty to maintain the confidentiality of the
Prince Recordings and other proprietary and confidential information.
Mr. Boxill's Confidentiality Agreement reflects the practice and understanding among
those who performed services for Prince. See Johnson Aff. at ~ 7. Prince valued privacy and
required those working with him treat all aspects of their work as confidential. Id.
D.
Public policy weighs in favor of Plaintiffs.
Public interest favors the enforcement of valid business agreements. Boston Scientific
Corp. v. Duberg, 754 F.Supp.2d 1033, 1042 (D. Minn. 1992). Furthermore, "when a party acts
with an intent to interfere with property rights, those acts trigger governmental interests in the
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protection of its citizens." Royal Oaks Holding Co. v. Ready, No. C4-02-267, 2002 WL
31302015, at *6 (Minn. Ct. App. Oct. 7,2002) (citing Welsh v. Johnson, 508 N.W.2d 212,215
(Minn. Ct. App. 1993)). Because Mr. Boxill has deprived Plaintiffs of their rightful ownership
and possession of the Prince Recordings, and has intentionally interfered with Plaintiffs' rights,
the public interest will be served by issuing a TRO. This factor favors Plaintiffs.
E.
There is no administrativeburden on the Court.
Enforcing Mr. Boxill's Confidentiality Agreement with Plaintiffs through a TRO would
create no administrative burden on this Court. The requested relief is clearly defined and lends
itself to easy enforcement. Therefore, the last factor weighs in favor of enforcing the parties'
contract.
Because all five of the relevant factors weigh in Plaintiffs' favor, the Court should enter a
TRO prohibiting Mr. Boxill from releasing the Prince Recordings, and requiring him to return
the Prince Recordings, including the masters, copies or reproductions thereof, to Plaintiffs.
III.
THE COURT SHOULD ORDER MR. BOXILL TO SPECIFICALLY PERFORM
HIS OBLIGATIONS UNDER THE CONFIDENTIALITY AGREEMENT AND
RETURN THE PRINCE RECORDINGS TO PLAINTIFFS
Paragraph 2 of the Confidentiality Agreement provides, in pertinent part:
Any and all information described in paragraph 1 above, including
without limitation, records ... or other physical material, including
all copyright, trademark and other rights therein, relating to
[Paisley Park] obtained by [Mr. Boxill] in the course of [his]
employment '" whether prepared by [him] or otherwise coming
into [his] possession through or as a result of [his] employment,
shall remain [Paisley Park's] sole and exclusive property, shall
not be used by [Mr. BoxillJ in any way whatsoever, and shall be
returned to [Paisley ParkJ immediately upon request ...
See Friedemann Aff., Exh. C (emphasis added).
Mr. Boxill admits that (1) he recorded five tracks with Prince in 2006 at Paisley Park; (2)
he has the tracks on a Hard Drive in his possession; (3) since 2006, he has had sole possession of
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the files associated with the tracks and is the only person with custody over said files; and (4) he
is the only person in possession of the masters. See id., Exh. D. Plaintiffs demanded that Mr.
Boxill immediately return all property relating to his work with Prince and Paisley Park
Enterprises, including the Prince Recordings. Mr. Boxill refused to return the recordings. His
failure to do so is a breach of Paragraph 2 of the Confidentiality Agreement.
Furthermore, there is no dispute that Mr. Boxill intends to misappropriate the Prince
Recordings. On April 11,2017, Plaintiffs learned that Mr. Boxill intends to release
"Deliverance" (one of the Prince Recordings unlawfully in his possession) though Moniker
Music Group and CD Baby, with an intended release date of April 21, 2017. See Friedemann
Aff., ~ 17. Plaintiffs also learned that Mr. Boxill was promoting the song to radio stations in the
Chicago area. Id.
The Court should order Mr. Boxill to immediately specifically perform his obligations
under the Confidentiality Agreement and return all property relating to his work with Prince and
Paisley Park, including the Prince Recordings and any and all masters, copies or reproductions
thereof, to Plaintiffs. Plaintiffs will maintain property received from Mr. Boxill in a secure
location pending resolution of this matter and the arbitration.
IV.
NO BOND IS WARRANTED
No bond should be required. "The amount of security required on a temporary injunction
is within the trial court's discretion and may be waived entirely
if appropriate."
Howe v. Howe,
384 N.W.2d 541, 546 (Minn. Ct. App. 1986) (internal quotation and alteration omitted)
(emphasis in original). The purpose of a bond is to require the party seeking the order to pay for
any harm caused by the erroneous grant of the temporary restraining order. Hubbard Broad,
Inc. v. Lecher, 291 N.W.2d 216, 220 (Minn. 1980).
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Mr. Boxill will not suffer any harm if the Court grants the requested injunction and
requires that he return the Prince Recordings to the rightful owners. Moreover, Plaintiff
Comerica Bank & Trust, N.A. is the Personal Representative in a court-supervised probate
proceeding in this Court, and Paisley Park is an asset of the Estate. In the unlikely event that the
Plaintiffs are called upon to reimburse Mr. Boxill for damages allegedly caused by the TRO, Mr.
Boxill has the ability to seek reimbursement in the Estate action.
CONCLUSION
Plaintiffs meet all of the requirements for a TRO. As such, Plaintiffs respectfully request
that the Court grant its motion for a TRO and order Mr. Boxill to immediately return all property
relating to his work with Prince and Paisley Park, including the Prince Recordings and any and
all masters, copies or reproductions thereof, to Plaintiffs.
Dated: April 14, 2017
~/Christopher D. Pham
Lora M. Friedemann, (#0259615)
Christopher D. Pham, (#0390165)
FREDRIKSON & BYRON, P.A.
200 South Sixth Street, Suite 4000
Minneapolis, MN 55402-1425
Telephone: 612.492.7000
[email protected]
[email protected]
Attorneys for Plaintiffs
61112139_2.docx
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