Universal Music Group has failed in its effort to block the disclosure of communications with Prince that could be pivotal to the case of a woman who sued the record company for asking YouTube to remove a video of her toddler son dancing to a song by Prince.

Ruling in a key discovery battle, U.S. District Judge Jeremy Fogel said a magistrate judge properly granted Stephanie Lenz's motion to compel Universal to provide her with more than two dozen communications relating to hundreds of requests for YouTube to take down videos that allegedly infringed on Prince's copyrights.

Lenz, a Gallitzin, Pa., homemaker, contends that Prince “is notorious for his efforts to control all uses of his material on and off the Internet” and Universal has a blanket policy of appeasing him by sending frivolous Digital Millenium Copyright Act (DMCA) takedown notices. Her 29-second video showed her son dancing to the Prince song “Let's Go Crazy.”

“Communications between Universal and Prince about takedowns for any of his works ... are reasonably calculated to lead to evidence about the formation of Universal's good faith belief in sending the letters,” U.S. Magistrate Judge Richard Seeborg said in his order.

Universal filed an objection to the order in which it argued that the communications are irrelevant to Lenz's case since none of them specifically relate to her video and, in addition, are protected by the attorney-client privilege.

“The trial in this case cannot and should not include a series of mini-trials concerning Plaintiff’s contentions about whether Universal 'got it right or got it wrong' concerning numerous other YouTube postings that have been included in Universal’s [takedown] notices,” defense attorney Kelly M. Klaus said. “Such a wide-ranging excursion would be confusing, distracting and a complete waste of time.”

But Fogel overruled the objection in an Oct. 30 decision that addressed only the privilege issue. “Universal has not shown that the primary purpose of any communications reflecting Universal’s practices with respect to takedown notices was to render legal advice,” he said. “As Magistrate Judge Seeborg found, 'it is entirely plausible that ... such notices may be dispatched a[s] part of a business strategy to appease clients.'”

Lenz sued Universal under a provision of the DMCA which says a copyright holder “who knowingly materially misrepresents” that someone has misused their material “shall be liable for any damages ... incurred by the alleged infringer.”

The 9th U.S. Circuit Court of Appeals has said “an unknowing mistake” does not make a copyright holder liable for misrepresentation but “[r]ather, there must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner.” Rossi v. Motion Picture Ass’n of America, 391 F.3d 1000 (2004).

Judge Fogel has expressed doubt that Lenz can meet this “subjective bad faith” standard. And Universal argued that “What was said in privileged communications concerning other people’s uses of Prince’s works has no legal relevance to Universal’s subjective knowledge when it made its statements to YouTube about Plaintiff’s posting.”

“It is undisputed that neither Prince nor any of his representatives contacted Universal regarding Plaintiff’s posting before Universal sent the notice to YouTube on June 4, 2007,” the company said.

Lenz argues that it doesn't matter whether or not Universal and Prince discussed her video. “The communications at issue may well lead to evidence that Universal follows a 'Prince policy'” in sending takedown notices, she said in a brief, and

as Judge Seeborg recognized, Ms. Lenz is free to argue that if Universal sends takedown requests for videos involving Prince's works “simply because it was urged to do so by the artist and without regard to the infringing conduct,” the jury should infer that it did the same in her case.

Lenz's video now has more than 900,000 views. She has so far incurred more than $432,000 in pro bono attorney's fees, which, under the DMCA, would be recoverable from Universal if it is found liable.

By Matthew Heller
11/7/09