from the that's-unfortunate dept
Now, I know that many people who initially sided with Goldieblox "switched sides," arguing that this was all a publicity stunt by the company. I think there are two separate issues: whether you like this as a publicity stunt and whether or not the use of the song was infringing. Unfortunately, many people are conflating the two. I agree that it's crass and quite lame to use the legal system as a PR tool, and it certainly doesn't reflect positively on Goldieblox as a company. It's pretty clear they were itching for a legal fight and probably pulled the trigger on filing for declaratory judgment too quickly (though, contrary to the claims of some, filing for declaratory judgment when someone suggests you infringed on their rights is a fairly common practice, and there are plenty of good reasons to do so). But I think that's a separate issue from whether or not the use of the song was infringing -- and it's very important to keep the two issues distinct in thinking about the legal issues here.
Given a variety of factors it's not at all surprising that the Beastie Boys have countersued. They were clearly angry about the use of the song (since they have made it explicit they don't like their music used in advertising) and about how the whole situation went down with the declaratory judgment request being filed so quickly, after their lawyers had sent a basic inquiry. That said, it's still disappointing to see the Beastie Boys decide to ramp up the legal effort here, and it still seems like their case is not a strong one. We've already discussed how the Goldieblox use can be fair use, and that there are multiple legal precedents that support that position. The Beastie Boys counter that this is not fair use at all. If this doesn't get settled (and I'd bet good money that it does get settled), a ton of arguments will get thrown back and forth on this point. I can make what I believe is a very strong argument that this is clearly fair use, while others can counter with arguments why it's not. As with so many fair use cases, unfortunately, the end result is often the emotional decision a judge makes about whether it "feels" like fair use, and then works backwards to make the fair use factors fit the preconceived idea. It's a bit of a crapshoot, even as I think it should clearly be fair use.
The Beastie Boys don't stop there however, adding trademark infringement, unfair competition and publicity rights claims to their counterattack. Frankly, all of these seem incredibly weak. It is true that the original Goldieblox video did put "The Beastie Boys" in the title of the video, which some have suggested may have lead to confusion over whether or not the Beastie Boys supported the campaign. This is mainly the basis for most of these additional claims, but it seems rather weak. There's no denying that the song was a take-off on The Beastie Boys' song "Girls." The question is whether or not it was infringing and whether that take-off is a parody. Stating accurately what the take-off is based on isn't trademark infringement, unfair competition or a violation of the band's publicity rights, as it didn't suggest support or endorsement by the band. It just, accurately, noted that the song was a Beastie Boys song. If the use of the song was fair use, then it's perfectly reasonable, as well, to highlight where the song was from.
Two other interesting points from the lawsuit. First, the Beastie Boys highlight that Goldieblox had created ads doing similar take-off parodies (though, obviously they don't call it that) on other popular songs. But, again, if they are fair use then that doesn't matter. Making the case that this is a pattern of activity only makes a difference if it's not fair use. Second, the Beastie Boys are not messing around when it comes to the remedies sought. Not only do they want an injunction, but they're also asking for an "accounting" of how much Goldieblox made as a result of this campaign, and using that to argue for actual damages from Goldieblox.
We talk a lot about "statutory damages" in copyright law, because that's what most copyright holders seek, in part because they claim it would be too difficult to figure out "actual damages," but mostly because the statutory damages numbers are insanely high (up to $150,000 per infringement). Here, however, it appears that the Beastie Boys and their lawyers smell blood in the water, and recognize that if they can convince the court that the money Goldieblox made from people buying its products after seeing the ad are a form of "damage" to the Beastie Boys, they could potentially collect significantly more money -- all of which they are arguing should be handed over to the band (while reserving the right to go for statutory damages if the end result of that is more):
For an award of the Beastie Boys Parties’ actual damages and lost profits they have sustained as a result of GoldieBlox’s unlawful acts of copyright infringement and to recover from GoldieBlox the gains, profits, and advantages GoldieBlox has obtained as a result of the wrongful conduct alleged herein, in an amount to be determined at trial, or, at their election, an award of statutory damages...This seems fairly extreme again. Even if we accept that this was a giant publicity stunt, and even if it drove a bunch of sales, to argue that all of the gains and profits belong to the band is pretty crazy. People didn't buy the toys because of the music. It may have helped draw attention to the toys, but it was the toys themselves that people were buying (and let's leave out the separate debate over whether or not Goldieblox's toys are actually any good -- that's an irrelevant tangent here).
In the end, it can reasonably be argued that Goldieblox poked the Beastie Boys with a legal stick as part of a publicity campaign, which is increasingly looking like a major strategic miscalculation (perhaps both on the PR side, since there's been so much backlash, and now on the legal side). The Beastie Boys have now hit back hard. This isn't surprising.
Still, even if you think that Goldieblox's actions are reprehensible from the stunt side, if you believe in the importance of fair use, it's disappointing to see the Beastie Boys make this move. As we've noted, the band itself relied on fair use for quite a bit of their own work, and a ruling in this case in their favor would tragically reduce fair use and limit the ability to parody, something that would truly be a loss for culture and society.