Business Law Intellectual Property

Toymaker Clashes with Beastie Boys Over Fair Use


The following is a guest blog post by Harmony Groves Kessler, a solo practitioner assisting individuals, small businesses, and attorneys with legal issues in criminal defense, business contracts/transactions and public agency law in northern California. She is the former Mayor of Arcata, California, where she served a four-year term on the City Council.

Updated March 18, 2014: The Beastie Boys and GoldieBlox have settled the suit. As part of the settlement, GoldieBlox will no longer be able to use its parody of the Beastie Boys’ song and will publish an apology to the band.

Updated January 3, 2014: Although GoldieBlox removed the song “Girls” from its video, the Beastie Boys sued GoldieBlox for copyright and trademark infringement, among other claims, seeking an injunction, damages, and lost profits based on the toy’s massive increase in sales, which they believe are the direct result of the video.

A creative rewrite of the Beastie Boys’ iconic song “Girls” recently stirred up trouble for a toymaker with good intentions.

Toymaker Goldie Blox produced a creative video advertising its “building games for girls to inspire future engineers.” For the video, Goldie Blox used the Beastie Boys’ song “Girls,” but changed the lyrics from a man’s bitter reaction to being rejected by a girl to a call to the girls of the world to give up the “pink aisle” and consider becoming engineers.

The Beastie Boys sent Goldie Blox a letter that commended the values behind the toy but informed the toymaker that the group did not permit the use of their copyrighted materials in any commercial advertisement. Goldie Blox responded by filing an action for declaratory relief seeking a judgment that the use of the song was allowed under the Fair Use Doctrine (17 USC §107). Goldie Blox claimed the use was a parody of the sexist song “Girls” and a transformative use of the original work.

The Fair Use Doctrine allows use of copyrighted materials for criticism, comment, news reporting, teaching, scholarship, or research. In the seminal case for works that claim to be parody, Campbell v Acuff-Rose Music, Inc.  (1994) 510 US 569, the Supreme Court found a key difference between parody (which can be fair use) and satire (which can’t): a parody by its nature needs to use the original work to achieve parody of the work, but satire uses the original to make a criticism or poke fun at something unrelated to the original and thus can stand on its own without the need to copy the original to achieve its aim.

Is the Goldie Blox version of “Girls” a parody or a satire?  It’s a great legal question, but we will likely never know the answer. Before the parties got to court, Goldie Blox withdrew its action and pulled the song off the video.

Goldie Blox wrote the Beastie Boys a letter stating that it wasn’t aware of the Beastie Boys’ agreement that their work may never be used for commercial purposes. Goldie Blox was also unaware that the late Beatie Boy Adam Yauch, fondly known to fans as “M.C.A.,” has that agreement enshrined in his estate. To respect the Beastie Boys’ wishes, Goldie Blox withdrew its lawsuit and replaced the song with a tame, non-lyrical composition. But Goldie Blox didn’t concede the issue and continues to claim the song’s use falls under the Fair Use Doctrine.

To learn more about how to handle copyright infringement cases, including those involving the Fair Use Doctrine, turn to CEB’s California Business Litigation, chap 7. For general information about intellectual property licensing, check out CEB’s Intellectual Property in Business Transactions, chap 5.

Related CEB blog posts:

© The Regents of the University of California, 2014. Unauthorized use and/or duplication of this material without express and written permission from this blog’s author and/or owner is strictly prohibited.

5 replies on “Toymaker Clashes with Beastie Boys Over Fair Use”

“But Goldie Blox didn’t concede the issue…”

Well, clearly they DID. (I hate it when people [including companies] act one way, but say something quite different. It’s not intellectually honest. Actions speak louder than words. It’s like when a corporation settles a lawsuit for $50 million “but does not admit any wrongdoing”. Oh, please.) But putting that aside, I wish Goldie Blox hadn’t conceded the issue, because it would’ve added some clarity to this area of the law.

And it seems like an interesting issue. Especially considering that there are really two competing angles here. You have the use of the tune for ordinary commercial advertising purposes (not “fair use”), but then you also have the use of the tune (with different lyrics) for legitimate public commentary on the topic of education for girls in STEM-type fields.

But here’s another interesting issue, which nobody seems to have raised: What if the surviving Beastie Boys later change their minds and decide they DO want to use their work for commercial purposes? (After all, “every man has his price.”) Can Mr. Yauch’s ghost enforce this prohibition for the rest of eternity? What about the Rule Against Perpetuities?

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