In November 2013, just in time for Black Friday, a start-up toy
manufacturer that specializes in making engineering and science
related toys marketed to girls, GoldieBlox,
launched an online commercial depicting three young girls playing
with a GoldieBlox toy. The audio of the commercial features the
three girls singing what unmistakably sounds like the Beastie
Boys' song "Girls" with rewritten lyrics that promote
young girls having an interest in science and engineering. The one
thing that was missing from this commercial though, was a license
for the use of Girls.
Soon after this commercial went viral, and without missing a
beat, lawyers representing the Beastie Boys contacted GoldieBlox
and threatened legal action on the basis of copyright infringement.
In response to this, on November 21, 2013, GoldieBlox filed a
lawsuit against the Beastie Boys in the Northern District of
California, asking for a declaratory judgment finding that
GoldieBlox's use of Girls is not copyright infringement on the
basis that it falls under the Fair Use Doctrine. Soon after this
GoldieBlox took the commercial down, and released a public letter
apologizing to the Beastie Boys for not seeking their permission,
explaining the company's intentions, and stating that the
company would drop its lawsuit if the Beastie Boys agreed not to
take any legal action. Sorry wasn't good enough though, and in
early December 2013, the Beastie Boys launched a countersuit
claiming copyright infringement against GoldieBlox. Publically, the
surviving members of the Beastie Boys have stated that no matter
how good GoldieBlox's intentions are with respect to the
commercial, it is still a commercial to sell a product, and the
Beastie Boys long ago agreed that they would never allow their
music to be used in commercials.
GoldieBlox's claim that its use of Girls is a fair use of
copyright is based on its assertion that the rewritten lyrics
parody the original song by criticizing its sexist lyrics. Parody
has been recognized by US courts as a potential ground for fair
use. Canada's copyright law has a doctrine similar to fair use,
called fair dealing. Upon coming into force in November 2012,
Canada's Copyright Modernization Act added parody as a ground
by which a fair dealing exception to copyright infringement may be
claimed in Canada. Therefore a claim like GoldieBlox's could
now be made in Canada, though its chances for success are not yet
What is clear under Canadian law is that simply claiming that a
use of copyright is a parody is not sufficient. It also has to be
proven that the use is fair. Proving that a dealing with copyright
is both fair and fits into one of the categories of fair dealing
set out in the Copyright Act (like parody), is the test set out by
the Supreme Court of Canada in CCH Canadian Limited v. Law Society of Upper Canada to determine what
is a fair dealing. Under this test, the following six factors will
be important (though not exclusive) in determining whether or not
the particular dealing was "fair":
The purpose of the dealing
The character of the dealing
The amount of the dealing
Alternatives to the dealing
The nature of the work
The effect of the dealing on the work
It is difficult to determine what finding a Canadian court would
make in the Beatie Boys case, so it will be very interesting to
see the decision of the United States District Court for
Northern California, as it may be informative to a Canadian court
at some point in the future. A court decision assumes of course
that GoldieBlox and the Beastie Boys will fail to play nice and
come to a settlement.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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