Fair use of copyrighted works and trademarks should provide solid footing for innovators engaging in remix culture, but those who rely on its protections often tread on thin ice that can collapse under the weight of significant litigation costs and uncertain, fact-intensive requirements. The recent dispute between GoldieBlox (a startup toy company with a girl-empowerment agenda) and the Beastie Boys highlights the benefits and risks of relying on the fair use doctrine in the commercial context. See GoldieBlox, Inc. v. Island Def Jam Music Group, No. 13-cv-05428 (N.D. Cal. Filed Nov. 21, 2013). Particularly in the advertising context, with increased marketing attention to viral campaigns, decision-makers need to be more aware than ever of the business and legal aspects of remixing protected intellectual property. Outside the legal context, however, GoldieBlox's strategy was a major success—its viral ad won Intuit's "Small Business Big Game" contest, and the company aired a delightful new advertisement—using licensed music from Slade/Quiet Riot—during Super Bowl XLVIII to an estimated 111.5 million viewers.

Background

GoldieBlox is a Bay Area startup with the goal to "get girls building." The Stanford-educated founder and CEO, Deborah Sterling, aims to provide construction toys that encourage young women to pursue careers in science, technology, engineering, and math (STEM subjects). Around February 2013, the company launched an integrated children's book and construction set called GoldieBlox and the Spinning Machine. Over the summer, the toy reached Amazon's "Top 100 Toys & Games Best Sellers".

On November 18, 2013, GoldieBlox released an online video titled "GoldieBlox, Rube Goldberg, & Beastie Boys 'Princess Machine.'" The video shows young girls triggering a complicated Rube Goldberg device, while playing original lyrics set to the music for the Beastie Boys' 1986 hit anthem "Girls." Whereas the Beastie Boys recited lyrics such as "Girls to do the dishes / Girls to clean up my room / Girls to do the laundry / Girls and in the bathroom," GoldieBlox replaced those lyrics with a more empowering message: "Girls to build a spaceship / Girls to code the new app / Girls to grow up knowing / That they can engineer that." The video quickly went viral, garnering over 8.5 million views on YouTube.

Three days after GoldieBlox released the video, the Beastie Boys' lawyer contacted GoldieBlox's attorneys to ask about GoldieBlox's use of the Beastie Boys' music. The same day, GoldieBlox filed a declaratory relief action in the U.S. District Court of the Northern District of California. The Complaint set off a flurry of media coverage shortly before Black Friday and the start of the holiday shopping season.

On Monday of Thanksgiving week, the Beastie Boys issued an open letter emphasizing that the band had made a "conscious decision not to permit our music and/or name to be used in product ads." Soon after, GoldieBlox and the public learned that the Beastie Boys' late Adam Yauch had included in his will a holographic prohibition on any use of his music in advertising. By Tuesday night, GoldieBlox had removed the video from YouTube and its website. On Wednesday, GoldieBlox published its own open letter stating it had removed the video to respect Mr. Yauch's wishes and offering to drop its lawsuit if the Beastie Boys would release any claims of infringement. Most commentators, including myself, thought that move signaled the end of the dispute.

But to everyone's surprise, the Beastie Boys filed an answer and eight counterclaims a week and a half later. Alleging that GoldieBlox "has acted intentionally and despicably with oppression, fraud, and malice toward the Beastie Boys Parties," the Beastie Boys sued for copyright and trademark infringement, and state law claims related to rights of publicity. The trademark claim rests on GoldieBlox's inclusion of "Beastie Boys" in the title to the video. The counterclaims accused GoldieBlox of a "systematic campaign of infringement" and pointed to other GoldieBlox videos that used popular songs from artists such as Queen and Daft Punk. In addition to injunctive relief, the Beastie Boys seek actual damages, lost profits, disgorgement, exemplary and punitive damages, and attorneys' fees. The case has been assigned to Judge Lucy Koh, and, barring early settlement, we will likely see early motion practice in the next months.

The Fair Use Doctrine

The central issue in the GoldieBlox litigation is the strength of GoldieBlox's fair use defense. Courts' applications of fair use doctrines are notoriously fact-intensive, which means litigating fair use is expensive, and infringement claims often survive dismissal.

Copyright Fair Use

Fair use of a copyrighted work is not an infringement of copyright, as codified in 17 U.S.C. § 107. Section 107 enumerates four non-exclusive factors for Courts to consider:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

Many courts add a fifth factor, "the public interest," to the equation.

The U.S. Supreme Court held that commercial use of a copyrighted work is not presumptively unfair, but noted that the use "of a copyrighted work to advertise a product, even in a parody, will be entitled to less indulgence under the first factor of the fair use enquiry than the sale of a parody for its own sake." Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (reversing an appellate court's decision that 2 Live Crew's parody of "Oh, Pretty Woman" was not fair use). Here, GoldieBlox has a strong argument that the video transformed the song "Girls" by adding a "new expression, meaning, or message." The video and its new lyrics appear to replace a misogynistic message with a philogynistic one.

The Beastie Boys, however, may not let that accusation go untested. Their counterclaims describe "Girls" as a "satirical anthem," suggesting "Girls" itself undermines patriarchal norms by absurdly representing such sentiments. Given that the Beastie Boys have publicly apologized for the insensitive nature of their early lyrics—although not "Girls" specifically—that claim may not survive factual scrutiny. Nevertheless, the allegation raises the question: can you parody a parody? In this situation, it may be enough that GoldieBlox added a new meaning about women and engineering, regardless of whether "Girls" was actually misogynistic or satirical. But meaning is often in the eye of the beholder, and decision-makers should carefully consider the core message of works they intend to remix.

Under the second factor, "Girls" is a creative expression that falls within the core of copyright protection, but in Campbell, the Supreme Court suggested this factor is not "ever likely to help much in separating the fair use sheep from the infringing goats in a parody case, since parodies almost invariably copy publicly known, expressive works."

It is the third factor where GoldieBlox seems most likely to fall through the ice. It allegedly used the entire musical score of "Girls." In Campbell, the Supreme Court held "[p]arody's humor, or in any event its comment, necessarily springs from recognizable allusion to its object through distorted imitation." But 2 Live Crew did not use the entire "Oh, Pretty Woman" score—it added distinctive sounds, solos in different keys, and an altered drum beat to the original. Even so, the Supreme Court remanded for the district court to evaluate whether 2 Live Crew took more of the original music than necessary.

The Ninth Circuit Court of Appeals recently focused on a very limited use of copyrighted material. In SOFA Entertainment, Inc. v. Dodger Productions, Inc., 709 F.3d 1273 (9th Cir. 2013), the Ninth Circuit affirmed summary judgment on fair use for a defendant who used a 7-second excerpt from plaintiff's TV show. In Seltzer v. Green Day, Inc., 725 F.3d 1170 (9th Cir. 2013), the Ninth Circuit affirmed summary judgment for Green Day's use of plaintiff's illustration of a screaming face in the video backdrop of Green Day's stage show. The Ninth Circuit determined that appropriating the entire work would not weigh against Green Day because the illustration was not "meaningfully divisible." Campbell, however, suggests that music is divisible, and it is not clear how GoldieBlox would defend using the entire musical score for the Beastie Boys' song. The lesson here is that you can reduce your liability exposure by transforming as much of, and using as little of, the original work as possible.

The Supreme Court has stated that the fourth factor is the "single most important element of fair use." Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985). Under this factor, GoldieBlox's position is strong. It is unlikely the Beastie Boys can show consumers listened to the video instead of purchasing the song, given the changed lyrics and video format. And while other artists could argue that the video could negatively affect licensing fees for advertisements, Mr. Yauch's will effectively forecloses that argument. Indeed, the will, which convinced GoldieBlox to take down the video, may be the Beastie Boys' Achilles heel. Anyone considering transforming a copyrighted work for advertising purposes should consider how actively the copyright owner pursues licensing opportunities for the targeted work.

Trademark Fair Use

The Beastie Boys' trademark infringement claims rest on GoldieBlox's use of the Beastie Boys' name in the title of the accused video and related social media posts. Assuming GoldieBlox also defends against these claims on the grounds of fair use, it finds strong footing in existing Ninth Circuit law. In Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), Mattel sued MCA for the band Aqua's song "Barbie Girl," which poked fun at the Barbie doll's materialism. The Ninth Circuit affirmed summary judgment for MCA and held: "A title is designed to catch the eye and to promote the value of the underlying work. Consumers expect a title to communicate a message about the book or movie, but they do not expect it to identify the publisher or producer." Unless GoldieBlox's social media posts misled consumers about the source or sponsorship of the video, Beastie Boys will have a tough row to hoe in arguing that the title of the video alone constitutes infringement.

Conclusion

GoldieBlox's viral video was a huge initial success, and its recent Super Bowl advertisement effectively vindicates its strategy, although the company remains at risk of paying substantial attorneys' fees and potential damages. For businesses considering a similar strategy, a solid understanding of the elements of fair use and the litigiousness of the targeted copyright owner will help reduce exposure.

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