December 11, 2013 10:45am PT by Eriq Gardner
Beastie Boys vs. GoldieBlox: New Countersuit as Universal Music Watches Closely
Late last month, GoldieBlox backed off from using Beastie Boys song "Girls" in an advertisement for girls' toys. The toy company, though, stopped short of saying, "I'm sorry."
On Tuesday, the Beasties responded in court to GoldieBlox's attempt to preemptively declare as "fair use" its viral video, which replaces the group's original lyrics with new ones of female empowerment. In doing so, Beasties Michael Diamond and Adam Horovitz are asserting counterclaims for copyright and trademark infringement, unfair competition and misappropriation of publicity rights. What's more, the counter-claimants are making the case that "as part of that systematic campaign of infringement, GoldieBlox has created a series of video advertisements set to well-known songs from popular artists in an effort to achieve the company's primary goal of selling toys."
According to the counterclaims, GoldieBlox has produced videos exploiting the works of Queen, Daft Punk, Kaskade, Krewella, Avicii, Slam, k.flay and Trevor Guthrie.
Here are the counterclaims.
Beastie Boys say they were first alerted to the video when a representative from an advertising agency contacted Universal Music to ascertain whether GoldieBlox had obtained a license. The lawsuit states its belief that the request was made because the ad agency was in the process of submitting the ad to a competition to win a 30-second television commercial spot during the 2014 Super Bowl.
A lawsuit proceeded, and after an uproar, GoldieBlox pulled "Girls" from its video featuring three girls playing with a Rube Goldberg-type contraption. Some prematurely figured that the dispute was over and that Beastie Boys had walked away as the winner in the fight. But GoldieBlox only offered to withdraw its lawsuit if the band stipulated to a withdrawal of a copyright threat, and then, only after the controversial video had already garnered tens of millions of views.
According to sources, reps for Beastie Boys asked the toy company to try again with a better apology and make a donation to charity. Meanwhile, Universal Music, whose Def Jam label distributed works from the Beasties, was watching the situation closely. The music company could be prepared to file its own counterclaims after having discovered that GoldieBlox has posted other videos on YouTube that contain other copyrighted music.
GoldieBlox's arguments for "fair use" could be harder to make for these other advertisements, which include one for a Star Spinner product, which uses Daft Punk's "Around the World" and another advertisement for the company's Spinning Top product that uses Avicii's "Wake Me Up." (Within the past week, GoldieBlox marked those videos as "private" on YouTube. Otherwise we'd embed them here.)
These other ads have gotten far less views than the "Princess Machine" advertisement, which went viral and had many news outlets and commentators on social media talking about the ways to get young women interested in science and engineering.
Not everyone in the rights-holder community was pleased with the way that GoldieBlox handled the situation with Beastie Boys. The company wrote an open letter, expressing its fandom of the hip-hop group and removed the music from the ad, but arguably did so in a way that made the toy company attempt to look like the good guys.
That might make for clever marketing, but it has rubbed those who hold rights to Beastie Boys songs the wrong way. These entities didn't first bring the lawsuit, but they are prepared to fight for their rights, having been gifted this holiday season the opportunity to stand up to an alleged infringer, perhaps with an eye on making a larger point. In the Rube Goldberg machine that is the U.S. court system, that's sometimes how these things roll.