Toy Company Sues Beastie Boys, Claiming Parody Protects Its Viral Ad

Screenshot from GoldieBlox's website

A progressively-themed company that makes and sells toys that will supposedly help young girls overcome gender stereotypes has become embroiled in a high-profile copyright litigation with the Beastie Boys.  Toy company GoldieBlox says on its website: 

"In a world where men largely outnumber women in science, technology, engineering and math...and girls lose interest in these subjects as early as age 8, GoldieBlox is determined to change the equation.  Construction toys develop an early interest in these subjects, but for over a hundred years, they've been considered "boys' toys".  By designing a construction toy from the female perspective, we aim to disrupt the pink aisle and inspire the future generation of female engineers."

In its recent viral video commercial touting the ingenuity of young girls who build an elaborate contraption that can change the television channel, GoldieBlox intentionally utilized the music and parodied the lyrics from the Beastie Boys' song Girls.

The Beastie Boys were apparently not pleased with GoldieBlox's unauthorized use and sent a cease and desist letter, alleging copyright infringement and demanding that GoldieBlox end its campaign.

Rather than complying with the demands, GoldieBlox countered by filing a Declaratory Judgment Complaint against the Beastie Boys in Los Angeles federal district court, asserting that its usage was parody and fully protected by the First Amendment.

Given the Beastie Boys' recent unhappy experience with copyright litigation, one suspects that GoldieBlox's executives were well aware that this dispute would erupt, and intentionally developed a strategy inducing litigation to fuel its viral campaign to garner "free" publicity.  Whether the gambit works or not is yet to be seen.

Legally, the controlling analysis here is the Supreme Court's decision in 1994 in Campbell v. Acuff-Rose Music, Inc., interpreting the "fair use" defense to musical parodies used in a commercial context.

In that case, the members of the rap music group 2 Live Crew had created a parody of Roy Orbison's iconic "Pretty Woman," called "Big Hairy Woman."  Roy Orbison's estate sued the rap group, alleging that the group's use was not fair or protected free speech, but was an unprotected commercial use.

After years of litigation, the Supreme Court ultimately held that 2 Live Crew's commercial parody may very well be a fair use within the meaning of § 107 of the U.S. Copyright Act, which states:

"In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—




(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."

On appeal, the Supreme Court found the aforementioned four factors must each be applied to every situation on a case by case basis, and that the fact that the parody was used in a commercial context alone was not dispositive.

When looking at the purpose and character of 2 Live Crew's use, the Supreme Court found that the more transformative the new work, the less will be the significance of the other three factors.  The court found that, in any event, a work's commercial nature is only one element of the first factor enquiry into its purpose and character.

Justice Souter, writing for the majority of the Court, then moved onto the second § 107 factor, "the nature of the copyrighted work", finding it has little merit in resolving this and other parody cases, since the artistic value of parodies is often found in their ability to invariably copy popular works of the past.

The Court found the third factor integral to the analysis, finding that the Ninth Sixth Circuit Court of Appeals had erred in holding that, as a matter of law, 2 Live Crew copied "excessively" from the Orbison original.

Justice Souter reasoned that the "amount and substantiality" of the portion used by 2 Live Crew was reasonable in relation to the band's purpose in creating a parody of "Pretty Woman".

The majority reasoned "even if 2 Live Crew's copying of the original's first line of lyrics and characteristic opening bass riff may be said to go to the original's 'heart,' that heart is what most readily conjures up the song for parody, and it is the heart at which parody takes aim." 

The Supreme Court then looked to the new work as a whole, finding that 2 Live Crew thereafter departed markedly from the Orbison lyrics, producing otherwise distinctive music.

Looking at the final factor, the Supreme Court found that the Court of Appeals erred in finding a presumption or inference of market harm.

Parodies in general, the Court said, will rarely substitute for the original work, since the two works serve different market functions.

While Acuff-Rose found evidence of a potential "derivative" rap market in the very fact that 2 Live Crew recorded a rap parody of "Oh, Pretty Woman" and another rap group sought a license to record a rap derivative, the Supreme Court found no evidence that a potential rap market was harmed in any way by 2 Live Crew's parodic rap version.

In fact, the Supreme Court found that it was unlikely that any artist would find parody a lucrative derivative market, noting that artists "ask for criticism, but only want praise."

Applying this same analysis in the newly-filed Beastie Boys case, the courts will need to evaluate each of these same factors to determine if Goldiblox's usage was appropriate or improper.

In the meantime, the GoldieBlox commercial has gone viral, and received nearly 8 million views.

When Does Copyright Law Cease Protecting a Fictional Character? (Part I)

Sir Arthur Conan Doyle

The estate of Scottish author Sir Arthur Conan Doyle has advanced a creative -- and controversial -- legal argument, in a gambit to protect its rights to continue to control licensing the fictional personae of Sherlock Holmes and his sidekick Dr. Watson, for at least several more years.

Conan Doyle authored four novels and 56 short stories featuring the now iconic literary characters of Sherlock Holmes and Dr. Watson between 1887 and 1926.  Under UK copyright law, Conan Doyle's entire corpus of work is now freely in the public domain.

However, under more restrictive US copyright law, only Conan Doyle's works published before 1923 are now in the public domain, whereas 10 of his works published after 1923, such as the "Case-Book of Sherlock Holmes", remain squarely under US copyright protection until as late as 2022.

Many critics vehemently argue that the US copyright system, which currently grants authors' heirs a monopoly on their ancestors' written works for as long as 70 years after the author's death, is too restrictive.  In any event, the American public is now confronted with can be legally done with a partial catalog of freely available Holmes-related texts.

Statue of Sherlock Holmes in Edinburgh, Scotland

A Los Angeles-based Sherlock Holmes expert and entertainment lawyer, Leslie Klinger, recently filed a declaratory judgment suit in Chicago federal district court, seeking a ruling that the characters of Holmes and Watson are now effectively freely in the public domain for anyone to use, regardless of whether a few of Conan Doyle's final works still remain under US copyright protection.

The Conan Doyle estate argues that the entirety of these literary characters should remain under lock and key, until the final of the books' copyrights expire.  The estate bases its argument on the logic that the characters' entire personalities, including subtle quirks and flaws, were developed in later works and are therefore embedded throughout the entire corpus of Doyle's literary contributions.  To separate characters into "earlier" and "later" would be to artificially dissect them.

This interesting case raises complex issues of unsettled copyright law.  For example, if a complex literary character "evolves" throughout many different copyrighted texts written during an author's long lifetime, as each text passes into the public domain many years after her death, does only the "immature" character become free to copy, until the entire corpus has lapsed?

Alternatively, once the first of many book's copyright expires, is the entirety of the later-developed character fair game for the public to take?

The question is not entirely academic, as Conan Doyle's estate could theoretically block the making of a television show such as "Elementary," which sets the detectives in modern-day New York, unless the estate is paid a hefty royalty.  The estate could also have blocked a new movie similar to the 2009 film starring Robert Downey, Jr. and Jude Law.

On this issue, the Conan Doyle estate faces a challenging legal landscape.  In 1999, the Second Circuit Court of Appeals confronted a virtually identical issue, and refused to rule that entire characters remained under copyright monopoly when significant previous works had lapsed into the public domain.

In that case, the appellant had wanted to create an unlicensed Broadway musical using the characters of "Amos 'n' Andy." Radio programs featuring the characters from 1928 to 1948 had lapsed into the public domain.  However, several later-created television shows remained under copyright protection.

The New York-based Appeals Court found that this latter fact was not dispositive.  In that case, the Appeals Court held that Silverman, who had wanted to utilize the characters freely, "should now receive a declaration that he is entitled to use all aspects of the "Amos 'n' Andy" materials, including names, stories, and characters, to the extent that such elements of expression are contained (or, in the case of characters, to the extent delineated) in the pre-1948 radio scripts, which are in the public domain."

In other words, the fact that some later materials remained copyrighted did not entitle the copyright owners to continue to monopolize the characters, as large aspects of their personae had been developed and become public domain years earlier.

The New York-based Appeals Court also found that no valid trademark rights in the characters remained, as they were abandoned upon the radio shows passing into the public domain.  It is yet to be seen how the District Court and the Seventh Circuit Court of Appeals, based in Chicago, will rule on this topic in the pending Conan Doyle case.

Ironically, "Blurred Lines" of Copyright Law Lead to Litigation

Summer 2013's hottest pop single "Blurred Lines" has become quite a phenomenon.  Its primary vocalist and author, Robin Thicke is the son of Alan Thicke, of the popular family television sitcom Growing Pains.

The song features controversial lyrics about the lack of clear boundaries that have been called "rapey" by feminists, as well as an R-rated music video. The video for the song was released on March 20, 2013, and was made in two versions; the first video features models Emily Ratajkowski, Jessi M'Bengue, and Elle Evans being topless, the second features them covered.



The covered version on YouTube (embedded above) has reached nearly 138 million views. However, the topless, R-rated version of the video was removed from YouTube on March 30, 2013, for violating the site's terms of service regarding nudity.  On Vevo.com, the R-rated version has reached nearly 11 million views.

The song itself has been a worldwide hit, topping the charts in Australia, Canada, New Zealand, Ireland, Germany, the Netherlands, Poland and the United Kingdom, as well as the top ten in Belgium, Denmark, Lithuania, France, Iceland, Italy, Portugal and Switzerland. As of July 17, 2013, it is the second best-selling single of 2013 in the UK.

The song features a catchy beat and chorus, clearly reminiscient of Marvin Gaye's 1977 classic "Got to Give it Up":

Thicke apparently admires Marvin Gaye's style and music, and went so far as to admit that it inspired him in this instance, but denied overtly sampling Gaye's musical compositions when writing Blurred Lines.

When asked by Yahoo! Music's Billy Johnson Jr. about the notable similarities between "Blurred Lines" and Gaye's song, Thicke said "[t]here is no sample." But he admitted, "[d]efinitely inspired by that, yeah.  All of his music ... he's one of my idols."

Sampling is the act of taking a portion, or sample, of one sound recording and reusing it as an instrument or a sound recording in a different song or piece.

Hearing the similarity and likely believing that Gaye's music was sampled without permission, Gaye's family apparently demanded a royalty from Thicke and his co-authors, which they refused to pay.

After reaching an impasse, Thicke and his co-authors pulled the trigger first, suing Gaye's family in federal district court in California this week, seeking a declaratory judgment that the song does not infringe upon Gaye's copyrights.

“There are no similarities between plaintiffs’ composition and those the claimants allege they own, other than commonplace musical elements,” the suit contends. “Plaintiffs created a hit and did it without copying anyone else’s composition.”

Invocation of declaratory judgment jurisdiction is typical when it becomes clear that suit is inevitable, and when an actual case or controversy exists between the parties, based upon the totality of the circumstances.  Assuming Gaye's family asserted a clear claim of copyright infringement and demanded a royalty, and assuming that no ongoing discussions were occurring, Thicke may have been entitled to file a preemptive suit first.

Procedural wrangling aside, in any event, the underlying legal test remains the same. Did Thicke and his co-authors cross the line from inspiration to infringement?

Ironically, that line is rather blurry in this instance.

Sampling an identifiable and substantial portion of Gaye's song would likely lead to a finding of copyright infringement. Thicke has (so far) expressly denied that any form of sampling whatsoever occurred, claiming that the similarities were from simply borrowing "commonplace musical elements."  That distinction is a matter of degree, and will depend upon a close comparison of the two songs.

The Declaratory Judgment Complaint -- Being Quicker on the Draw

As a routine practice, a brand owner's trademark lawyers send formal cease and desist letters to companies or persons who become accused of using a confusingly similar name or design without authorization.  

Such a letter is often sent before a lawsuit is filed.  
It is not legally necessary for a brand owner to send such a demand letter, but (depending on the circumstances) many brand owners believe that it is helpful to give notice before filing suit.


This process also allows the accused infringer to settle potential litigation for smaller (or no) damages, depending on the circumstances.  


For example, some infringers may agree to share their sales figures of accused products, and in doing so, deter the brand owner from seeking excessive damages.


Of course, there is never a guarantee that the brand owner will agree to settle, and these documents can have the opposite effect, and end up fueling litigation.


Trademark lawyers send out dozens, hundreds -- even thousands of such demand letters each year.  Most of the time, the recipients apologize, comply with the letter's demands and move on.
 In some cases, the unwise recipient just ignores the letter, leading to a second, usually more aggressive letter or a lawsuit.


But in some rare cases, if the recipient of a letter receives what could be interpreted as a legally baseless or overly aggressive threat leading to a reasonable apprehension of imminent litigation, he may opt for a highly aggressive strategy -- sue the brand owner first.  
In other words, he is quicker to the draw in gunslinger terminology.

This process is called invoking declaratory judgment jurisdiction.  The reason is that the plaintiff is seeking a "declaration" that he is not infringing.

Upon receiving a cease-and-desist letter, the recipient may seek a tactical advantage by instituting declaratory judgment litigation in a more favorable jurisdiction.
  The end result may require the sender of the cease and desist letter to appear in a distant court, at their own expense, in a case that it never would have actually brought.

The declaratory judgment plaintiff also could catch the overly aggressive brand owner off guard, and put it in the posture of being a defendant rather than a plaintiff.
  This tactic seems to have worked, at least initially, for the recipients of a cease and desist letter from the Subway sandwich chain's lawyers.


In 2011, Subway's lawyers sent a cease-and-desist letter to Casey’s General Stores, a midwest convenience store operator, demanding that it stop using the word “footlong” to describe its sandwiches.

Casey’s struck back with a declaratory judgment lawsuit against Subway, arguing that the chain has no trademark rights to what it considered to be a generic term.


The suit noted that Subway has tried to register the mark protection for “footlong,” but was refused by a trademark examining attorney who was skeptical of the distinctiveness of the term, noting that restaurants across the country use the word to describe submarine sandwiches on their menus.


Thus, Subway became the unwilling defendant in a declaratory judgment case brought by an accused infringer, putting the validity of its very trademark in jeopardy.