Less than two weeks ago, GoldieBlox founder Debbie Sterling posted an open love letter to the Beastie Boys, expressing the best of intentions in parodying the group’s song Girls in her sassy-young-girls-gone-Rube-Goldberg-wild video. She also filed a preemptive action seeking protection from a federal district court over her company’s use of the song.
Now the band has followed—and filed—suit. The Beastie Boys and the estate of Adam Yauch filed a 21-page countersuit in that federal district court on Tuesday. They claim copyright infringement, trademark infringement, misappropriation of right of publicity, and violation of New York civil rights law, among other things.
GoldieBlox used the Beastie Boys trademark without authorization, the suit states, to trade on the group’s reputation and benefit from it commercially. As a result, those actions have caused harm to the Beastie Boys—to their reputation, good will, integrity, business, and property.
GoldieBlox lawyer Daralyn Durie, of the intellectual property law firm Durie
Tangri in San Francisco, says she and her client are reviewing the documents filed on Tuesday. Lawyers for the Beastie Boys did not respond to a request for comment.
The facts in both cases have gotten a lot of attention in recent weeks. Sterling made her video, including the altered version of Girls, without asking permission to use it. On the same day that lawyers for the Beastie Boys contacted the toy company’s lawyers to ask about the song’s use in the video, GoldieBlox filed its action. The video went viral. And the Internet couldn’t get enough of the story.
Then, Sterling offered her olive branch. “Our hearts sank last week when your lawyers called us with threats that we took very seriously,” she wrote. She agreed to remove the song from the video, took it down, and also promised to stop her lawsuit, “as long as this means we will no longer be under threat from your legal team.”
We’re not going to argue the merits of the cases here. It’s complicated when, on one side, there are the beloved Beastie Boys, including the estate of Adam “MCA” Yauch, who died last year of cancer and whose will prohibits use of his music in advertising. On the other side stands a fledgling company with the laudable goal of introducing girls to opportunities in math and science. It becomes more muddled when the little-startup-that-could, admirable as its goals are, promotes itself in a legally debatable way. (Several leading copyright scholars say the inclusion of the song qualifies as fair use; the Beastie Boys, in the suit, contend it doesn’t.)
“We’d prefer an amicable resolution,” lawyer Durie says, “but we strongly believe the parody constitutes fair use.”
In their counterclaim, the Beasties point out that while GoldieBlox strives to make toys to encourage girls to think about engineering, “a profession defined by innovation and original thinking,” as the suit states, the founder’s approach in promoting her company lacks those same qualities. “Rather than developing an original advertising campaign to inspire its customers to create and innovate, GoldieBlox has instead developed an advertising campaign that condones and encourages stealing from others.” And this isn’t the only instance, the group claims, of the startup appropriating the work of artists for advertisements.
The band is seeking actual damages and lost profits resulting from GoldieBlox’s video ad; removal of the ad from everywhere it has been posted; and a permanent injunction to prevent further and future infringement and the use of anything connected to the Beastie Boys’ identities and work.