This post was written by Rebecca Maller, Frederick Lah and Stacy K. Marcus.
On June 5, 2014, a federal jury in the Southern District of New York awarded the Beastie Boys $1.7 million for copyright infringement and false endorsement committed by the beverage company Monster Energy. Since Monster Energy admitted to infringing on the band’s songs at the outset of the trial, the issue at trial was to determine damages.
In 2012, Monster Energy sponsored a video for a snowboarding competition, which featured a sampling of five of the Beastie Boys’ songs. The Beastie Boys responded by suing Monster Energy for copyright infringement. The focal point of the group’s action was a segment in the video that featured the words “RIP MCA,” in a manner resembling Monster Energy’s logo. According to the Complaint, the logo implied the group’s endorsement of the video and violated a provision in deceased Beastie Boy Adam “MCA” Yauch’s will, which prohibited any use of his name and/or likeness in promotional campaigns. In its defense, Monster Energy alleged that it received permission to use the sampling from Zach Sciacca (a.k.a. DJ Z-Trip), who originally created the sample with permission from the Beastie Boys. That allegation was later rebuffed in a third-party action brought by Monster Energy against DJ Z-Trip. Lacking the permission to use the sample, the federal jury ruled that Monster Energy should pay the Beastie Boys $1.7 million based on the jury’s determination that Monster Energy’s copyright violation was willful and in bad faith.
This is the Beastie Boys’ second copyright victory in as many months. Two months ago, the group settled an infringement action against the toy company GoldieBlox, over the company’s video ad, which featured the Beastie Boys’ 1987 hit “Girls.” Fearing a copyright infringement action, GoldieBlox sued the Beastie Boys in California, arguing fair use of the song as a parody. Despite GoldieBlox’s preemptive claim that it was unaware of the salient provision in the will, the band successfully filed a counter-suit, asserting various federal and California state copyright and trademark infringement claims. The dual actions ultimately resulted in a settlement directing GoldieBlox to issue an apology to the band and to pay a percentage of its revenues to charities, selected by the Beastie Boys, which support girls’ education in science, technology, engineering and mathematics.
While these successive victories may appear threatening to advertisers and brand representatives, the success of the Beastie Boys’ claims were to a certain extent because of the stipulation in MCA’s will. Advertisers should make sure to diligently investigate whether there are pre-existing bars on the intellectual property assets they seek to incorporate.