Legal Feature: Beastie Boys and when advertising and “fair use” collide

A few weeks ago I considered the concept of “fair use” as a defence against allegations of copyright infringement. The context of that article was the matter that had arisen between Australian music label Liberation and Professor Lawrence Lessig, relating to Lessig’s “use” of a Liberation-controlled sound recording copyright in a presentation that found its way to YouTube.

The fair use issue is probably one of the more contentious in copyright law. The reality is that not many copyright matters are litigated and most disputes in this area are subject to settlements before a court is called up to rule on the issues between the parties. However that doesn’t stop a large number of claims and counter-claims being issued and getting significant mainstream media attention.

One recent “fair use” matter that has recently come to attention is between a toy company named GoldieBlox and the Beatie Boys. In short, GoldieBlox used a parody version of Beastie Boy’s song Girls in a commercial for their toys. A couple of extra considerations impacted on the case. Firstly the remaining Beastie Boys actually liked the message of the advertisement – that young females should feel empowered to pursue careers outside of tradition female stereotype roles. Secondly though, the band was protecting a long-held policy that their music should not be used for commercial gain. The situation was inflamed when the band approached the toy company for clarification and GoldieBlox responded by heading to court to try and get a declaration that their use was “fair use” and hence not copyright infringement.

The Beasties responded with a statement saying, “Like many of the millions of people who have seen your toy commercial ‘GoldieBlox, Rube Goldberg & the Beastie Boys,’ we were very impressed by the creativity and the message behind your ad,” Beastie Boys’ Mike D and Ad-Rock said in the statement. “We strongly support empowering young girls, breaking down gender stereotypes and igniting a passion for technology and engineering.”

“As creative as it is, make no mistake, your video is an advertisement that is designed to sell a product, and long ago, we made a conscious decision not to permit our music and/or name to be used in product ads. When we tried to simply ask how and why our song Girls had been used in your ad without our permission, YOU sued US.”

The Electronic Frontiers Foundation, long time supporters of the liberation of fair use laws not surprisingly were quickly on the front foot on this issue and put forward some really strong arguments in favour of the use that fair use should protect GoldieBlox in this situation.

They summarised it like this:

The fair use analysis turns on four factors, considered together in light of the purposes of copyright. The first factor, the purpose of the use, considers whether the use transforms the original work to create something new and different and also, to a lesser extent, whether it is commercial. In this case, the use is clearly transformative. GoldieBlox describes itself as a company ’on a mission to inspire the next generation of female engineers.’ To promote its toys and its mission, it took a song that has been widely criticised for its characterisation of women and rewrote the lyrics to tell a different story. Instead of ’Girls, to do the dishes; Girls, to clean up my room’ (the original lyrics), we hear ’Girls, to build a spaceship; Girls, to code the new app’ etc. There’s an obvious commercial element – it’s an advertisement – but that doesn’t end the analysis, especially when the use is highly transformative. This factor favours GoldieBlox.

The second factor considers the nature of the original work: whether it is more or less creative, and whether it is published or unpublished. Copyright tends to give greater protection to creative works like “Girls,” but that need for protection may be mitigated where, as here, a song is long since published and the creator has had ample chance for compensation. This one is a draw, or at most slightly favours the Beastie Boys.

The third factor considers whether GoldieBlox used more of the original work than needed for the purpose. This factor also favors GoldieBlox. The ad uses the instantly recognisable basic tune, but strips out the drum beat and original vocals. While it runs two minutes (most of the length of the original published recording), that’s no more or less than necessary to let the Rube Goldberg machine depicted in the ad run its course. GoldieBlox could have made a less intricate machine, of course, but that would have undermined the purpose of showing the amazing creative engineering girls can do.

As for the fourth factor, market harm, it’s hard to imagine what market is harmed. Sure, the Beastie Boys may have a potential market for licensing songs for commercials (albeit one they chose not to pursue), but this is different—the purpose is an explicit parody. As the Supreme Court has recognised, critical transformative uses rarely if ever supplant markets for the original material.

EFF have several valid points there, but their major point is a difficult one. By relying on the motives and mission of GoldieBlox, as honorable as it is, to lead to the conclusion that their use of the song is transformative, more than commercial, is somewhat of a long bow to draw. They go on to suggest that this kind of ‘cultural sampling’ is exactly what the Beastie Boys themselves have stood for.

So what happened?

Less than a week after pointing themselves in the direction of the courts to try and get a declaration that their work was protected by fair use, GoldieBlox backed down.

In a rather whimsical statement they said: “We don’t want to fight with you. We love you and we are actually huge fans. When we made our parody version of your song, Girls, we did it with the best of intentions. We wanted to take a song we weren’t too proud of, and transform it into a powerful anthem for girls.”

They continued: “Our hearts sank last week when your lawyers called us with threats that we took very seriously. As a small company, we had no choice but to stand up for ourselves. We did so sincerely hoping we could come to a peaceful settlement with you.”

GoldieBlox’s decision referred to the fact that Adam Yauch had requested in his will that the group’s music never be used in advertising: “Although we believe our parody video falls under fair use, we would like to respect his wishes and yours. Since actions speak louder than words, we have already removed the song from our video. In addition, we are ready to stop the lawsuit as long as this means we will no longer be under threat from your legal team. We don’t want to spend our time fighting legal battles. We want to inspire the next generation. We want to be good role models. And we want to be your friends.”

And with that another great opportunity to get a judicial ruling on fair use disappeared into the ether of “mutually acceptable settlement.”

Andrew Watt is a solicitor at media, intellectual property and entertainment law firm Gibsons Solicitors.