Last month, I wrote about the preemptive lawsuit filed by GoldieBlox, a toy retailer, against the Beastie Boys. GoldieBlox sought declaratory relief that their use of the Beastie Boys’ song “Girls” in a GoldieBlox advertisement constituted fair use, despite the fact that GoldieBlox lacked the Beastie Boys’ permission to use it. At the time, it seemed as though the Goldieblox/Beastie Boys feud would be short lived. As hastily as the GoldieBlox lawsuit appeared, GoldieBlox was extending the olive branch of amends and apologizing for its playing of the Beastie Boys’ ditty in its advertising. After the apology, the whole episode looked destined to become nothing more than water under the copyright infringement bridge.
Any signs of peace were only temporary, however. Last week, the Beastie Boys filed their own action against GoldieBlox alleging, among other things, infringement of copyright and trademark, unfair competition, and misappropriation of the right of publicity.
My prior blog post considered the arguments on both sides of the GoldieBlox assertion that the advertisement’s use of the song constituted a parody. One thing that’s clear from the Beastie Boys’ recent filing is that the Beastie Boys consider the copyright infringing advertisement stealing, pure and simple:
“Unfortunately, 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.”
The complaint goes on to allege that GoldieBlox’s play on the song also constitutes a trademark infringement. The Beastie Boys say that such infringement directly led to a “massive increase” in GoldieBlox’s toy sales that was so voluminous that GoldieBlox was featured among the most popular toys for the 2013 holiday season at Amazon.com. According to the Beastie Boys, this sales surge is attributable to the “decades” of goodwill the Beastie Boys worked to achieve and consumer confusion that the Beastie Boys sanctioned GoldieBlox products when they did not. The Beastie Boys contend that this sales boost drive by customer confusion entitles the Beastie Boys to all profits reaped by GoldieBlox as a result.
This wouldn’t be the first time a song has been alleged to create customer confusion in the marketplace. In Mattel, Inc. v. MCA Records, a case we’ve looked at before, the Ninth Circuit pondered whether the 1997 Aqua hit “Barbie Girl” created customer confusion that Mattel, the maker of Barbie dolls, was associated with the song. Concluding that the song did “not explicitly mislead as to the source of the work,” the Court found that no trademark infringement occurred. Given this precedent, how strong is the Beastie Boys’ claim regarding the belief of a confused public that they approved GoldieBlox’s advertisement and/or products?
Customer Confusion in Trademark
Customer confusion and trademark is a topic I’ve written about before. Generally speaking, trademark law protects trademark owners and consumers from any confusion that may arise in the marketplace when a trademark owner appears to have authorized another party to use that mark, when in fact, no authorization occurred. In addition, it protects from perceived affiliations between parties where none in fact exist.
So what is the likelihood for confusion here? On the one hand, the two parties do not directly compete with one another – one sells toys for children, and the other creates original musical compositions. Furthermore, the song at issue was released in the mid-1980’s. How probable is it that the children at whom the toy ads are directed would draw a connection between the ad and a song almost 30 years old?
On the other hand, while GoldieBlox products are ostensibly marketed to children, it is their parents who are the ultimate customers. These parents are probably in the age group that that listened to the Beastie Boys way back when and now immediately recognize the extremely catchy, unmistakable tune when watching the GoldieBlox ad (as this blogger certainly did).
It remains to be seen whether confusion among the toy buying public will be found by the courts. In the meantime, this will certainly be a fun case to watch and analyze for creative arguments pertaining to fair use and trademark infringement.