COUNTERCLAIMS OF THE BEASTIE BOYS PARTIES
For their Counterclaims against Plaintiff and Counterclaim-Defendant GoldieBlox, Inc. (“GoldieBlox”), Brooklyn Dust Music, Beastie Boys and Adam Horovitz (collectively, the “Beastie Boys Defendants”), together with Michael Diamond and Dechen Yauch as executor of the estate of Adam Yauch, deceased (collectively, with the Beastie Boys Defendants, the “Beastie Boys Parties”), aver as follows:
...Facts Applicable To All Counterclaims
11. As an integral part of GoldieBlox’s marketing campaign to sell books and toys that it claims are designed to “inspire the next generation of female engineers” (a profession defined by innovation and original thinking), GoldieBlox has engaged in the systematic infringement of intellectual property from numerous popular music groups, including Beastie Boys.
12. As part of that systematic campaign of infringement, GoldieBlox has created a series of video advertisements set to well-known songs from popular artists in an effort to achieve the company’s primary goal of selling toys.
13. Upon information and belief, GoldieBlox has produced and published videos that infringe upon popular songs by Beastie Boys, Queen, Daft Punk, Kaskade, Krewella, Avicii, Slam, k.flay and Trevor Guthrie.
14. In some instances, GoldieBlox has altered the lyrics of the popular songs featured in its video advertisements in order to tailor those songs to the company’s goal of selling toys.
15. One of the popular songs that GoldieBlox altered for use in its video advertisements is “Girls,” the seventh and final single from the Beastie Boys’ 1987 debut album Licensed to Ill. “Girls” is a sarcastic anthem.
16. Upon information and belief, on or about November 18, 2013 GoldieBlox published a video advertisement entitled “GoldieBlox, Rube Goldberg, & Beastie Boys ‘Princess Machine’” on its own website and uploaded it to the popular internet video website Youtube.com. (Hereinafter, the “GoldieBlox Advertisement”.) At or around that time, GoldieBlox began promoting the GoldieBlox Advertisement through, among other things, its accounts on the social media websites Twitter.com and Facebook.com.
17. The GoldieBlox Advertisement posted on the GoldieBlox website and Youtube.com, as well as substantially all of GoldieBlox’s social media posts promoting the GoldieBlox Advertisement, used and explicitly referred to the Beastie Boys’ name and identity.
18. The “Beastie Boys” name and identity is readily associated with Horovitz, Diamond and Yauch, both individually and collectively and have come to signify the musical, artistic, and other creations by Horovitz, Diamond and Yauch individually, as well as collectively under the name “Beastie Boys,” and to identify each of them as individual members of the recording and performing group Beastie Boys.
19. The Beastie Boys Parties are the owners of the common law and registered trademark BEASTIE BOYS® for use with, among other things, musical sound recordings and video recordings featuring musical performances. The BEASTIE BOYS® mark is registered with the United States Patent & Trademark Office as U.S. Reg. No. 4,197,406, and has been in continuous use since 1982. That registration is valid and subsisting under 15 U.S.C. §§ 1051, et seq.
20. The GoldieBlox Advertisement is of a commercial nature and used the Copyrighted Work and the BEASTIE BOYS® mark to advertise GoldieBlox’s products, without any of the Beastie Boys Parties’ consent or authorization.
21. The GoldieBlox Advertisement featured the Beastie Boys musical composition “Girls” with lyrics modified to become a “jingle” to sell GoldieBlox’s products.
22. The GoldieBlox Advertisement promptly became a viral hit on the internet, garnering over 8 million views on Youtube.com alone in just ten days. The GoldieBlox Advertisement also received massive coverage in the press, which primarily focused on its apparently, but not in fact, approved use of the Beastie Boys’ song.
23. Upon information and belief, the publishing of the GoldieBlox Advertisement directly coincided with and directly resulted in a massive increase in the sales of GoldieBlox’s products.
24. Upon information and belief, the publishing of the GoldieBlox Advertisement and GoldieBlox’s marketing strategy of infringing upon the Copyrighted Work directly resulted in the company’s product line being featured as one of the most popular toy lines for the 2013 holiday season on the internet shopping website Amazon.com.
25. Upon information and belief, on or about November 20, 2013, a representative from an advertising agency contacted Universal Music Publishing Group (the administrator of Brooklyn Dust’s and Horovitz’s copyrights in the Copyrighted Work) to ascertain whether GoldieBlox had obtained a license from the Beastie Boys Parties and their publisher or their administrator for the use of the underlying song “Girls” in the GoldieBlox Advertisement. Upon information and belief, the request was made because the advertising agency was in the process of submitting the GoldieBlox Advertisement to a competition, sponsored by Intuit Inc., to win a 30-second television commercial spot during the 2014 Super Bowl.
26. On November 21, 2013, counsel for the Beastie Boys Parties contacted counsel for GoldieBlox to inquire about the company’s use of the Beastie Boys song in the GoldieBlox Advertisement.
27. On that very same day, GoldieBlox filed this action seeking declaratory and injunctive relief.
28. Upon information and belief, GoldieBlox achieved and continues to achieve additional publicity, press coverage, and, upon information and belief, greater sales of its products, as a direct result of the Beastie Boys’ perceived affiliation with the GoldieBlox Advertisement.
29. 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. Accordingly, the Beastie Boys Parties assert the following counterclaims.
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