Declaratory Actions: Fight for Your Right (to Infringe)

Dear Rich: Just wanted to see if you were thinking about doing anything on the GoldieBlox/Beastie Boys business. It seems to be getting a lot of traction in the social media world. Can you explain why the Beastie Boys got sued when their song got ripped? I'd like to read your thoughts! We usually don't comment on current events -- we're low on opinion hormones -- but your question has practical implications for our readers. For those who are unaware, GoldieBlox, a toy company, used a parody of a Beastie Boys song in a promotional video (above) and then, after being contacted by the Beastie Boys, filed a lawsuit in California.

Suing the injured party? Normally, the party that is wronged or injured -- in this case, The Beastie Boys -- would bring the lawsuit in their state of residence. However, GoldieBlox filed a declaratory action (although in this case, it's not clear why). A declaratory action occurs when one party goes to court claiming there is a dispute and asks for a declaration of each party’s rights. The court then provides a Declaratory Judgment.    

Is it for real? In order to bring a declaratory action, there must be proof of an actual controversy -- a controversy that exists when there is an explicit threat of a lawsuit or, to use legal lingo, when one party has a “reasonable apprehension of litigation.” We'll see whether the Beastie's lawyers will consider this issue or whether they'll plunge in with a counterclaim. 

How this may affect our readers. If you're writing a cease and desist letter and you want to avoid traveling to a faraway state, avoid threatening language in your letters and instead maintain an even-handed tone -- "I am hopeful we can resolve this amicably." Avoid mentioning a lawsuit. That may enable you to dismiss any declaratory actions because there is no "reasonable apprehension." On the other hand, if you don't care where you fight it out, don't bother with the niceties -- head in with guns blazing.

The Rube Goldberg element. With all this attention on the Beastie Boys, what are Rube Goldberg's rights? Goldberg is synonymous with complicated machines that accomplish very little. Some of his works are protected under copyright and the use of his name is restricted in certain contexts. Perhaps the guardians of Rube will join the PR fracas under a right of publicity argument. 

We're not a betting blog but if we were, our money would be on The Beastie Boys. Usually only snippets or short excerpts are excused as fair use song parodies.  When the whole song is used -- Weird Al Yankovic style -- a license is almost always required. If the judge is uncertain, then context matters ... and the Beastie Boys have a better backstory.