Monster organizes and sponsors an annual event called the Ruckus in the Rockies, a snowboarding competition and
Question:
Monster organizes and sponsors an annual event called the “Ruckus in the Rockies,” a snowboarding competition and an after-party. Soon after the 2012 Ruckus, Monster employees created a recap video with highlights from the event. The four-minute video features Beastie Boys’ music in all but 32 seconds. The video also contains text that refers to the Beastie Boys.
Monster never obtained or attempted to obtain permission from the Beastie Boys for the video usage. Rather, the Monster employee who produced the video testified that he believed that a third party—a disc jockey who had performed at the 2012 Ruckus and had created a “Megamix” of Beastie Boys music—had the authority and had in fact authorized Monster to use that Megamix, including the underlying Beastie Boys’ songs, in the video.
Monster posted the video on its website, YouTube channel, and Facebook page. The description of the video that Monster posted online and the press releases that Monster and its agents sent to snowboarding magazines and websites contained additional references to the Beastie Boys. “Dozens” of websites posted Monster’s press release verbatim, including the reference to the Beastie Boys.
Counsel for the Beastie Boys sent a letter to Monster about its lack of permission. Monster immediately removed the video from its YouTube channel. Monster employees later edited the video—replacing the music and removing the references to the Beastie Boys—and then reposted it.
The Beastie Boys filed suit against Monster. The Complaint alleged copyright infringement and false endorsement in violation of the Lanham Act.
Very shortly before trial, Monster conceded liability on the copyright infringement claims. The trial focused on whether the Copyright Act violations had been willful.
The jury found that Monster’s infringement was willful, which increased the range of available statutory damages. The jury also found that Monster had “intended to deceive consumers concerning the Beastie Boys’ endorsement of its products” and that Monster had not proven “that consumers were not, in fact, confused or deceived as to whether the Beastie Boys endorsed Monster’s products.” The jury awarded a total of $1.7 million in damages.
The Beastie Boys moved for a permanent injunction, seeking to permanently enjoin Monster “(a) from using, distributing, or promoting” the Ruckus video; (b) from using, distributing, or promoting any advertising which includes or uses, without plaintiffs’ consent, any copyrighted musical work or sound recording owned or controlled in whole or part by Beastie Boys or Brooklyn Dust Music; (c) from using the names, voices, and trademarks of [the Beastie Boys] for the purposes of advertising and trade purposes, in any manner; and (d) from suggesting a false endorsement of Monster’s products by the Beastie Boys.
Monster argued that the Beastie Boys have not satisfied the elements required to obtain a permanent injunction or, in the alternative, that the scope of the injunction should be limited to the infringing Ruckus video.
JUDICIAL OPINION
ENGELMAYER, District Judge
The Copyright Act provides that courts “may” grant injunctive relief “on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. § 502(a). The Lanham Act similarly provides that courts “shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark.”
A plaintiff “seeking a permanent injunction still must satisfy the traditional four-factor test before the district court may use its equitable discretion to grant such relief.” Specifically, a plaintiff must demonstrate:
(1) that it will suffer an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.
As to the Ruckus video—which Monster concedes infringed the Beastie Boys’ copyrights, and the jury found infringed their trademarks—the Beastie Boys satisfy the four-factor test.
Here, because the jury found that the Beastie Boys had proven a likelihood of consumer confusion as to the group’s endorsement of Monster’s products, and because the evidence supported that finding, the Court may presume irreparable harm.
Significantly, the two surviving members of the Beastie Boys testified, emphatically, that, “since the beginning,” they have refused to license their music for product advertisements because they view such licenses as “a form of selling out.” The evidence at trial corroborated that claim. The Beastie Boys’ manager testified that, with one arguable exception, the Beastie Boys had never authorized use of their music or names in connection with a product. The Beastie Boys’ extensive licensing history, which was received into evidence at trial, similarly demonstrated that, although the Beastie Boys have licensed their music for use in television programs, motion pictures, movie trailers, and video games, they have never done so for product commercials. Beyond the group’s general policy against licensing their music for product advertisements, the surviving band members testified, credibly, that, had they been asked, they would not have granted permission for Monster to use their music in the Ruckus video because they did not want to associate with Monster’s products and disliked the portrayal of women in Monster’s video.
Monster’s exploitation of the Beastie Boys’ works and persona for its own benefit inflicted an intangible, yet very real, injury on plaintiffs. Against their will, the Beastie Boys were forced to associate publicly with, and advance the cause of, a corporation and marketing campaign for which they had evident disdain.
[T]he monetary damages awarded by the jury did not capture—or attempt to capture—this injury. The Court charged the jury, that the value of actual copyright damages was set by the market: the price that a willing buyer and a willing seller would have agreed upon for a license to use the Beastie Boys’ music and names in Monster’s video, for the duration of time that video was available. And the award of statutory damages under the Copyright Act was keyed to the willfulness of Monster’s conduct, including “Monster’s state of mind”; “the expenses saved, and profits earned, if any, by Monster in connection with the infringement”; and “the deterrent effect of such an award on Monster and third parties.” None of these awards, as charged, took into account or sought to compensate the Beastie Boys for the injury caused by the forced association with Monster and its products. Nor could this injury be easily measured, “given the difficulty of protecting a right to exclude through monetary remedies.”
Turning to the third factor, the balance of hardships, Monster argues that an injunction would frustrate its “First Amendment right to express itself,” because “there are many ways in which the mention of the ‘Beastie Boys’ and/or [its members’] names would constitute fair use and/or otherwise be permissible.” As a general proposition, that is surely true, but this generalization gains no traction in the specific context of an injunction not to use the Ruckus video containing the Beastie Boys music and names. Monster long ago conceded that the video infringed the Beastie Boys’ copyrights. And the jury further found that the video violated the Beastie Boys’ trademark rights by falsely implying an endorsement. Monster therefore has no legitimate interest, let alone a First Amendment interest, in further dissemination or use of that video. A permanent injunction limited to the infringing Ruckus video would, therefore, protect the Beastie Boys from further injury without imposing any cognizable hardship on Monster.
Finally, as to the fourth factor, a permanent injunction limited to the infringing video would not disserve the public interest. In light of this analysis, the Beastie Boys are clearly entitled to a permanent injunction that prohibits Monster from any further use of the infringing Ruckus video. The open question is whether such an injunction should sweep any more broadly.
In the Court’s view, the injunction the Beastie Boys propose is highly overbroad. It would sweep well beyond the single video at issue in this lawsuit to expansively ban a host of hypothetical future acts that the Beastie Boys cast as infringement. Given Monster’s marketing strategy, in particular its reliance on social media and sponsored (and somewhat unstructured) events like the Ruckus in the Rockies, almost any reference to the Beastie Boys by Monster or its agents could be construed as having been made “for the purposes of advertising and trade.” The proposed injunction could therefore sweep in instances of nominative fair use, a DJ’s mention of the Beastie Boys during a Monster- sponsored party, or even, conceivably, commentary by Monster on this litigation. The Court is unwilling to chill Monster’s lawful expression by issuing an overbroad injunction.
[T]he Court is quite unpersuaded that any such a broad injunction is necessary to protect the Beastie Boys’ rights. The evidence showed that Monster’s infringement via the Ruckus video—although blatant and, as found by the jury, intentional—was an opportunistic and, in all likelihood, anomalous occurrence. Although the evidence showed that the Beastie Boys’ fan base overlapped significantly with Monster’s target consumer market, there was no evidence whatsoever that Monster had set out, as a matter of high-level corporate strategy, to obtain and use the Beastie Boys’ music without the necessary permission, or to manufacture a false endorsement. Instead, the infringement in the Ruckus video was a product of deficient corporate controls and derelict mid- and site-level employees.
The Beastie Boys have not pointed to any other act of infringement, or evidence outside of the episode involving the Ruckus video, that indicates a propensity by Monster to infringe on others’ intellectual property rights generally or the rights of the Beastie Boys specifically. The Court finds that the infringement and false endorsement here, egregious though they were, were transgressions that are unlikely to recur.
[T]he Court grants the Beastie Boys’ motion for a permanent injunction, limited to the infringing version of Monster’s Ruckus video at issue in this litigation.
If Monster conceded infringement, what is the court deciding?
Essentials of Business Analytics
ISBN: 978-1285187273
1st edition
Authors: Jeffrey Camm, James Cochran, Michael Fry, Jeffrey Ohlmann , David Anderson, Dennis Sweeney, Thomas Williams