20
Mar/14

Where’s Cookie Puss At? Beastie Boys v Monster Energy


This SDNY decision is chock full of useful legal tidbits.

Monster Energy allegedly disseminated a video that included four (or was it five?) songs in which the Beastie Boys owned 50% of the copyright (or did they?). The Beastie Boys sue on copyright and trademark. All sorts of pre-trial motions get brought. From the top:

1. Plaintiffs want to offer at trial other videos that contain Beastie Boy music. These videos were created and posted by fans and hosted on Monster’s site, as some sort of user-generated content promotion. Held: the videos are out – the allegedly probativity (that these third-party videos somehow shed light on Monster’s sate of mind) is outweighed by among other things, the dreaded ‘trial in a trial.’

2. Plaintiff is allowed to amend its complaint to add a fifth song. The Case Management Plan had set December 16, 2012 as the deadline for amending the complaint. Plaintiff moves to amend on February 14, 2014. Plaintiff has to show good cause. They discovered the infringement in July 2013, during expert discovery. They notified defendant fairly promptly. They waited out summary judgment. Then they moved to amend. And defendant is not prejudiced by the addition of the fifth song.

3. Even though Plaintiff didn’t own the copyright to the fifth copyright at the time the action started and obtained it by assignment later, the ability to sue for copyright can be retroactively assigned.

4. Defendant’s expert’s testimony relating to any ‘likelihood of association’ arising from the sue of the Beastie Boys’ music in a Monster Energy video, will be inadmissible as to the likelihood of confusion, as to the term may cause confusion with the jury as to the proper standard.

5. Experts may not base their opinion as to perceptions of a brand from asking co-workers in the expert’s office. This expert actually had testimony thrown out in a previous case for the same reason. Seriously?

6. The Court does a very thorough analysis of the requirement for monetary damages under the Lanham Act, laying out the disagreement among the Judges of the SDNY as to whether or not plaintiffs are required to show either (1) actual confusion or (2) bad faith, in order to obtain monetary relief. The Court concludes that they do.

Prior decision in summary judgment here.

I’m not sure what my favorite Beastie Boys song is.

beastie v monster

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