Following the United States District Court for the Southern District of New York's award of damages to the Beastie Boys of a reported USD1.7 million dollars against Monster Energy ("Monster) for use of their music and references to the Beastie Boys without their consent or permission, Monster has recently filed motions for appeal of the court's decision. They now also face further suits from additional rights holders to the songs infringed.
Monster, the energy drinks introduced in 2002 by Hansen Natural Corp and involved in a host of extreme sports sponsorship, had made and aired on their website a promotional video containing segments of various Bestie Boys songs in addition to references to the group. The mix of songs had been created by DJ Z-Trip who, in 2011, had obtained an agreement with the Beastie Boys to create the mix for a promotional basis unrelated to Monster. At no time did DJ Z-Trip have rights to authorise, sell or license the music or remix to third parties.
Monster used the remix as the soundtrack to their promotional video in 2012, and forwarded the finished product to DJ Trip in an email saying the following:
Please have a look at the video from this past weekend and let me know if you approve (I think we'll remove the logos at the end since they're redundant and the rest will get cleaned up just a little bit more.)
Thanks again for an amazing weekend!!
Once you approve, we'll post on youtube and notify our 16M fans on fb."
DJ Z-Trip replied:
Maybe at the end when you put up the info about my Beasties mix, you could post below It "Download the mix for free at http://ztrip.bandcamp.com"
That way people can pause it and go get it if they want... Also maybe a proper link on the description they can click thru once it's posted proper?
Dope though... Love the can at the end."
Unfortunately for Monster, they later relied on this endorsement of the finished product as a granting of rights to use the remix without appreciating that copyright can be and often comes as a bundle of rights that may be individually assigned or licensed. In this instance, Monsters' use of the remix without clearing the intellectual property rights of the products through the rights owners, in this case, Beastie Boys, Capitol Records and Universal-Polygram left the energy drink manufacturer exposed.
At trial, Monster was found to have infringed the copyright in the songs and with regard to the references made to the Beastie Boys in the promotional video, was deemed to be a false endorsement.
Monster filed a post-trial motion for a new trial and for a reduction in damages, however in an order denying the motion, the court held that there was sufficient evidence provided to the jury of Monster's reckless disregard to the possibility that the work was an infringement of the Beastie Boys' copyright for the act of infringement to be wilful, thereby being worthy of such damages. In addition, the employee responsible for clearing IP rights had experience of securing such rights from other artists and was held to be legally aware of the duty to secure consent from the Beastie Boys.
The court found an issue as to reckless disregard in relation to the Director of Interactive Marketing who had failed to investigate and secure title of the intellectual property rights before posting the content on their website. Again, the familiarity of the Interactive Marketing Director with the requirement of clearing IP rights in the music industry, his failure to do so in this instance went toward the reckless disregard nature of the infringement.
The court gave short shrift to the proposal by Monster that the infringement was not wilful however, the court held that the Monster's lack of training of employees tasked with matters of copyright and trademark issues whilst rigorously defending and enforcing its own IP rights was not indicative of a sloppy approach to marketing.
In relation to the false endorsement matter, the court found that the jury would have no problem, based on the promotional video, of making an association of endorsement by Beastie Boys to Monster which in all likelihood could result in confusion.
Clearly Monster does not intend to accept the court's decision and has recently filed a notice of appeal. In a counter move, the Beastie Boys have filed a motion for attorney fees and costs to the tune of USD2.4 million. In addition, the other rights holders to songs used, Capitol Records and Universal Polygram, have each sued Monster for infringement of their rights in the case.
The importance of confirming intellectual property title and clearing for use of such rights cannot be overstated. What was a short promotional film to publicise an event has now cost Monster millions of dollars in damages and legal fees.
Access to a digital world filled with images, movies and sounds are instantly accessible but the warning must be heeded, any work that is not your own is likely to have a right owner, and consent should be obtained prior to use. Please contact us if you have any questions regarding the issues raised in this article on 0191 281 4000 or at email@example.com: Case Law, Copyright, Digital/Tech, News