In November 2013, just in time for Black Friday, a start-up toy manufacturer that specializes in making engineering and science related toys marketed to girls, GoldieBlox, launched an online commercial depicting three young girls playing with a GoldieBlox toy. The audio of the commercial features the three girls singing what unmistakably sounds like the Beastie Boys’ song “Girls” with rewritten lyrics that promote young girls having an interest in science and engineering. The one thing that was missing from this commercial though, was a license for the use of Girls.

Soon after this commercial went viral, and without missing a beat, lawyers representing the Beastie Boys contacted GoldieBlox and threatened legal action on the basis of copyright infringement. In response to this, on November 21, 2013, GoldieBlox filed a lawsuit against the Beastie Boys in the Northern District of California, asking for a declaratory judgment finding that GoldieBlox’s use of Girls is not copyright infringement on the basis that it falls under the Fair Use Doctrine. Soon after this GoldieBlox took the commercial down, and released a public letter apologizing to the Beastie Boys for not seeking their permission, explaining the company’s intentions, and stating that the company would drop its lawsuit if the Beastie Boys agreed not to take any legal action. Sorry wasn’t good enough though, and in early December 2013, the Beastie Boys launched a countersuit claiming copyright infringement against GoldieBlox. Publically, the surviving members of the Beastie Boys have stated that no matter how good GoldieBlox’s intentions are with respect to the commercial, it is still a commercial to sell a product, and the Beastie Boys long ago agreed that they would never allow their music to be used in commercials.

GoldieBlox’s claim that its use of Girls is a fair use of copyright is based on its assertion that the rewritten lyrics parody the original song by criticizing its sexist lyrics. Parody has been recognized by US courts as a potential ground for fair use. Canada’s copyright law has a doctrine similar to fair use, called fair dealing. Upon coming into force in November 2012, Canada’s Copyright Modernization Act added parody as a ground by which a fair dealing exception to copyright infringement may be claimed in Canada. Therefore a claim like GoldieBlox’s could now be made in Canada, though its chances for success are not yet clear.

What is clear under Canadian law is that simply claiming that a use of copyright is a parody is not sufficient. It also has to be proven that the use is fair. Proving that a dealing with copyright is both fair and fits into one of the categories of fair dealing set out in the Copyright Act (like parody), is the test set out by the Supreme Court of Canada in CCH Canadian Limited v. Law Society of Upper Canada to determine what is a fair dealing. Under this test, the following six factors will be important (though not exclusive) in determining whether or not the particular dealing was “fair”:

  1. The purpose of the dealing
  2. The character of the dealing
  3. The amount of the dealing
  4. Alternatives to the dealing
  5. The nature of the work
  6. The effect of the dealing on the work

It is difficult to determine what finding a Canadian court would make in the Beatie Boys case, so it will be very interesting to see the decision of the United States District Court for Northern California, as it may be informative to a Canadian court at some point in the future. A court decision assumes of course that GoldieBlox and the Beastie Boys will fail to play nice and come to a settlement.