After GoldieBlox announced with great fanfare that it would withdraw its claim seeking a declaratory judgment that its use in a video of the Beastie Boys song “Girls” was a fair use under the Copyright Act, many assumed that was the end of it and that the only point for discussion was GoldieBlox’s motivation.  As we pointed out at the time, however, that “offer” was not accompanied by a dismissal of the already filed lawsuit.  Presumably, the Beastie Boys either declined, or failed to respond, because the band has now answered the Complaint and filed counterclaims, alleging copyright and trademark infringement. 

The Beastie Boys’ copyright claim largely mirrors GoldieBlox’s, except seeking the reverse outcome, that is, a finding that the web video infringed.  The band notes the use of other copyrighted songs (like Queen, as we noticed), and argues that the commercial is a straightforward infringement of the song.  The band also seeks trademark damages, which are premised on the notion that GoldieBlox’s use impairs the reputation either registered or acquired by the Beastie Boys over the year. 

As a result, GoldieBlox is in it for the long haul now whether they want to be or not.  A party may voluntarily dismiss its claim any time before the defendant files an answer.  So, GoldieBlox easily could have dismissed the claim along with its publicized “offer,” but presumably didn’t without an assurance that the Beastie Boys would not file a new lawsuit.  Now that the band has, GoldieBlox is a defendant just as if it had never brought litigation, subject to prevailing both on its own claims, and on the band’s.

I’m on record as concluding that the ad was fair use, although Justice Souter’s dicta inCampbell does question the reach of fair use for advertisements.  The trademark question is different, though given the publicity it’s hard to imagine anyone confusing the video (which is no longer online) with an endorsement from the band.  The 9th Circuit also has a far more useful guidepost (also arising of a musical group—Green Day—ironically) for fair use than the 2nd Circuit’s Cariou v. Prince muddle, so one can hope for a soundly reasoned outcome here if it ever gets that far.