It is unusual for a rap or hip-hop group to complain of copyright infringement.A much more common scenario is hip hop artists being sued for sampling other artists’ music. For example, the seminal Miami hip hop group 2 Live Crew were sued by Van Halen in 1990 for sampling the rock band’s song “Ain’t talkin’ ‘bout Love” without permission. As we have noted in a previous article: [1]

1980s albums such as the Beastie Boys’ Paul's Boutique and Public Enemy’s Fear of a Black Planet are said to contain hundreds of samples, which would have been economically impossible to license for use under today’s standards.

It is reasonably easy to see how sampling another artist’s recordings may constitute copyright infringement. But what if, rather than sample one part of another artist’s song, a musician – or an advertising agency – appropriates the entire song and claims that it is a parody?

This is what has happened in the United States with GoldieBlox, Inc, a start-up company from California whose motto is “Building games for girls to inspire future engineers”.[2] Last month, GoldieBlox released a promotional video which showed girls playing – and making a statement about gender equality – with an ingenious and fantastically complex contraption (a “Rube Goldberg machine”). The accompanying music was that of the Beastie Boys’ famous single from 1987, “Girls”. GoldieBlox replaced the Beastie Boys’ overtly juvenile and, frankly, batty lyrics, which were about women rather than girls, with words which celebrated technological discovery, creativity and invention by girls – sung, appropriately, by girls.[3]

GoldieBlox had clearly appropriated the Beastie Boys’ music, and adapted their lyrics, but the way in which it did so was in the nature of parody: a humorous imitation of a previous work. What is more, this imitation provided social critique. GoldieBlox seemed to have a reasonably strong claim to the “fair use” exception in US copyright law: “the fair use of a copyrighted work…for purposes such as criticism, comment, news reporting, teaching…scholarship or research, is not an infringement of copyright.”[4] In the leading US case, the Supreme Court held that “parody, like other comment or criticism, may claim fair use”.[5]

Campbell v Acuff-Rose Music, Inc was almost the inverse of the GoldieBlox situation. Where Beastie Boy Ad-Rock sang of girls doing the dishes, cleaning up his room, and doing the laundry, GoldieBlox celebrated female empowerment and equality. In the Acuff-Rose Music case, the defendants were 2 Live Crew, who had taken the “heart” of the Roy Orbison song “Oh, Pretty Woman” and made “the heart of a new work”.[6] 2 Live Crew’s re-working of Orbison’s romantic original was “shocking”[7] and arguably misogynistic. However, the Supreme Court, while not assigning a “high rank” to the parodic element in 2 Live Crew’s “Pretty Woman”, found that it “reasonably could be perceived as commenting on the original or criticizing it, to some degree.”[8] Acuff-Rose had succeeded in the Court of Appeals by emphasising the commercial nature of 2 Live Crew’s parody, but the Supreme Court insisted that “the commercial or nonprofit educational character of a work is ‘not conclusive’”.[9]

GoldieBlox did not seek permission from the two surviving members of the Beastie Boys or their record label to parody “Girls.[10] If they had been asked, the Beastie Boys would not have given permission, because they have a long-standing policy of not allowing their music to be used in product advertisements – a policy which became part of the will of Adam Yauch, aka MCA, who died of cancer last year.[11]

When GoldieBlox launched its advertisement, the Beastie Boys’ lawyer called the company and requested that it withdraw the video. GoldieBlox refused and, in a “pre-emptive strike”,[12] applied to the US District Court for a declaratory judgment that its parody was protected by the fair use doctrine, and an injunction restraining the Beastie Boys from seeking to enforce their copyright.[13] GoldieBlox would undoubtedly have relied on Acuff-Rose. The Beastie Boys, for their part, may well have cited Justice Souter’s statement that “[t]he use…of a copyrighted work to advertise a product, even in a parody, will be entitled to less indulgence under…the fair use enquiry than the sale of a parody for its own sake”.[14]

After a few days, GoldieBlox appeared to back down from litigation. The company withdrew the original video from YouTube and substituted a version with generic music.[15] The Beastie Boys had already made it clear that while they were “impressed by the creativity and the message” of GoldieBlox’s video, they could not accept the commercial use of their music.[16] For a fortnight, it seemed that after a courteous exchange of online correspondence (drafted with legal advice), both sides had walked away with their respect intact.  Certainly, GoldieBlox gained immense publicity, which it could not possibly have bought with advertising.

However, this week the Beastie Boys filed an answer (available here) to GoldieBlox’s claim, counterclaiming not only for copyright infringement, but also for trade mark infringement, false designation of origin, passing off, false advertising, false endorsement, unfair competition, misappropriation of right of publicity and violation of the New York Civil Rights Law. The Beastie Boys are seeking a permanent injunction, damages and an account of profits. It now seems that this dispute will not be over by Christmas.

What would happen in other countries like New Zealand?

The New Zealand Copyright Act 1994 has no parody exception: the closest is section 42, which permits “fair dealing” for criticism, review, and news reporting. This would not cover a product advertisement. It is doubtful, also, whether a purely artistic parody would be covered by the express provisions of the Copyright Act 1994.[17]

In Canada, which had a similar fair dealing exception to New Zealand’s,[18] the Federal Court of Canada has held that parody cannot be equated with “criticism”.[19] The Canadian Act was amended last year to provide that “Fair dealing for the purpose of research, private study, education, parody or satire does not infringe copyright.”[20]

Similarly, in Australia, a 2006 amendment to the Copyright Act 1968 (Cth) allowed fair dealing for the purpose of parody or satire.[21]

The New Zealand Government announced a discussion document for a similar amendment in 2008, but this project did not survive the general election of that year.[22]

If a parodist has not copied a substantial part of the original work, there will be no infringement; but this is seldom the case with parody. A parodist in New Zealand might try to claim that he or she is the author of an original work,[23] but according to the English High Court:[24]

The fact that the defendant in reproducing his work may have himself employed labour and produced something original, or some part of his work which is original, is beside the point if none the less the resulting defendant’s work reproduces without the licence of the plaintiff a substantial part of the plaintiff’s work.

Parody may, at present, be lawful if it can be shown to be fair dealing for the purpose of criticism.[25]In New Zealand, as in the United Kingdom, the fact remains that “[h]owever socially or culturally desirable, parody is fraught with legal risk.”[26] Perhaps it is time for the New Zealand Government to re-visit this issue given that the New Zealand and Australian economies, and the respective intellectual property regimes of the two countries, are supposedly moving closer together.