Beastie Boys & UMG Awarded Attorney's Fees In TufAmerica Copyright Action

TufAmerica, Inc. v. Diamond et al., No. 12-cv-3529 (S.D.N.Y. filed Mar. 9, 2016).

The Court awarded the Beastie Boys and their label, UMG, attorney's fees under section 505 of the Copyright Act, after they successfully defeated plaintiff's infringement claims at summary judgment.  The question at summary judgment was whether Plaintiff had standing (they did not), and the Court found that awarding fees furthered the objectives of the Copyright Act by deterring the filing and pursuit of lawsuits in which chain of title has not been properly investigated by the plaintiff.   The court reduced the Beastie Boys' lawyer's fees by 10% for some vague billing entries and duplicative work; 15% was reduced from the label's lawyer's fees based on vague and sparse entries.  Beastie Boys and UMG were also awarded costs.  The totals were:

• Beastie Boys: approx. $591k fees, approx. $11k costs
• UMG: appox. $234k fees, approx $8k costs

Beastie Boys Awarded Attorneys Fees For Copyright Infringement, But Reduced Amount

Beastie Boys v. Monster Engergy, 1:12-cv-06065-PAE (SDNY filed 06/15/15) [Doc. 216].

After succeeding against Monster Energy Drinks at trial, the Court found that the Beastie Boys were entitled to attorney's fees for Monster's willful copyright infringement but not in connection with the Lanham Act violation, which the Court found was not "exceptional".  Additionally, the Court significantly reduced the attorney's fees recoverable to approximately $660,000, from the over $2 million requested.

Limited Permanent Injunction Entered In Beastie Boys v. Monster Case

Beastie Boys v. Monster Energy, No. 12-cv-06065 (S.D.N.Y. filed 02/20/15) [Doc. 201].

After prevailing at trial, the Court granted the Beastie Boys' motion for a permanent injunction, but agreed with Monster that the injunction "must be tightly limited to cover only the infringing video."  The Beastie Boys had sought to broadly enjoin Monster from using the Beastie Boys' music, voices, names, and trademarks for any advertising or trade-related purpose, whereas Monster argued that, if the Court decided to issue a permanent injunction at all, that relief should be limited to the video at issue in the case.  The Court applied the traditional four-factor test in exercising its equitable discretion to grant such relief, and found that "In the Court's view, the injunction the Beastie Boys propose is highly overbroad. It would sweep well beyond the single video at issue in this lawsuit to expansively ban a host of hypothetical future acts that the Beastie Boys cast as infringement."

Motion For Judgment As Matter Of Law, Or For New Trial, Denied In Beastie Boys/Monster Case

Beastie Boys v. Monster Energy, 1:12-cv-06065-PAE (SDNY filed 12/04/14) [Doc. 181].

After a jury awarded plaintiff Beastie Boys a verdict on their copyright and trademark claims, defendant Monster moved for a judgment as a matter of law under Federal Rule of Civil Procedure 50.  As to the Copyright Act claim, Monster argued that the evidence was insufficient to support the finding of willful infringement on which the award of enhanced statutory damages was based.  As to the Lanham Act claim, Monster argued that the evidence was insufficient to support either a finding of a false endorsement or that
Monster acted with intentional deception.  Monster alternatively moved for a new trial under
Rule 59 or for a reduction in damages.   The court denied Monster’s motions.

Monster's 3rd Party Claims Against DJ Dismissed In Beastie Boys Case

Beastie Boys v. Monster, No. 12-cv-6065 (S.D.N.Y. filed Nov. 4, 2013) [Doc. 51].

The Beastie Boys sued Monster Energy drinks under Lanham Act for the allegedly unauthorized publication of a promotional video that used as its soundtrack a remix including songs originally composed and recorded by the Beastie Boys.  Monster brought third-party claims for breach of contract and fraud against a DJ, who originally made the remix (with the Beastie Boys' permission) and furnished it to Monster.  After discovery, the Court granted the DJ summary judgment dismissing the third-party claims.

First, the Court found that there was no binding agreement between the DJ and Monster.  "...[A] reasonable
juror could not find an offer, sufficiently clear acceptance, or consideration, e.g., a legal duty which Monster incurred to Z-Trip, let alone all three."  Second, the Court found that there was no fraud.

"In sum, if Monster is liable to the Beastie Boys, it may not shift legal responsibility for such lapses to Z-Trip.  Any such liability on Monster’s part would arise instead because Monster left these matters in the hands of an employee insensitive to the legal issues presented by making derivative use of, and commercially exploiting, the Beastie Boys’ original work. In musical terms, Z-Trip can now, therefore, rest at least “as cool as a cucumber in a bowl of hot sauce,” because Monster’s Third-Party Complaint against him has “got the rhyme and reason but no cause.” Beastie Boys, So Watcha Want (Capitol Records 1992). It is therefore dismissed, with prejudice."

The Court, in a separate order, further urged the parties to settle the case rather than to go to trial.  [Doc. 53].

Beastie Boys Avoid Several Copyright Claims In Sampling Case

TufAmerica, Inc. v. Diamond et al., No. 12-cv-3529-AJN (S.D.N.Y. filed Sep. 10, 2013).

Plaintiff brought a copyright infringement action against the Beastie Boys alleging unlawful sampling of 6 pieces of plaintiff's music in five Beastie Boys songs that appear on two Beastie Boys albums (Paul's Boutique and Licensed to Ill).  Defendants moved to dismiss for failure to state a claim under Rule 12(b)(6).

The Court agreed with plaintiff that the standard for determining substantial similarity was "fragmented literal similarity", rather than "ordinary observer" standard.  Under the "fragmented literal similarity" standard, the question was whether the copying went to trivial or substantive elements.  Thus, the "real question" for the Court was whether Plaintiff had alleged that each sample was "quantitatively and qualitatively important to the original work such that the fragmented similarity becomes sufficiently substantial for the use to become an infringement."  Under the quantitative analysis, the concept of de minimis copying is relevant.  Also, the analysis is of the original song -- not of the use in the allegedly infringing song; therefore, the Court was not persuaded by Plaintiff's allegation in its original complaint that the samples were concealed to a casual listener of the Beastie Boys' songs.  Thus, the Court then went on a song-by-song analysis, which included a discussion of whether the sampled portion was even copyrightable material, and dismissed four of the claims based on 4 of the samples.  Lastly, under the statute of limitations, the Court also limited the surviving claims to infringements occurring after May 2009 (3 years before the suit was filed).