GoldieBlox, Inc. v. Island Def Jam Music Group et al

Filing 31

ANSWER WITH AFFIRMATIVE DEFENSES; FIRST AMENED COUNTERCLAIM against GoldieBlox, Inc.. Filed by Michael Diamond (Counterclaim-Plaintiff), Adam Horovitz, Dechen Yauch, executor of the estate of Adam Yauch(Counterclaim-Plaintiff), Brooklyn Dust Music, Beastie Boys. (Raygor, Kent) (Filed on 2/24/2014) Modified text on 2/25/2014 (dhmS, COURT STAFF).

1 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
2
3
4
5
6
7

KENT R. RAYGOR, Cal. Bar No. 117224
KEVIN PUVALOWSKI (pro hac vice application forthcoming)
KENNETH B. ANDERSON (pro hac vice application forthcoming)
THOMAS M. MONAHAN, Cal. Bar No. 277536
1901 Avenue of the Stars, Suite 1600
Los Angeles, California 90067-6055
Telephone:
[phone]
Facsimile:
[phone]
Email:
[e-mail]
[e-mail]
[e-mail]
[e-mail]

8 Attorneys for Defendants and Counterclaim-Plaintiffs
BEASTIE BOYS, ADAM HOROVITZ and BROOKLYN DUST
9 MUSIC; and Counterclaim-Plaintiffs MICHAEL DIAMOND and
DECHEN YAUCH, executor of the estate of ADAM YAUCH

10
UNITED STATES DISTRICT COURT

11
NORTHERN DISTRICT OF CALIFORNIA, OAKLAND DIVISION

12
13 GOLDIEBLOX, INC.,

Case No. 4:13-CV-05428-DMR

Plaintiff,

14

(1)

ANSWER, WITH AFFIRMATIVE
DEFENSES;

(2)

FIRST AMENDED COUNTERCLAIMS
FOR:

v.

15
16
17
18
19

ISLAND DEF JAM MUSIC GROUP, A DIV.
OF UMG RECORDINGS, INC.;
BROOKLYN DUST MUSIC; BEASTIE
BOYS; SONY/ATV MUSIC PUBLISHING
GROUP LLC; UNIVERSAL MUSIC
PUBLISHING, INC.; RICK RUBIN; AND
ADAM HOROVITZ,
Defendants.

(a)

COPYRIGHT INFRINGEMENT
[17 U.S.C. §§ 501, et seq.];

(b)

INFRINGEMENT OF
REGISTERED TRADEMARK [15
U.S.C. § 1114(a)];

(c)

TRADEMARK INFRINGEMENT,
FALSE DESIGNATION OF
ORIGIN, PASSING OFF, FALSE
ADVERTISING, FALSE
ENDORSEMENT, AND UNFAIR
COMPETITION [15 U.S.C. §
1125(a)];

(d)

TRADEMARK INFRINGEMENT,
FALSE DESIGNATION OF
ORIGIN, PASSING OFF, FALSE
ADVERTISING, FALSE
ENDORSEMENT, AND UNFAIR
COMPETITION [California
Common Law];

20
21
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23
24
25
26

BEASTIE BOYS, a New York partnership;
MICHAEL DIAMOND, an individual;
ADAM HOROVITZ, an individual; DECHEN
YAUCH, as executor of the estate of ADAM
YAUCH, deceased; and MICHAEL
DIAMOND, ADAM HOROVITZ, and
DECHEN YAUCH, as executor of the estate
of ADAM YAUCH, collectively d/b/a
BROOKLYN DUST MUSIC,
Counterclaim-Plaintiffs,
v.

27 GOLDIEBLOX, INC.,
Counterclaim-Defendant.

28
Case No. 4:13-CV-05428-DMR
ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

(e)

UNFAIR COMPETITION, FALSE
DESIGNATION OF ORIGIN AND
FALSE ADVERTISING [Cal. Bus.
& Prof. Code §§ 17200 and 17500, et
seq.];

(f)

MISAPPROPRIATION OF RIGHT
OF PUBLICITY [California
Common Law];

(g)

AN ACCOUNTING;

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3
4
5
6
7

(3)

DEMAND FOR JURY TRIAL.

8
9
10

For their Answer to the Complaint by GoldieBlox, Inc. (“Plaintiff”), Defendants Brooklyn

11 Dust Music, Beastie Boys and Adam Horovitz (collectively, the “Beastie Boys Defendants”) admit,
12 deny, and aver as follows:
13

I.

14

ANSWER OF THE BEASTIE BOYS DEFENDANTS

15

1.

Paragraph 1 of the Complaint includes a number of legal conclusions to which no

16 response is required. The Beastie Boys Defendants otherwise deny all other allegations contained in
17 Paragraph 1 of the Complaint.
18

2.

Paragraph 2 of the Complaint includes a number of legal conclusions to which no

19 response is required. The Beastie Boys Defendants otherwise deny all other allegations contained in
20 Paragraph 2 of the Complaint.
21

3.

The Beastie Boys Defendants admit that their position is that the video advertisement

22 posted on Plaintiff’s website and other video sharing websites featuring the Beastie Boys’ song
23 “Girls” (the “GoldieBlox Advertisement”) constitutes copyright infringement and is not fair use.
24 The Beastie Boys Defendants otherwise deny all other allegations contained in Paragraph 3 of the
25 Complaint.
26

4.

Paragraph 4 of the Complaint is exclusively composed of legal conclusions to which

27 no response is required. To the extent an answer is required, the Beastie Boys Defendants deny the
28 allegations.
Case No. 4:13-CV-05428-DMR
-2ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

5.

The Beastie Boys Defendants deny knowledge or information sufficient to form a

2 belief concerning the truth of the allegations contained in Paragraph 5 of the Complaint.
3

6.

The Beastie Boys Defendants deny knowledge or information sufficient to form a

4 belief concerning the truth of the allegations contained in Paragraph 6 of the Complaint.
5

7.

The Beastie Boys Defendants deny the allegations contained in Paragraph 7 of the

6 Complaint.
7

8.

The Beastie Boys Defendants deny the allegations contained in Paragraph 8 of the

8 Complaint.
9

9.

The Beastie Boys Defendants deny knowledge or information sufficient to form a

10 belief concerning the truth of the allegations contained in Paragraph 9 of the Complaint.
11

10.

The Beastie Boys Defendants deny knowledge or information sufficient to form a

12 belief concerning the truth of the allegations contained in Paragraph 10 of the Complaint.
13

11.

The Beastie Boys Defendants deny knowledge or information sufficient to form a

14 belief concerning the truth of the allegations contained in Paragraph 11 of the Complaint.
15

12.

The Beastie Boys Defendants admit the allegations in Paragraph 12 of the Complaint.

16

13.

Paragraph 13 of the Complaint is exclusively composed of legal conclusions to which

17 no response is required. To the extent an answer is required, the Beastie Boys Defendants deny the
18 allegations.
19

14.

Paragraph 14 of the Complaint includes a number of legal conclusions to which no

20 response is required. The Beastie Boys Defendants otherwise deny all other allegations contained in
21 Paragraph 14 of the Complaint.
22

15.

Paragraph 15 of the Complaint is exclusively composed of legal conclusions to which

23 no response is required. To the extent an answer is required, the Beastie Boys Defendants deny the
24 allegations.
25

16.

The Beastie Boys Defendants deny knowledge or information sufficient to form a

26 belief concerning the truth of the allegations contained in Paragraph 16 of the Complaint.
27

17.

The Beastie Boys Defendants deny knowledge or information sufficient to form a

28 belief concerning the truth of the allegations contained in Paragraph 17 of the Complaint, and, to the
Case No. 4:13-CV-05428-DMR
-3ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1 extent Paragraph 17 of the Complaint describes the contents of the GoldieBlox Advertisement or
2 other advertisements produced by Plaintiff, the Beastie Boys Defendants respectfully refer the Court
3 thereto.
4

18.

The Beastie Boys Defendants deny the allegations contained in Paragraph 18 of the

5 Complaint, and, to the extent Paragraph 18 describes the contents of the GoldieBlox Advertisement
6 or the song “Girls” itself, the Beastie Boys Defendants respectfully refer the Court thereto.
7

19.

The Beastie Boys Defendants deny knowledge or information sufficient to form a

8 belief concerning the truth of the allegations contained in Paragraph 19 of the Complaint, and, to the
9 extent Paragraph 19 of the Complaint describes the contents of the GoldieBlox Advertisement or the
10 song “Girls” itself, the Beastie Boys Defendants respectfully refer the Court thereto.
11

20.

The Beastie Boys Defendants deny the allegations contained in Paragraph 20 of the

12 Complaint.
13

21.

The Beastie Boys Defendants deny the allegations contained in Paragraph 21 of the

14 Complaint.
15

22.

The Beastie Boys Defendants repeat and reallege their responses to Paragraphs 1

16 through 21 of the Complaint as though fully set forth herein.
17

23.

Paragraph 23 of the Complaint is exclusively composed of legal conclusions to which

18 no response is required. To the extent an answer is required, the Beastie Boys Defendants deny the
19 allegations.
20

24.

Paragraph 24 of the Complaint is exclusively composed of legal conclusions to which

21 no response is required. To the extent an answer is required, the Beastie Boys Defendants deny the
22 allegations.
23

25.

The Beastie Boys Defendants repeat and reallege their responses to Paragraphs 1

24 through 24 of the Complaint as though fully set forth herein.
25

26.

Paragraph 26 of the Complaint is exclusively composed of legal conclusions to which

26 no response is required. To the extent an answer is required, the Beastie Boys Defendants deny the
27 allegations.
28
Case No. 4:13-CV-05428-DMR
-4ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

27.

Paragraph 27 of the Complaint is exclusively composed of legal conclusions to which

2 no response is required. To the extent an answer is required, the Beastie Boys Defendants deny the
3 allegations.
AFFIRMATIVE DEFENSES

4
5

As separate and distinct affirmative defenses to Plaintiff’s allegations, the Beastie Boys

6 Defendants allege as follows:
7

FIRST AFFIRMATIVE DEFENSE

8

[Failure To State A Claim]

9

1.

Plaintiff’s Complaint, and each purported claim for relief contained therein, fails to

10 state a claim upon which relief may be granted.
11

SECOND AFFIRMATIVE DEFENSE

12

[Unclean Hands]

13

2.

Plaintiff’s Complaint, and each purported claim for relief contained therein, is barred

14 by the doctrine of unclean hands.
15

THIRD AFFIRMATIVE DEFENSE

16

[Additional Defenses]

17

3.

The Beastie Boys Defendants reserve the right to assert additional affirmative

18 defenses as they learn additional facts during the course of this action.
19

II.

20

FIRST AMENDED COUNTERCLAIMS OF THE BEASTIE BOYS PARTIES

21

For their First Amended Counterclaims against Plaintiff and Counterclaim-Defendant

22 GoldieBlox, Inc. (“GoldieBlox”), Brooklyn Dust Music, Beastie Boys and Adam Horovitz
23 (collectively, the “Beastie Boys Defendants”), together with Michael Diamond and Dechen Yauch
24 as executor of the estate of Adam Yauch, deceased (collectively, with the Beastie Boys Defendants,
25 the “Beastie Boys Parties”), aver as follows:
Jurisdiction And Venue

26
27

1.

This action for copyright infringement, unfair competition and misappropriation of

28 the right of publicity under California common law arises under the Copyright Laws of the United
Case No. 4:13-CV-05428-DMR
-5ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1 States 17 U.S.C. §§ 101, et seq., 15 U.S.C. §§ 1051, et seq., California common law and California
2 statutory law.
3

2.

This Court has subject matter jurisdiction under 28 U.S.C. § 1338(a) and (b), under

4 the Copyright Laws of the United States, 17 U.S.C. §§ 101, et seq., and the Lanham Act, 15 U.S.C.
5 §§ 1051, et seq., as well as under 28 U.S.C. §§ 1331 and 1367(a).
6

3.

Venue in this district is proper under 28 U.S.C. §§ 1400 and 1391(b)(1) and (b)(2).
The Parties

7
8

4.

Counterclaim-Plaintiff Adam Horovitz, professionally known as “Ad-Rock”

9 (“Horovitz”), is an individual who resides in New York, New York.
10

5.

Counterclaim-Plaintiff Michael Diamond, professionally known as “Mike D”

11 (“Diamond”), is an individual who resides in Brooklyn, New York.
12

6.

Counterclaim-Plaintiff Dechen Yauch is the executor of the estate of Adam Yauch,

13 the deceased Beastie Boys member, professionally known as “MCA,” who resided in New York,
14 New York (“Yauch”).
15

7.

Counterclaim-Plaintiff Beastie Boys is a New York Partnership, with its principal

16 place of business in New York, New York, and is the business entity which owns or controls, inter
17 alia, the performances, sound recording copyrights, trademarks and rights of publicity of Horovitz,
18 Diamond and Yauch, including their performances, sound recording copyrights, trademarks and
19 rights of publicity as the composing, recording and performing group Beastie Boys.
20

8.

Counterclaim-Plaintiff Brooklyn Dust Music (“Brooklyn Dust”) is the business

21 name under which Horovitz, Diamond and Yauch have done and currently do business
22 administering copyrights in the musical compositions authored by any or all of Horovitz, Diamond
23 and Yauch, with its principal place of business in New York, New York.
24

9.

Brooklyn Dust is co-owner of the copyright to the musical composition “Girls,”

25 which has been registered with the United States Copyright Office, Registration No. PA0000344518
26 (the “Copyrighted Work”).
27
28
Case No. 4:13-CV-05428-DMR
-6ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

10.

Upon information and belief, Counterclaim-Defendant GoldieBlox, Inc.

2 (“GoldieBlox”) is a Delaware Corporation with its headquarters and principal place of business in
3 Oakland, California.
Facts Applicable To All Counterclaims

4
5

11.

As an integral part of GoldieBlox’s marketing campaign to sell books and toys that it

6 claims are designed to “inspire the next generation of female engineers” (a profession defined by
7 innovation and original thinking), GoldieBlox has engaged in the systematic infringement of
8 intellectual property from numerous popular music groups, including Beastie Boys.
9

12.

As part of that systematic campaign of infringement, GoldieBlox has created a series

10 of video advertisements set to well-known songs from popular artists in an effort to achieve the
11 company’s primary goal of selling toys.
12

13.

Upon information and belief, GoldieBlox has produced and published videos that

13 infringe upon popular songs by Beastie Boys, Queen, Daft Punk, Kaskade, Krewella, Avicii, Slam,
14 k.flay and Trevor Guthrie.
15

14.

In some instances, GoldieBlox has altered the lyrics of the popular songs featured in

16 its video advertisements in order to tailor those songs to the company’s goal of selling toys.
17

15.

One of the popular songs that GoldieBlox altered for use in its video advertisements

18 is “Girls,” the seventh and final single from the Beastie Boys’ 1987 debut album Licensed to Ill.
19 “Girls” is a sarcastic anthem.
20

16.

Upon information and belief, on or about November 18, 2013 GoldieBlox published

21 a video advertisement entitled “GoldieBlox, Rube Goldberg, & Beastie Boys ‘Princess Machine’”
22 on its own website and uploaded it to the popular internet video website Youtube.com. (Hereinafter,
23 the “GoldieBlox Advertisement”.) At or around that time, GoldieBlox began promoting the
24 GoldieBlox Advertisement through, among other things, its accounts on the social media websites
25 Twitter.com and Facebook.com.
26

17.

The GoldieBlox Advertisement posted on the GoldieBlox website and Youtube.com,

27 as well as substantially all of GoldieBlox’s social media posts promoting the GoldieBlox
28 Advertisement, used and explicitly referred to the Beastie Boys’ name and identity.
Case No. 4:13-CV-05428-DMR
-7ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

18.

The “Beastie Boys” name and identity is readily associated with Horovitz, Diamond

2 and Yauch, both individually and collectively and have come to signify the musical, artistic, and
3 other creations by Horovitz, Diamond and Yauch individually, as well as collectively under the
4 name “Beastie Boys,” and to identify each of them as individual members of the recording and
5 performing group Beastie Boys.
6

19.

The Beastie Boys Parties are the owners of the common law and registered trademark

7 BEASTIE BOYS® for use with, among other things, musical sound recordings and video
8 recordings featuring musical performances. The BEASTIE BOYS® mark is registered with the
9 United States Patent & Trademark Office as U.S. Reg. No. 4,197,406, and has been in continuous
10 use since 1982. That registration is valid and subsisting under 15 U.S.C. §§ 1051, et seq.
11

20.

The GoldieBlox Advertisement is of a commercial nature and used the Copyrighted

12 Work and the BEASTIE BOYS® mark to advertise GoldieBlox’s products, without any of the
13 Beastie Boys Parties’ consent or authorization.
14

21.

The GoldieBlox Advertisement featured the Beastie Boys musical composition

15 “Girls” with lyrics modified to become a “jingle” to sell GoldieBlox’s products.
16

22.

The GoldieBlox Advertisement promptly became a viral hit on the internet, garnering

17 over 8 million views on Youtube.com alone in just ten days. The GoldieBlox Advertisement also
18 received massive coverage in the press, which primarily focused on its apparently, but not in fact,
19 approved use of the Beastie Boys’ song.
20

23.

Upon information and belief, the publishing of the GoldieBlox Advertisement

21 directly coincided with and directly resulted in a massive increase in the sales of GoldieBlox’s
22 products.
23

24.

Upon information and belief, the publishing of the GoldieBlox Advertisement and

24 GoldieBlox’s marketing strategy of infringing upon the Copyrighted Work directly resulted in the
25 company’s product line being featured as one of the most popular toy lines for the 2013 holiday
26 season on the internet shopping website Amazon.com.
27

25.

Upon information and belief, on or about November 20, 2013, a representative from

28 an advertising agency contacted Universal Music Publishing Group (the administrator of Brooklyn
Case No. 4:13-CV-05428-DMR
-8ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1 Dust’s and Horovitz’s copyrights in the Copyrighted Work) to ascertain whether GoldieBlox had
2 obtained a license from the Beastie Boys Parties and their publisher or their administrator for the use
3 of the underlying song “Girls” in the GoldieBlox Advertisement. Upon information and belief, the
4 request was made because the advertising agency was in the process of submitting the GoldieBlox
5 Advertisement to a competition, sponsored by Intuit Inc., to win a 30-second television commercial
6 spot during the 2014 Super Bowl.
7

26.

On November 21, 2013, counsel for the Beastie Boys Parties contacted counsel for

8 GoldieBlox to inquire about the company’s use of the Beastie Boys song in the GoldieBlox
9 Advertisement.
10

27.

On that very same day, GoldieBlox filed this action seeking declaratory and

11 injunctive relief.
12

28.

Upon information and belief, GoldieBlox achieved and continues to achieve

13 additional publicity, press coverage, and, upon information and belief, greater sales of its products,
14 as a direct result of the Beastie Boys’ perceived affiliation with the GoldieBlox Advertisement.
15

29.

Unfortunately, rather than developing an original advertising campaign to inspire its

16 customers to create and innovate, GoldieBlox has instead developed an advertising campaign that
17 condones and encourages stealing from others. Accordingly, the Beastie Boys Parties assert the
18 following counterclaims.
19

FIRST COUNTERCLAIM FOR RELIEF

20

[Copyright Infringement, 17 U.S.C. §§ 501, et seq.]

21

30.

The Beastie Boys Parties repeat and reallege the allegations contained in paragraphs

22 1 through 29 of these Counterclaims as though fully set forth herein.
23

31.

GoldieBlox’s unauthorized reproduction of, preparation of a derivative work based

24 upon, distribution to the public of, and public performance of Brooklyn Dust’s copyrighted musical
25 composition “Girls” in the GoldieBlox Advertisement infringes Brooklyn Dust’s exclusive rights
26 granted by the Copyright Act, 17 U.S.C. §§ 101, et seq.
27

32.

Each unauthorized reproduction, derivative work, distribution to the public, and

28 public performance of Beastie Boys’ copyrighted musical composition constitutes an individual act
Case No. 4:13-CV-05428-DMR
-9ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1 of infringement of Brooklyn Dust’s exclusive rights under the Copyright Act, 17 U.S.C. §§ 501, et
2 seq.
3

33.

GoldieBlox’s conduct has been intentional and willful.

4

34.

As a result of GoldieBlox’s conduct, the Beastie Boys Parties have suffered and will

5 continue to suffer injury in an amount not presently known. The Beastie Boys Parties are entitled to
6 recover from GoldieBlox the damages and lost profits they have sustained as a result of
7 GoldieBlox’s unlawful acts of copyright infringement and to recover from GoldieBlox the gains,
8 profits, and advantages GoldieBlox has obtained as a result of the wrongful conduct alleged herein,
9 or, at their election, an award of statutory damages, pursuant to 17 U.S.C. § 504.
10

35.

The Beastie Boys Parties have no adequate remedy at law. Unless GoldieBlox is

11 permanently enjoined from committing the unlawful acts of copyright infringement as set forth
12 above, the Beastie Boys Parties will continue to suffer irreparable harm.
13

SECOND COUNTERCLAIM FOR RELIEF

14

[Infringement Of Registered Trademark, 15 U.S.C. §§ 1114(1)(a)]

15

36.

The Beastie Boys Parties repeat and reallege the allegations contained in paragraphs

16 1 through 35 of these Counterclaims as though fully set forth herein.
17

37.

GoldieBlox has used the federally registered BEASTIE BOYS® mark in commerce

18 with the GoldieBlox Advertisement and in connection with the sale of GoldieBlox’s products,
19 without the Beastie Boys Parties’ consent or authorization. The Beastie Boys Parties own the
20 exclusive right to use the BEASTIE BOYS® mark in connection with musical sound recordings and
21 video recordings featuring musical performances, as well as other goods and services. GoldieBlox
22 has used the BEASTIE BOYS® mark in furtherance of its scheme aimed at: (a) causing confusion
23 and mistake and misleading and deceiving the public into believing that GoldieBlox’s goods and
24 services are associated with or authorized by the Beastie Boys Parties; and (b) misappropriating
25 property and monies and obtaining profits, benefits, and advantages belonging to the Beastie Boys
26 Parties, for GoldieBlox’s own unlawful purposes and benefit. The BEASTIE BOYS® mark is
27 strong and unique, inherently distinctive, famous, and protectable without proof of secondary
28 meaning.
Case No. 4:13-CV-05428-DMR
-10ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

38.

The Beastie Boys Parties have invested decades of time and effort in creating

2 consumer recognition of the BEASTIE BOYS® mark and to ensure that the public, not only in the
3 United States but throughout the world, associates that mark with their integrity and their distinctive
4 music and performing style, as well as with the services provided and products designed or created
5 by the Beastie Boys.
6

39.

As a result of the wide renown acquired by the BEASTIE BOYS® mark, the Beastie

7 Boys’ worldwide reputation for its integrity, distinctive music and performing style, as well as with
8 the services provided and products designed or created by the Beastie Boys, and the wide
9 geographic distribution and extensive sale of various Beastie Boys’ products distributed under the
10 BEASTIE BOYS® mark, that mark has acquired significant secondary meaning and fame in the
11 minds of the purchasing public. The purchasing public immediately identifies the goods and
12 services offered under the BEASTIE BOYS® mark with a single source. Therefore, the BEASTIE
13 BOYS® mark, and the goodwill associated therewith, are of inestimable value to the Beastie Boys
14 Parties.
15

40.

Upon information and belief, GoldieBlox’s unauthorized use of the BEASTIE

16 BOYS® mark has caused confusion and mistake and has mislead and deceived the public into
17 believing that GoldieBlox’s goods and services are associated with or authorized by the Beastie
18 Boys Parties, when in fact they are not.
19

41.

GoldieBlox’s use of the BEASTIE BOYS® mark in interstate commerce constitutes

20 trademark infringement in violation of Section 32(a) of the Lanham Act, 15 U.S.C. § 1114(1)(a).
21

42.

Upon information and belief, GoldieBlox committed these acts of infringement with

22 the intent of causing confusion and mistake and of misleading and deceiving the public into
23 believing that the Beastie Boys Parties’ goods and services are associated with or authorized by
24 GoldieBlox.
25

43.

Upon information and belief, GoldieBlox, in engaging in the conduct described

26 herein, willfully intended to trade on the reputation of the BEASTIE BOYS® mark, and to cause
27 injury to the Beastie Boys Parties.
28
Case No. 4:13-CV-05428-DMR
-11ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

44.

1

As a direct and proximate result of GoldieBlox’s unlawful acts as described herein,

2 the Beastie Boys Parties have suffered injury to their business, goodwill, and property, in an amount
3 to be determined at trial. The Beastie Boys Parties are further entitled to recover from GoldieBlox
4 the gains, profits, and advantages that GoldieBlox has obtained as a result of the wrongful conduct
5 alleged herein.
45.

6

The Beastie Boys Parties have no adequate remedy at law. Unless GoldieBlox is

7 permanently enjoined from committing the unlawful acts as set forth above, the Beastie Boys Parties
8 will continue to suffer irreparable harm.
46.

9

Upon information and belief, GoldieBlox committed the acts as herein alleged

10 willfully, maliciously and oppressively with a willful disregard of the harm that would be suffered
11 by the Beastie Boys Parties. The Beastie Boys Parties therefore are further entitled to an award of
12 enhanced damages and to recover their attorneys’ fees pursuant to 15 U.S.C. § 1117(a).
13

THIRD COUNTERCLAIM FOR RELIEF

14

[Trademark Infringement, False Designation Of Origin, Passing Off, False Advertising, False

15

Endorsement, And Unfair Competition, 15 U.S.C. § 1125(a)]

16

47.

The Beastie Boys Parties repeat and reallege the allegations contained in paragraphs

17 1 through 46 of these Counterclaims as though fully set forth herein.
18

48.

GoldieBlox has used the BEASTIE BOYS® mark as alleged in paragraphs 37-43,

49.

GoldieBlox’s unauthorized use of the BEASTIE BOYS® mark and other non-

19 above.
20

21 copyright infringement acts as alleged above in paragraphs 11-29 and 37-43 constitute trademark
22 infringement, false designation of origin, passing off, false advertising, false endorsement, and
23 unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
24

50.

Upon information and belief, GoldieBlox committed these acts with the intent of

25 causing confusion and mistake and of misleading and deceiving the public into believing that the
26 Beastie Boys Parties’ goods and services are associated with or authorized by GoldieBlox.
27

51.

Upon information and belief, GoldieBlox, in engaging in the conduct described

28 herein, willfully intended to (a) trade on the reputation of the BEASTIE BOYS® mark, (b) falsely
Case No. 4:13-CV-05428-DMR
-12ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1 designate the origin of its goods and services, (c) pass off GoldieBlox’s goods and services as
2 originating with or authorized by the Beastie Boys Parties, (d) falsely advertise GoldieBlox’s goods
3 and services, (e) falsely mislead and deceive the public into believing that the Beastie Boys Parties
4 had endorsed GoldieBlox’s goods and services, (f) commit unfair competition, and (g) cause injury
5 to the Beastie Boys Parties.
52.

6

As a direct and proximate result of GoldieBlox’s unlawful acts as described herein,

7 the Beastie Boys Parties have suffered injury to their business, goodwill, and property, in an amount
8 to be determined at trial. The Beastie Boys Parties are further entitled to recover from GoldieBlox
9 the gains, profits, and advantages that GoldieBlox has obtained as a result of the wrongful conduct
10 alleged herein.
53.

11

The Beastie Boys Parties have no adequate remedy at law. Unless GoldieBlox is

12 permanently enjoined from committing the unlawful acts as set forth above, the Beastie Boys Parties
13 will continue to suffer irreparable harm.
54.

14

Upon information and belief, GoldieBlox committed the acts as herein alleged

15 willfully, maliciously and oppressively with a willful disregard of the harm that would be suffered
16 by the Beastie Boys Parties. The Beastie Boys Parties therefore are further entitled to an award of
17 enhanced damages and to recover their attorneys’ fees pursuant to 15 U.S.C. § 1117.
18

FOURTH COUNTERCLAIM FOR RELIEF

19

[Trademark Infringement, False Designation Of Origin, Passing Off, False Advertising, False

20

Endorsement, And Unfair Competition Under California Common Law]

21

55.

The Beastie Boys Parties repeat and reallege the allegations contained in paragraphs

22 1 through 54 of these Counterclaims as though fully set forth herein.
23

56.

GoldieBlox has used the BEASTIE BOYS® mark as alleged in paragraphs 37-43,

57.

GoldieBlox’s unauthorized use of the BEASTIE BOYS® mark and other non-

24 above.
25

26 copyright infringement acts as alleged above in paragraphs 11-29, 37-43, and 48-51 constitute
27 trademark infringement, false designation of origin, passing off, false advertising, false
28 endorsement, and unfair competition in violation of California common law.
Case No. 4:13-CV-05428-DMR
-13ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

58.

Upon information and belief, GoldieBlox committed these acts with the intent of

2 causing confusion and mistake and of misleading and deceiving the public into believing that the
3 Beastie Boys Parties’ goods and services are associated with or authorized by GoldieBlox.
4

59.

Upon information and belief, GoldieBlox, in engaging in the conduct described

5 herein, willfully intended to (a) trade on the reputation of the BEASTIE BOYS® mark, (b) falsely
6 designate the origin of its goods and services, (c) pass off GoldieBlox’s goods and services as
7 originating with or authorized by the Beastie Boys Parties, (d) falsely advertise GoldieBlox’s goods
8 and services, (e) falsely mislead and deceive the public into believing that the Beastie Boys Parties
9 had endorsed GoldieBlox’s goods and services, (f) commit unfair competition, and (g) cause injury
10 to the Beastie Boys Parties.
11

60.

As a direct and proximate result of GoldieBlox’s unlawful acts as described herein,

12 the Beastie Boys Parties have suffered injury to their business, goodwill, and property, in an amount
13 to be determined at trial. The Beastie Boys Parties are further entitled to recover from GoldieBlox
14 the gains, profits, and advantages that GoldieBlox has obtained as a result of the wrongful conduct
15 alleged herein.
16

61.

The Beastie Boys Parties have no adequate remedy at law. Unless GoldieBlox is

17 permanently enjoined from committing the unlawful acts as set forth above, the Beastie Boys Parties
18 will continue to suffer irreparable harm.
19

62.

The Beastie Boys Parties are informed and believe, and on that basis allege, that, in

20 acting as alleged herein, GoldieBlox has acted intentionally and despicably with oppression, fraud,
21 and malice toward the Beastie Boys Parties. The Beastie Boys Parties therefore are entitled to an
22 award of punitive damages for the sake of example and by way of punishing GoldieBlox pursuant to
23 California Civil Code § 3294.
24

FIFTH COUNTERCLAIM FOR RELIEF

25

[Unfair Competition, False Designation Of Origin And False Advertising, Cal. Bus. & Prof.

26

Code §§ 17200 And 17500, et seq.]

27

63.

The Beastie Boys Parties repeat and reallege the allegations contained in paragraphs

28 1 through 62 of these Counterclaims as though fully set forth herein.
Case No. 4:13-CV-05428-DMR
-14ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

64.

GoldieBlox has used the BEASTIE BOYS® mark as alleged in paragraphs 37-43,

65.

GoldieBlox’s unauthorized use of the BEASTIE BOYS® mark and other non-

2 above.
3

4 copyright infringement acts as alleged above in paragraphs 11-29, 37-43, 48-51, and 56-59
5 constitute unfair competition, false designation of origin, and false advertising in violation of Cal.
6 Bus. & Prof. Code §§ 17200 and 17500, et seq.
7

66.

Upon information and belief, GoldieBlox committed these acts with the intent of

8 causing confusion and mistake and of misleading and deceiving the public into believing that
9 GoldieBlox’s goods and services are associated with or authorized by the Beastie Boys Parties.
10

67.

Upon information and belief, GoldieBlox, in engaging in the conduct described

11 herein, willfully intended to (a) trade on the reputation of the BEASTIE BOYS® mark, (b) falsely
12 designate the origin of its goods and services, (c) pass off GoldieBlox’s goods and services as
13 originating with or authorized by the Beastie Boys Parties, (d) falsely advertise GoldieBlox’s goods
14 and services, (e) falsely mislead and deceive the public into believing that the Beastie Boys Parties
15 had endorsed GoldieBlox’s goods and services, (f) commit unfair competition, and (g) cause injury
16 to the Beastie Boys Parties.
17

68.

The Beastie Boys Parties are entitled to recover from GoldieBlox the gains, profits,

18 and advantages that GoldieBlox has obtained as a result of the wrongful conduct alleged herein.
19

69.

The Beastie Boys Parties have no adequate remedy at law. Unless GoldieBlox is

20 permanently enjoined from committing the unlawful acts as set forth above, the Beastie Boys Parties
21 will continue to suffer irreparable harm
22

70.

The Beastie Boys Parties are entitled to a permanent injunction pursuant to Cal. Bus.

23 & Prof. Code §§ 17203 and 17535 restraining GoldieBlox, and its officers, agents, servants and
24 employees, and all persons in active concert or participation with them, including, but not limited to,
25 any and all third-party promoters, distributors, exhibitors, and sellers of GoldieBlox’s goods and
26 services, from engaging in any further such acts in violation of California law.
27
28
Case No. 4:13-CV-05428-DMR
-15ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

SIXTH COUNTERCLAIM FOR RELIEF

2

[Misappropriation Of Right Of Publicity, California Common Law]

3

71.

The Beastie Boys Parties repeat and reallege the allegations contained in paragraphs

4 1 through 70 of these Counterclaims as though fully set forth herein.
5

72.

In connection with the GoldieBlox Advertisement, GoldieBlox used the Beastie Boys

6 name and identity, which includes the identities of the group’s members, to GoldieBlox’s advantage,
7 both commercially and otherwise.
8

73.

GoldieBlox did not have the Beastie Boys Parties’ consent to use the Beastie Boys

9 name and identity in connection with the GoldieBlox Advertisement or for any other purpose.
10

74.

As a result of GoldieBlox’s use of such name and identity—by, among other things,

11 producing, publishing, disseminating, promoting and broadcasting the GoldieBlox Advertisement
12 using the name “Beastie Boys”— Beastie Boys and the group’s members have suffered injury to
13 their business, goodwill, and property, in an amount to be determined at trial, and are entitled to
14 recover from GoldieBlox the gains, profits, and advantages that GoldieBlox has obtained as a result
15 of the wrongful conduct alleged herein.
16

75.

Beastie Boys and the group’s members have no adequate remedy at law. Unless

17 GoldieBlox is permanently enjoined from committing the unlawful acts as set forth above, Beastie
18 Boys and the group’s members will continue to suffer irreparable harm.
19

76.

Beastie Boys and the group’s members are informed and believe, and on that basis

20 allege, that, in acting as alleged herein, GoldieBlox has acted intentionally and despicably with
21 oppression, fraud, and malice toward them. Beastie Boys and the group’s members therefore are
22 entitled to an award of punitive damages for the sake of example and by way of punishing
23 GoldieBlox pursuant to California Civil Code § 3294.
24

SEVENTH COUNTERCLAIM FOR RELIEF

25

[An Accounting]

26

77.

The Beastie Boys Parties repeat and reallege the allegations contained in paragraphs

27 1 through 76 of these Counterclaims as though fully set forth herein.
28
Case No. 4:13-CV-05428-DMR
-16ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

78.

As a direct and proximate result of GoldieBlox’s acts as alleged herein, the Beastie

2 Boys Parties have been injured in their business, goodwill, and property, and have sustained
3 substantial damage, while GoldieBlox has profited at the Beastie Boys Parties’ expense in an
4 amount not presently known. The amount of the gains, profits, benefits, advantages, and revenues
5 wrongfully realized by GoldieBlox from its acts as alleged herein is unknown to the Beastie Boys
6 Parties and cannot be ascertained without an accounting. The information needed to establish that
7 amount due is peculiarly within the knowledge of GoldieBlox. The Beastie Boys Parties, therefore,
8 demand an accounting for the aforementioned gains, profits, benefits, advantages, and revenues
9 wrongfully realized by GoldieBlox for its activities as alleged herein.
PRAYER FOR RELIEF

10
11

WHEREFORE, the Beastie Boys Parties pray for judgment as follows:

12

(1)

For a permanent injunction enjoining GoldieBlox and its agents, servants, employees,

13 officers, attorneys, successors, licensees, partners, and assigns, and all other persons acting in
14 concert with them:
(a)

15

from all further infringing or unlawful conduct in connection with the

16 GoldieBlox Advertisement, including, but not limited to, engaging in any further acts of trademark
17 infringement, unfair competition, false advertising, false endorsement, false designation of origin.
18 passing off, and unlawful, unfair and fraudulent business practices;
19

(b)

from all further infringement of the Copyrighted Work;

20

(c)

from any further use of any individual or collective names, identities or

21 personalities of the Beastie Boys Parties; and
(d)

22

requiring removal of the GoldieBlox Advertisement from all places where it

23 has been stored electronically or otherwise, and destruction of any and all copies of the GoldieBlox
24 Advertisement;
25

(2)

For an award of the Beastie Boys Parties’ actual damages and lost profits they have

26 sustained as a result of GoldieBlox’s unlawful acts of copyright infringement and to recover from
27 GoldieBlox the gains, profits, and advantages GoldieBlox has obtained as a result of the wrongful
28
Case No. 4:13-CV-05428-DMR
-17ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1 conduct alleged herein, in an amount to be determined at trial, or, at their election, an award of
2 statutory damages, pursuant to 17 U.S.C. § 504;
3

(3)

For an award to the Beastie Boys Parties of compensatory and consequential

4 damages and lost profits flowing from GoldieBlox’s wrongful acts as described herein;
5

(4)

For an order requiring GoldieBlox to disgorge any and all revenues, gains, profits,

6 and advantages obtained and to be obtained by GoldieBlox as a result of GoldieBlox’s unlawful acts
7 as described herein;
8

(5)

For an order finding that this case is exceptional and awarding enhanced damages

9 and attorney’s fees pursuant to 15 U.S.C. §1117(a);
10

(6)

For an order awarding the Beastie Boys Parties their attorneys’ fees pursuant to 17

11 U.S.C. § 505;
12

(7)

For an order that GoldieBlox provide the accounting pleaded for above;

13

(8)

For an award of punitive damages against GoldieBlox and in favor of the Beastie

14 Boys Parties;
15

(9)

For an order that the Beastie Boys Parties recover their costs from GoldieBlox;

16

(10)

For prejudgment and postjudgment interest according to law; and

17

(11)

For such other and further relief as the Court deems just and proper.

18
19 Dated: February 24, 2014
20
21

SHEPPARD, MULLIN, RICHTER & HAMPTON
KENT R. RAYGOR
KEVIN PUVALOWSKI
KENNETH B. ANDERSON
THOMAS M. MONAHAN

LLP

22
23

By

/s/ Kent R. Raygor
KENT R. RAYGOR

24
25
26

Attorneys for Defendants and Counterclaim-Plaintiffs
BEASTIE BOYS, ADAM HOROVITZ and
BROOKLYN DUST MUSIC; and CounterclaimPlaintiffs MICHAEL DIAMOND and DECHEN
YAUCH, executor of the estate of ADAM YAUCH

27
28
Case No. 4:13-CV-05428-DMR
-18ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL

1

III.

2

DEMAND FOR JURY TRIAL

3

The Beastie Boys Defendants and the Beastie Boys Parties demand a trial by jury as to all

4 issues so triable.
5
6 Dated: February 24, 2014
7
8

SHEPPARD, MULLIN, RICHTER & HAMPTON
KENT R. RAYGOR
KEVIN PUVALOWSKI
KENNETH B. ANDERSON
THOMAS M. MONAHAN

LLP

9
10
11
12
13
14

By

/s/ Kent R. Raygor
KENT R. RAYGOR
Attorneys for Defendants and Counterclaim-Plaintiffs
BEASTIE BOYS, ADAM HOROVITZ and
BROOKLYN DUST MUSIC; and CounterclaimPlaintiffs MICHAEL DIAMOND and DECHEN
YAUCH, executor of the estate of ADAM YAUCH

15
16
17
18
19
20
21
22
23
24
25
26
27
28
Case No. 4:13-CV-05428-DMR
-19ANSWER, FIRST AMENDED COUNTERCLAIMS, AND DEMAND FOR JURY TRIAL