Beastie Boys v. Monster Energy Co.

87 F. Supp. 3d 672, 114 U.S.P.Q. 2d (BNA) 1063, 2015 U.S. Dist. LEXIS 20896, 2015 WL 736029
CourtDistrict Court, S.D. New York
DecidedFebruary 20, 2015
DocketNo. 12 Civ. 6065(PAE)
StatusPublished
Cited by19 cases

This text of 87 F. Supp. 3d 672 (Beastie Boys v. Monster Energy Co.) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Beastie Boys v. Monster Energy Co., 87 F. Supp. 3d 672, 114 U.S.P.Q. 2d (BNA) 1063, 2015 U.S. Dist. LEXIS 20896, 2015 WL 736029 (S.D.N.Y. 2015).

Opinion

OPINION & ORDER

PAUL A. ENGELMAYER, District Judge:

Between May 27 and June 5, 2014, the Court presided over a jury trial in which the hip-hop group the Beastie Boys and affiliated plaintiffs1 (collectively, the “Beastie Boys”) pursued claims against Monster Energy Company (“Monster”), the beverage company. The jury found in the Beastie Boys’ favor on their claims for copyright infringement in violation of the Copyright Act, 17 U.S.C. § 101 et seq., and false endorsement in violation of the Lan-ham Act, 15 U.S.C. § 1051 et seq. These claims arose out of Monster’s creation and dissemination of a promotional vidéo that, without the Beastie Boys’ knowledge or permission, used portions of five songs composed and recorded by the Beastie Boys as its soundtrack and included textual references to the Beastie Boys and one of its members.

Now pending before the Court is the Beastie Boys’ motion for a permanent injunction. The Beastie Boys seek to broadly enjoin Monster from using their music, voices, names, and trademarks in any advertisement or other trade-related content. Monster argues that the Beastie Boys are not entitled to injunctive relief and, in the alternative, that an injunction should be limited to the infringing video at issue in this litigation. For the following reasons, the Court grants the Beastie Boys’ motion for a permanent injunction, but -agrees with Monster that such an injunction must be tightly limited to cover only the infringing video.

1. . Background

The Court assumes familiarity with the facts and procedural history of this case, which were detailed in the Court’s December 4, 2014 Opinion resolving Monster’s post-trial motions. See Dkt. 182, reported at Beastie Boys v. Monster Energy Co., No. 12 Civ. 6065(PAE), 66 F.Supp.3d 424, 2014 WL 6845860 (S.D.N.Y. Dec. 4, 2014). The background most relevant to the instant motion is summarized below.

A. Factual Background2

As part of its marketing efforts, Monster organizes and sponsors an annual event called the “Ruckus in the Rockies,” which consists of a snowboarding competition and an after-party. Tr. 1092-93. Soon after the 2012 Ruckus, Monster employees created a recap video with highlights from the event. Tr. 1114-16. For the video’s soundtrack, Monster used excerpts of five Beastie Boys songs. Tr. 1114-15. The video is just over four minutes long, and Beastie Boys’ music fills all but 32 seconds of it. See PX 211 (“video”). The video also contains text that refers to [675]*675the Beastie Boys and to one of the group’s members. Id. at 3:51-3:58.

Monster never obtained, or attempted to obtain, permission from the Beastie Boys or their management to use the Beastie Boys’ music and names in the video. See Tr. 121-22, 256, 875-76, 1115-16, 1173, 1316-17. Rather, the Monster employee who produced the video testified that he believed that a third party — a disc jockey who had performed at the 2012 Ruckus and had created a “Megamix” of Beastie Boys music — had the authority, and had in fact authorized Monster, to use that Mega-mix, including the underlying Beastie Boys’ songs, in the video. Tr. 1115-16.

On May 9, 2012, Monster posted the video on its website, YouTube channel, and Facebook page. See Tr. 307, 531, 1119-21, 1124-26, 1266; PX 135, PX 142, PX 150, PX 200, PX 270. The description of the video that Monster posted online, and the press releases that Monster and its agents sent to snowboarding magazines and websites, contained additional references to the Beastie Boys. See Tr. 708, 835, 1126-29. “Dozens” of websites posted Monster’s press release verbatim, including the reference to the Beastie Boys. See PX 165; see also, e.g., PX 164, 276.

A few weeks later, Monster received a letter from counsel for the Beastie Boys, which stated that Monster did not have permission to use the Beastie Boys’ music in the video. Tr. 1129, 1269. Monster immediately removed the video from its YouTube channel. Tr. 1130. Monster employees later edited the video — replacing the music and removing the references to the Beastie Boys — and then reposted it. Tr. 1130-31,1277.

B. Procedural History

On August 8, 2012, the Beastie Boys filed suit against Monster. Dkt. 1 (“Compl.”). The Complaint alleged that Monster, without the Beastie Boys’ consent, had used the Beastie Boys’ songs and names in the video, that Monster had thereby sought to associate its products with the Beastie Boys and to convey the group’s endorsement of Monster, and that Monster had posted links to the video on various websites to advertise and promote Monster’s products, events, and corporate goodwill. Compl. ¶¶ 58-68. Based on these allegations, the Beastie Boys brought claims of copyright infringement in violation of the Copyright Act, and false endorsement in violation of the Lanham Act. Id. ¶¶ 70-100, 109-17. On October 4, 2012, Monster filed an Answer. Dkt. 5 (“Answer”). The parties later filed an Amended Complaint and an Amended Answer. Dkt. 91, 98.

Very shortly before trial, Monster conceded liability on the copyright infringement claims. See Dkt. 141, at 48; Tr. 91-92. Trial therefore focused on whether the Copyright Act violations had been willful; whether Monster was liable for false endorsement under the Lanham Act and, if so, whether Monster’s conduct had been intentionally deceptive; and the appropriate damages for each claim. Trial began May 27, 2014, and testimony concluded June 4, 2014.

On June 5, 2014, the jury returned its verdict. See Dkt. 147 (“Verdict Form”). On the Copyright Act claims, the jury found that each of Monster’s 10 acts of infringement was willful, id. at 2, which increased the range of available statutory damages, see 17 U.S.C. §§ 504(c)(l)-(2). On the Lanham Act claim, the jury found that Monster had “used the Beastie Boys’ persona without permission, thereby suggesting a false endorsement of Monster’s products.” Verdict Form at 4. On that claim, the jury also found that Monster had “intended to deceive consumers concerning the Beastie Boys’ endorsement of [676]*676its products,” and that Monster had not proven “that consumers were not, in fact, confused or deceived as to whether the Beastie Boys endorsed Monster’s products.” Id. The jury awarded a total of $1.7 million in damages. Id. at 2-4.

On July 22, 2014, Monster moved under Federal Rule of Civil Procedure 50(b) for judgment as a matter of law or, in the alternative, for a new trial pursuant to Rule 59 or for a reduction of the jury’s damages awards. Dkt. 168-70.

On December 4, 2014, after briefing and argument, the Court denied Monster’s motion, finding that the evidence presented at trial was sufficient to support the jury’s verdict. Dkt.

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87 F. Supp. 3d 672, 114 U.S.P.Q. 2d (BNA) 1063, 2015 U.S. Dist. LEXIS 20896, 2015 WL 736029, Counsel Stack Legal Research, https://law.counselstack.com/opinion/beastie-boys-v-monster-energy-co-nysd-2015.