Beastie Boys v. Monster Energy Co.
983 F. Supp. 2d 354
S.D.N.Y.2014Background
- Beastie Boys allege copyright infringement and Lanham Act violations from Monster's use of their music in the Ruckus in the Rockies Video.
- Monster seeks to bar evidence of two other videos (Monster Army Videos and Wheels Fest Video) to prove willfulness.
- Beastie Boys move to amend the Complaint to add claims based on the song ‘Pass the Mic.’
- Court previously granted summary judgment against Z-Trip and limited expert testimony from Beastie Boys’ proposed expert.
- Court must resolve motions on admissibility of additional videos, amendment to pleadings, and expert testimony, and determine damage framework under the Lanham Act.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Admissibility of other videos as proof of willfulness | Beastie Boys seek to show Monster’s willfulness via other incidents. | Evidence would be unfairly prejudicial and cause delay under Rule 403. | Evidence of the Monster Army and Wheels Fest videos excluded under Rule 403. |
| Leave to amend to add Pass the Mic claims | Discovery of Pass the Mic supports new copyright claims. | Late amendment would be prejudicial and outside scheduling order. | Amendment granted; backdated assignment supports standing; additional discovery to be discussed if needed. |
| Admissibility of Joachimsthaler testimony on damages and confus ion | Expert should assist damages calculations; testimony relevant to profits and statutory damages. | testimony on likelihood of association could confuse Lanham Act standard. | Joachimsthaler testimony on damages allowed; limited exclusion on ‘likelihood of confusion’ testimony. |
| Monetary relief under Lanham Act post-1999 amendments | Damages may be available for willful violations and profits; separate tract for damages. | Traditional rule requiring actual confusion or bad faith may apply for §1125(a) damages. | Second Circuit rule on damages under §1125(a) survives; must prove actual confusion or deception or willfulness for profits; willfulness required for profits. |
| Beastie Boys’ 50% ownership impact on damages | Ownership affects final judgment but not initial damages determination. | Damages should reflect 50% ownership discount. | Beastie Boys' 50% interest will adjust final judgment, not cap initial damages; separate awards possible for separate copyrights. |
Key Cases Cited
- ESPN, Inc. v. Office of Comm’r of Baseball, 76 F.Supp.2d 383 (S.D.N.Y. 1999) (probative value of extrinsic evidence; risk of confusion and delay)
- GMA Accessories, Inc. v. BOP, LLC, 765 F.Supp.2d 457 (S.D.N.Y. 2011) (damages under Lanham Act post-1999 amendments; whether willful relief available)
- Cartier v. Aaron Faber Inc., 512 F.Supp.2d 165 (S.D.N.Y. 2007) (good cause and Rule 16(b) scheduling considerations for amendments)
- Fendi, Adele, S.R.L. v. Ashley Reed Trading, Inc., 507 Fed.Appx. 26 (2d Cir. 2013) (Lanham Act damages and likelihood of association vs. confusion; standards for willfulness)
- Aboumoussallem v. United States, 726 F.2d 906 (2d Cir. 1984) (trial within a trial concerns under Rule 403)