Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 1 of 36 PageID #: 235
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
`---------------------------------------------------------------
`GENIUS MEDIA GROUP INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`
`
`
`
`MEMORANDUM & ORDER
`19-CV-7279 (MKB)
`
`
`
`GOOGLE LLC and LYRICFIND,
`
`Defendants.
`
`
`
`
`---------------------------------------------------------------
`MARGO K. BRODIE, United States District Judge:
`
`Plaintiff Genius Media Group Inc. commenced the above-captioned action on December
`
`3, 2019 in the New York Supreme Court, Kings County, against Defendants Google LLC
`
`(“Google”) and LyricFind, Inc. (“LyricFind”). (Notice of Removal ¶ 1, Docket Entry No. 1.)
`
`On December 30, 2019, Defendants removed the action to the Eastern District of New York.
`
`(Id.) Plaintiff alleges that Defendants misappropriated lyric transcriptions from its website and
`
`then used that content for Defendants’ “own financial benefit and to [Plaintiff’s] financial
`
`detriment,” and asserts state law claims for breach of contract, indemnification, unfair
`
`competition under both New York common law and California statutory law, and unjust
`
`enrichment. (Compl. ¶¶ 1–2, 111–209, annexed to Notice of Removal as Ex. A, Docket Entry
`
`No. 1.)
`
`Plaintiff moves to remand the action to state court. (Pl. Mot. to Remand (“Pl. Mot.”),
`
`Docket Entry No. 15; Pl. Mem. in Supp. of Pl. Mot. (“Pl. Mem.”), Docket Entry No. 15-1.)
`
`Defendants oppose the motion. (Defs. Opp’n to Pl. Mot. (“Defs. Opp’n”), Docket Entry No. 16.)
`
`For the reasons set forth below, the Court denies Plaintiff’s motion and dismisses the Complaint
`
`for failure to state a claim.
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 2 of 36 PageID #: 236
`
`I. Background
`
`According to the allegations in the Complaint, Plaintiff is a “digital media company,” one
`
`of whose “primary services is the development and maintenance of . . . annotated music lyrics.”
`
`(Compl. ¶ 1.) LyricFind is a Canadian company that maintains a database of music lyrics. (Id.
`
`¶¶ 8–9.) Both Plaintiff and LyricFind “license lyrics for display [and distribution] from music
`
`publishers.” (Id. ¶¶ 18–19.) Google “owns and operates . . . the internet’s dominant search
`
`platform.” (Id. ¶ 14.) Pursuant to an agreement between Defendants, “LyricFind provides lyrics
`
`to Google for use in . . . Google’s search results.” (Id. ¶ 12.)
`
`a. Plaintiff’s services and business model
`
`While music publishers “usually own the copyright in the lyrics for a given song,”
`
`companies like Plaintiff and LyricFind “do not typically receive any actual lyrics transcriptions
`
`in connection with their licensing agreements,” (id. ¶ 18), and must otherwise generate or obtain
`
`the lyrics they have licensed for display, (see id. ¶ 19). Plaintiff “provides a platform” for an
`
`online community of “music enthusiasts who transcribe music lyrics.” (Id. ¶ 19.) The
`
`transcription process is “arduous,” and Plaintiff has “invested ten years and millions of dollars to
`
`build the technology and community that support[] collaborative lyrics transcription.” (Id. ¶ 20.)
`
`In addition to this collaborative transcription process, Plaintiff also “obtains lyrics . . . directly”
`
`from artists. (Id. ¶ 19.) Plaintiff “earns revenue in several ways,” including by “licens[ing] its
`
`database of high-quality lyrics” to “major companies, such as Apple,” and by “generat[ing] ad
`
`revenue through web traffic on its website and apps.” (Id. ¶ 22.)
`
`All visitors to Plaintiff’s website are bound by terms and conditions (the “Terms of
`
`Service”), “which are accessible to users from all pages of [Plaintiff’s] website.” (Id. ¶ 24.) The
`
`Terms of Service prohibit, inter alia, the unauthorized “licens[ing], . . . copy[ing],
`
`
`
`2
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 3 of 36 PageID #: 237
`
`modif[ication], s[ale], . . . [or] transm[ission] for any commercial purpose, [of] any portion of
`
`[Plaintiff’s] Service, or access to [Plaintiff’s] Service.” 1 (Id. ¶¶ 112, 115.) The Terms of
`
`Service also prohibit, inter alia, the unauthorized “modif[ication], copy[ing], . . . s[ale], [or]
`
`distribution” of Plaintiff’s content, other than a user’s own content that a user has “legally
`
`upload[ed]” to Plaintiff’s website.2 (Id. ¶ 119.)
`
`b. Google’s lyrics information boxes and Plaintiff’s suspicions of misconduct
`
`Many visitors arrive at Plaintiff’s website via a search engine, “most typically Google’s,”
`
`and Plaintiff “is often the top-ranked organic search result on Google for lyrics search queries.”
`
`(Id. ¶¶ 23, 25.) However, even if Plaintiff is the top-ranked organic result for a user’s lyrics
`
`search, a Google search feature known as an “Information Box” may still appear “above all other
`
`organic search results,” displaying “the complete lyrics for the requested song.” (Id. ¶¶ 28–29.)
`
`Such lyrics Information Boxes are often “displayed in such a manner that the user cannot see any
`
`other search results without first scrolling down,” (id. ¶ 30), and significantly reduce the “click-
`
`
`1 The Terms of Service provision regarding commercial use provides that:
`Unless otherwise expressly authorized herein or by [Plaintiff’s]
`express written consent, you agree not to display, distribute, license,
`perform, publish, reproduce, duplicate, copy, create derivative
`works from, modify, sell, resell, exploit, transfer or transmit for any
`commercial purpose, any portion of the Service, or access to the
`Service. The Service is for your personal use and may not be used
`for direct commercial endeavors without the express written consent
`of [Plaintiff].
`(Compl. ¶ 115.)
`
`
`2 The Terms of Service provides that:
`Except as expressly authorized by [Plaintiff] in writing, you agree
`not to modify, copy, frame, scrape, rent, lease, loan, sell, distribute
`or create derivative works based on the Service of the [Plaintiff]
`Content, in whole or in part, except that the foregoing does not apply
`to your own User Content that you legally upload to the Service.
`(Compl. ¶ 119.)
`
`
`
`3
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 4 of 36 PageID #: 238
`
`through rate” to Plaintiff’s website, (id. ¶¶ 101–02).
`
`When Google introduced the Information Box feature into its lyrics search results,
`
`Plaintiff “observed that the lyrics in those Information Boxes were sometimes identical, on a
`
`character-for-character basis,” to lyrics on Plaintiff’s website. (Id. ¶¶ 46–47.) Because such a
`
`match “is highly unlikely” given the particular nature of the lyrics transcription process, Plaintiff
`
`came to suspect that its “lyrics . . . were being misappropriated.” (Id. ¶¶ 48–49.)
`
`c. Plaintiff investigates suspected misconduct and puts Defendants on notice of
`its findings
`
`In August of 2016, in an effort to further investigate this suspected misappropriation,
`
`Plaintiff created a “digital watermark to embed in certain lyrics appearing on its site”
`
`(“Watermark #1”). (Id. ¶ 59.) Watermark #1 consisted of a “distinctive pattern of curly . . . and
`
`straight apostrophes,” which, when converted into “dots” and “dashes,” “spells out
`
`‘REDHANDED’ in Morse code.” (Id. ¶ 60.) In May of 2017, Plaintiff notified Google via
`
`email that it had found Watermark #1 in Google’s lyrics Information Boxes, “prov[ing] that
`
`Google was displaying lyrics copied from [Plaintiff’s] website.” (Id. ¶ 62.) In response to that
`
`initial email and subsequent follow-up communications by Plaintiff, Google informed Plaintiff
`
`that it was “looking into the issue.” (Id. ¶¶ 62–63.)
`
`In October of 2018, Plaintiff “designed [and implemented] an experiment to more
`
`systematically assess the incidence of lyrics misappropriated from [Plaintiff’s] website in
`
`Google’s lyrics Information Boxes,” based on which Plaintiff “concluded that the incidence of
`
`lyrics irrefutably copied from [Plaintiff’s] website in Google’s lyrics Information Boxes was
`
`widespread and that the copying was systematic.” (Id. ¶¶ 64, 67.)
`
`In April of 2019, Plaintiff “again notified Google, in writing, that it was displaying
`
`content misappropriated from [Plaintiff’s] website,” in response to which Google eventually
`
`
`
`4
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 5 of 36 PageID #: 239
`
`“identified LyricFind as the source of the lyrics [in] the examples that [Plaintiff] provided to
`
`Google.” (Id. ¶¶ 68, 70.) Plaintiff then “wrote to LyricFind to request that it cease and desist
`
`from the misappropriation and commercialization of content appearing on [Plaintiff’s] website.”
`
`(Id. ¶ 71.) Despite having been “placed on actual notice of their behavior,” Defendants failed to
`
`take “any steps to cease such conduct.” (Id. ¶ 72.)
`
`On June 16, 2019, the Wall Street Journal published an article detailing Plaintiff’s
`
`allegations that Defendants had copied lyrics from Plaintiff’s website. (Id. ¶ 74.) On June 18,
`
`2019, Google stated in a blog post that it had asked LyricFind “to investigate the issue to ensure
`
`[it is] following industry best practices in [its] approach,” and affirmed Google’s commitment to
`
`“uphold high standards of conduct for [itself] and from the partners [it] work[s] with.” (Id. ¶ 77.)
`
`Soon after the article’s publication, Google began adding source attributions to its lyrics
`
`Information Boxes, including attributions to LyricFind for lyrics that Plaintiff had previously
`
`notified Google appeared to be taken from Plaintiff’s website. (Id. ¶ 81.) Around the same time,
`
`Plaintiff “discovered that Watermark #1 had disappeared from Google’s lyrics Information
`
`Boxes.” (Id. ¶ 82.) Suspecting “a deliberate effort . . . to conceal [continued] misappropriation
`
`of lyrics from [Plaintiff’s] website,” Plaintiff created a second watermark, this time designed to
`
`spell out the word “GENIUS” in Morse code (“Watermark #2”). (Id. ¶¶ 83–84.) Plaintiff then
`
`watermarked one set of lyrics on its website with Watermark #1, a second group of lyrics with
`
`Watermark #2, and a third set of lyrics with both Watermark #1 and Watermark #2. (Id. ¶ 85.)
`
`In monitoring the three sets of lyrics, Plaintiff observed Watermark #2 on lyrics in both the
`
`second and third groups, but did not observe Watermark #1 on any lyrics in either the first or
`
`third group. (Id. ¶ 86.) In a number of instances involving lyrics in which Plaintiff had
`
`embedded both Watermark #1 and Watermark #2, Plaintiff observed that Watermark #2, “the
`
`
`
`5
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 6 of 36 PageID #: 240
`
`details of which had not previously been made public,” was present, while Watermark #1 was
`
`not. (Id. ¶ 88.)
`
`On November 6, 2019, Plaintiff informed Google of these findings, and “demanded that
`
`Google stop displaying lyrics misappropriated from [Plaintiff’s] website and address the issue.”
`
`(Id. ¶ 90.) In response, Google asserted it had not done anything wrong, and stated that it had
`
`“‘obtained additional assurances’ that their data partners ‘do not, and would not, obtain lyrics
`
`from [Plaintiff’s] website.’” (Id. ¶ 91.)
`
`d. State court action and removal to this Court
`
`On December 3, 2019, Plaintiff commenced this action in the New York Supreme Court,
`
`Kings County, asserting claims for (1) breach of contract, based on Defendants’ alleged violation
`
`of Plaintiff’s Terms of Service, (id. ¶¶ 111–23, 128–40); (2) indemnification for “damages and
`
`incurred expenses . . . including . . . attorneys’ fees and lost advertising and licensing revenue,”
`
`pursuant to Plaintiff’s Terms of Service, (id. ¶¶ 124–27, 141–44); (3) unfair competition under
`
`both New York common law and California Business and Professional Code § 17200 et seq., (id.
`
`¶¶ 145–99); and (4) unjust enrichment, (id. ¶¶ 200–09). Plaintiff seeks money damages and
`
`injunctive relief. (Id. at 49.)
`
`On December 30, 2019, Defendants removed the action to this Court. (Notice of
`
`Removal.) Defendants assert that the state law claims alleged in the Complaint all arise from “(i)
`
`the alleged copying of digital transcriptions of copyrighted musical lyrics from [Plaintiff’s]
`
`website by LyricFind, and (ii) the display of these copyrighted lyrics on Google’s website,” and
`
`that “[t]hese are in essence claims for copyright infringement disguised as various state law
`
`causes of action.” (Id. ¶ 4.) Defendants further assert that “this Court has original jurisdiction
`
`[over the action] under 28 U.S.C. §§ 1331 and 1338,” and that the action “may be removed to
`
`
`
`6
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 7 of 36 PageID #: 241
`
`this Court [by Defendants], pursuant to 28 U.S.C. § 1441 et seq., because it is a civil action
`
`containing purported state law claims which are preempted by Section 301(a) of the Copyright
`
`Act, 17 U.S.C. § 301(a) and thus within the exclusive jurisdiction of this Court.” (Id. ¶ 8.)
`
`On March 11, 2020, Plaintiff moved to remand the action to state court, arguing that
`
`Defendants have not established that the Court has jurisdiction over this action because
`
`Plaintiff’s claims are not preempted by the Copyright Act. (See Pl. Mot; Pl. Mem.)
`
`II. Discussion
`
`a. Standard of review
`
`A notice of removal must allege a proper basis for removal under 28 U.S.C. §§ 1441–
`
`1445. See In re Methyl Tertiary Butyl Ether Prods. Liab. Litig., 488 F.3d 112, 124
`
`(2d Cir. 2007) (“In determining whether jurisdiction is proper, we look only to the jurisdictional
`
`facts alleged in the Notices of Removal.”); Bankhead v. New York, No. 13-CV-3377, 2013 WL
`
`6145776, at *1 (E.D.N.Y. Nov. 21, 2013) (“An effective petition for the removal of a state action
`
`to federal court must allege a proper basis for the removal under sections 1441 through 1445 of
`
`Title 28.” (quoting Negron v. New York, No. 02-CV-1688, 2002 WL 1268001, at *1 (E.D.N.Y.
`
`Apr. 1, 2002))). The party seeking removal bears the burden of proving that the jurisdictional
`
`and procedural requirements have been met. Cal. Pub. Emps.’ Ret. Sys. v. WorldCom, Inc., 368
`
`F.3d 86, 100 (2d Cir. 2004) (“Where, as here, jurisdiction is asserted by a defendant in a removal
`
`petition, it follows that the defendant has the burden of establishing that removal is proper.”).
`
`b. Plaintiff’s claims are preempted by the Copyright Act
`
`Defendants argue that “Plaintiff’s claims are wholly premised on Defendants’ alleged use
`
`of musical lyrics, which are expressly identified as falling among the ‘works of authorship’
`
`protected by the Copyright Act.” (Defs. Opp’n 7–8.) Defendants also argue that of the two-part
`
`
`
`7
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 8 of 36 PageID #: 242
`
`test to determine whether Plaintiff’s claims are preempted by the Copyright Act — the subject-
`
`matter and the general scope requirements — “Genius concedes, as it must, that the subject
`
`matter requirement is satisfied here.” (Id. at 7.)
`
`Plaintiff argues that “the creation, curation, and provision of timely and accurate music
`
`lyrics transcriptions . . . is not protected by the Copyright Act.” (Pl. Reply 2, Docket Entry No.
`
`17.)
`
`“The Copyright Act exclusively governs a claim when (1) the particular work to which
`
`the claim is being applied falls within the type of works protected by the Copyright Act under 17
`
`U.S.C. §§ 102 and 103, and (2) the claim seeks to vindicate legal or equitable rights that are
`
`equivalent to one of the bundle of exclusive rights already protected by copyright law under 17
`
`U.S.C. § 106.” Universal Instruments Corp. v. Micro Sys. Eng’g, Inc., 924 F.3d 32, 48 (2d Cir.
`
`2019) (citing Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir. 2004)).
`
`“The first prong of this test is called the ‘subject matter requirement,’ and the second prong is
`
`called the ‘general scope requirement.’” Briarpatch Ltd., L.P., 373 F.3d at 305 (quoting Nat’l
`
`Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 848 (2d Cir. 1997)).
`
`“The subject matter requirement is satisfied if the claim applies to a work of authorship
`
`fixed in a tangible medium of expression and falling within the ambit of one of the categories of
`
`copyrightable works.” Id. (citing Nat’l Basketball Ass’n, 105 F.3d at 848–49). “A work need
`
`not consist entirely of copyrightable material in order to meet the subject matter requirement, but
`
`instead need only fit into one of the copyrightable categories in a broad sense.” Id. (citing Nat’l
`
`Basketball Ass’n, 105 F.3d at 848–50). “These categories encompass literary works and motion
`
`pictures, including those based on preexisting works.” Id. (citations omitted).
`
`
`
`8
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 9 of 36 PageID #: 243
`
`“The general scope requirement is satisfied only when the state-created right may be
`
`abridged by an act that would, by itself, infringe one of the exclusive rights provided by federal
`
`copyright law.”3 Briarpatch Ltd., L.P., 373 F.3d at 305 (quoting Comput. Assocs. Int’l, Inc. v.
`
`Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992)); Universal Instruments Corp., 924 F.3d at 48 (“‘A
`
`state law right is equivalent to one of the exclusive rights of copyright if it may be abridged by
`
`an act which, in and of itself, would infringe one of the exclusive rights.’” (internal quotation
`
`marks omitted) (quoting Forest Park Pictures v. Universal Television Network, Inc., 683 F.3d
`
`424, 430 (2d Cir. 2012)). “In other words, the state law claim must involve acts of reproduction,
`
`adaptation, performance, distribution or display.” Briarpatch Ltd., L.P., 373 F.3d at 305 (first
`
`citing 17 U.S.C. § 106; and then citing Comput. Assocs. Int’l Inc., 982 F.2d at 716). “‘But if an
`
`extra element is required instead of or in addition to the acts of reproduction, performance,
`
`distribution or display, in order to constitute a state-created cause of action,’ there is no
`
`preemption.” Universal Instruments Corp., 924 F.3d at 48 (quoting Forest Park Pictures, 683
`
`
`3 Section 106 of the Copyright Act establishes the exclusive rights held by a copyright
`right owner in copyrighted works. See 17 U.S.C. § 106. Section 106 provides, in relevant part:
`[T]he owner of copyright under this title has the exclusive
`rights to do and to authorize any of the following:
`(1) to reproduce the copyrighted work in copies or
`phonorecords; (2) to prepare derivative works based upon the
`copyrighted work; (3) to distribute copies or phonorecords of the
`copyrighted work to the public by sale or other transfer of
`ownership, or by rental, lease, or lending; (4) in the case of literary,
`musical, dramatic, and choreographic works, pantomimes, and
`motion pictures and other audiovisual works, to perform the
`copyrighted work publicly; (5) in the case of literary, musical,
`dramatic, and choreographic works, pantomimes, and pictorial,
`graphic, or sculptural works, including the individual images of a
`motion picture or other audiovisual work, to display the copyrighted
`work publicly; and (6) in the case of sound recordings, to perform
`the copyrighted work publicly by means of a digital audio
`transmission.
`
`Id.
`
`
`
`9
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 10 of 36 PageID #: 244
`
`F.3d at 430 (internal quotation marks omitted)). “Preemption, therefore, turns on ‘what [the]
`
`plaintiff seeks to protect, the theories in which the matter is thought to be protected and the rights
`
`sought to be enforced.’” Id. (alteration in original) (quoting Comput. Assocs. Int’l, Inc., 982 F.2d
`
`at 716); Briarpatch Ltd., L.P., 373 F.3d at 306 (“To determine whether a claim is qualitatively
`
`different, [courts in this Circuit] look at what the plaintiff seeks to protect, the theories in which
`
`the matter is thought to be protected and the rights sought to be enforced.” (alterations,
`
`quotations, and citation omitted)). The Second Circuit has directed courts to “take a restrictive
`
`view of what extra elements transform an otherwise equivalent claim into one that is
`
`qualitatively different from a copyright claim.” Briarpatch Ltd., L.P., 373 F.3d at 306.
`
`i. Plaintiff’s claims satisfy the subject matter prong
`
`The transcribed song lyrics that are the subject matter of Plaintiff’s claims fall within the
`
`type of works protected by the Copyright Act and therefore satisfy the subject matter prong.
`
`To satisfy the “subject matter” prong, “a claim must involve a work ‘within the subject
`
`matter of copyright.’” Forest Park Pictures, 683 F.3d at 429 (quoting 17 U.S.C. § 301(a)); see
`
`also Briarpatch Ltd., L.P., 373 F.3d at 305 (“The subject matter requirement is satisfied if the
`
`claim applies to a work of authorship fixed in a tangible medium of expression and falling within
`
`the ambit of one of the categories of copyrightable works.”). “Copyright protection exists for
`
`‘original works of authorship fixed in any tangible medium of expression,’ but does not extend to
`
`an ‘idea, . . . regardless of the form in which it is described, explained, illustrated, or embodied.’”
`
`Forest Park Pictures, 683 F.3d at 429 (quoting 17 U.S.C. § 102(a)–(b)). The Second Circuit has
`
`held, “however, that works may fall within the subject matter of copyright, and thus be subject to
`
`preemption, even if they contain material that is uncopyrightable under section 102.” Id. “The
`
`
`
`10
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 11 of 36 PageID #: 245
`
`scope of copyright for preemption purposes, then, extends beyond the scope of available
`
`copyright protection.” Id. at 429–30.
`
`“Under the Copyright Act, ‘[a] work is “fixed” in a tangible medium of expression when
`
`its embodiment in a copy . . . , by or under the authority of the author, is sufficiently permanent
`
`or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of
`
`more than transitory duration.’” Mourabit v. Klein, No. 19-2142-CV, 2020 WL 3042131, at *3
`
`(2d Cir. June 8, 2020) (quoting 17 U.S.C. § 101). “The Act defines ‘[c]opies,’ in turn, as
`
`‘material objects, other than phonorecords, in which a work is fixed by any method now known
`
`or later developed, and from which the work can be perceived, reproduced, or otherwise
`
`communicated, either directly or with the aid of a machine or device.’” Id. “The work is a form
`
`of intangible property that can be physically embodied in (i.e., fixed in) any number of different
`
`material objects (i.e., tangible mediums of expression).” Id. (quoting Matthew Bender & Co. v.
`
`West Pub. Co., 158 F.3d 693, 699 n.9).
`
`Plaintiff alleges in the Complaint that lyrics are copyrightable and that “music publishers
`
`and/or songwriters usually own the copyright in the lyrics for a given song . . . .” (See Compl.
`
`¶ 18; Pl. Opp’n 12 & n.4.) Because the subject of Plaintiff’s claims is the transcribed song
`
`lyrics, and Plaintiff concedes that the lyrics themselves fall under federal copyright law, the
`
`subject matter prong of the preemption test is met. See Saint-Amour v. Richmond Org., Inc., 388
`
`F. Supp. 3d 277, 290 (S.D.N.Y. 2019) (concluding that “[t]he subject matter of the [p]laintiffs’
`
`claims [was a] [s]ong” and “[t]he [s]ong [was] a musical composition and as such a paradigmatic
`
`work protected by the Copyright Act” and finding the subject matter requirement met because
`
`the plaintiffs “challeng[ed] the validity of the copyrights in a song, which fits into the
`
`copyrightable category of musical works” (citing 17 U.S.C. § 102(a)(2))); Affiliated Records Inc.
`
`
`
`11
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 12 of 36 PageID #: 246
`
`v. Taylor, No. 09-CV-9938, 2012 WL 1675589, at *5 (S.D.N.Y. May 14, 2012) (“[T]here is no
`
`question that the lyrics in the [s]ongs constitute copyrightable subject matter under [s]ection 102
`
`of the Act.” (citing 17 U.S.C. § 102(a)(2))).
`
`Moreover, the fact that the lyric transcriptions are fixed in writing further supports a
`
`finding that Plaintiff’s claims are within the subject matter of copyright. See Forest Park
`
`Pictures, 683 F.3d at 30 (“[B]ecause the ideas that are the subject of the claim were fixed in
`
`writing — whether or not the writing itself is at issue — the claim is within the subject matter of
`
`copyright.”).
`
`Accordingly, the Court finds that the subject matter prong is met.
`
`ii. Plaintiff’s claims satisfy the general scope requirement
`
`Because the Court finds that the subject matter prong is met, the Court next considers
`
`each of Plaintiff’s state law claims to determine whether they include an “extra element” in
`
`addition to acts of reproduction, adaptation, performance, distribution or display that would
`
`preclude preemption.
`
`1. Breach of contract claims
`
`In addressing its breach of contract claims, Plaintiff argues that “Defendants are bound by
`
`[Plaintiff’s] Terms of Service, which impose on Defendants an obligation not to copy or scrape
`
`[Plaintiff’s] Service for ‘commercial purposes,’” and that “[u]nder the law of the Second Circuit,
`
`this independent, contractual obligation constitutes an ‘extra element’” which renders Plaintiff’s
`
`claims asserted pursuant to its Terms of Service “qualitatively different from a Copyright Act
`
`claim.” (Pl. Mem. 15.) In support, Plaintiff argues that “in order to prove its contract claims,
`
`[Plaintiff] not only needs to prove that Defendants scraped content from its website, but also that
`
`Defendants used it for ‘commercial endeavors,’” which Plaintiff asserts is an “‘extra element’
`
`
`
`12
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 13 of 36 PageID #: 247
`
`[that] makes [Plaintiff’s] breach of contract claims qualitatively different from its copyright
`
`claim.” (Id. at 17.)
`
`Defendants argue that the restrictions in Plaintiff’s Terms of Service “do no more than
`
`protect against the unauthorized use, reproduction, adaptation, and distribution of the work in
`
`question, which plainly falls within the general scope requirement of 17 U.S.C. § 106.” (Defs.
`
`Opp’n 15.) In response to Plaintiff’s assertion that its breach of contract claims are different
`
`from a copyright claim because Plaintiff must demonstrate both that Defendants scraped content
`
`from its website and that they used the content for commercial endeavors, Defendants argue that
`
`these assertions fail for separate reasons. As to the first provision of the Terms of Service
`
`Plaintiff alleges Defendants breached, which “broadly states that a user may not ‘modify, copy,
`
`frame, scrape, rent, lease, loan, sell distribute or create derivative works,’” this argument fails
`
`because the “provision is nothing more than a recitation of exclusive rights reserved for true
`
`copyright owners under [s]ection 106.” (Id. at 16 (quoting Compl. ¶¶ 119–20).) As to the
`
`second provision, “which states that users may not use copyright content ‘for any commercial
`
`purpose,’” the argument fails because “[Plaintiff] does not cite a single case that suggests that the
`
`presence of ‘commercial use’ in a provision in a contract renders a breach claim qualitatively
`
`different from a claim for copyright infringement.” (Id. (quoting Compl. ¶¶ 115–16, 132–33).)
`
`In support, Defendants argue that each case cited by Plaintiff in which the court found no
`
`preemption also involved a contractual provision that “had nothing to do with the unauthorized
`
`use of copyrighted material,” and assert that “that plainly is not the situation here.” (Id. at 16
`
`n.3.) Defendants further argue that the fact “that one provision of [Plaintiff’s] [Terms of
`
`Service] agreement requires ‘commercial use’ may limit the scope of Plaintiff’s claim, but it
`
`does not change its fundamental nature — what Plaintiff’s own Complaint describes as ‘conduct
`
`
`
`13
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 14 of 36 PageID #: 248
`
`breach[ing] [Plaintiff’s] Terms of Service regarding the copying and reproduction of [Plaintiff’s]
`
`Content.’” (Id. at 17 (quoting Compl. ¶¶ 122, 139 (second alteration in original)).)
`
`In response, Plaintiff argues that “Defendants cite to a number of cases where a party
`
`who owns or controls copyright rights in the work at issue asserts contract claims — either in
`
`addition [to] or in lieu of Copyright Act claims,” (Pl. Reply 6), and asserts that none of the other
`
`cases cited by Defendants are “at all instructive here, as it is undisputed that the parties to this
`
`action are not copyright holders and do not seek to possess or exercise the rights of a copyright
`
`holder,” (id. at 7).4 Plaintiff argues that the fact “[t]hat parties like Google have paid to license
`
`music lyrics transcriptions from companies like LyricFind demonstrates the value of licensing
`
`the music lyrics transcriptions separate and apart from the value of the necessary predicate
`
`license from the copyright owners” and that “companies . . . pay to license transcriptions from
`
`[Plaintiff], often the very lyrics transcriptions Defendants are misappropriating.” (Id. at 2.)
`
`The Second Circuit has noted that “preemption cannot be avoided simply by labeling a
`
`claim ‘breach of contract,’” but rather, “[a] plaintiff must actually allege the elements of an
`
`enforceable contract (whether express or implied-in-fact), including offer, acceptance, and
`
`consideration, in addition to adequately alleging the defendant’s breach of the contract.” Forest
`
`Park Pictures, 683 F.3d at 432. In Forest Park Pictures v. Universal Television Network, Inc.,
`
`the Second Circuit considered whether the Copyright Act preempted the plaintiff’s implied-in-
`
`fact breach of contract claim and “held the contract at issue not to be preempted because it
`
`included an ‘extra element’ of a promise to pay, and plaintiff sought contract damages when
`
`defendant used plaintiff’s copyrighted work without paying for the privilege.” Universal
`
`
`4 Plaintiff also makes this same argument regarding the cases cited by Defendants as to
`Plaintiff’s state law claims for unjust enrichment and unfair competition. (See Pl. Reply 8 n.8, 9
`n.9.)
`
`
`
`14
`
`

`

`Case 1:19-cv-07279-MKB-VMS Document 22 Filed 08/10/20 Page 15 of 36 PageID #: 249
`
`Instruments Corp., 924 F.3d at 49 (quoting Forest Park Pictures, 683 F.3d at 429). Although in
`
`reaching its decision, the Second Circuit explicitly declined to “address whether preemption is
`
`precluded whenever there is a contract claim, or only when the contract claim includes a promise
`
`to pay,” Forest Park Pictures, 683 F.3d at 432, district courts in this Circuit have decided the
`
`issue and are divided on the question of “‘whether the promise inherent in every contract is
`
`sufficient to establish an “extra element.”’” Shepard v. Eur. Pressphoto Agency, 291 F. Supp. 3d
`
`465, 472 (S.D.N.Y. 2017) (quoting BroadVision Inc. v. Gen. Elec. Co., No. 08-CV-1478, 2008
`
`WL 4684114, at *4 (S.D.N.Y. Oct. 15, 2008)). Some district courts “follow the holding
`
`in Architectronics, Inc. v. Control Systems, Inc., 935 F. Supp. 425 (S.D.N.Y. 1996), which held
`
`that ‘[p]rotection from breach of contract, however, is not equivalent to copyright protection
`
`because a contract claim requires an ‘extra element,’ that renders the claim qualitatively different
`
`from a claim for copyright infringement: a promise by the defendant.’” Id. at 472–73 (quoting
`
`Architectronics, Inc., 935 F. Supp. at 438); see also id. (collecting cases). Other district courts
`
`“follow the holding in American Movie Classics Co. v. Turner Entertainment Co., 922 F. Supp.
`
`926 (S.D.N.Y. 1996), which held that ‘a breach of contract claim is preempted if it is merely
`
`based on allegations that the defendant did something that the copyright laws reserve exclusively
`
`to the plaintiff (such as unauthorized reproduction, performance, distribution, or display).’” Id.
`
`(quoting Am. Movie Classics Co., 922 F. Supp. at 931); see id. (collecting cases).
`
`In recent years, the majority of district courts in this Circuit have followed the approach
`
`taken in American Movie Classics Co. and have engaged in an analysis of the contractual
`
`promises alleged in order to determine whether the Copyright Act preempts a breach of contract
`
`claim. See, e.g., Be