No.
`IN THE
`Supreme Court of the United States
`________________
`ML GENIUS HOLDINGS LLC,
`
`Petitioner,
`
`Respondents.
`
`v.
`GOOGLE LLC, LYRICFIND,
`
`________________
`
`ON PETITION FOR A WRIT OF CERTIORARI TO
`THE UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`________________
`
`PETITION FOR A WRIT OF CERTIORARI
`________________
`
`Lauren Weber
`Emily Villano
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`
`E. Joshua Rosenkranz
`Counsel of Record
`Christopher Cariello
`Jennifer Keighley
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`51 West 52nd Street
`New York, NY 10019
`(212) 506-5380
`jrosenkranz@orrick.com
`
`Counsel for Petitioner
`
`
`IN THE
`Supreme Court of the United States
`________________
`ML GENIUS HOLDINGS LLC,
`
`Petitioner,
`
`Respondents.
`
`v.
`GOOGLE LLC, LYRICFIND,
`
`________________
`
`ON PETITION FOR A WRIT OF CERTIORARI TO
`THE UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`________________
`
`PETITION FOR A WRIT OF CERTIORARI
`________________
`
`Lauren Weber
`Emily Villano
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`1152 15th Street NW
`Washington, DC 20005
`
`E. Joshua Rosenkranz
`Counsel of Record
`Christopher Cariello
`Jennifer Keighley
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`51 West 52nd Street
`New York, NY 10019
`(212) 506-5380
`jrosenkranz@orrick.com
`
`Counsel for Petitioner
`
`
`
`i
`
`QUESTION PRESENTED
`Like countless internet businesses, Genius—an
`online platform for transcribing and annotating song
`lyrics—insists that visitors agree to its contractual
`terms as a condition for availing themselves of the
`benefit of its services. These terms include the prom-
`ise not to reproduce the contents of Genius’s platform.
`Google contractually bound itself to those terms, but,
`in blatant breach of that contract, Google stole Ge-
`nius’s labors for its own competing commercial pur-
`poses. The Court of Appeals held that the Copyright
`Act preempts Genius’s breach-of-contract claim, un-
`der a provision that applies only to claims that are
`“equivalent to … exclusive rights within the general
`scope of copyright,” 17 U.S.C. § 301(a). At least five
`circuits disagree with this ruling and only one other
`circuit agrees.
`The question presented is:
`Does the Copyright Act’s preemption clause allow
`a business to invoke traditional state-law contract
`remedies to enforce a promise not to copy and use its
`content?
`
`
`
`ii
`
`CORPORATE DISCLOSURE STATEMENT
`Petitioner ML Genius Holdings LLC states that it
`is a wholly owned subsidiary of MediaLab.AI, Inc.
`
`
`
`
`iii
`
`RELATED PROCEEDINGS
`
`
`
`ML Genius Holdings LLC v. Google LLC, No.
`20-3113 (2d. Cir. judgment entered March 31, 2022)
`
`Genius Media Group, Inc. v. Google LLC &
`LyricFind, No. 1:19-cv-07279 (E.D.N.Y. judgment
`entered August 13, 2020)
`
`Genius Media Group, Inc. v. Google LLC &
`LyricFind, No. 526241/2019 (N.Y. Sup. Ct.)
`
`
`
`
`
`
`
`
`
`
`iv
`
`TABLE OF CONTENTS
`
`Page
`QUESTION PRESENTED ........................................ i
`CORPORATE DISCLOSURE STATEMENT .......... ii
`RELATED PROCEEDINGS .................................... iii
`TABLE OF AUTHORITIES .................................... vi
`INTRODUCTION ..................................................... 1
`OPINIONS AND ORDERS BELOW ........................ 4
`JURISDICTION ........................................................ 4
`STATUTORY PROVISION INVOLVED ................. 5
`STATEMENT OF THE CASE .................................. 5
`Congress Preempts State-Law Rights
`That Are “Equivalent” To The
`Copyright Act’s “Exclusive Rights” .............. 5
`Genius Uses Contractual Terms Of
`Service To Protect Its Business
`Against Free-Riding ...................................... 7
`Google And LyricFind Breach Their
`Contracts With Genius By Stealing Its
`Content And Launching A Competing
`Service ........................................................... 9
`The Court of Appeals Finds Genius’s
`Breach-of-Contract Claims Preempted ...... 11
`REASONS FOR GRANTING THE WRIT.............. 15
`
`
`
`v
`
`
`I. The Court Of Appeals’ Decision Deepens
`An Acknowledged Circuit Split On The
`Copyright Act’s Preemption Of Breach-Of-
`Contract Claims. ............................................... 15
`II. The Question Presented Implicates The
`Viability Of A Wide Range Of Businesses
`That Are Critical To The Modern
`Economy. ........................................................... 23
`III. The Decision Below Is Wrong. ......................... 27
`IV. This Case Provides An Ideal Vehicle For
`Resolving The Question Presented. ................. 35
`CONCLUSION ........................................................ 37
`APPENDIX A
`Opinion of the Second
`Circuit (Mar. 10, 2022) ........... 1a
`Memorandum and Order
`of the Eastern District of
`New York (Aug. 10, 2020) ..... 18a
`Verified Complaint
`(Dec. 3, 2019) ......................... 66a
`Genius Terms of Service
`(Dec. 3, 2019) ........................126a
`
`
`APPENDIX D
`
`APPENDIX B
`
`APPENDIX C
`
`
`
`
`
`vi
`
`TABLE OF AUTHORITIES
`
` Page
`
`
`
`Cases
`
`Alpha Media Works, Inc. v. Perception
`Rsch. Servs., Inc.,
`No. 09 CIV. 9563 GBD, 2012 WL
`406914 (S.D.N.Y. Feb. 9, 2012) ........................... 26
`Am. Airlines, Inc. v. Wolens,
`513 U.S. 219 (1995) .................................. 16, 30, 31
`
`Am. Trucking Ass’ns, Inc. v. City of Los
`Angeles,
`569 U.S. 641 (2013) ........................................ 29, 30
`Aronson v. Quick Point Pencil Co.,
`440 U.S. 257 (1979) .............................................. 16
`Benjamin Cap. Invs. v. Cossey,
`867 P.2d 1388 (Or. Ct. App. 1994) ...................... 22
`Bowers v. Baystate Techs., Inc.,
`320 F.3d 1317 (Fed. Cir. 2003) .... 17, 18, 19, 31, 35
`
`Briarpatch Ltd., L.P. v. Phx. Pictures,
`Inc.,
`373 F.3d 296 (2d Cir. 2004) ........................... 33, 35
`Davidson & Assocs. v. Jung,
`422 F.3d 630 (8th Cir. 2005) ................................ 19
`
`
`
`vii
`
`Epic Sys. Corp. v. Lewis,
`138 S. Ct. 1612 (2018) .......................................... 31
`
`Feist Publ’ns, Inc. v. Rural Tele. Serv.
`Co.,
`499 U.S. 340 (1991) .............................................. 29
`Fogerty v. Fantasy, Inc.,
`510 U.S. 517 (1994) .................................. 29, 31, 35
`
`Forest Park v. Universal TV Network,
`Inc.,
`683 F.3d 424 (2d Cir. 2012) ................................. 13
`Georgia v. Public.Resource.Org, Inc.,
`140 S. Ct. 1498 (2020) .......................................... 29
`Goldstein v. California,
`412 U.S. 546 (1973) ................................................5
`Green v. Hendrickson Publishers, Inc.,
`770 N.E.2d 784 (Ind. 2002) .................................. 21
`In re Jackson,
`972 F.3d 25 (2d Cir. 2020) ....................... 33, 34, 36
`Kabehie v. Zoland,
`102 Cal. App. 4th 513 (Ct. App.
`2002) ............................................................... 22, 35
`Lipscher v. LRP Publ’ns, Inc.,
`266 F.3d 1305 (11th Cir. 2001) ................ 17, 28, 36
`Meyers v. Waverly Fabrics,
`65 N.Y.2d 75 (Ct. App. 1985) ............................... 19
`
`
`
`viii
`
`Nat’l Car Rental Sys. v. Comput.
`Assocs. Int’l, Inc.,
`991 F.2d 426 (8th Cir. 1993) ................................ 19
`ProCD, Inc. v. Zeidenberg,
`86 F.3d 1447 (7th Cir. 1996) ..... ..15, 16, 17, 18, 28,
`29, 30, 36
`
`Real Est. Innovations, Inc. v. Hous.
`Ass'n of Realtors, Inc.,
`422 F. App’x 344 (5th Cir. 2011) ......................... 18
`Ritchie v. Williams,
`395 F.3d 283 (6th Cir. 2005) .......................... 21, 35
`
`Sony Corp. of Am. v. Universal City
`Studios, Inc.
`464 U.S. 417 (1984) ..............................................28
`
`Taquino v. Teledyne Monarch Rubber,
`893 F.2d 1488 (5th Cir. 1990) .............................. 18
`TruLogic, Inc. v. Gen. Elec. Co.,
`177 N.E.3d 615 (Ohio Ct. App. 2021) .................. 19
`United States v. Palomar-Santiago,
`141 S. Ct. 1615 (2021) .......................................... 36
`
`Utopia Providers Sys., Inc. v. Pro-Med
`Clinical Sys., LLC,
`596 F.3d 1313 (11th Cir. 2010) ................ 17, 31, 33
`
`Wrench Ltd. Liab. Co. v. Taco Bell
`Corp.,
`256 F.3d 446 (6th Cir. 2001) .................... 14, 20, 26
`
`
`
`ix
`
`Statutes
`17 U.S.C. § 102 .................................................. 5, 6, 13
`17 U.S.C. § 103 .................................................. 5, 6, 13
`17 U.S.C. § 106 ............................................ 5, 6, 17, 28
`17 U.S.C. § 301 ................ 15, 17, 20, 29, 30, 34, 35, 36
`17 U.S.C. § 301(a) ........................ 2, 4, 6, 12, 13, 21, 28
`17 U.S.C. § 501 .......................................................... 33
`28 U.S.C. § 1254(1) ......................................................4
`
`Other Authorities
`Activision, Terms of Use (2022),
`https://tinyurl.com/mvfsjb4n928 ......................... 24
`Copyright Act of 1976,
` H.R. Rep. 94-1476 ............................................ 6, 30
`Craiglist, Terms of Use (2022),
`https://tinyurl.com/yux2745e ...............................24
`McDonald's, Terms and Conditions for
`McDonald's Online Services (USA)
`(2017), https://tinyurl.com/2p8vmeaz ................. 24
`Entertainment Law 3d: Legal Concepts
`and Business Practices, § 9:44.50,
`Nondisclosure Agreements (2021) ...................... 25
`
`
`
`x
`
`Google, Google Maps/Google Earth
`Additional Terms of Service (2022),
`https://tinyurl.com/2v42arjj ................................. 24
`Instagram, Terms of Use (2022),
`https://tinyurl.com/br4pans7 ............................... 24
`Jay Yarrow, Yelp CEO: Google Is A
`Monopolist That Screws Us Over,
`And Here's How, Bus. Insider (Sept.
`21, 2011),
`https://tinyurl.com/6zmem8ew ............................ 12
`Kenneth R.L. Parker, Do Not Forward:
`Why Passing Along An Email May
`Constitute Copyright Infringement,
`Ne. Univ. L. Rev. (2014) ...................................... 25
`Marshall A. Leaffer, Understanding
`Copyright Law § 11.7[C] (3d ed.
`1999) ..................................................................... 35
`Microsoft, Terms of Use (2022),
`https://tinyurl.com/6268eyzj ................................ 24
`Off. of the N.Y. State Comptroller, The
`Technology Sector in New York City
`(Sept. 2017),
`https://tinyurl.com/2p847w5w/ ............................ 23
`Robert McMillan, Genius Media Sues
`Google, Alleging Anticompetitive Use
`of Lyrics, Wall St. J. (Dec. 3, 2019) ..................... 12
`Target, Terms & Conditions (2022),
`https://tinyurl.com/5yxcd2rs ................................ 24
`
`
`
`xi
`
`Top 100: The Most Visited Websites In
`The US, Semrush Blog (April 2022),
`https://tinyurl.com/4mdhrkz4.............................. 27
`Wash. Post, Terms of Service (2014),
`https://tinyurl.com/yc6343ua ............................... 24
`1 Williston on Contracts § 1:1 (4th Ed.) ................... 28
`Yelp, Terms of Service (2019),
`https://tinyurl.com/3a7m7kja .............................. 24
`
`
`
`
`
`INTRODUCTION
`All across the internet, websites employ terms of
`service to impose conditions on visitors’ access to their
`services. The laws of every state protect such terms as
`binding contractual obligations. That contractual pro-
`tection is essential for a vast swath of internet busi-
`nesses. They invest enormous resources in activities,
`such as aggregating
`information
`from various
`sources, that provide extraordinary benefits to the
`public. And they offer the fruits of their labors to the
`public, often for free. For many of them, contract law
`is the only way to protect their investment from ex-
`ploitation by others, including exploitation by im-
`mensely powerful
`internet giants
`like Google.
`Copyright law, for example, generally provides no
`protection for works these companies do not author.
`But the circuits and state supreme courts are
`hopelessly split on whether, and to what extent, Con-
`gress wiped out such contractual promises with a
`preemption provision in the Copyright Act. Five cir-
`cuits (and New York’s highest court) have held that
`such contract provisions generally survive preemp-
`tion. In the opinion below, the Court of Appeals joined
`one other circuit (and Indiana’s highest court) in con-
`cluding
`that such contract claims are often
`preempted, based on a highly subjective multifactor
`test that asks whether the claim is “qualitatively dif-
`ferent” enough from a copyright claim. Courts in both
`camps acknowledge the split.
`This case illustrates the stark split and its pro-
`found importance. Petitioner ML Genius Holdings
`LLC (Genius) invested huge resources in building a
`
`
`
`2
`
`wildly popular platform that publishes and annotates
`song lyrics. Through the power of crowdsourcing, as
`well as labor-intensive and costly in-house efforts, Ge-
`nius transcribes the lyrics of thousands of songs that
`otherwise would not be publicly available. It then de-
`livers these lyrics to the public almost as soon as a
`song is released, for free. But despite these enormous
`efforts, Genius holds no copyright on the content. In-
`stead, it negotiates licenses to transcribe and display
`the lyrics. Thus, the only way it can protect its invest-
`ment is to condition otherwise-free access on a visi-
`tor’s promise not to collect Genius’s content and use it
`for competing commercial purposes. Google accepted
`the contractual commitment, but then blatantly vio-
`lated it by stealing Genius’s work and placing the lyr-
`ics on its own competing site, drastically decreasing
`web traffic to Genius as a result. So Genius filed a
`breach-of-contract claim that was open and shut un-
`der state law.
`Yet, the Second Circuit held that Congress
`preempted Genius’s contract rights. The provision in
`question preempts only state-law claims that are
`“equivalent to … exclusive rights within the general
`scope of copyright.” 17 U.S.C. § 301(a) (emphasis
`added). The panel applied settled Second Circuit prec-
`edent, which, in turn, followed the Sixth Circuit’s ap-
`proach. Those courts apply an
`indeterminate
`multifactor test to determine whether a particular
`contract claim is “qualitatively different from a copy-
`right infringement claim.” Pet. App. 9a. But if this
`case had arisen in the Fifth, Seventh, Eighth, Elev-
`enth, or Federal Circuits, the state-law claim would
`have survived.
`
`
`
`3
`
`The minority rule that the Second Circuit applied
`is wrong. As the courts in the majority recognize, a
`contract does not grant “exclusive rights,” which are
`rights granted by law as against the rest of the world.
`Moreover, contract rights are simply not “equiva-
`lent”—in origin, elements, scope, or effect—to the
`rights that copyright law protects. Nothing in the text
`or history of the Copyright Act suggests that Congress
`intended to wipe out sacrosanct contract remedies on
`which businesses have relied for decades to protect ac-
`tivities that are not the subject of copyright law.
`That outcome would be absurd. Take just one ex-
`ample: The tickets to a photo gallery condition a visi-
`tor’s entry on promising not to take any pictures of the
`works that are displayed and distribute them for com-
`mercial use. But suppose a visitor takes high-quality
`photos of every piece in the gallery and then sets up a
`competing copycat photo gallery. Does the original
`gallery, which does not own the copyright to the pho-
`tos but does have a license to display them, have a
`breach-of-contract claim to stop the visitor from vio-
`lating the terms of his ticket? The courts subscribing
`to the minority approach would answer “No.”
`That unjust result illustrates how the minority
`rule threatens to destabilize contractual expectations
`for a broad range of businesses that provide extraor-
`dinary benefits to the public—often for free. In partic-
`ular, it threatens to hobble any of thousands of
`companies that offer value by aggregating user-gen-
`erated information or other content for which they
`hold a license but not the copyright. It serves no pub-
`lic purpose—and certainly no purpose that furthers
`the Copyright Act’s aims—to bar these companies
`
`
`
`4
`
`from enforcing their contracts so that behemoths like
`Google can vacuum up content and increase their in-
`ternet dominance. Big-tech companies like Google
`don’t need any assists from an overly broad view of
`copyright preemption; they already control vast
`swaths of the internet, to the public’s detriment. And
`even beyond the internet, the minority rule risks
`preempting numerous contractual agreements—such
`as ubiquitous nondisclosure agreements—on which
`businesses rely to protect their confidential material.
`This Court should grant certiorari to restore clar-
`ity in the lower courts on the scope of statutory
`preemption under the Copyright Act.
`
`OPINIONS AND ORDERS BELOW
`The unpublished panel decision (Pet. App. 1a-
`17a) is reported at 2022 WL 710744. The district
`court’s unpublished decision (Pet. App. 18a-65a) is re-
`ported at 2020 WL 5553639.
`
`JURISDICTION
`On March 10, 2022, the Court of Appeals affirmed
`the judgment of the district court. Pet. App. 1a. On
`May 23, 2022, this Court granted a 60-day extension
`of time to file a petition for certiorari, until August 7,
`2022. This Court has jurisdiction under 28 U.S.C.
`§ 1254(1).
`
`
`
`
`
`
`
`5
`
`STATUTORY PROVISION INVOLVED
`17 U.S.C. § 301(a) provides:
`On and after January 1, 1978, all legal or
`equitable rights that are equivalent to any of
`the exclusive rights within the general scope
`of copyright as specified by section 106 in
`works of authorship that are fixed in a tangi-
`ble medium of expression and come within the
`subject matter of copyright as specified by sec-
`tions 102 and 103, whether created before or
`after that date and whether published or un-
`published, are governed exclusively by this ti-
`tle. Thereafter, no person is entitled to any
`such right or equivalent right in any such
`work under the common law or statutes of any
`State.
`
`STATEMENT OF THE CASE
`
`Congress Preempts State-Law Rights That Are
`“Equivalent” To The Copyright Act’s “Exclusive
`Rights”
`For most of the nation’s history, both the federal
`and state governments provided forms of copyright
`protection. Goldstein v. California, 412 U.S. 546, 559-
`60 (1973). But state regulation of copyright was sub-
`ject to implied preemption under the Supremacy
`Clause, leaving courts to muddle through the notori-
`ously “complex[] … determination” of whether a state
`regulation stood “as an obstacle to the accomplish-
`ment and execution of the full purposes and objec-
`tives” of the federal copyright scheme. Id. at 561.
`
`
`
`6
`
`That changed with the Copyright Act of 1976.
`Finding it “uncertain, impractical, and highly compli-
`cated” to maintain a “dual system,” Congress
`“adopt[ed] a single system of federal statutory copy-
`right.” H.R. Rep. No. 94-1476, at 129 (1976), reprinted
`in 1976 U.S.C.C.A.N. 5659, 5745. To that end, it en-
`acted 17 U.S.C. § 301(a), which expressly preempted
`state regulation of copyright. This provision endeav-
`ored to provide clarity where confusion had reigned
`and “avoid the development of any vague borderline
`areas between State and Federal protection.” H.R.
`Rep. 94-1476, at 130.
`Section 301(a) abrogates and preempts “right[s]
`… under the common law or statutes of any State[s]”
`that meet two conditions: (1) the rights are asserted
`over “works of authorship that are fixed in a tangible
`medium of expression and come within the subject
`matter of copyright as specified by sections 102 and
`103”—literary works, musical works, etc.; and (2) the
`rights “are equivalent to any of the exclusive rights
`within the general scope of copyright as specified by
`section 106”—the exclusive rights of reproduction,
`distribution, and so forth.
`This case concerns the second condition: what
`qualifies as a “right[] equivalent to any of the exclu-
`sive rights within the general scope of copyright.” Pet.
`App. 8a-9a. Are state-protected rights that sound in
`bilateral promises—that is, contracts—the sort of
`“[c]ommon law copyright protection” Congress aimed
`to preempt? H.R. Rep. 94-1476, at 129. The report of
`the House Judiciary Committee indicates not: “Noth-
`ing in the bill derogates from the rights of parties to
`contract with each other and to sue for breaches of
`
`
`
`7
`
`contract.” Id. at 132. But the courts are intractably
`split on the question. Some adopt near-categorical
`rules against preemption, and others fashion unpre-
`dictable ad hoc rules that override most private bar-
`gains. See infra 15-23.
`
`Genius Uses Contractual Terms Of Service To
`Protect Its Business Against Free-Riding
`Everyone loves singing the lyrics of their favorite
`songs. That was easy back when you could scour the
`liner notes accompanying records, cassettes, and CDs.
`But most music publishers and songwriters stopped
`publishing their lyrics when they shifted to digital
`music distribution, leaving many music lovers strug-
`gling to understand key lyrics. Pet. App. 69a-70a.
`Genius stepped into the breach in 2009 with an
`innovative crowdsourcing solution. It created and
`maintains an online platform on which over two mil-
`lion music enthusiasts collaborate to transcribe, edit,
`and annotate music lyrics. Id. Genius displays lyrics
`from approximately five million songs on a publicly
`accessible website—producing lyrics often within
`hours of a song’s release.
`The effort requires an extraordinary investment.
`To start, Genius pays music owners for the rights to
`display their song lyrics. Pet. App. 69a. The big chal-
`lenge is figuring out what those lyrics are, Pet. App.
`70a, as is evident to anyone who has ever committed
`musical gaffes like “Hold me closer Tony Danza,” or
`mumbled through portions of songs they can’t quite
`make out. To achieve the herculean task, Genius has
`fostered and maintained a vast community of users
`
`
`
`8
`
`who collaborate to accurately decipher and transcribe
`the words. Pet. App. 69a-71a. Genius also employs
`“lyrics associates”—often with deep expertise in par-
`ticular genres—to crack especially tricky passages.
`Genius C.A. Br. 7. This vibrant combination of
`crowdsourcing and in-house expertise quickly yields
`accurate lyrics. Pet. App. 69a-71a. Genius has in-
`vested significant time and resources to build the
`technology and foster the community of users that
`make this possible. Pet. App. 70a. And without its ef-
`forts, accurate lyric transcriptions for many songs
`would not exist.
`Although it pays for the right to display lyrics, Ge-
`nius does not charge users to access its lyrics. Like
`many online platforms, it funds the service largely by
`monetizing web traffic (or “eyeballs”) through adver-
`tising revenue. Pet. App. 71a. Its other source of rev-
`enue is selling licenses to commercial entities to
`replicate its library of lyric transcriptions. Apple, for
`example, pays to reproduce Genius’s lyrics and dis-
`play them in its Apple Music product. Id.
`To protect its revenue sources, Genius needs to
`prevent others from stealing the fruits of its labors.
`Copyright law generally provides no protection, be-
`cause Genius does not own the copyrights to any song
`lyrics. Instead, Genius relies on contract law. Like
`countless other online platforms, Genius conditions
`access to its website on assent to terms of service. Id.
`As relevant here, visitors and users of Genius’s web-
`site agree not to appropriate content from Genius’s
`platform for commercial use:
`
`
`
`9
`
`[Y]ou 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 purposes, any portion of the Ser-
`vice, use of the Service, or access to the Ser-
`vice.
`Pet. App. 138a. Without these contractual protec-
`tions, an unscrupulous pirate could access Genius,
`collect all of the transcriptions that it generated at
`great expense, and costlessly redistribute them on a
`competing website.
`
`Google And LyricFind Breach Their Contracts
`With Genius By Stealing Its Content And
`Launching A Competing Service
`Google did just that. Beginning in 2016, Genius
`began to suspect that Google had been violating terms
`of service to which it agreed and copying Genius’s
`lyric transcriptions for commercial use. Pet. App. 80a-
`82a. In response to certain search queries, Google had
`begun displaying music lyrics in its own “information
`box,” which appears at the top of a search-results
`page. Pet. App. 73a. Whereas previously, a Google lyr-
`ics search might have directed a user to visit Genius’s
`website, lyrics in the information box now diverted at-
`tention (and accompanying ad revenue) away from
`Genius and toward other Google products, such as a
`YouTube link where the relevant song could be
`played. Pet. App. 73a-76a.
`Genius first noticed that the lyrics to a Desiigner
`song, “Panda,” displayed in Google’s information box
`
`
`
`10
`
`matched the lyrics featured on Genius’s website char-
`acter-for-character. Pet. App. 81a-82a. At that time,
`only two other companies were licensing lyric tran-
`scriptions—and neither one matched the lyrics
`Google had on display. Pet. App. 82a-83a. So, Genius
`suspected that Google had stolen its lyric transcrip-
`tion. Pet. App. 83a.
`To confirm its suspicion, Genius embedded a dig-
`ital watermark in its lyric transcriptions. Genius re-
`placed apostrophes in the lyrics of certain newly
`released songs with a distinctive pattern of curly (’)
`and straight apostrophes (') that—when converted to
`dots and dashes—spelled out “RED HANDED” in
`Morse Code. Pet. App. 84a-85a. The only way this wa-
`termark could appear outside Genius’s platform
`would be if a user copied and pasted Genius’s lyric
`transcriptions wholesale. Pet. App. 84a.
`Sure enough, Genius caught Google with its hand
`in the cookie jar: The “RED HANDED” message soon
`began to appear in the lyrics in Google’s information
`boxes. Pet. App. 85a-88a. Genius took this direct proof
`of Google’s misappropriation to Google; Google as-
`sured Genius it would investigate. Pet. App. 85a-90a.
`But Google deflected responsibility, claiming that it
`licensed its lyric transcriptions from another source,
`LyricFind. Pet. App. 89a. Then the “RED HANDED”
`watermark disappeared from Google’s information
`boxes, but the lyrics remained unchanged. Pet. App.
`93a-98a.
`Genius knew that Google and LyricFind persisted
`in lifting lyric transcriptions from its platform. So,
`Genius devised a second watermark. This one relied
`
`
`
`11
`
`on replacing select space marks with a special charac-
`ter, the “four-per-em” space. Pet. App. 93a-94a. To the
`human eye, a four-per-em space is indistinguishable
`from an ordinary space. But a computer knows the
`difference. Genius combined ordinary spaces and
`four-per-em spaces in its lyric transcriptions to spell
`out “GENIUS” in Morse Code. Id.
`Genius continued to watermark lyric transcrip-
`tions of new releases with either “RED HANDED,”
`“GENIUS,” or both. Pet. App. 94a-95a. Naturally, the
`“RED HANDED” watermarks (which Google and Lyr-
`icFind knew about) were stripped out of Google’s in-
`formation boxes. But the “GENIUS” watermarks
`consistently appeared. Pet. App. 95a-96a. So, Google
`and LyricFind were not only continuing to steal Ge-
`nius’s lyric transcriptions, in knowing violation of Ge-
`nius’s terms of service—they were also trying to cover
`their tracks. Genius once again brought this evidence
`to Google and demanded that it cease and desist, but
`Google continued to deny that it had robbed Genius of
`its lyrics and deflected to LyricFind. Pet. App. 98a.
`
`The Court of Appeals Finds Genius’s Breach-of-
`Contract Claims Preempted
`In an effort to stop Defendants’ theft once and for
`all, Genius sued Google and LyricFind in New York
`state court. As relevant here, Genius asserted that
`they had breached their contracts by violating the
`terms of service’s commercial-use restriction. Pet.
`App. 103a-05a, 107a-11a. (Genius also asserted state-
`law claims for unfair competition, unjust enrichment,
`and indemnification.) Genius’s complaint explained
`that Google’s theft had enormous consequences for
`
`
`
`12
`
`Genius, driving down the number of users who click
`through to lyrics on Genius after searching on Google
`by as much as 70%. Pet. App. 100a. That reduction in
`web traffic to Genius’s platform inflicted extensive fi-
`nancial harm, to the tune of $50 million. Pet. App.
`100a-101a, 122a.
`The Wall Street Journal and other media outlets
`covered the suit, complimenting Genius for “put[ting]
`a spotlight on growing concerns that big tech compa-
`nies like Google can stifle smaller competitors
`through some of their business practices.” Robert
`McMillan, Genius Media Sues Google, Alleging Anti-
`competitive Use of Lyrics, Wall St. J. (Dec. 3, 2019),
`https://tinyurl.com/c8h2xh2y. Genius had provided
`yet another example of Google’s repeated efforts to
`squeeze out competitors by replicating their services
`and then privileging its own content in search results.
`Id.; see Jay Yarrow, Yelp CEO: Google Is A Monopolist
`That Screws Us Over, And Here’s How, Bus. Insider
`(Sept. 21, 2011), https://tinyurl.com/6zmem8ew (dis-
`cussing allegations that Google “steals Yelp’s content
`without attribution [and] favors its own sites” in
`search results).
`Defendants removed the case to federal court on
`the grounds that Genius’s claims were preempted by
`§ 301(a) of the Copyright Act and thus subject to the
`exclusive jurisdiction of the federal courts. Pet. App.
`25a-26a. The district court then denied Genius’s mo-
`tion to remand, finding all of its claims preempted by
`§ 301(a). Pet. App. 18a-65a.
`On the breach-of-contract claims, the district
`court held that Genius’s claim that Defendants
`
`
`
`13
`
`violated their contractual obligation not to copy or
`scrape its content for commercial purposes was not
`“qualitatively different
`from
`federal copyright
`claims.” Pet. App. 44a. The critical reason was that
`Genius “has not alleged … any contractual promise
`not based on rights arising from federal copyright
`law.” Id.
`The Court of Appeals affirmed. Pet. App. 17a. The
`court separately considered the two key prerequisites
`for preemption. It first addressed the “subject-matter
`requirement,” Pet. App. 6a-8a, i.e., whether Genius
`asserted rights over a “work … [that] come[s] within
`the subject matter of copyright as specified by sections
`102 and 103,” § 301(a). The court determined that Ge-
`nius’s claims did “come within the subject matter of
`copyright” because they concerned lyric transcrip-
`tions. The court acknowledged that Genius had no
`copyright in the transcriptions. But that did not mat-
`ter, it held, because “[t]he scope of copyright for
`preemption purposes … extends beyond the scope of
`available copyright protection.” Pet. App. 6a-8a (quot-
`ing Forest Park v. Universal TV Network, Inc., 683
`F.3d 424, 429–30 (2d Cir. 2012)).
`The court next addressed the second prerequisite:
`whether the rights asserted under Genius’s breach-of-
`contract claims were “equivalent to … the exclusive
`rights within the general scope of copyright.” Pet.
`App. 9a (quoting § 301(a)). Because Genius’s claims
`concerned the “copying and reproduction of Genius
`[c]ontent,” the court concluded that they were “equiv-
`alent.” Pet. App. 10a-11a. The court explained that
`Genius’s claims were “coextensive with an exclusive
`right already safeguarded by the Act—namely,
`
`
`
`14
`
`control over reproduction and derivative use of copy-
`righted material.” Pet. App. 11a.
`Next, the court considered whether Genius’s
`breach-of-contract claims included “any extra ele-
`ments that make [them] qualitatively different from
`a copyright infringement claim.” Pet. App. 9a. Genius
`had pointed to the elements of “mutual assent and
`valid consideration” that formed the basis of claims
`sounding in contract: Defendants’ promise “not to
`scrape Genius’s content and use it for commercial pur-
`poses … in exchange for access.” Genius C.A. Br. 40.
`Genius had also argued that because its claims were
`premised on this bargained-for exchange, its contrac-
`tual rights differed from rights under the Copyright
`Act because they could be asserted only against con-
`tractual counterparties—not the public at large. Ge-
`nius C.A. Br. 41.
`The court rejected these arguments. It held that
`such extra elements were “not sufficient” to avoid
`preemption. Pet. App. 11a. For support, it relied on
`authority from the Sixth Circuit holding that where a
`contractual promise “amounts only to a promise to re-
`frain from reproducing, performing, distributing or
`displaying the work, then the contract claim is
`preempted.” Pet. App. 12a (quoting Wrench Ltd. Liab.
`Co. v. Taco Bell Corp., 256 F.3d 446, 457-58 (6th Cir.
`2001)). The court also pointed to its own precedent
`taking a “restrictive view of what extra elements
`transform an otherwise equivalent claim into one that
`is qualitatively different from a copyright infringe-
`ment claim.” Pet. App. 12a. Based on that precedent,
`the court held that Genius’s breach-of-contract claims
`were “not qualitatively different from a copyright
`
`
`
`15
`
`claim and [are] therefore preempted.” Pet. App. 12a-
`13a. Since the contract claims were preempted, and
`Genius did not have a claim under the Copyright Act,
`the Court of Appeals affirmed the district court’s dis-
`missal of the entire su
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