Copyright Law Preempting Contractual Terms of Use

by Dennis Crouch

The pending Supreme Court petition in ML Genius v. Google focuses on an important issue of copyright preemption.

The basic setup: has lots of song lyrics, most of which were  posted by fans (i.e., “crowdsourced”). LyricFind scraped the data and then sold it to Google.  With the data in hand, Google now displays the lyrics in the search results rather than directing traffic to Genius.  Genius sued.

Contract not Copyright: Genius does not hold the copyright to the lyrics and so has no copyright infringement claim.  But, Genius does require its users to agree to an extensive contractual agreement that includes a promise that the user will not commercially reproduce, copy, or distribute any portion of the Genius service.  At some point, Genius began to suspect that Google was using the lyrics from its service and set-up some test cases that proved their suspicion.

After some back-and-forth, Genius eventually sued Google in New York state court, alleging that

Google LLC and LyricFind have been caught red-handed misappropriating content from Genius’s website, which they have exploited–and continue to exploit–for their own financial benefit and to Genius’s financial detriment.

Original NY Complaint.  The complaint asserts breach of contract based upon violation of its terms of service; unfair competition (based upon state law); and unjust enrichment.   Google removed the case to Federal Court and then sought dismissal of the case–arguing that all claims asserted in the case are preempted by Section 301(a) of the Copyright Act.

(a) … 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 tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103 … are governed exclusively by this title. 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.

17 U.S.C. § 301(a).  The district court found the claims preempted. Genius Media Group Inc. v. Google LLC, 19-CV-7279 (E.D.N.Y. Aug. 10, 2020). On appeal, Genius focused only on the contract claim, but the Second Circuit still affirmed–holding that the copyright act preempts state law contract claims. ML Genius Holdings LLC v. Google LLC, 20-3113, — F.4th — (2d Cir. Mar. 10, 2022).  Now Genius has brought its case to the US Supreme Court with the following question:

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?

Petition for Cert.

The case ties in directly to lots of academic work on the topic.  Judge Easterbrook’s 1996 decision in ProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996) was a flashpoint with its holding that contractual restrictions on the use of information was not  so preempted.  The ProCD approach has been adopted by a number of circuits, but not the Second Circuit.  Prior to its decision in this case, the Second Circuit appears to have not stated any clear precedent on the topic:

Considering the prominence of the S.D.N.Y. and how often and yet inconsistently it has ruled on the issue, it is truly remarkable that the Second Circuit has not yet delivered a binding precedent on this issue.

Guy A. Rub, Copyright Survives: Rethinking the Copyright-Contract Conflict, 103 Va. L. Rev. 1141, 1181 (2017).

The Genius brief was filed by Joshua Rosenkranz (Orrick) along with Christopher Cariello, Jennifer Keighley, Lauren Weber, and Emily Villano.  Briefs from Google and LyricFind are due September 8, 2022.

13 thoughts on “Copyright Law Preempting Contractual Terms of Use

    1. 7.1

      Amusing 6, but in the grand scheme of things, ultimately this type of colloquial-ism is NOT helpful as it tends to confuse “use AS a tool” with actual non-human innovation.

      Having the ‘click-bait’ of “AI won an award” is just not supported in the deeper story.

      1. 7.1.1

        I’m not entirely sure what you’re even talking about as usual. But obviously the everyman is beginning to resent the “use of AI as a tool” to the extent as it was done in this instance. It’s being blended pretty hard in this instance. If you simply hook up that AI in the story to another AI that chooses “prompts” then I would guess that all you’d need to do is sort through the stuff that pops out for good stuff.

        “Having the ‘click-bait’ of “AI won an award” is just not supported in the deeper story.”

        I say halfway. Tis true he probably made a bunch of different images with different prompts while choosing the specific prompts used for this one. But otherwise he just put a few prompts in and out popped award winning stuff. Obviously the heavy lifting was done by the AI imo.


          That you may not understand is neither all that surprising, nor a shortfall on my behalf, as (actual) AI is beyond your ken.

          Perhaps you should bookmark this as a place to revisit once (if) your understanding approaches a rudimentary level.

  1. 6

    Perhaps Genius should have had the lyric authors grant Genius a license to the lyrics sufficient to allow Genius to sue third parties for copying. Or, perhaps Genius could argue, that the authors have the right to grant third parties the right to copy, etc., and those exclusive rights are separate and not affected at all by Genius’ contract claims. Thus, Genius’ contract claim is not preempted.

  2. 5

    OT but too ironic to resist: A news item today that Intel, the company “where the term ‘patent troll’ was coined by two Intel lawyers back in the 1990s,” “recently announced that it was handing 5,000 patents off to IPValue, which (as it does in these kinds of deals) spun up a shell corporation called Tahoe Research Limited .. [for] these patents. Usually, the way these deals work is that the company, Intel, gets some relatively modest amount of cash upfront, but also a piece of anything the troll can squeeze out of others.”

  3. 4


    A contract that “pretends” to have rights that it does not (that is, in this particular case, a bundle of rights that is covered explicitly by Copyright), is deemed to be not enforceable.

    I would imagine that MUCH of the contracts in the nature of “shrink wrap” or even in the case of this very blog – “Behavior Rules” fall into this category of unenforceability.

    1. 4.1

      I think that your idea here has some merit, but the Contract/Copyright issue is also major a step-up from other setups because of the strong statutory preemption statement in the Copyright Act itself.

      1. 4.1.1

        It should be noted There has been a fair amount written about patent act also preempting certain (state enforced) contractual terms — see eg link to — but as far as I know the courts have not embraced these arguments when presented.

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