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Case to Watch: ML Genius v Google

Updated: Nov 15, 2022

Copyright Preemption – State vs. Federal Law

What is Copyright Preemption?

The Supreme Court is considering whether to accept an appeal of a case involving a technical legal issue known as copyright preemption. Read on for an overview of preemption law and the issues in the case.

Preemption — Federal Versus State Authority

The United States essentially has two legal regimes: 1) federal law, consisting mostly of statutes enacted by Congress, and 2) state law, consisting of statutes enacted by state legislatures and common law created by judges. The regimes have concurrent authority, subject to the Supremacy Clause, which prohibits states from interfering with the federal government’s exercise of its powers. To minimize conflicts between the federal and state regimes, Congress has enacted legislation providing that, in certain areas, federal law should govern. This is known as preemption — and it applies in the field of copyright law pursuant to Section 301 of the Copyright Act.

Copyright Preemption

Copyright preemption is the concept that the federal system controls protection for works of expression that could potentially be covered by copyright. State laws seeking to protect those kinds of works are preempted and will not be recognized by the courts. This issue comes up surprisingly often in copyright lawsuits where the copyright owner includes additional claims such as unfair competition, misappropriation, or breach of contract.

The federal courts have developed a two-part test for determining when a claim is preempted by copyright. The first question considers whether the work falls within the subject matter of copyright. This means something that Congress could have protected by copyright law, even if it declined to do so. The second part of the test is whether the right being asserted is equivalent to any of the exclusive rights granted by the copyright law — for example, the right to reproduce, display or publicly perform the work.

If the claim includes extra elements that make it qualitatively different from a copyright infringement claim, then it may survive. To ascertain if that is the case, the courts do a technical analysis: considering what the case is about; what the copyright owner is complaining about; the nature of the work; and the nature of the right that is being infringed.

ML Genius v Google

Contract preemption is at issue in ML Genius v Google. In that case, Genius sued Google in state court for scraping lyrics from its website. Genius does not own copyright in the lyrics, so its claim is for breach of its website terms of use. Google removed the case to federal court, arguing that the claims involved copying of copyrightable content. The district court found the contract claims preempted and dismissed the case. The Court of Appeals for the Second Circuit affirmed the dismissal, finding the state law claims preempted since there were no additional elements. Genius asked the Supreme Court to take the case, asserting that there is a split between the circuits as to when and whether contract claims are preempted. Stay tuned to see whether the Supreme Court takes the case.

Nancy J. Mertzel

Mertzel Law PLLC

5 Penn Plaza, 19th Floor

New York, NY, 10001

(646) 965-6900

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