by Lee Gesmer | Dec 18, 2019 | Contracts
Genius Media Group Inc., the owner of the music lyric site genius.com has sued Google and LyricFind for “scraping” lyrics from the genius.com website. Two aspects of this new case (only a complaint so far) are interesting – the way that Genius established that Google was scraping, which is quite clever, and the basis for Genius’s legal claim which appears to be quite weak.
Assume you have a work that you want to protect from copying but that you can’t copyright. You might be unable to use copyright law because it’s a database or compilation that lacks sufficient originality. Or, perhaps you’ve licensed the components of the database and you don’t own the copyright in them.
This is the position Genius is in. Genius publishes song lyrics online. Many of these lyrics are crowd-sourced by the Genius user community. However, Genius doesn’t own the lyrics – it licenses the right to publish them from authors and publishers. So it owns a compilation of lyrics, but can’t assert a copyright in that content.
Since Genius has no copyright ownership, it tries to use contract law to prevent copying. It’s website contains the following terms of service:
“you agree not to modify, copy, frame, scrape, rent, lease, loan, sell, distribute or create derivative works based on the Service or the Genius Content, . . . In connection with your use of the Service you shall not engage in or use any data mining, robots, scraping or similar data gathering or extraction methods.”
A couple of years ago Genius noticed that some song lyrics published in Google “Information Boxes” were suspiciously similar to Genius lyrics based on punctuation, contractions and line breaks. However, Genius couldn’t be sure that Google copied lyrics from its site and hadn’t acquired them somewhere else. This was complicated by Genius’s knowledge that Google licensed song lyrics from third parties, specifically LyricFind. If Google’s lyrics were scraped or copied from Genius in violation of the terms of service who was responsible, Google or LyricFind?
Here’s where the lawsuit gets interesting.
To determine whether the Genius song lyrics were being copied Genius laid two traps for Google and LyricFind. First, 
Genius embedded a pattern of straight and curly apostrophes in song lyrics, as shown at the right. Genius calls this “Watermark #1.” The “dot-dash” pattern formed by the apostrophes spelled out “red handed” in Morse code. Google and LyricFind were unlikely to notice this small deviation, and it would allow Genius to see if its lyrics were being copied. Using Watermark #1, Genius concluded that Google was using lyrics copied from genius.com, and that in some instances these lyrics were sourced from LyricFind. In other words, Google and LyricFind had copied and pasted the lyrics from genius.com either manually or using an automated scraper.
Genius complained to Google, and disclosed Watermark #1 to Google to prove that Google was copying. However, according to Genius this was to no effect – Google continued to publish lyrics copied from genius.com.
Genius then laid a second trap based on a spacing pattern (Watermark #2). Genius’s complaint explains this as follows:
[Genius replaced] the 15th, 16th, 19th, and 25th spaces of each song’s lyrics with a special whitespace character called a “four-per-em space.” This character (U+2005) looks identical to the normal “space” character (U+0020), but can be differentiated via Unicode character codes readable by a computer. If one ignores the first 14 spaces of a song’s lyrics, then interprets the four-per-em spaces as dashes, and regular spaces as dots, the sequence spells out the word “GENIUS” in Morse code . . ..
Again, it was extremely unlikely that Google or LyricFind would notice this if they were copying from genius.com, but Genius would be able to identify copying.
To make a long and somewhat complicated story short (again, see the complaint), based on its analysis of song lyrics published by LyricFind and Google, Genius concluded that both companies were scraping lyrics from the Genius website, although LyricFind appears to be the primary offender.
Case closed? Not yet – this only takes us to the second question in this case: did Google or LyricFind violate the law? Remember, Genius has no copyright in the lyrics.
The complaint is vague on this point. It states:
Access to and use of Genius’s website, including the content appearing on its website, is subject to the Genius Terms of Service, … Genius’s Terms of Service are accessible from every page of its website by a link in the footer reading “Terms of Use.”
Per the Genius Terms of Service, “[b]y accessing or using the Service, you signify that you have read, understand and agree to be bound by the terms of service and conditions set forth below. . . . Registration may not be required to view content on the Service, but unregistered Users are bound by these Terms.
Based on this it appears that Genius is unable to allege that Google or LyricFind entered into a “click-wrap” agreement that would have bound them to these terms of service.
The problem with this is that Genius may have a difficult time establishing that Google or LyricFind agreed to be bound by these terms and conditions.
Admittedly, the law of online contract formation is a mess. Companies regularly fail to take proper steps to create enforceable online contracts, and the court decisions (which are usually based on state contract law) are confusing and non-uniform. I’ve written about the difficulties online companies have creating enforceable agreements many times.
And, cases are highly fact specific – courts carefully dissect and analyze web interfaces to determine whether users are put on notice of the website’s terms and have agreed to them. However, in this case Genius appears to be at the weak end of the law. Users are not required to enter into a click-wrap agreement to access lyrics, and the terms quoted above are accessible only via an inconspicuous link at the bottom of the screens. Nor are users warned that by using the site they are bound by the terms and conditions accessible via that link.
This case has a lot of history, much of which is discussed by Mike Masnick on TechDirt here. Bottom line, Genius has been complaining to Google about lyric scraping for over two years, and apparently it’s been unable to get a satisfactory response from Google. Maybe this complaint is just Genius’s way of raising the volume on that process. And since it appears that Google sources/licenses almost all of its lyrics from LyricFind, Google will look to LyricFind to solve the problem and pay any (unlikely) damages.
It’s also worth noting (in passing) that Genius alleges that Google’s display of lyrics in Google Information Boxes ahead of genius.com links in response to search queries (greatly reducing the number of click-throughs to genius.com) is unfair competition under New York common law. However, this allegation rests on Genius’s ability to establish that Google breached a contract with Genius which, as discussed above, appears unlikely.
Update: This case was removed to federal court and was dismissed in August 2020. All of Genius’s claim were preempted by the Copyright Act. This ruling was affirmed by the Second Circuit in March 2022.
by Lee Gesmer | Dec 17, 2019 | Contracts
As we get older many of us own Individual Retirement Accounts (IRAs). These can hold money contributed directly during our working lives, or through a “rollover” from a 401K plan when we retire from a job. Either way, the money in IRA accounts (which in the U.S. totals more than $2.5 trillion), is held by financial institutions (such as Fidelity, Vanguard and Schwab) who act as custodians for this money. We rely on these custodians to transfer this money to our designated beneficiaries upon our death.
A recent case decided by the Massachusetts Supreme Judicial Court, UBS v. Aliberti, shows how this after-death transfer can go awry, and how difficult it can be to punish an IRA custodian that acts improperly or negligently.
The facts are convoluted, but in essence are as follows.
UBS acted as custodian for a large IRA owned by Patrick Kenney. After Kenney died in 2013 his friend, Craig Gillespie, sent UBS a letter informing UBS that Gillespie had a claim on the money in the IRA. UBS may have been confused (at least at first), since Kenney had attempted to make Gillespie a beneficiary to two other much smaller IRAs. However, it should have quickly become apparent to UBS that Gillespie had no claim on the money in the large IRA, and the money should have been promptly transferred to the sole proper beneficiary, Kenney’s longtime girlfriend, Donna Aliberti.
A family conflict may have played some part in this situation. The UBS financial advisor who had originally assisted Patrick Kenney in setting up his IRAs and who was responsible for transferring the IRA to Donna Aliberti was Patrick Kenney’s one-time sister-in-law — Margaret Kenny. When Margaret Kenny first received Donna Aliberti’s request for disbursement of the IRAs she responded by attacking Donna Aliberti as “”a whore” and “the . . . worst piece of filth I have ever encountered.”
Regardless of motive, there then ensued what the Massachusetts Supreme Judicial Court (the SJC) described as one and one-half years of “bureaucratic indifference or incompetence and hypersensitivity to risk exposure” by UBS. After 18 months UBS added insult to injury by filing a lawsuit asking the court to determine ownership of the IRA.
Ms. Aliberti counterclaimed for breach of fiduciary duty and violation of M.G.L. c. 93A, the Massachusetts “little FTC act,” which allows successful plaintiffs to recover up to three times their actual damages plus attorney’s fees.
Finally, after two and one-half years, UBS transferred the IRA to Ms. Aliberti. However, Mr. Kenney’s girlfriend was not appeased, and she refused to dismiss her case against UBS. As improbable as it seems, her case ultimately ended up before the highest appeals court in Massachusetts.
The SJC was faced with two legal issues: did UBS have a fiduciary duty to Ms. Aliberti, and did Ms. Aliberti have a valid claim for violation of 93A?
The court concluded that the answer to the first question was no. The relationship between UBS and Ms. Aliberti was merely a “retail consumer relationship governed by contract.” The fact that the UBS custodial agreement expressly disclaimed a fiduciary relationship was a factor in the court’s conclusion on this issue. In fact, although the court was not called upon to decide it in this case, based on the court’s reasoning UBS (or any other IRA custodian that uses a similar contract), would have a strong argument that it never owed Mr. Kenney a fiduciary duty.
However, Ms. Aliberti was not out-of-court yet. Surprisingly, the court held that UBS could be liable for a violation of 93A, and it remanded the case for a trial on this issue. Surprising, because Chapter 93A is alleged in almost every civil lawsuit in Massachusetts, but it is rarely successful. It hits the mark in cases involving fraud or deception, but infrequently where (as here), the facts suggest negligence or incompetence in the performance of a contract.
At the heart of Chapter 93A is its prohibition of “unfair or deceptive acts or practices.” However, the statute provides no definition of what constitutes an unlawful unfair or deceptive act. The SJC has held that conduct is “unfair” in violation of Chapter 93A if it lies “within at least the penumbra of some common-law, statutory, or other established concept of unfairness;… whether it is immoral, unethical, oppressive, or unscrupulous; [and] whether it causes substantial injury to consumers …” (link) UBS argued that it’s conduct fell outside this definition – rather Ms. Aliberti’s 93A claim amounted to nothing more than an “‘unsatisfactory experience’ in the beneficiary payment process.” (link) The Superior Court judge that heard the case had agreed and dismissed the case.
The SJC reversed, holding that UBS’s conduct may have met the standard for unfairness. UBS dragged its feet in informing Ms. Aliberti that it was freezing the proceeds, willfully failed to communicate with her, forced her to retain counsel, filed an implausible lawsuit, and held back funds to which Gillepsie (Mr. Kenney’s friend), had no valid claim, all of which may rise to the level of “unfairness” under 93A. The case will now go back to the Massachusetts trial court for trial , but the SJC has sent a message that it views UBS’s conduct as violative of Chapter 93A.
More broadly, the case may have expanded the scope of chapter 93A liability where consumers are the subject of bureaucratic indifference and ill treatment at the hands of large corporations like UBS. As UBS argued (unsuccessfully) “allowing someone who merely had an ‘unsatisfactory experience’ to pursue a Chapter 93A claim would establish a dangerous precedent and flood the courts of Massachusetts with disgruntled customers (or, in this case, non-customers) complaining of bad customer service experiences in the guise of ‘unfair or deceptive’ acts or practices.” (link)
While the SJC didn’t go so far as to create a new legal test for bad customer service, it did seem to open the door to 93A claims based on extreme customer mistreatment. The implication of its decision is that this is a fact-based inquiry, and to some extent it is in the eye of the beholder. Here, there were two beholders – the Superior Court judge (who dismissed the 93A claim), and the SJC, which reinstated it. Going forward, I would expect Superior Court judges to take a more pro-consumer look at 93A claims like the one in this case, and perhaps for corporations to be a bit less bureaucratically indifferent to avoid the risk of 93A liability.
UBS Financial Services, Inc. v. Aliberti, 483 Mass. 396 (2019)
Update: the case settled out of court in December 2021
by Lee Gesmer | Dec 6, 2019 | Copyright
Oracle’s copyright case against Google has dragged on for nine years. The case has generated multiple federal district court trials and appellate decisions. Hundreds of thousands of words have been written on the case. Academic careers have been built on it (OK, I’m exaggerating, but not by much).
Now that the case is before the Supreme Court a new, even larger audience wants to understand it. However, few people want to struggle through the lengthy court decisions or law review articles.
Here is my summary of the issues in the case in a nutshell. Almost all jargon and many details omitted.
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First Issue – copyrightability. Oracle owns the Java 
programming language. Part of Java is an application programming interface (“the Java API”). These are pre-written programs that allow programmers to perform common programming tasks. When Google built its Android smartphone operating system it copied verbatim a significant portion (over 11,000 lines) of the Java API.
The Java API uses commands and syntax that look a lot like computer code. Here’s an example:
The Copyright Act protects computer programs. It defines a computer program as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” Oracle argues that both the text and the structure, sequence and organization of the API fall squarely within this definition.
However, the Copyright Act excludes from copyright protection “methods of operation,” a term that is undefined. Google argues that the Java API is a method of operation, and therefore not copyright-protected.
The Federal Circuit held that the text and the structure, sequence and organization of the Java API are protected by copyright. Google is asking the Supreme Court to reverse that holding.
Second issue – fair use. Even if the Java API is copyright-protected Google has a second defense – that it’s use of the Java API is fair use. A jury decided this issue in Google’s favor. Oracle appealed, and the Federal Circuit reversed, holding that Google’s use of the Java API is not protected by fair use. Google is asking the Supreme Court to reverse that holding.
What happens next. If the Supreme Court holds that the Java API is not copyright-protected, Google wins and the case ends. If it holds that Google’s use of the Java API is fair use Google wins and the case ends.
If the Court rules in favor of Oracle on both issues (upholding the two Federal Circuit decisions) the case will be remanded for a trial in the district court to determine Oracle’s damages. Oracle is expected to ask a jury to award it $9 billion.
That’s it, in a nutshell.
If you want to explore the case in more detail go to my Oracle v. Google Resources Page.
by Lee Gesmer | Dec 4, 2019 | Trademark
Have you ever used the website booking.com to make a hotel reservation? If you are familiar with this site and I asked whether you thought BOOKING.COM is a brand name or a generic term, what would you say? Odds are you’d say it is a brand name – 75% of people surveyed thought so.
The United States Patent and Trademark Office (the USPTO) doesn’t challenge those survey results. However, it doesn’t think BOOKING.COM is entitled to trademark registration. It concluded that BOOKING is generic for an online hotel reservation service, and adding a top-level domain name (“.com” in this case) doesn’t change that, irrespective of survey results showing that consumers view it as a brand.
The owner of the trademark, Booking.com B.V. (“Booking”), appealed, and after grinding its way through the USPTO and the courts for eight years this dispute has arrived at the U.S. Supreme Court.
The issue presented to the Court is this: you can’t register (or enforce) a generic trademark. But what if you add a top-level domain name like “.com” to the generic term? Does that take the mark out of the generic category (making it “descriptive”) and open the door to registration, assuming the owner can prove secondary meaning?
The courts — and the USPTO — have made something of a muddle of this issue. The USPTO asserts that there’s a circuit split on trademark 
protection for “generic.com” trademarks. There may be, but this is not as clear as it could be. To make matters worse, the USPTO has been inconsistent on the issue. It disallowed registration for BOOKING.COM in the current case, but it has allowed registration for other apparently generic marks, such as CHEAPTICKETS.COM, CHEAPROOMS.COM, UNIVERSITYJOBS.COM, DIAPERS.COM and BUYLIGHTFIXTURES.COM.
The Supreme Court now has an opportunity to straighten things out.
Booking, the plaintiff in the case now before the Supreme Court, owns the booking.com domain name, and claims BOOKING.COM as a trademark.
“BOOKING” is a generic term for hotel reservation services, or so the USPTO and the federal courts concluded. (link) There’s no question that if you started a brick-and-mortar hotel reservation business and called it BOOKING or BOOKING, INC., you’d be unable to register those terms or claim an enforceable trademark in them.
However, Booking argues that under the Lanham Act’s “primary significance” test for generic marks the key issue is what the public understands the composite mark BOOKING.COM (“booking” + “.com”) to refer to. It relies on its survey evidence, which established that 75% of consumers view BOOKING.COM as a brand, and it argues that it’s logically and grammatically impossible to use the term BOOKING.COM as a generic term for anything.
Booking’s arguments persuaded a federal district court and the Fourth Circuit, that BOOKING.COM is descriptive.
The USPTO’s counter-argument is that adding “.com” to a generic term is analogous to adding “Inc.” to a generic term and, under long-established law, adding an identity-designation such as “Inc.” to a generic term does not convert it to a protectible mark. Just as no company could register a trademark in “BOOKING, INC.,” Booking should not be permitted to register a trademark in “BOOKING.COM.” The PTO asserts that the “.com” does nothing more than tell the public that the user operates an online business, much as “Inc.” tells the public that the user is a corporation. It does not create a “descriptive” (and therefore potentially protectable) trademark.
The outcome of this case is a close call. However, in my view Booking has the better side of the case. The USPTO’s central argument – that a top-level domain such as “.com” creates a commercial impression analogous to “Inc.” or “Corp.” – seems questionable. However, even if the Court does rule for Booking, the question remains whether the Court will place “GENERIC.COM” trademarks into the established category of “descriptive” trademarks (as Booking argues) or carve out a separate legal standard for generic.com marks (or a generic word paired with any other top level domain name). For example, the Court could require that generic.com marks meet a more rigorous, sui generis standard of secondary meaning to be eligible for registration.
If the Court does decide that GENERIC.COM trademarks are protectable, I expect that we will see many more of them – perhaps even a mini-gold rush to secure domain names with generic second-level domain names. And, companies that can establish secondary meaning, like Booking, will have stronger grounds on which to freeze out potential competitors who use close variants of generic.com marks. Imagine how Booking might respond to a competitive domain name such as HOTELBOOKING.COM or EBOOKING.COM. Very likely the owners of these domains would receive a cease and desist letter, followed by an infringement lawsuit if they didn’t comply with Booking’s demands.
The Fourth Circuit decision in this case and the cert. petitions are available on the case’s SCOTUS blog page. Eventually, merits briefs, amicus briefs and the Court’s opinion will be available there as well. (link)
FOOTNOTES:
