IP Law Daily, COPYRIGHT—S.D.N.Y.: Google’s defenses mostly allowed in textbook publisher infringement case, (Oct 30, 2025)

By Cathleen Calhoun, J.D.

Only two of the defenses by Google were struck down, and the court gave the company leave to amend them.

A federal district court in New York granted in part educational publishers’ motion to strike defenses brought by Google that stem from a lawsuit claiming Google engaged in copyright and trademark infringement by advertising the sale of unauthorized copies of their textbooks by pirate websites. In response to the lawsuit, Google filed an answer asserting 14 affirmative defenses. The educational publishers moved to strike some of those defenses, including statute of limitations, Digital Millennium Copyright Act (DMCA) safe harbor, a group of equitable defenses, and preemption under the Copyright Act. The court ruled mostly in favor of allowing the defenses by Google and only struck the defense of preemption by the Copyright Act and the equitable defense of in pari delicto. However, the court gave Google leave to amend on both of those defenses (Cengage Learning Inc. v. Google, LLC, No. 1:24-cv-04274 (JLR) (BCM) (S.D.N.Y. Oct. 29, 2025)).

Background. In June 2025, the federal district court in New York granted dismissal of the copyright infringement and New York deceptive practices claims in the case, without leave to amend, but declined to dismiss the publishers’ trademark infringement claim. During the pendency of the proceedings, the U.S. Supreme Court agreed to hear Internet service provider Cox Communication’s petition for certiorari (Dkt. No. 24-171) to review the Fourth Circuit’s decision in Cox Communications, Inc. v. Sony Music Entertainment to address whether “a service provider can be held liable for materially contributing to copyright infringement merely because it knew that people were using certain accounts to infringe and did not terminate access, without proof that the service provider affirmatively fostered infringement or otherwise intended to promote it” and whether “mere knowledge of another’s direct infringement suffices to find willfulness as required for heightened statutory damages.” In August, the court denied Google’s motion to stay the educational publishers’ case pending the U.S. Supreme Court’s decision on Cox Communications.

Statute of limitations. In starting its review, the court first noted that it would analyze each defense and decide if the defense should be looked at under the relaxed standard allowed under GEOMC Co. v. Calmare Therapeutics Inc. (918 F.3d 92, 98 (2d Cir. 2019)). The court applied the relaxed plausibility standard to the statute of limitations affirmative defense because a copyright infringement claim accrues, for statute of limitations purposes, when a plaintiff “discovers, or with due diligence should have discovered, the infringement.” Those facts, what the publishers knew and when they knew it, were not readily known to Google, according to the court. The publishers argued that Google’s defense “lacks a plausible basis” because “Plaintiffs began sending notices of infringement to Google on June 11, 2021,” and “Plaintiffs filed this case on June 5, 2024,” less than three years later. However, the court found that the publishers had not yet established that date as a fact and noted that Google refuted it. The court would not resolve that factual dispute and denied the motion to strike the defense.

Digital Millennium Copyright Act Safe Harbor. The court found that Google met the pleading standard for DMCA safe harbor, and did not apply a relaxed standard. The publishers contended that “Google has not provided fair notice of the facts that supposedly underlie its § 512(d) affirmative defense,” and “has not pled that it has a repeat infringer policy, what its policy is, and how the policy was reasonably implemented,” and that those pleading deficiencies prejudice them by “hindering [their] discovery efforts.” The court was not convinced, finding Google’s pleadings included that it operates a search engine, “which sufficiently pleads the § 512(d) safe harbor threshold requirement.” Google also met other DMCA safe harbor pleading standards, and even though the pleadings did not explain every intricacy, the defense was no surprise to the publishers.

Equitable defenses. Estoppel, waiver, laches, and unclean hands were deemed adequately pleaded under the relaxed standard, given the nature of the facts and ongoing discovery, according to the court. The court struck the in pari delicto defense, finding Google had a conclusory pleading on it, but granted Google leave to amend.

Copyright Act preemption. The court agreed that the Copyright Act preemption defense was not adequately pled. According to the court, “Google could have pleaded it as an affirmative defense with factual support…Google’s pleading is plainly devoid of that support and does not allege that any of these types of preemption apply.” As a result, the court held that Google did not plead a plausible defense that the publishers’ trademark claim is preempted by the Copyright Act. However, the court granted Google leave to replead the defense if it would like to do so.

The Case is No. 1:22-cv-00354-RA.

Judge: Abrams, R.

Attorneys: Laura Zaharia Marion (Doniger/Burroughs) for Dana Ruth Lixenberg. Nancy Ann Del Pizzo (Rivkin Radler, LLP) for Complex Media, Inc., Bedford, Freeman & Worth Publishing Group, LLC, Macmillan Holdings, LLC, Elsevier Inc., Elsevier B.V., and McGraw Hill LLC.

Companies: Complex Media, Inc.; Bedford, Freeman & Worth Publishing Group, LLC; Macmillan Holdings, LLC; Elsevier Inc.; Elsevier B.V.; McGraw Hill LLC

Cases: Copyright TechnologyInternet Trademark NewYorkNews GCNNews