IP Law Daily, COPYRIGHT—S.D.N.Y.: Google secures dismissal of copyright and deceptive practices claims in connection with textbook piracy, (Jun 6, 2025)

By Justin Marcus Smith, J.D.

The plaintiffs’ surviving printer-publisher theory trademark infringement claim boiled down to Google’s involvement with the application of trademark images, where the court found the allegations facially analogous to cases against publishers of yellow pages phone directories.

Google LLC (Google) did not have the requisite degree of “stop or limit” control over pirate sellers of digital textbooks to be held vicariously liable for their copyright infringement, held the federal district court in New York City, in dismissing the first of three educational publisher claims Google challenged for deficient pleading. The court held the plaintiffs adequately pleaded a second claim of trademark infringement to the extent Google “applies reproductions of infringing marks to its Shopping Ads.” Last, the Copyright Act and Lanham Act both preempted a third claim under New York’s deceptive practices statute, which, regardless, failed to allege that Google engaged in deception by suppressing consumer information about legitimate digital books for sale. The court granted dismissal of the copyright infringement and New York deceptive practices claims, without leave to amend, but it declined to dismiss the publishers’ trademark infringement claim (Cengage Learning, Inc. v. Google LLC, No. 1:24-cv-04274-JLR (S.D.N.Y. June 4, 2025)).

Background. Cengage Learning, Inc. (Cengage) and other leading educational publishers Bedford, Freeman & Worth Publishing Group, LLC (Macmillan Learning); Macmillan Holdings, LLC (Macmillan Holdings); Elsevier Inc. (Elsevier); Elsevier B.V.; and McGraw Hill LLC (McGraw Hill) (collectively, plaintiffs), complained that Google LLC (Google) used its Google Shopping platform to advertise infringing digital copies of the plaintiffs’ digital works (see Copyright News, Jun. 7, 2024).

According to the court’s review of the allegations against Google, the Google Shopping platform was really an ad server. It was not directly involved in sales of the allegedly infringing products. Google would decide when and where to display Shopping Ads with the product images the merchants supplied to Google. Google would then redirect shopper browsers to the merchants’ independently operated e-commerce websites to complete sales transactions.

The plaintiffs alleged that Google reviewed the merchant website landing pages and products to determine Google Ad eligibility. They said Google also expected merchants to comply with Google’s terms of service, including Google policies that prohibited ads selling pirated goods, else they would risk termination. In many alleged instances, pirate merchants used photos of the publishers’ own textbooks, including the publishers’ trademarks. Beyond the obvious confusion that would cause, the plaintiffs further alleged that Google Shopping Ads had features that “actively direct users to search for and select Infringing Works.” They also said a “Compare Prices” feature highlighted the price differences between pirate sellers and legitimate textbook sellers. In a nutshell, the plaintiffs complained that Google played a key role in enabling sales of pirate products that shoppers probably would not have discovered by any other means.

The plaintiffs acknowledged that Google updated its policies at some point to eliminate the advertising of standalone digital books. However, the plaintiffs said that only compounded the problem. It led to a self-selection bias because legitimate publishers, who tended to obey rules, then left the field completely open to pirate sellers who were naturally inclined to ignore all rules. The only people left selling were the pirates.

Cengage, Macmillan Learning, Elsevier, and McGraw Hill (collectively, the publishers) asserted claims against Google for contributory and vicarious copyright infringement and deceptive business practices in violation of N.Y. Gen. Bus. Law § 349(a).

Cengage, Macmillan Holdings, Elsevier, Elsevier B.V., and McGraw Hill (collectively, the trademark plaintiffs) also asserted claims against Google for trademark infringement.

Google moved to dismiss three counts of the amended complaint for failure to state a claim under Fed. R. Civ. P. 12(b)(6): the vicarious copyright infringement claim (Count II); the trademark infringement claim (Count III); and the deceptive business practices claim under N.Y. Gen. Bus. Law § 349 (Count IV). The court partly granted and partly denied the motion.

Copyright infringement. The court held the applicable case law made it clear that the plaintiffs did not plead that Google had the right to directly “stop or limit” pirate seller infringement.

Google’s motion to dismiss focused on the plaintiffs’ claim for vicarious copyright infringement, not their other secondary liability claim for contributory copyright infringement. The pertinent distinction was that vicarious copyright liability turns on a respondeat superior relationship to the direct infringer, not direct knowing participation in infringement.

Google asserted that the plaintiffs failed to make a facial case that Google supervises or controls the alleged infringement or derives a direct financial benefit from it. Google said it did not have an ability to supervise or control sales that the plaintiffs pleaded was happening on third-party websites. The plaintiffs countered that the appropriate inquiry was whether Google could stop or limit the direct infringement, and it certainly could do so by terminating the pirate sellers’ ads, in a context where sales were putatively unlikely to occur without Google’s promotional involvement.

The court found the case law cited by both parties rather straightforward: Google did not have control because the alleged infringing conduct took place on third-party websites. See, e.g., Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146. The Ninth Circuit reached a different result in Napster because infringement in that matter occurred on Napster’s own system, using Napster’s software. See A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004.

Here, the court reasoned it was not enough that Google could shut down accounts and take down ads, because infringing third-party websites could continue distributing infringing copies, even if the traffic might be reduced. Google could only exert indirect pressure or assistance on reducing infringing activity. The lack of direct control was “evidence” that Google did not have the right or ability to control piratical activity. Google was not like Napster, albeit, the court allowed that the plaintiffs had a point that the argument for control here was “not as attenuated” as in Amazon.com, Inc. However, the plaintiffs read the “stop or limit” dictum language in Grokster too broadly. See Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 929-30 (2005). In the instant court’s view, “Google may exert more control over the direct infringement here than it did in Amazon.com, but it still does so only indirectly.” Otherwise, any Google failure to manage its own operations might speak to contributory infringement, not vicarious infringement.

The court continued to discuss the nuances of the case law at considerable length. In the end, the court found the plaintiffs did not plead that Google had sufficient ability to control or supervise the pirate sellers’ infringement to avoid dismissal of their vicarious copyright infringement claim. The court dismissed the copyright infringement claim accordingly.

Trademark infringement. In contrast, the court held the plaintiffs stated a claim for trademark infringement under 15 U.S.C. § 1114(1)(b). The plaintiffs’ printer-publisher theory trademark infringement claim boiled down to Google’s involvement with trademark images. The plaintiffs asserted that Google, in the process of creating the Shopping Ads, either retrieved an image of the trademark from a pirate seller link or accepted an image the pirate seller provided, and then placed a copy of that image in the ad. The plaintiffs argued that, in either event, Google necessarily made a copy of the trademark and applied that copy to an advertisement. Google countered the pirate sellers were doing the trademark image copying, and Google’s role was limited to display.

The court reasoned that Google was responsible under 15 U.S.C. § 1114(1)(b) even if Google was simply receiving infringing images from pirate sellers. The court found the alleged situation facially analogous to cases against yellow page phone directory publishers who printed trademark infringing listings on behalf of businesses.

Google insisted it was not “applying” infringing images to ads. The pirate sellers had done that. The court acknowledged sparse § 1114(1)(b) case law. However, in the court’s view, Google selectively parsed the “applying” standard and ignored the allegations of the amended complaint without citing any cases that adopted its interpretation of “apply.” The court agreed with the plaintiffs that Google had taken a “more active” role in printing infringing ads, by targeting them, than had the yellow pages publishers. Google also did not cite any cases suggesting that § 1114(1)(b) did not apply to automated processes, and the innocent infringer defense would be pointless if there could be no § 1114(1)(b) liability for those displaying infringing paid advertisements on behalf of others. Google’s arguments about “passive facilitation” and “use” continued on at great length, but the court held the plaintiffs sufficiently pleaded that Google “applies reproductions of infringing marks to its Shopping Ads.” The court declined to dismiss the trademark infringement claim.

N.Y. deceptive practices. The court agreed with Google that the Copyright Act preempted the plaintiffs’ deceptive practices claim under N.Y. Gen. Bus. Law § 349(a). Google’s stated policy of banning all digital book ads was a neutral policy applicable to all ebook sellers, and it was not the source of any deception. To the extent deception allegedly arose from Google’s non-enforcement of its policy, the court found it substantively redundant of the plaintiffs’ copyright claim. And, to whatever extent the Copyright Act did not preempt the § 349(a) claim, the Lanham Act would. However, the plaintiffs did not show a specific and substantial injury to the public, under the Lanham Act, beyond ordinary trademark infringement.

As for any residual allegation that Google provided a misleading representation of the ebook market, the plaintiffs did not cite to any case holding that Google must display ads from all market participants to avoid a risk of deceiving the public. The court noted the Google Search index still reflected textbooks, including digital books, sold by legitimate sellers. The court concluded the plaintiffs allegations did not plausibly establish that Google itself engaged in any deceptive practice directed toward either textbook buyers or sellers. The court dismissed this New York deception claim.

Amendment. The court denied further amendment. Google noted the same infirmities on a prior motion to dismiss; the plaintiffs did not suggest how they would cure them now; and, the plaintiffs did not request leave to amend at the lengthy oral argument.

The Case is No. 1:24-cv-04274-JLR.

Judge: Rochon, J.

Attorneys: Matthew Jan Oppenheim (Oppenheim & Zebrak LLP) for Cengage Learning, Inc., Bedford, Freeman & Worth Publishing Group, LLC, Macmillan Holdings, LLC, Elsevier Inc., Elsevier B.V., and McGraw Hill LLC. Allison Levine Stillman (Latham & Watkins LLP) for Google LLC.

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

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