Best Carpet Values, Inc. v. Google LLC

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

BEST CARPET VALUES, INC.; No. 22-15899

THOMAS D. RUTLEDGE, on behalf

of themselves and all others similarly D.C. No.

situated, 5:20-cv-04700-

EJD

Plaintiffs-Appellees,

v. OPINION

GOOGLE, LLC,

Defendant-Appellant.

Appeal from the United States District Court

for the Northern District of California

Edward J. Davila, District Judge, Presiding

Argued and Submitted September 13, 2023

San Francisco, California

Filed January 11, 2024

Before: J. Clifford Wallace, Sidney R. Thomas, and

Danielle J. Forrest, Circuit Judges.

Opinion by Judge Wallace

2 BEST CARPET VALUES, INC. V. GOOGLE LLC

SUMMARY*

California Law

The panel reversed the district court’s denial of Google,

LLC’s motion to dismiss plaintiffs’ putative class action

asserting California state-law claims arising from Google’s

placement of search results on copies of their websites.

Plaintiffs challenged the way Google displayed websites

in Search App on Android phones from March 2018 to April

2020. Plaintiffs argued that by displaying frame and half-

page digests, Google occupied valuable space on the

websites of class members that Google should have paid for

because it obtained all the benefits of advertising from use

of that space. The district court certified for interlocutory

review four questions that were potentially dispositive of the

case.

Addressing plaintiffs’ trespass to chattels claim and the

first certified question, the panel held that Kremen v. Cohen,

37 F.3d 1024 (9th Cir. 2003), should not be extended to

protect as chattel the copies of websites displayed on a user’s

screen. An application of Kremen’s three-part test led to the

conclusion that a cognizable property right did not exist in a

website copy. Accordingly, plaintiffs’ trespass to chattels

claim must be dismissed.

Addressing plaintiffs’ state-law implied-in-law contract

and unjust enrichment claim and the third certified question,

the panel held that website owners cannot invoke state law

*

This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.

BEST CARPET VALUES, INC. V. GOOGLE LLC 3

to control how their websites are displayed on a user’s screen

without preemption by federal copyright law. The panel

applied a two-part test to determine whether plaintiffs’ state-

law claim was preempted by the Copyright Act. Applying

step one, the manner that plaintiffs’ websites were displayed

fell within the subject matter of federal copyright law.

Applying step two, the rights asserted by plaintiffs’ implied-

in-law contract and unjust enrichment claim were equivalent

to the rights provided by federal copyright law. In addition,

plaintiff’s state-law claim did not carry “an extra element”

as compared to a federal copyright claim. Accordingly, the

panel concluded that plaintiffs’ state-law claim was

preempted by federal copyright law.

Because the first and third question were dispositive, the

panel did not reach the two remaining certified questions.

The panel reversed the order denying Google’s motion to

dismiss, and remanded with instructions to dismiss.

COUNSEL

Fred A. Rowley Jr. (argued) and Victor H. Jih, Wilson

Sonsini Goodrich & Rosati, Los Angeles, California; David

Kramer, Dylan Byrd, and Dale R. Bish, Wilson Sonsini

Goodrich & Rosati, Palo Alto, California; Paul N. Harold,

Wilson Sonsini Goodrich & Rosati, Washington, D.C.; Ali

Reza Rabbani, Paul Hastings LLP, Los Angeles, California;

for Defendant- Appellant.

John A. Lawson (argued), Edelson PC, San Francisco,

California; Ryan D. Andrews and Roger J. Perlstadt,

Edelson PC, Chicago, Illinois; Alexander H. Schmidt,

Alexander H. Schmidt, Colts Neck, New Jersey; Eric J.

4 BEST CARPET VALUES, INC. V. GOOGLE LLC

Artrip, Mastando & Artrip LLC, Huntsville, Alabama; Asil

Hashiri, Mashiri Law Firm APC, San Diego, California; for

Plaintiffs-Appellees.

OPINION

WALLACE, Circuit Judge:

Google, LLC (Google) appeals from the district court’s

denial of its motion to dismiss Plaintiffs’ putative class

action asserting California state-law claims arising from

Google’s placement of search results on copies of their

websites. We have jurisdiction over this timely interlocutory

appeal pursuant to 28 U.S.C. § 1292(b). We reverse and

remand with instructions to dismiss the Complaint.

I.

“At the motion to dismiss stage, we assume factual

allegations stated in the Complaint filed by Plaintiff[s] to be

true.” Doe v. Internet Brands, Inc., 824 F.3d 846, 848 (9th

Cir. 2016). Google provides internet services and products,

most famously the google.com search engine, the Android

mobile operating system, and the web browser Google

Chrome. Google integrates “Search App” into its Android

mobile operating system. The Search App enables a user to

conduct internet searches directly from the home screen of

their Android phone without opening a web browser. During

the class period, Search App typically appeared as a search

bar at the top of the Android home screen.

When a user typed a website address into the browser,

Search App (like most web browsers) connected to the

server hosting the website and “obtain[ed] a copy of the

BEST CARPET VALUES, INC. V. GOOGLE LLC 5

requested website page from the host web server.” Search

App then “deliver[ed] the copy to the user by translating the

website’s codes and recreating the website page on the user’s

. . . mobile device screen.” If a user clicked a link on the

page, the click was “transmitted back over the internet to the

host web server, from which the hosted website [could] then

transmit responsive information,” such as a different website

page. Plaintiffs explicitly alleged that “Google did not

trespass on the source websites located on [Plaintiffs’] web

servers.”

Plaintiffs challenge the way Google displayed websites

in Search App on Android phones from March 2018 to April

2020. During this period, Search App displayed the

requested website page with a “frame” at the bottom of the

page stating, for example, “VIEW 15 RELATED PAGES.”

The frame gave the user the option of clicking a button to

expand the frame to display half-page banners advertising

related websites, occupying up to eighty percent of the

screen size and shadowing the remaining twenty percent.

Alternatively, the user could scroll through the website to

which they navigated as normal with the frame remaining in

place at the bottom of the screen. The banners were not

advertisements for which Google paid Plaintiffs, but instead

results automatically generated by Google’s algorithms and

placed there without Plaintiffs’ permission. Plaintiffs

alleged that the “VIEW 15 RELATED PAGES” frame and

(when expanded by the user) the half-page digests blocked

important content on their websites. In the case of putative

class representative Best Carpet Values, Inc. (Best Carpet),

the results at times displayed in the frame included links to

websites owned by Best Carpet’s direct competitors and

negative news stories about Best Carpet’s owner. Plaintiffs

argue that by displaying the frame and half-page digests,

6 BEST CARPET VALUES, INC. V. GOOGLE LLC

Google “occup[ied] valuable space” on the websites of class

members that Google should have paid for because it

“obtain[ed] all the benefits of advertising” from use of that

space.

Plaintiffs filed a putative class action, asserting

California state law claims for trespass to chattels, implied-

in-law contract and unjust enrichment, and violation of

California’s Unfair Competition Law (UCL), Cal. Bus. &

Prof. Code § 17200 et seq. Google moved to dismiss the

operative Complaint for failure to state a claim upon which

relief could be granted. The district court, drawing in part

upon our decision in Kremen v. Cohen, 337 F.3d 1024 (9th

Cir. 2003), mostly denied Google’s motion to dismiss.1 In

response, Google moved to stay the proceedings and to

certify the order for immediate interlocutory appeal under 28

U.S.C. § 1292(b). The district court granted Google’s

motions, and we granted Google’s permission to file this

appeal.

II.

“We review de novo a district court’s denial of a motion

to dismiss under Rule 12(b)(6).” Olympic Forest Coal. v.

Coast Seafoods Co., 884 F.3d 901, 905 (9th Cir. 2018).

III.

The district court certified for our interlocutory review

four “novel and difficult” questions of law that it believed

were potentially dispositive of the case. We conclude that

1

The district court dismissed the UCL claim under the “unfair” part but

left intact the claim under the “unlawful” part.

BEST CARPET VALUES, INC. V. GOOGLE LLC 7

the first and third questions are indeed dispositive, thus we

do not address the second or fourth.2

A.

As to the first question, “[w]hether [Kremen] should be

extended to protect as chattel the copies of websites

displayed on a user’s screen,” we answer in the negative.3

Trespass to chattels, “[d]ubbed by Prosser the ‘little

brother of conversion,’ . . . allows recovery for interferences

with possession of personal property ‘not sufficiently

important to be classed as conversion.’” Intel Corp. v.

Hamidi, 30 Cal. 4th 1342, 1350 (2003), citing W. Page

Keeton, et al., Prosser and Keeton on Law of Torts § 14, pp.

85–86 (5th ed. 1984). Although California law recognizes

“property” in “every intangible benefit and prerogative

susceptible of possession or disposition,” Holistic

Supplements, L.L.C. v. Stark, 61 Cal. App. 5th 530, 548

(2021) (internal quotations and citation omitted), it does not

similarly call courts to use property law “to displace other,

more suitable law” in every instance. Silvaco Data Sys. v.

Intel Corp., 184 Cal. App. 4th 210, 239 n.21 (2010) (internal

citation and quotation marks omitted).

We agree with the district court that the “chattels” at

issue here are the copies of Plaintiffs’ websites. Plaintiffs

2

The questions not reached are: “(2) Whether trespass to chattels can be

based on ‘functional harm or disruption’ to a website even though there

is no ‘physical harm to their websites’” and “(4) Whether the risk

consumers may be confused or misled by deceptive advertising defeats

Google’s First Amendment right to suggest search results to users

interested in viewing a particular website.”

3

Because Plaintiffs’ trespass to chattels claim is without merit, we do

not address whether it is preempted by the Copyright Act.

8 BEST CARPET VALUES, INC. V. GOOGLE LLC

alleged so in their Complaint: “Website owners likewise

have property rights . . . in the copies of their websites that

appear on internet users’ monitors and screens.” Plaintiffs’

attempt on appeal to eliminate the distinction between their

proprietary websites and the copies of such websites is

rejected. See Airs Aromatics LLC v. Op. Victoria’s Secret

Stores Brand Mgmt., Inc., 744 F.3d 595, 600 (9th Cir. 2014)

(“A party cannot amend pleadings to directly contradic[t] an

assertion made in the same proceeding.”) (internal quotation

marks and citation omitted, alteration in original). We thus

root our trespass to chattels analysis in Plaintiffs’ website

copies.

Plaintiffs do not allege a possessory interest in copies of

their websites sufficient to give rise to a trespass to chattels

claim. Under California law, trespass to chattels “lies where

an intentional interference with the possession of personal

property” causes injury. Hamidi, 30 Cal. 4th at 1350–51

(emphasis added), quoting Thrifty–Tel, Inc. v. Bezenek, 46

Cal. App. 4th 1559, 1566 (1996). Plaintiffs assert only a

conclusory allegation that they have “possessory interests”

in the copies of their websites that are transmitted to a user’s

device upon a request from Search App. We do not accept

this legal conclusion as true. See Whitaker v. Tesla Motors,

Inc., 985 F.3d 1173, 1176 (9th Cir. 2021) (stating an

adequate complaint must contain “well-pleaded facts, not

legal conclusions”). Nor should we. Under Plaintiffs’

theory, they maintain a possessory interest in an intangible

copy that (1) is created when a user visits a website via the

Search App, (2) exists on the user’s device, and (3) is deleted

by the user when they leave the page. Plaintiffs’ possessory

interest is thus entirely dependent on actions taken by an

individual user unassociated with Plaintiffs or their websites.

A possessory interest does not lie under these circumstances.

BEST CARPET VALUES, INC. V. GOOGLE LLC 9

Nor do Plaintiffs allege a cognizable property interest in

the website copies that may serve as the basis for a trespass

to chattels claim.4 The district court’s analysis to the

contrary misreads both the governing law and Plaintiffs’

Complaint. The district court reasoned that “[c]onsistent

with [Kremen] and subsequently issued cases . . . a website

can be the subject of a trespass to chattels claim.” In

Kremen, we held that the California law of conversion

applied to an internet domain name, not the website itself or

other intangible assets attendant to the website. See 337 F.3d

at 1030. And Plaintiffs’ Complaint highlights that a website

copy and its domain name are different concepts, explaining

that “[a] website is a digital document built with software

and housed on a computer called a ‘web server,’ which is

owned or controlled in part by the website’s owner” while a

domain name is a unique identifier “which enables an

internet user to find the web server on which the website

resides.” For these reasons, the website copies are the proper

focus of the property-interest inquiry.

The district court similarly erred in concluding that

Plaintiffs have a cognizable property interest in website

copies. In Kremen, we applied the following three-part test

to conclude that a property right existed in a domain name:

“First, there must be an interest capable of precise definition;

4

Contrary to Plaintiffs’ assertion, Google did not waive its argument

against Plaintiffs’ property interest in the website copies. The district

court’s certification order granted Google permission to seek our review

on the question of whether Kremen “should be extended to protect as

chattel the copies of websites displayed on a user’s screen.” Google’s

contention that Plaintiffs do not allege a cognizable property interest in

the website copies, one of the elements of a trespass to chattels claim,

Hamidi, 30 Cal. 4th at 1350–51, sits comfortably within the scope of the

district court’s order.

10 BEST CARPET VALUES, INC. V. GOOGLE LLC

second, it must be capable of exclusive possession or

control; and third, the putative owner must have established

a legitimate claim to exclusivity.” 337 F.3d at 1030, quoting

G.S. Rasmussen & Assocs., Inc. v. Kalitta Flying Serv., Inc.,

958 F.2d 896, 903 (9th Cir. 1992). Decades later, this “test

[still] stakes out useful guideposts” for determining the

existence of a property right when addressing a question

involving intangible property. Holistic Supplements, 61 Cal.

App. 5th at 553.

Application of Kremen’s three-part test here leads to the

conclusion that a cognizable property right does not exist in

a website copy.

First, a website copy is not “capable of precise

definition” because there is no single way to display a

website copy. Kremen, 337 F.3d at 1030. As Plaintiffs

acknowledge in the Complaint, a web browser “obtains a

copy of the requested website page . . . [and] translate[s] the

website’s codes [to] recreat[e] the website page on the user’s

computer monitor or mobile device screen.” This

translation of website code into a visual appearance

necessarily varies across browsers and devices. Plaintiffs

respond that the lack of a fixed display does not defeat their

property interest. Although in Kremen we held that updating

records in a document did not defeat a finding of a property

interest, id. at 1035, Plaintiffs’ argument elides the core

inquiry of the “capable of precise definition” part. California

law requires that the property interest be “well-defined” and

“like staking a claim to a plot of land at the title office.” Id.

BEST CARPET VALUES, INC. V. GOOGLE LLC 11

at 1030. A website copy possesses neither of these

qualities.5

Second, a website copy is not “capable of exclusive

possession or control.” Id. Plaintiffs have not alleged, nor

could they allege, that they retain control over the copies of

their websites that are generated and sent to users’ devices.

Unlike a domain name, where the registrant “decides where

on the Internet those who invoke that particular name—

whether by typing it into their web browsers, by following a

hyperlink, or by other means—are sent[,]” id., once the

website copy is generated and sent to the user’s device, users

have control over what to do with it—whether to click on a

link on Plaintiffs’ sites, resize the page, navigate away from

the page themselves, or click on one of the links provided in

the results.

Plaintiffs’ invocation of Cal. Civ. Code § 655 does not

remedy this lack of control. Section 655 states in relevant

part: “There may be ownership of all inanimate things which

are capable of appropriation or of manual delivery; . . . of

such products of labor or skill as the composition of an

author, the good will of a business, trade marks and signs,

and of rights created or granted by statute.” Cal. Civ. Code

§ 655. But section 655 merely suggests what kinds of

property may be owned. The statute says nothing about how

such property interests are defined, which is a necessary

exercise for determining whether that property may serve as

5

Plaintiffs claim a particular interest in the portion of the screen (in their

words, “advertising space”) that is occupied by the Search App’s

leaderboard. But whether that space even exists and how it is displayed

rely on how the website’s codes are translated as well as the user’s

choices.

12 BEST CARPET VALUES, INC. V. GOOGLE LLC

the basis of a state-law claim. See Holistic Supplements, 61

Cal. App. 5th at 548, 553.

Third and finally, there is no “legitimate claim to

exclusivity” over website copies. Kremen, 337 F.3d at 1030.

Plaintiffs themselves recognize that they do not control how

their websites are displayed on different devices or web

browsers. This lack of exclusivity renders website copies

fundamentally different from other types of intangible

property recognized as being subject to California state-law

property claims. See G.S. Rasmussen, 958 F.2d at 903

(regulatory certificate); Payne v. Elliot, 54 Cal. 339, 342

(1880) (corporate stock); Holistic Supplements, 61 Cal. App.

5th at 553 (tax registration certificate); Welco Elecs., Inc. v.

Mora, 223 Cal. App. 4th 202, 211 (2014) (credit line from a

credit card company); Fremont Indem. Co. v. Fremont Gen.

Corp., 148 Cal. App. 4th 97, 125 (2007) (business’s net

operating loss); Golden v. State, 133 Cal. App. 2d 640, 643

(1955) (liquor license). Because Plaintiffs do not control

how the copies of their websites are shown in different

environments, they have no legitimate claim to exclusivity

over those copies.

Our conclusion necessarily follows from property law’s

core tenets. “[P]roperty law has long protected an owner’s

expectation that he will be relatively undisturbed at least in

the possession of his property.” Loretto v. Teleprompter

Manhattan CTV Corp., 458 U.S. 419, 436 (1982). These

“[g]eneral principles of property law require that a property

owner have the legal right to exclude others from use and

enjoyment of that property.” Alderson v. United States, 686

F.3d 791, 796 (9th Cir. 2012). Without such legal

entitlement in this case, property law provides no remedy for

an alleged trespass to chattels claim.

BEST CARPET VALUES, INC. V. GOOGLE LLC 13

We hold that there is no cognizable property interest in

website copies that may serve as the basis for a trespass to

chattels claim under California law.6 The district court erred

in allowing Plaintiffs’ case to proceed on this theory.

B.

Having concluded that Plaintiffs’ trespass to chattels

claim must be dismissed, we turn to Plaintiffs’ state-law

implied-in-law contract and unjust enrichment claim. This

claim, and Google’s argument in response thereto,

implicates the third question certified by the district court for

interlocutory appeal: “Whether website owners can invoke

state law to control how their websites are displayed on a

user’s screen without preemption by federal copyright law.”

Again, we answer the certified question in the negative.

As we have previously explained, “[t]he Copyright Act

[(the Act)] affords copyright owners the ‘exclusive rights’ to

display, perform, reproduce, or distribute copies of a

copyrighted work, to authorize others to do those things, and

to prepare derivative works based upon the copyrighted

work.” Maloney v. T3Media, Inc., 853 F.3d 1004, 1010 (9th

Cir. 2017), citing 17 U.S.C. § 106. The Act provides that

“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 . . . and come within the subject

matter of copyright as specified by sections 102 and 103

. . . are governed exclusively by this title.” 17 U.S.C.

§ 301(a). In other words, section 301(a) works “to preempt

and abolish any rights under the common law or statutes of

a State that are equivalent to copyright and that extend to

6

We therefore have no reason to revisit Kremen’s discussion of the

“merger rule” under California law. See 337 F.3d at 1033.

14 BEST CARPET VALUES, INC. V. GOOGLE LLC

works,” if the rights in question fall “within the scope of the

Federal copyright law.” Maloney, 853 F.3d at 1010, quoting

H.R. Rep. No. 94–1476, at 130 (1976).

“We have adopted a two-part test to determine whether

a state law claim is preempted by the Act.” Laws v. Sony

Music Entm’t, Inc., 448 F.3d 1134, 1137 (9th Cir. 2006).

“First, we decide whether the subject matter of the state law

claim falls within the subject matter of copyright as

described in 17 U.S.C. §§ 102 and 103. Second, assuming it

does, we determine whether the rights asserted under state

law are equivalent to the rights contained in 17 U.S.C. § 106,

which articulates the exclusive rights of copyright holders.”

Maloney, 853 F.3d at 1010 (internal citations and quotation

marks omitted).

We agree with the district court that step one of our

preemption test is satisfied here because the manner that

Plaintiffs’ websites are displayed falls within the subject

matter of federal copyright law.

“[T]he subject matter of copyright encompasses

‘original works of authorship fixed in any tangible medium

of expression, now known or later developed, from which

they can be perceived, reproduced, or otherwise

communicated, either directly or with the aid of a machine

or device.’” Close v. Sotheby’s, Inc., 894 F.3d 1061, 1069

(9th Cir. 2018), quoting 17 U.S.C. § 102(a). “A work need

not consist entirely of copyrightable material in order to

meet the subject matter requirement, but instead need only

fit into one of the copyrightable categories in a broad sense.”

Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296,

305 (2d Cir. 2004).

Plaintiffs concede, and Google agrees, that commercial

websites are copyrightable. We have not directly addressed

BEST CARPET VALUES, INC. V. GOOGLE LLC 15

this question, but several district courts in our circuit have

adopted the parties’ position. See, e.g., Ticketmaster L.L.C.

v. Prestige Entm’t W., Inc., 315 F. Supp. 3d 1147, 1160–61

(C.D. Cal. 2018); Blue Nile, Inc. v. Ice.com, Inc., 478 F.

Supp. 2d 1240, 1248 (W.D. Wash. 2007).

We previously recognized that federal copyright law

extends to “works of authorship” beyond those works

enumerated in 17 U.S.C. § 102(a). For example, we held

that computer software, including “the literal components”

like “the source and object code,” is subject to copyright

protection and that “the non-literal components of a

program, including the structure, sequence and organization

and user interface” may also be protected “depend[ing] on

whether . . . the component in question qualifies as an

expression of an idea, or an idea itself.” Johnson Controls,

Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th

Cir. 1989). We later added that computer software’s

“dynamic non-literal elements” (users’ real-time experience)

were subject to copyright protection. MDY Indus., LLC v.

Blizzard Entm’t, Inc., 629 F.3d 928, 954 (9th Cir. 2010). The

Supreme Court has endorsed our understanding of computer

software’s copyrightability. See Google LLC v. Oracle Am.,

Inc., 141 S. Ct. 1183, 1196 (2021).

A commercial website similarly qualifies for federal

copyright protection even though it is not explicitly

mentioned in section 102(a). A website is a “work[] of

authorship fixed in any tangible medium of expression.” 17

U.S.C. § 102(a). Although the exact appearance of the

website may vary across devices, the website’s content does

not change unless and until the website creator makes a

change to the underlying source code. See Hunley v.

Instagram, 73 F.4th 1060, 1063 (9th Cir. 2023). Similarly,

websites possess copyrightable literal elements (source

16 BEST CARPET VALUES, INC. V. GOOGLE LLC

code); non-literal elements (including “logos, images, fonts,

videos and sound effects”); and dynamic non-literal

elements (such as the experience of viewing the website).

Ticketmaster, 315 F. Supp. 3d at 1160–61, citing MDY

Indus., 629 F.3d at 952. Furthermore, the website’s content

is “perceived, reproduced, or otherwise communicated”

“with the aid of a machine or device,” 17 U.S.C. § 102(a),

because an internet browser connects to the website’s server,

translates the website’s code, and recreates the content

specified by the code on the user’s device. See Perfect 10,

Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1155–56 (9th Cir.

2007). Therefore, we conclude that a commercial website,

like computer software, may qualify for copyright

protection.

On appeal, Plaintiffs attempt to recast the subject matter

of their claim as “Google’s advertising” and “the advertising

space on Plaintiffs’ websites” rather than the websites

themselves. But again, Plaintiffs cannot escape their

Complaint, which alleges that Search App “place[d]

Google’s leaderboard and half page banner ads on the copies

of the[ir] website pages.” The district court properly held

that Plaintiffs alleged rights within the subject matter of

federal copyright law when they challenged the manner that

Google displayed Plaintiffs’ websites. Plaintiffs’ analogies

to advertising outside of a theater or in front of a work of art

similarly miss the mark. As we have explained, “the scope

of the subject matter of copyright law is broader than the

protections it affords.” Montz v. Pilgrim Films & Tel., Inc.,

649 F.3d 975, 979 (9th Cir. 2011) (en banc), citing 4

Melville B. Nimmer & David Nimmer, Nimmer on

Copyright § 19D.03[A][2][b] (rev. ed. 2010). For this

reason, our preemption analysis focuses on whether

Plaintiffs’ Complaint invokes the subject matter of federal

BEST CARPET VALUES, INC. V. GOOGLE LLC 17

copyright law—it does—rather than whether Search App’s

advertisements infringe on Plaintiffs’ copyrightable

websites.

However, at step two of our preemption test, the district

court erred in determining that the rights asserted in

Plaintiffs’ implied-in-law contract and unjust enrichment

claim were not equivalent to the rights provided under 17

U.S.C. § 106.

Section 106 grants copyright owners the “‘exclusive

rights’ to display, perform, reproduce, or distribute copies of

a copyrighted work, to authorize others to do those things,

and to prepare derivative works based upon the copyrighted

work.” Maloney, 853 F.3d at 1019, quoting 17 U.S.C. § 106.

“To survive preemption, the state cause of action must

protect rights which are qualitatively different from the

copyright rights.” Id. (citation omitted). In this way, “[t]he

state claim must have an extra element which changes the

nature of the action.” Laws, 448 F.3d at 1143, quoting Del

Madera Props. v. Rhodes & Gardner, 820 F.2d 973, 977 (9th

Cir. 1987).

The district court reasoned that Plaintiffs’ claim was not

preempted because “Plaintiffs are not asserting infringement

of any right to the reproduction, performance, distribution,

or display of their websites.” But “[c]opyrightability is a

different question from infringement and is determined on

different legal principles.” SAS Inst., Inc. v. World

Programming Ltd., 64 F.4th 1319, 1338 (Fed. Cir. 2023)

(Newman, J., dissenting). Here, the district court improperly

focused on the nature of the complained of action when

copyrightability—and by extension, the preemption

analysis—must focus on the nature of the right at issue.

18 BEST CARPET VALUES, INC. V. GOOGLE LLC

We need not decide whether it is more appropriate to

characterize Plaintiffs’ Complaint as implicating rights to (a)

display or reproduce copies or (b) prepare derivative works

because the Complaint invokes both rights and both rights

are recognized under federal copyright law.7 Plaintiffs

alleged that Search App “obtains a copy of the requested

website page from the host web server and delivers the copy

to the user by translating the website’s codes” and then

“recreat[es] the website page on the user’s . . . mobile device

screen.” Displaying and reproducing a copy of a

copyrighted work (Plaintiffs’ website) falls squarely within

the scope of 17 U.S.C. § 106. See MDY Indus., 629 F.3d at

938. Plaintiffs further alleged that Search App

“superimpose[ed] advertisements on their websites’

homepages and other landing pages” when displayed on

screens. Google’s reproductions of Plaintiffs’ websites,

which necessarily vary in appearance on users’ screens, can

be recognized as an act of “prepar[ing]” “derivative works.”

See Jarvis v. K2 Inc., 486 F.3d 526, 531–32 (9th Cir. 2007)

(holding as derivative works collage ads where the defendant

“shrank, expanded, distorted, overlaid and otherwise edited

the [plaintiff’s] original images, while also combining them

with photos taken by other photographers, additional

graphics, the [defendant’s] logo and marketing slogans.”).

7

As one treatise has suggested, the right to prepare “derivative works”

may be superfluous in most cases because the statute defines a

“derivative work” as one “based upon one or more preexisting works,”

in other words, a copy. 2 Nimmer on Copyright § 8.09[A][1], citing 17

U.S.C. § 101; see also Benny v. Loew’s, Inc., 239 F.2d 532 (9th Cir.

1956), aff’d sub nom. Columbia Broad. Sys. Inc. v. Loew’s Inc., 356 U.S.

43 (1958) (examining an earlier but substantially similar version of the

Copyright Act and holding that infringement applied to both the “other

version” and “copy” of the copyrightable material). Plaintiffs’ state-law

claim is preempted regardless of how we characterize the right.

BEST CARPET VALUES, INC. V. GOOGLE LLC 19

Either way, these allegations implicate the exclusive rights

to copyright holders bestowed by federal statute.

Having determined that Plaintiffs’ implied-in-law

contract and unjust enrichment claim falls within the subject

matter of and asserts rights equivalent to those provided by

federal copyright law, the only remaining task is to inquire

whether Plaintiffs’ state-law claim carries “an extra

element” as compared to a federal copyright claim. It does

not.

“The elements of a cause of action for unjust enrichment

are simply stated as receipt of a benefit and unjust retention

of the benefit at the expense of another.” Tufeld Corp. v.

Beverly Hills Gateway, L.P., 86 Cal. App. 5th 12, 31–32

(2022) (internal quotation marks and citation omitted). As a

leading treatise has opined, “a state-law cause of action for

unjust enrichment or quasi contract should [generally] be

regarded as an ‘equivalent right’ and, hence, preempted

insofar as it applies to copyright subject matter.” 1 Melville

B. Nimmer & David Nimmer, Nimmer on Copyright

§ 1.15[G] (2023).

The district court concluded that Plaintiffs’ claim was

not preempted because it contained “extra elements” but did

not articulate what those extra elements were. Instead, the

district court opined that Plaintiffs’ claim was “qualitatively

different from a copyright claim” apparently because

“Google allegedly covered up or obscured a portion of

Plaintiffs’ websites from Android phone users for [Google’s

own] financial benefit.” But such alleged action by Google

is strikingly similar to “distort[ing], overla[ying] and

otherwise edit[ing] original images, while also combining

them with . . . additional graphics, . . . and marketing

slogans,” which we have found to qualify as derivative work.

20 BEST CARPET VALUES, INC. V. GOOGLE LLC

Jarvis, 486 F.3d at 531. Furthermore, the alleged financial

benefit to Google maps neatly onto the damage requirement

for any successful copyright claim. See 17 U.S.C.

§ 504(a)(1) (holding that a copyright infringer may be liable

for “the copyright owner’s actual damages and any

additional profits of the infringer”). Therefore, the alleged

benefit to Google from Search App’s display of Plaintiffs’

website, such as there was one, is not an “extra element”

beyond the elements of federal copyright law. Because the

implied-in-law contract and unjust enrichment claim “is not

materially different from a claim for copyright infringement

that requires a plaintiff to prove that the defendant used,

reproduced, copied, or displayed a copyrighted work,” it is

preempted. Forest Park Pictures v. Univ. Tel. Network, Inc.,

683 F.3d 424, 432 (2d Cir. 2012); accord Del Madera, 820

F.2d at 977.

The main case upon which Plaintiffs rely to rebut the

notion that their unjust enrichment claim lacks any extra

element of a copyright claim, Grosso v. Miramax Film

Corp., 383 F.3d 965 (9th Cir. 2004), is readily

distinguishable. That case involved an implied-in-fact

contract containing an added element of an explicit

“agreement to pay for use of the disclosed ideas.” Montz,

649 F.3d at 980, citing Grosso, 383 F.3d at 967–68. In

contrast, here Plaintiffs advance a theory based on a contract

implied-in-law without any additional agreement, either

explicit or implicit.

Finally, even construing Plaintiffs’ implied-in-law

contract and unjust enrichment claim as an allegation that

Google exceeded the scope of its license does not save the

claim from preemption. See MDY Indus., 629 F.3d at 940

(“[W]e have held that the potential for infringement exists []

where the licensee’s action (1) exceeds the license’s scope

BEST CARPET VALUES, INC. V. GOOGLE LLC 21

(2) in a manner that implicates one of the licensor’s

exclusive statutory rights.”). Plaintiffs alleged that Google

has a license to reproduce copies of their websites that users

may access on their mobile screens through Google’s

browser, and that Google exceeded this license by

“superimposing non-consensual ads onto” their websites.

The district court agreed, indicating that another reason that

Plaintiffs’ claim was not preempted was that “Plaintiffs want

and expect Google to copy and display their websites in

Chrome browser and Search App, and acknowledge that

Google has license to do so.” But Plaintiffs do not specify

the scope of Google’s license—by indicating if or how

Google’s license to display copies of their websites was

conditioned in any way. Therefore, it is not clear what

“cognizable legal right of [Plaintiffs] has been violated.”

Marina Tenants Ass’n v. Deauville Marina Dev. Co., 181

Cal. App. 3d 122, 134 (1986); see also S.O.S., Inc. v.

Payday, Inc., 886 F.2d 1081, 1087–88 (9th Cir. 1989)

(holding that “[t]he critical question is not the existence but

the scope of the license”).

We hold that Plaintiffs’ state-law claim is preempted

under federal copyright law. The district court erred in

permitting Plaintiffs’ case to proceed on this theory.

IV.

For these reasons, we conclude that the district court

erred in denying Google’s motion to dismiss and allowing

Plaintiffs to advance their California state-law claims of

trespass to chattels and unjust enrichment. Their remaining

claim, based on UCL’s prohibition of an “unlawful

. . . business act or practice,” requires a predicate state or

federal law claim. Lippitt v. Raymond James Fin. Servs.,

Inc., 340 F.3d 1033, 1043 (9th Cir. 2003), citing Cal. Bus. &

22 BEST CARPET VALUES, INC. V. GOOGLE LLC

Prof. Code § 17200 and Cel-Tech Commc’ns, Inc. v. L.A.

Cellular Tel. Co., 20 Cal. 4th 163, 180 (1999). No predicate

claims remain and Plaintiffs cannot proceed on their UCL

claim alone. Accordingly, we reverse the district court’s

order denying Google’s motion to dismiss and remand the

case with instructions to dismiss.

REVERSED AND REMANDED.