Omnia Studios, LLC v. JD E-Commerce America Limited
6:23-cv-06186
| W.D.N.Y. | Mar 31, 2025Background
- Four plaintiffs (Omnia Studios, Cindy Chinn, Collis ECommerce, Turkey Merck) sued JD E-Commerce America Ltd., Jingdong E-Commerce (Hong Kong), Walmart.com USA LLC, and Walmart Inc., alleging copyright and trademark infringement on Walmart.com by third-party sellers using "Joybuy" labels.
- Plaintiffs discovered and documented multiple infringing/counterfeit listings via a third-party IP agent, QTI.AI, and alleged that JD directly sold infringing products, or otherwise enabled the infringers on Walmart.com.
- Defendants argued that Joybuy operated as a marketplace-within-a-marketplace, with JD merely providing a platform for third-party sellers and not selling, shipping, or listing infringing items themselves.
- Walmart.com took down most reported infringing listings within days following complaints, maintained repeat infringer/takedown policies, and did not directly profit from the infringing activity beyond standard referral fees.
- The parties filed cross-motions for summary judgment on all claims; the court principally addressed issues of DMCA safe harbor immunity and trademark liability.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| DMCA Safe Harbor - Status as Service Provider | JD is a direct seller, not a "service provider" | JD is a platform only, hosting third-party sellers | JD is a service provider; entitled to DMCA immunity |
| DMCA Safe Harbor - Financial Benefit/Control | Walmart received benefit and had ability to control infringement | Walmart's only benefit is referral fees; little control | No disqualifying control; DMCA immunity applies |
| DMCA - Repeat Infringer Policy Implementation | Walmart failed to terminate JD despite repeat infringement | Listings were from third-parties; policies reasonably implemented | Walmart's policy implementation reasonable |
| Trademark/Contributory Infringement | Defendants did not act sufficiently to stop known infringement | Defendants promptly removed listings after notice | Prompt removal satisfied legal standard |
Key Cases Cited
- Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (requirements for copyright infringement)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment standard)
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment standard)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (standards for contributory trademark infringement against ISPs)
- Inwood Labs., Inc. v. Ives Labs., 456 U.S. 844 (contributory trademark infringement liability beyond actual infringer)
- Viacom Int’l, Inc. v. YouTube, Inc., 676 F.3d 19 (interpretation of DMCA safe harbor provisions)
- 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (elements of direct trademark infringement claim)