Intellectual Property/Media

Weil has successfully represented Alibaba Group, a China-based provider of e-commerce websites, in a number of copyright and trademark infringement lawsuits, including in significant cases defining the limits of trademark law, particularly the potential secondary liability of e-commerce-enabling platforms.

Weil represented Alibaba in a major trademark infringement lawsuit commenced by a group of luxury brand owners, including Gucci, Bottega Veneta, and Yves Saint Laurent, in the S.D.N.Y. Plaintiffs alleged, among other things, that Alibaba and its affiliates made it possible for “an army of counterfeiters” to sell counterfeit versions of plaintiffs’ brand-name products on Alibaba’s platforms, including to purchasers in the United States. They asserted claims for trademark infringement, trademark counterfeiting, contributory trademark infringement and counterfeiting, false representation, trademark dilution, and violations of the RICO statute as well as various claims under New York law. In August 2017, the parties announced that they had settled the case and had entered into “a ground-breaking agreement to cooperate in their efforts to protect intellectual property and take joint enforcement actions online and offline against infringers.”

Weil successfully represented Alibaba in a putative class action brought by an artist in California federal court asserting claims for contributory and vicarious trademark and copyright infringement in connection with listings by third party merchants on Alibaba’s e-commerce platforms that allegedly infringed plaintiff’s copyrights and trademark.

Weil also has represented Alibaba in connection with similar actions either brought or threatened by brand owners in a number of jurisdictions, including Arizona, Florida, Utah, and California, among others.

For more than a decade, Weil has partnered with eBay to help it and its affiliates navigate significant and complex trademark, IP, and other issues relating to its e-commerce platform.

Weil defended eBay against a suit in which Tiffany & Co. had claimed that eBay was responsible for policing counterfeit merchandise offered on its marketplace site. Weil represented eBay – through trial, on appeal, and through the denial of Tiffany’s petition for a writ of certiorari with the Supreme Court. The ruling for eBay is seen as establishing landmark precedent on secondary trademark liability for Internet intermediaries and vindicates eBay’s position, which is that in its role as an e-commerce transaction intermediary, it cannot be solely or principally responsible for the provenance or authenticity of merchandise offered on the site.

Weil also represented eBay in defense of a trademark infringement lawsuit brought by Wimo Labs, Inc. in federal district court in California. Plaintiff alleged eBay violated the Lanham and RICO Acts by permitting the sale of allegedly counterfeit versions of plaintiff’s phone cases on eBay’s online marketplace. In January 2016, the court granted eBay motion to dismiss the plaintiff’s RICO allegations for failure to state a claim. Following fact discovery, which revealed that eBay had in fact been diligent in removing the plaintiff’s reported instances of potential trademark infringement, the parties mediated and Weil negotiated a favorable settlement of all claims against eBay.

Weil successfully negotiated a global settlement on behalf of eBay Inc. in a series of longstanding copyright infringement disputes in California federal court with a photographer who has sought to hold eBay liable for allegedly infringing photos offered by third party sellers. Prior to settlement, Weil twice secured summary judgment on behalf of eBay. First, in January 2015, a California federal judge granted eBay’s motion for summary judgment, ruling that the Digital Millennium Copyright Act safe harbor provisions protect eBay from liability for sales of photos by third-party sellers where eBay promptly takes down the listing after it is notified, and that the fair use and first sale doctrines preclude liability for the display of photos in back issues of magazines in connection with listings offering copies of the back issues for sale. After the plaintiff appealed to the Ninth Circuit, which vacated one narrow aspect of the 2015 judgment, the parties engaged in limited additional discovery, and in January 2018 the Court again granted eBay’s motion for summary judgment. The parties negotiated a settlement as plaintiff’s appeal was pending before the Ninth Circuit.

Weil also has successfully represented eBay in negotiating the resolution, prior to motion practice, of a number of other copyright and trademark infringement actions in courts around the country. Of late, we have carried out this role in cases in federal courts in California, Colorado, New York, and North Carolina.

For more than 10 years, Weil has worked with in-house lawyers at Facebook and its Instagram, Oculus, and WhatsApp subsidiaries on all manner of IP-related issues: complex and cutting-edge copyright and trademark issues, product development, safe-harbor (DMCA/CDA) protections, global notice-and-takedown disputes, and music licensing requirements. In addition, we help coordinate global IP advice for Facebook and craft its constantly evolving trademark and copyright policies and notifications. We also worked closely with Facebook’s music team as the company rolled out its global music licensing initiative and entered into agreements with music publishers and record companies around the world. Weil also has represented Facebook in IP-related litigation in courts around the United States, including successfully resolving a number of copyright and trademark disputes on a confidential basis before formal proceedings commenced in court.

Weil secured a complete victory for Getty Images when the U.S. Court of Appeals for the Second Circuit affirmed a district court’s summary judgment decision in Getty Images’ favor in a significant copyright infringement action. In the case, a photo licensing agency, Zuma Press, alleged that Getty Images had unlawfully copied, displayed and intentionally altered the photographer credit information for more than 47,000 photographs allegedly belonging to Zuma and asserted claims for copyright infringement under Section 501 of the Copyright Act, and for falsification, alteration and/or removal under Section 1202 of the Act – the latter of which implicated potential statutory damages of more than $3 billion. After Getty Images moved to dismiss the complaint, Zuma Press, along with 11 new plaintiffs, filed an amended complaint, asserting an additional claim for contributory infringement, as well as claims under the Lanham Act and New York law. Weil won dismissal of the contributory infringement, Lanham Act and state law claims at the outset of the case, and an initial summary judgment victory in 2018 that defeated both the Section 501 and Section 1202 claims. However, the trial court would later grant the plaintiffs’ motion to reconsider the dismissal of its Section 501 copyright infringement claim. Weil then submitted a renewed summary judgment motion and, in July 2019, the court again granted judgment in Getty Images’ favor. On appeal, the plaintiffs attempted to challenge the summary judgment dismissal of both the Section 501 claims and Section 1202 claims, but following briefing and argument, the Second Circuit sided with Getty Images and affirmed the district court’s summary judgement decision.

Weil also represented Getty Images, as a co-defendant with the National Football League and the Associated Press, in a copyright infringement lawsuit brought by a group of sports photographers in New York federal court. The lawsuit alleged that the NFL, AP and Getty Images used or approved of uses of their photographs in violation of various contracts and in violation of the antitrust laws. The court granted Getty Images’ motion to compel arbitration, thereby dismissing the case against Getty with leave to renew after the completion of the arbitration. Following mediation, the claims against Getty were resolved and the claims against Getty were dismissed with prejudice.

Weil secured a complete victory for HarperCollins in a copyright infringement action against e-book publisher Open Road Integrated Media relating to the e-book rights to Jean Craighead George’s 1972 children’s book, Julie and the Wolves. HarperCollins alleged that it had obtained the exclusive right to license third parties to publish e-book versions of the award-winning children’s novel, and that Open Road had violated HarperCollins’ rights in that work by publishing such an e-book without HarperCollins’ authorization. Ruling on the parties’ motions for summary judgment, the court agreed with HarperCollins and held that George’s 1971 contract with HarperCollins granted the exclusive right to license electronic publications to HarperCollins, which Open Road had infringed in its unlicensed e-book publication of Julie of the Wolves. The court found that although the 1971 agreement did not expressly address e-book rights, which were yet to be developed, the clear language of the contract was sufficiently broad to encompass those rights.

Weil secured victory in a watershed misappropriation case involving S&P Global subsidiary S&P Dow Jones Indices LLC and its S&P 500 index and Dow Jones Industrial Average. We were called into action when International Securities Exchange (ISE) attempted to list option contracts based on the S&P 500 and DJIA without a license. Following nearly four years of pre-trial proceedings in state and federal courts in Illinois and in federal court in New York, an Illinois court granted summary judgment for our clients in full, permanently enjoining ISE from listing or providing an exchange market for the trading of S&P 500 and DJIA options and co-defendant OCC from facilitating such trading. The Illinois Supreme Court denied ISE’s petition for leave to appeal, and the U.S. Supreme Court denied ISE’s petition for a writ of certiorari.

Weil continues to represent S&P Global in a variety of index IP related matters.

In October 2018, Weil won a second consecutive victory before the Eleventh Circuit for clients Oxford University Press, Cambridge University Press, and SAGE Publications in a high-profile copyright infringement dispute with Georgia State University involving the contours of the fair use doctrine in the academic setting. The dispute concerns GSU’s practice of electronically distributing digital excerpts of copyrighted works to students without securing license permission from the publishers of those materials. In its unanimous opinion, the appellate court vacated in substantive part the lower court’s determination that, with respect to 31 of the 48 works at issue, GSU’s unauthorized exploitation of those works was protected by the fair use doctrine. The appellate court also vacated the lower court’s award of attorneys’ fees to GSU, and it remanded the case for further proceedings consistent with its opinion. Earlier, in October 2014, the Eleventh Circuit ruled that the district court had used “legally flawed methodology” in applying the fair use doctrine in its May 2012 ruling following a bench trial, and that GSU’s sovereign immunity doctrine argument had not been properly raised on appeal and sent the case back to district court. In March 2016 the district court issued a remand ruling that essentially reinstalled the court’s prior findings, which Weil again appealed, resulting in the most recent victory.

Weil represents Pandora Media, the largest single webcaster in the United States, in a number of high-profile disputes with parties in the recorded music and music publishing industries.

• Weil is currently representing Pandora in Phonorecords III adverse to the National Music Publishers Association (NMPA) and the Nashville Songwriters Association International (NSAI) to determine the rates for the on-demand streaming of musical works for 2018-2022. After Pandora, along with several streaming services, filed an appeal challenging the rate increase issued by the CRB, the D.C. Circuit overturned the ruling and remanded the case.
• Weil previously represented Pandora Media against SoundExchange in Web IV, which set statutory rates for the 2016-2020 license period. Weil then successfully represented Pandora in SoundExchange’s appeal of the CRB decision before the D.C. Circuit. Weil also represented a coalition of webcasters under the banner of the Digital Media Association (DiMA) in the 2006-2010 Web II proceeding.
• Weil also defended Pandora in connection with two copyright class actions filed in the S.D.N.Y. arising out of Pandora’s alleged unlicensed streaming of sound recordings created prior to February 15, 1972, as well as in connection with amicus submissions on this issue in various appellate courts around the country.
• Weil also successfully represented Pandora Media in litigation in the C.D. Cal. filed by the heirs of a famous songwriter, Harold Arlen, for failing to clear proper music licenses. Weil was able to achieve a highly favourable settlement on behalf of Pandora, leading to its dismissal from the case.

Weil has represented Sirius XM Radio in a variety of major disputes around the country, many involving SoundExchange Inc., a copyright collective that represents record labels and recording artists:

• Weil is currently representing Sirius XM and Pandora Media against SoundExchange in Web V, which will determine the statutory rates to be paid by non-interactive webcasters for sound recording streaming during the 2021-2025 license period.
• Weil previously represented Sirius XM against SoundExchange to determine statutory sound recording performance rates for 2007-2012 (SDARS I), 2013-2017 (SDARS II), and 2018-2022 period (SDARS III). Weil successfully represented Sirius XM before the D.C. Circuit in SoundExchange’s appeals of the decisions covering the earlier two periods.
• Weil defended Sirius XM in an action brought by SoundExchange seeking payment of hundreds of millions of dollars in additional royalty payments and interest—above and beyond what Sirius XM had already paid for that reporting period. In June 2018, Weil successfully helped Sirius XM reach a settlement to end the case.
• Weil represented Sirius XM in an antitrust action it filed against SoundExchange alleging an “industry-wide conspiracy” to interfere with Sirius XM’s attempts to license directly with record companies rather than under the statutory license administered by SoundExchange. The case was eventually settled.
• Weil represented Sirius XM in a series of litigations around the country relating to Sirius XM’s use of pre-1972 sound recordings that fall outside the scope of federal copyright protection. Weil defended class action lawsuits in the C.D. Cal., S.D.N.Y., and S.D. Fla, as well as a suit brought by several major record labels in California state court, in which the plaintiffs asserted state law claims to enjoin the unlicensed use of pre-1972 sound recordings. In addition to injunctive relief, these lawsuits sought well over $100 million in damages.

Through path-breaking litigation, Weil, on behalf of the local broadcast television industry, severed industry payments to PROs from the revenues earned by that industry, and obtained novel alternative forms of license, through which broadcasters (and now myriad other users) can more closely align the fees paid for licensing musical works with their competitive market value. These alternative forms of license consist of a “per-program” license and an “adjustable fee” blanket license – both of which facilitate the direct licensing of individual musical works without the user incurring a double payment penalty.

Weil also represented the Television Music License Committee, an industry trade association, in rate arbitrations with SESAC in October/November 2016 to determine license fees and terms for the local television industry for 2016-2019. These arbitrations are part of a class action settlement in which a series of rolling rate arbitrations will decide license fees and terms through 2035. The multi-million dollar settlement, which was approved in February 2015, marked the culmination of an antitrust class action lawsuit brought by groups of Meredith, Scripps, and Hoak local television stations challenging SESAC’s licensing practices. The Television Music License Committee funded this lawsuit on behalf of a putative nationwide class of local television broadcasters. The plaintiffs alleged that SESAC wielded its monopoly power over the copyrighted works it licenses to extract supra-competitive fees, and denied television licensees any meaningful option to an all-or-nothing blanket license. SESAC will be bound through 2035 by some of the core conduct restrictions that constrain ASCAP and BMI, the other two performing rights organizations. The settlement also provides monetary relief, with SESAC paying $58.5 million into a settlement fund. The settlement marks the first time in more than 50 years that an entity obtained licensing conduct relief through a private antitrust action against a Performing Rights Organization.

Weil secured a unanimous decision from the Second Circuit Court of Appeals affirming a lower court’s summary judgment ruling for Marvel and parent Walt Disney Co. in a widely-followed copyright ownership suit between Marvel and the heirs of Jack Kirby, a noted comic book artist who worked for Marvel for decades, including during the late 1950s and early 1960s. Marvel created many of its iconic comic book superheroes during this period, including The Fantastic Four, Iron Man, Thor, The Incredible Hulk, and The X-Men. On appeal, the Second Circuit issued a precedential decision unanimously upholding the summary judgment ruling, and rejected all of the Kirby heirs’ arguments concerning copyright ownership, finding that the undisputed evidence established that the works at issue were created for Marvel as works made for hire as a matter of law.