Off-White LLC v. Abbyfashion Store et al

Filing 61

FINAL DEFAULT JUDGMENT AND PERMANENT INJUNCTION ORDER: The Court, having considered the Memorandum of Law, Affidavits of Danielle (Yamali) Futterman and Jason M. Drangel in support of Plaintiff's Motion for Default Judgment and a Permanent I njunction Against Defaulting Defendant, the Certificate of Service of the Summons and Complaint, the Certificate of the Clerk of the Court stating that no answer has been filed in the instant action, and upon all other pleadings and papers on file in this action, it is hereby ORDERED, ADJUDGED AND DECREED as follows: Judgment is granted in favor of Plaintiff on all claims properly pled against Defaulting Defendants in the Complaint; IT IS FURTHER ORDERED, ADJUDGED AND DECREED that because it wou ld serve both the compensatory and punitive purposes of the Lanham Act's prohibitions on willful infringement, and because Plaintiff has sufficiently set forth the basis for the statutory damages award requested in its Motion for Default Judgmen t, the Court finds such an award to be reasonable and Plaintiff is awarded statutory damages in the amount of $75,000.00 ("Defaulting Defendants' Individual Damages Award") against each of the seventy-two (72) Defaulting Defendant s pursuant to Section 15 U.S.C. § 1117(c) of the Lanham Act, for a total of Five Million Four Hundred Thousand Dollars ($5,400,000.00), plus post-judgment interest. IT IS FURTHER ORDERED, ADJUDGED AND DECREED, that Defaulting Defendants, t heir respective officers, agents, servants, employees, and all persons acting in active concert with or under the direction of Defaulting Defendants (regardless of whether located in the United States or abroad), who receive actual notice of this Ord er are permanently enjoined and restrained from: as further set forth herein. IT IS FURTHER ORDERED, as sufficient cause has been shown, the 30 day automatic stay on enforcing Plaintiff's judgment, pursuant to Fed. R. Civ. Pro. 62(a) is hereby d issolved. Defaulting Defendants may, upon proper showing and two (2) business days written notice to the Court and Plaintiff's counsel, appear and move for dissolution or modification of the provisions of this Order concerning the restriction o r restraint of Defaulting Defendants' Frozen Assets and/or Defaulting Defendants' Financial Accounts; 2) Any failure by Defaulting Defendants to comply with the terms of this Order shall be deemed contempt of Court, subjecting Defaulting De fendants to contempt remedies to be determined by the Court, including fines and seizure of property; 3) The Court releases the Five Thousand U.S. Dollar ($5,000.00) security bond that Plaintiff submitted in connection with this action to counse l for Plaintiff, Epstein Drangel, LLP, 60 East 42nd Street, Suite 2520, New York, NY 10165; and 4) This Court shall retain jurisdiction over this matter and the parties in order to construe and enforce this Order. SO ORDERED. (Signed by Judge Analisa Torres on 7/7/2022) (kv) Transmission to Finance Unit (Cashiers) for processing.

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 1 of 12

Jason M. Drangel (JD 7204)
[e-mail]
Ashly E. Sands (AS 7715)
[e-mail]
Danielle (Yamali) Futterman (DY 4228)
[e-mail]
EPSTEIN DRANGEL LLP
60 East 42nd Street, Suite 2520
New York, NY 10165
Telephone:
[phone]
Facsimile:
[phone]

7/7/2022

Brian Igel (BI 4574)
[e-mail]
BELLIZIO + IGEL PLLC
One Grand Central Place
305 Madison Avenue, 40th Floor
New York, New York 10165
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Plaintiff
Off-White LLC
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

OFF-WHITE LLC,
Plaintiff

CIVIL ACTION No.
21-cv-1785 (AT)

v.
ABBYFASHION STORE, ALIBANG STORE,
ASTCASE
STORE,
BEIJING
VLEAP
TECHNOLOGY CO., LTD., BOBOANER,
CHANGSHA
DAHUAN
ELECTRONIC
TECHNOLOGY CO., LTD., CHANGZHOU
FLEXI ELECTRONIC CO., LTD., DISENY
STORE, DONGGUAN BEST CRAFTS CO., LTD.,
DONGGUAN
CHENGYUAN
INDUSTRY
INVESTMENT CO., LTD., DONGGUAN
HUANGJIANG JINLIANGTANG HARDWARE
FACTORY, DONGGUAN LINKAIZ CRAFTS &
GIFTS CO., LTD., ESRA STICKERS , FIREBIRD
GIFTS (DONGGUAN) CO., LTD., GENTLENESS

FINAL DEFAULT JUDGMENT
AND PERMANENT INJUNCTION
ORDER

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 2 of 12

STORE, GUANGZHOU FINCH GARMENTS
CO.,
LTD.,
GUANGZHOU
U-MEKING
TRADING CO., LTD., GUANGZHOU WEIJIE
RIBBON CO., LTD., GUANGZHOU XIN HO YI
CRAFTS LIMITED, HAINING LONGNA
TEXTILE CO., LTD., HANGZHOU LIN'AN
ORIGIN TRADING CO., LTD., HUI52028
STORE, LOVE HEALTH LOVE YOURSELF,
NANJING RARLON PET PRODUCTS CO., LTD.,
OLIVIA'S
ACCESSORIES ,
SHENZHEN
CHUANGXINGMING
TECHNOLOGY
LIMITED, SHENZHEN DEFAN TECHNOLOGY
CO., LTD., SHENZHEN DINGTU ELECTRONIC
TECHNOLOGY CO., LTD., SHENZHEN
MANHUI
TECHNOLOGY
CO.,
LTD.,
SHENZHEN
SHANEN
ELECTRONIC
COMMERCE
CO.,
LTD.,
SHENZHEN
SHENGYUAN TECHNOLOGY CO., LTD.,
SHENZHEN SHENGZERONGXIN TRADING
CO., LTD., SHENZHEN SPEED TREND
TECHNOLOGY CO., LTD., SHENZHEN YINO
INFORMATION TECHNOLOGY CO., LTD.,
SHOP5056237 STORE, SHOP5066383 STORE,
SHOP5134031 STORE, SHOP5361044 STORE,
SHOP5781767 STORE, SHOP5795644 STORE,
SHOP5831326 STORE, SHOP5870398 STORE,
SHOP910331278
STORE,
SHOP910605011
STORE,
SHOP910926020
STORE,
SHOP911100018
STORE,
SHOP911115068
STORE,
SHOP911167001
STORE,
SHOP911188155
STORE,
SHOP911192222
STORE,
SHOP911195003
STORE,
SHOP911234034
STORE,
SHOP911258359
STORE,
SHOP911259388
STORE,
SHOP911264193
STORE,
SHOP911267085
STORE,
SHOP911300207
STORE,
SHOP911342022
STORE,
SHOP911375214
STORE,
SHOP911422093
STORE,
SHOP911425145 STORE, TAOTAOKU STORE,
TOLLER BAG STORE, WOZIK STORE, XT02
STORE, YANG R STORE, YIWU CUDA IMPORT
AND EXPORT CO., LTD., YIWU MAY STAR
INTERNATIONAL TRADING CO., LTD., YIWU
MIANYU E-COMMERCE FIRM, YIWU WU TAI
BELT CO., LTD., YIWU YINGYU IMPORT &
EXPORT CO., LTD., YUNFOOK OFFICIAL,

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 3 of 12

YUYAO NICO ELECTRONICS FACTORY and
ZHENGZHOU YMEI PET PRODUCTS CO.,
LTD.,

Defendants

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 4 of 12

Case 1:21-cv-01785-AT Document 61
51 Filed 07/07/22
01/31/22 Page 5 of 12
13

Defaulting
Defendants

TAOTAOKU Store, TOLLER BAG Store, Wozik
Store, XT02 Store, Yang R Store, Yiwu Cuda
Import And Export Co., Ltd., Yiwu May Star
International Trading Co., Ltd., Yiwu Mianyu ECommerce Firm, Yiwu Wu Tai Belt Co., Ltd., Yiwu
Yingyu Import & Export Co., Ltd., yunfook
Official, Yuyao Nico Electronics Factory and
Zhengzhou Ymei Pet Products Co., Ltd.
AbbyFashion Store, Alibang Store, ASTCASE
Store, Beijing Vleap Technology Co., Ltd.,
BOBOANER, Changsha Dahuan Electronic
Technology Co., Ltd., Changzhou Flexi Electronic
Co., Ltd., Diseny Store, Dongguan Best Crafts Co.,
Ltd., Dongguan Chengyuan Industry Investment
Co., Ltd., Dongguan Huangjiang Jinliangtang
Hardware Factory, Dongguan Linkaiz Crafts &
Gifts Co., Ltd., Esra Stickers, Firebird Gifts
(dongguan) Co., Ltd., Gentleness Store, Guangzhou
U-Meking Trading Co., Ltd., Guangzhou Weijie
Ribbon Co., Ltd., Guangzhou Xin Ho Yi Crafts
Limited, Haining Longna Textile Co., Ltd.,
Hangzhou Lin'an Origin Trading Co., Ltd.,
hui52028 Store, LOVE HEALTH LOVE
YOURSELF, Olivia's accessories , Shenzhen
Chuangxingming Technology Limited, Shenzhen
Defan Technology Co., Ltd., Shenzhen Dingtu
Electronic Technology Co., Ltd., Shenzhen Manhui
Technology Co., Ltd., Shenzhen Shanen Electronic
Commerce Co., Ltd., Shenzhen Shengyuan
Technology Co., Ltd., Shenzhen Shengzerongxin
Trading Co., Ltd., Shenzhen Speed Trend
Technology Co., Ltd., Shenzhen Yino Information
Technology Co., Ltd., Shop5056237 Store,
Shop5066383
Store,
Shop5134031
Store,
Shop5361044
Store,
Shop5781767
Store,
Shop5795644
Store,
Shop5831326
Store,
Shop5870398 Store, Shop910331278 Store,
Shop910605011 Store, Shop910926020 Store,
Shop911100018 Store, Shop911115068 Store,
Shop911167001 Store, Shop911188155 Store,
Shop911192222 Store, Shop911195003 Store,
Shop911234034 Store, Shop911258359 Store,
Shop911259388 Store, Shop911264193 Store,
Shop911267085 Store, Shop911300207 Store,
Shop911342022 Store, Shop911375214 Store,
Shop911422093 Store, Shop911425145 Store,
2

N/A

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 6 of 12

Alibaba

AliExpress

Sealing Order
Complaint
Application

Abloh Dec.
Drangel Dec.
TRO

TAOTAOKU Store, TOLLER BAG Store, Wozik
Store, XT02 Store, Yang R Store, Yiwu Cuda
Import And Export Co., Ltd., Yiwu May Star
International Trading Co., Ltd., Yiwu Mianyu ECommerce Firm, Yiwu Wu Tai Belt Co., Ltd., Yiwu
Yingyu Import & Export Co., Ltd., yunfook
Official, Yuyao Nico Electronics Factory and
Zhengzhou Ymei Pet Products Co., Ltd.
Alibaba.com, an online marketplace platform that
allows manufacturers, wholesalers and other thirdparty merchants, like Defendants, to advertise, offer
for sale, sell, distribute and ship their wholesale and
retail products originating from China directly to
consumers across the world and specifically to
consumers residing in the U.S., including New York
Aliexpress.com, an online marketplace platform
that allows manufacturers, wholesalers and other
third-party merchants, like Defendants, to
advertise, offer for sale, sell, distribute and ship
their wholesale and retail products originating from
China directly to consumers across the world and
specifically to consumers residing in the U.S.,
including New York
Order to Seal File entered on February 24, 2021
Plaintiff’s Complaint filed on March 2, 2021
Plaintiff’s Ex Parte Application for: 1) a temporary
restraining order; 2) an order restraining Merchant
Storefronts (as defined infra) and Defendants’
Assets (as defined infra) with the Financial
Institutions (as defined infra); 3) an order to show
cause why a preliminary injunction should not issue;
4) an order authorizing bifurcated and alternative
service and 5) an order authorizing expedited
discovery filed on March 2, 2021
Declaration of Virgil Abloh in Support of Plaintiff’s
Application
Declaration of Jason Drangel in Support of
Plaintiff’s Application
1) Temporary Restraining Order; 2) Order
Restraining Merchant Storefronts and Defendants’
Assets with the Financial Institutions; 3) Order to
Show Cause Why a Preliminary Injunction Should
Not Issue; 4) Order Authorizing Bifurcated and
Alternative Service; and 5) Order Authorizing
Expedited Discovery entered on March 2, 2021

3

N/A

N/A

Dkt. 1
Dkt. 12
Dkts. 16-19

Dkt. 18
Dkt. 19
Dkt. 21

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 7 of 12

PI Order
User Account(s)

Merchant
Storefronts

Off-White Marks
Off-White Products

Counterfeit Products

Defendants’ Assets
Defendants’
Financial Accounts

Financial Institutions

April 1, 2021 Preliminary Injunction Order
Any and all websites and any and all accounts with
online marketplace platforms such as Alibaba
and/or AliExpress, as well as any and all as yet
undiscovered accounts with additional online
marketplace platforms held by or associated with
Defendants, their respective officers, employees,
agents, servants and all persons in active concert or
participation with any of them
Any and all User Accounts through which
Defendants, their respective officers, employees,
agents, servants and all persons in active concert or
participation with any of them operate storefronts to
manufacture, import, export, advertise, market,
promote, distribute, display, offer for sale, sell
and/or otherwise deal in Counterfeit Products,
which are held by or associated with Defendants,
their respective officers, employees, agents,
servants and all persons in active concert or
participation with any of them
The Marks covered by the Off-White Registrations
and Off-White Application

Dkt. 32
N/A

A young, successful luxury fashion label founded
by American creative designer Virgil Abloh,
specializing in men's and women's lifestyle and
high-end streetwear, as well as shoes, accessories,
jewelry, homeware and other ready-made goods
Products bearing or used in connection with the OffWhite Marks, and/or products in packaging and/or
containing labels bearing the Off-White Marks,
and/or bearing or used in connection with marks that
are confusingly similar to the Off-White Marks
and/or products that are identical or confusingly
similar to the Off-White Products
Any and all money, securities or other property or
assets of Defendants (whether said assets are located
in the U.S. or abroad)
Any and all financial accounts associated with or
utilized by any Defendants or any Defendants’ User
Accounts or Merchant Storefront(s) (whether said
account is located in the U.S. or abroad)
Any banks, financial institutions, credit card
companies and payment processing agencies, such
as PayPal Inc. (“PayPal”), Payoneer Inc.
(“Payoneer”), the Alibaba Group d/b/a Alibaba.com

N/A

4

N/A

N/A

N/A

N/A

N/A

N/A

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 8 of 12

Third Party Service
Providers

Plaintiff’s Motion for
Default Judgment

Futterman Aff.
Drangel Aff.

payment services (e.g., Alipay.com Co., Ltd., Ant
Financial Services Group), PingPong Global
Solutions, Inc. (“PingPong”) and other companies
or agencies that engage in the processing or transfer
of money and/or real or personal property of
Defendants
Online marketplace platforms, including, without
limitation, those owned and operated, directly or
indirectly by Alibaba, AliExpress, as well as any
and all as yet undiscovered online marketplace
platforms and/or entities through which Defendants,
their respective officers, employees, agents,
servants and all persons in active concert or
participation with any of them manufacture, import,
export, advertise, market, promote, distribute, offer
for sale, sell and/or otherwise deal in Counterfeit
Products which are hereinafter identified as a result
of any order entered in this action, or otherwise
Plaintiff’s Application for an Order to Show Cause
Why Default Judgment and a Permanent Injunction
should not be entered against Defaulting Defendants
filed on January 31, 2022
Affidavit by Danielle (Yamali) Futterman in
Support of Plaintiff’s Motion for Default Judgment
Affidavit of Jason Drangel in Support of Plaintiff’s
Motion for Default Judgement

5

N/A

TBD

TBD
TBD

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 9 of 12

This matter comes before the Court by motion filed by Plaintiff for the entry of
final judgment and permanent injunction by default against Defaulting Defendants for
Defaulting Defendants’ trademark infringement, trademark counterfeiting, false designation of
origin, passing off and unfair competition and related state and common law claims arising
out of Defaulting Defendants’ unauthorized use of Plaintiff’s Off-White Marks without
limitation, in their manufacturing, importing, exporting, advertising, marketing, promoting,
distributing, displaying or offering for sale and/or selling and/or sale of Counterfeit Products.1
The Court, having considered the Memorandum of Law, Affidavits of Danielle (Yamali)
Futterman and Jason M. Drangel in support of Plaintiff’s Motion for Default Judgment and
a Permanent Injunction Against Defaulting Defendant, the Certificate of Service of the
Summons and Complaint, the Certificate of the Clerk of the Court stating that no answer has
been filed in the instant action, and upon all other pleadings and papers on file in this
action, it is hereby ORDERED, ADJUDGED AND DECREED as follows:
I.

Defaulting Defendants’ Liability

1) Judgment is granted in favor of Plaintiff on all claims properly pled against Defaulting
Defendants in the Complaint;
II.

Damages Awards

1) IT IS FURTHER ORDERED, ADJUDGED AND DECREED that because it would serve both
the compensatory and punitive purposes of the Lanham Act’s prohibitions on willful
infringement, and because Plaintiff has sufficiently set forth the basis for the statutory damages
award requested in its Motion for Default Judgment, the Court finds such an award to be
reasonable and Plaintiff is awarded statutory damages in the amount of $75,000.00

1

Where a defined term is referenced herein and not defined herein, the defined term should be understood as it is
defined in the Glossary.
6

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 10 of 12

(“Defaulting Defendants’ Individual Damages Award”) against each of the seventy-two (72)
Defaulting Defendants pursuant to Section 15 U.S.C. § 1117(c) of the Lanham Act, for a total
of Five Million Four Hundred Thousand Dollars ($5,400,000.00), plus post-judgment interest.
III.

Permanent Injunction

1) IT IS FURTHER ORDERED, ADJUDGED AND DECREED, that Defaulting Defendants,
their respective officers, agents, servants, employees, and all persons acting in active concert
with or under the direction of Defaulting Defendants (regardless of whether located in the
United States or abroad), who receive actual notice of this Order are permanently
enjoined and restrained from:
A. manufacturing, importing, exporting, advertising, marketing, promoting, distributing,
displaying, offering for sale, selling and/or otherwise dealing in Counterfeit Products
or any other products bearing the Off-White Marks and/or marks that are confusingly
similar to, identical to and constitute a counterfeiting and/or infringement of the OffWhite Marks.
B. directly or indirectly infringing in any manner Plaintiff’s Off-White Marks.
C. using any reproduction, counterfeit, copy or colorable imitation of Plaintiff’s OffWhite Marks to identify any goods or services not authorized by Plaintiff;
D. using Plaintiff’s Off-White Marks, or any other marks that are confusingly similar to
the Off-White Marks on or in connection with the manufacturing, importing, exporting,
advertising, marketing, promoting, distributing, displaying, offering for sale, selling
and/or otherwise dealing in the Counterfeit Products;
E. using any false designation of origin or false description, or engaging in any action
which is likely to cause confusion, cause mistake and/or to deceive members of the
trade and/or the public as to the affiliation, connection or association of any product
7

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 11 of 12

manufactured, imported, exported, advertised, marketed, promoted, distributed,
displayed, offered for sale or sold by Defaulting Defendants with Plaintiff, and/or as to
the origin, sponsorship or approval of any product manufactured, imported, exported,
advertised, marketed, promoted, distributed, displayed, offered for sale or sold by
Defaulting Defendants and Defaulting Defendants’ commercial activities by Plaintiff;
F. secreting, concealing, destroying, altering, selling off, transferring or otherwise
disposing of and/or dealing with: (i) Counterfeit Products; (ii) any computer files, data,
business records, documents or any other records or evidence relating to the
manufacture, importation, exportation, advertising, marketing, promotion,
distribution, display, offering for sale and/or sale of Counterfeit Products by
Defaulting Defendants and by their respective officers, employees, agents,
servants and all persons in active concert or participation with any of them; and
G. effecting assignments or transfers, forming new entities or associations, or creating
and/or utilizing any other platform, User Accounts, Merchant Storefronts or any other
means of importation, exportation, advertising, marketing, promotion, distribution,
display, offering for sale and/or sale of Counterfeit Products for the purposes of
circumventing or otherwise avoiding the prohibitions set forth in this Order.

2)

IT IS FURTHER ORDERED, ADJUDGED AND DECREED that Defaulting Defendants
must deliver up for destruction to Plaintiff any and all Counterfeit Products and any and all
packaging, labels, tags, advertising and promotional materials and any other materials in the
possession, custody or control of Defaulting Defendants that infringe any of Plaintiff’s

8

Case 1:21-cv-01785-AT Document 61 Filed 07/07/22 Page 12 of 12

trademarks, without limitation, the Off-White Marks, or bear any marks that are confusingly
similar to the Off-White Marks pursuant to 15 U.S.C. § 1118;
IV.Dissolution of Rule 62(a) Stay
1) IT IS FURTHER ORDERED, as sufficient cause has been shown, the 30 day automatic
stay on enforcing Plaintiff’s judgment, pursuant to Fed. R. Civ. Pro. 62(a) is hereby
dissolved.
V.Miscellaneous Relief
1) Defaulting Defendants may, upon proper showing and two (2) business days written notice
to the Court and Plaintiff’s counsel, appear and move for dissolution or modification of the
provisions of this Order concerning the restriction or restraint of Defaulting Defendants’
Frozen Assets and/or Defaulting Defendants’ Financial Accounts;
2) Any failure by Defaulting Defendants to comply with the terms of this Order shall be deemed
contempt of Court, subjecting Defaulting Defendants to contempt remedies to be determined
by the Court, including fines and seizure of property;
3) The Court releases the Five Thousand U.S. Dollar ($5,000.00) security bond that Plaintiff
submitted in connection with this action to counsel for Plaintiff, Epstein Drangel, LLP, 60 East
42nd Street, Suite 2520, New York, NY 10165; and
4) This Court shall retain jurisdiction over this matter and the parties in order to construe and
enforce this Order.
SO ORDERED.
Dated: July 7, 2022
New York, New York

9