ABC v. DEF

Filing 62

FINAL DEFAULT JUDGMENT AND PERMANENT INJUNCTION ORDER Judgment is granted in favor of Plaintiff on all claims properly pleaded against Defaulting Defendants in the Complaint; IT IS FURTHER ORDERED, ADJUDGED AND DECREED, that because it would serve b oth 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 Memorandum of Law in Support of its Renewed Motion for Default Judgment, the Court finds such an award to be reasonable and Plaintiff is awarded $75,000.000 in statutory damages (Defendants Individual Damages Award) against each and every Defaulting Defendant (a total of twent y-two (22) Defendants) pursuant to 15 U.S.C. § 1117(c) of the Lanham Act for a total of One Million Six Hundred Fifty Thousand Dollars ($1,650,000.00), plus post-judgment interest. 1) IT IS FURTHER ORDERED, that one (1) week after final judgment is entered, Plaintiff will either: (1) file a motion for an asset turnover pursuant to N.Y. C.P.L.R. § 5225; or (2) notify the Court of its intention not to proceed with a request for an asset turnover so the case may be closed. 2) T he Court releases the Twenty Five Thousand U.S. Dollar ($25,000.00) security bond that Plaintiff submitted in connection with this action to counsel for Plaintiff, Epstein Drangel, LLP, 60 East 42nd Street, Suite 1250, New York, NY 10165; and 3) This Court shall retain jurisdiction over this matter and the parties in order to construe and enforce this Order. (And as further set forth herein.) SO ORDERED. (Signed by Judge Jennifer L. Rochon on 7/3/2024) (jca)

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Jason M. Drangel (JD 7204) jdrangel@ipcounselors.com Ashly E. Sands (AS 7715) asands@ipcounselors.com Danielle S. Futterman (DY 4228) dfutterman@ipcounselors.com Gabriela N. Nastasi gnastasi@ipcounselors.com EPSTEIN DRANGEL LLP 60 East 42nd Street, Suite 1250 New York, NY 10165 Telephone: (212) 292-5390 Facsimile: (212) 292-5391 Brian Igel (BI 4574) bigel@bilawfirm.com BELLIZIO + IGEL PLLC One Grand Central Place 305 Madison Avenue, 40th Floor New York, New York 10165 Telephone: (212) 873-0250 Facsimile: (646) 395-1585 Attorneys for Plaintiff Off-White LLC UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK OFF-WHITE LLC, Plaintiff 21-cv-9613 (JLR) v. AEUNZN, CFOTOYO, CHUANTAIDIANPU, DUOCAILE, FANSON, FASHIONFRONT1, GREENLIFEPRO, GUZDGD2, HAIBOYIBO, JEEPLO, JINTAI BUSINESS, KINYBABY, LYCHEE TREE, MMANGO, ORAG, POLICO STORE, PPTABOLD-US, PYGONG, SHENGSHENGKEJI, TRUSTAND, XIAONINGGE, YANGKAIDIANQU, YUNWU US, [PROPOSED] FINAL DEFAULT JUDGMENT AND PERMANENT INJUNCTION ORDER ZHENGGUOHUIFUZHUANGDIAN and 偶 说为商贸有限公司, Defendants GLOSSARY Term Definition Plaintiff or OffWhite Off-White LLC Defendants AEUNZN, Cfotoyo, chuantaidianpu, duocaile, fanson, FashionFront1, greenlifepro, GUZDGD2, HAIBOYIBO, jeeplo, Jintai Business, KINYBABY, Lychee Tree, mmango, orag, POLICO Store, Pptabold-US, PYGONG, Trustand, xiaoningge, yangkaidianqu, Yunwu US and zhengguohuifuzhuangdian AEUNZN, Cfotoyo, chuantaidianpu, duocaile, fanson, FashionFront1, greenlifepro, GUZDGD2, HAIBOYIBO, jeeplo, Jintai Business, KINYBABY, Lychee Tree, mmango, orag, POLICO Store, Pptabold-US, PYGONG, Trustand, xiaoningge, yangkaidianqu, and Yunwu US N/A Amazon.com, a Seattle, Washington-based, online marketplace and e-commerce platform owned by Amazon.com, Inc., a Delaware corporation, that allows manufacturers and other third-party merchants, like Defendants, to advertise, distribute, offer for sale, sell and ship their retail products, which, upon information and belief, primarily originate from China, directly to consumers worldwide and specifically to consumers residing in the U.S., including New York Order to Seal File entered on November 19, 2021 Plaintiff’s Complaint filed on November 19, 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 November 19, 2021 Declaration of Virgil Abloh in Support of Plaintiff’s Application Declaration of Gabriela N. Nastasi in Support of Plaintiff’s Application N/A Defaulting Defendants Amazon Sealing Order Complaint Application Abloh Dec. Nastasi Dec. Docket Entry Number N/A 1 N/A Dkt. 1 Dkt. 7 Dkts. 12-15 Dkt. 15 Dkt. 14 TRO 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 November 23, 2021 Dkt. 16 PI Show Cause Hearing PI Order User Account(s) December 13, 2021 hearing to show cause why a preliminary injunction should not issue December 13, 2021 Preliminary Injunction Order Any and all websites and any and all accounts with online marketplace platforms such as Amazon, 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 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 U.S. Trademark Registration Nos.: 5,119,602 for “OFF WHITE” for a variety of goods in Class 25 with a constructive date of first use of January 25, 2012; 5,713,397 for “OFF-WHITE” for a variety of goods in Class 25; 5,710,328 for “OFF-WHITE C/O VIRGIL ABLOH” for a variety of goods in Class 9; 5,572,836 for “OFF-WHITE C/O VIRGIL ABLOH” for a variety of goods in Class 25; 5,710,287 for “OFFWHITE C/O VIRGIL ABLOH” for a variety of goods N/A Merchant Storefronts Off-White Products Off-White Registrations in Class 14; 5,150,712 for for a variety of goods in Class 18 and 25; 5,710,288 for 2 for a variety Dkt. 18 N/A N/A N/A N/A of goods in Class 14; 5,307,806 for for a variety of goods in Class 18 and 25; 6,303,583 for for a variety of goods in Class 25; 5,835,552 for for a variety of goods in Class 9; 5,387,983 for for a variety of goods in Class 25; 5,445,222 for for a variety of goods in Class 25; 5,800,414 for for a variety of goods in Class 9 and 25; 5,681,805 for for a variety of goods in Class 9; 5,663,133 for for a variety of goods in Class 25; 6,054,044 for for a variety of goods in Class 25; 6,272,565 for for a variety of goods in Class 25; 6,290,768 for for a variety of goods in Class 25; 6,114,562 for for a variety of goods in Class 25; 6,131,346 for for a variety of goods in Class 18; 6,035,585 for of goods in Class 25; for a variety 6,137,880 for for a variety of goods in 3 Off-White Application Off-White Marks Counterfeit Products Defendants’ Assets Defendants’ Financial Accounts Financial Institutions Third Party Service Providers Class 25; and 6,505,708 for for a variety of goods in Class 14 U.S. Trademark Serial Application No. 88/041,456 for , for a variety of goods in Class 18 and Class 25 The Marks covered by the Off-White Registrations and Off-White Application 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 Amazon.com, Inc., Amazon Payments, Inc. (“Amazon Pay”), PayPal Inc. (“PayPal”), Payoneer Inc. (“Payoneer”), 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 Amazon, such as Amazon.com, 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 4 N/A N/A N/A N/A N/A N/A N/A The supplemental report identifying Defendants’ Infringing Product ID, Merchant ID, Merchant Real Person Name, Email Address, Physical Address, Product Lifetime Units Sold and Product Lifetime GMV, provided by counsel for Amazon to Plaintiff’s counsel pursuant to the expedited discovery ordered in both the TRO and PI Order Plaintiff’s Renewed Plaintiff’s Renewed Motion for Default Judgment and Motion for Default a Permanent Injunction Against Defaulting Judgment Defendants filed on June 14, 2024 Futterman Aff. Affidavit of Danielle S. Futterman in Support of Plaintiff’s Renewed Motion for Default Judgment Amazon Discovery 5 N/A TBD TBD 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 Defendants’ trademark infringement, trademark counterfeiting, false designation of origin, passing off and unfair competition and related state and common law claims arising out of Defendants’ unauthorized use of Plaintiff’s Off-White Marks, without limitation, in its manufacturing, importing, exporting, advertising, marketing, promoting, distributing, displaying or offering for sale and/or selling and/or sale of Counterfeit Products. The Court, having considered the Memorandum of Law and Affidavit of Danielle S. Futterman in support of Plaintiff’s Renewed Motion for Default Judgment and a Permanent Injunction Against Defaulting Defendants, the Certificates 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 pleaded 1) Judgment is granted in favor of Plaintiff on all claims properly plead 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 Memorandum of Law in Support of its Renewed Motion for Default Judgment, the Court finds such an award to be reasonable and Plaintiff is awarded $75,000.000 6 in statutory damages (“Defendants’ Individual Damages Award”) against each and every Defaulting Defendant (a total of twenty-two (22) Defendants) pursuant to 15 U.S.C. § 1117(c) of the Lanham Act for a total of One Million Six Hundred Fifty Thousand Dollars ($1,650,000.00), plus post-judgment interest. III. Permanent Injunction 2) IT IS FURTHER ORDERED, ADJUDGED AND DECREED, that Defaulting Defendants, their respective officers, agents, servants, employees, successors and assigns and all persons acting in 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. operation of Defaulting Defendants’ User Accounts and Merchant Storefronts, including, without limitation, continued operation of Defaulting Defendants’ User Accounts and Merchant Storefronts in violation of this Order; C. directly or indirectly infringing in any manner Plaintiff’s Off-White Marks; D. using any reproduction, counterfeit, copy or colorable imitation of Plaintiff’s OffWhite Marks to identify any goods or services not authorized by Plaintiff; E. using any of 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, 7 exporting, advertising, marketing, promoting, distributing, displaying, offering for sale, selling and/or otherwise dealing in the Counterfeit Products; F. 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 manufactured, imported, exported, advertised, marketed, promoted, distributed, displayed, offered for sale or sold by 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; and G. 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: i. Defaulting Defendants’ User Accounts and/or Merchant Storefronts; ii. Defaulting Defendants’ Assets; and iii. the manufacture, importation, exportation, advertising, marketing, promotion, distribution, display, offering for sale and/or sale of Counterfeit Products by Defendants and by their respective officers, employees, agents, servants and all persons in active concert or participation with any of them. H. 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, 8 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 Plaintiff’s Off-White Marks or bear any marks that are confusingly similar to the Off-White Marks pursuant to 15 U.S.C. § 1118. 3) IT IS FURTHER ORDERED ADJUDGED AND DECREED that the Defaulting Defendants and all persons in active concert and participation with them who receive actual notice of this Order, including the Third Party Service Providers and Financial Institutions who satisfy those requirements and are identified in this Order, are permanently enjoined and restrained from: A. secreting, concealing, transferring, disposing of, withdrawing, encumbering or paying Defaulting Defendants’ Assets from or to Defaulting Defendants’ Financial Accounts. 4) IT IS FURTHER ORDERED ADJUDGED AND DECREED that the Defaulting Defendants and all persons in active concert and participation with them who receive actual notice of this Order, including the Third Party Service Providers who satisfy those requirements and are identified in this Order, are permanently enjoined and restrained from: A. operation of Defaulting Defendants’ User Accounts and Defaulting Defendants’ Merchant Storefronts, including, without limitation, continued operation of Defaulting Defendants’ User Accounts and Merchant Storefronts; and 9 B. instructing, aiding or abetting Defaulting Defendants and/or any other person or business entity in engaging in any of the activities referred to in subparagraphs III(1)(A) through III(1)(H) above. 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. 2) IT IS FURTHER ORDERED, that one (1) week after final judgment is entered, Plaintiff will either: (1) file a motion for an asset turnover pursuant to N.Y. C.P.L.R. § 5225; or (2) notify the Court of its intention not to proceed with a request for an asset turnover so the case may be closed. V. 1) Miscellaneous Relief IT IS FURTHER ORDERED, that one (1) week after final judgment is entered, Plaintiff will either: (1) file a motion for an asset turnover pursuant to N.Y. C.P.L.R. § 5225; or (2) notify the Court of its intention not to proceed with a request for an asset turnover so the case may be closed. 2) The Court releases the Twenty Five Thousand U.S. Dollar ($25,000.00) security bond that Plaintiff submitted in connection with this action to counsel for Plaintiff, Epstein Drangel, LLP, 60 East 42nd Street, Suite 1250, New York, NY 10165; and 3) This Court shall retain jurisdiction over this matter and the parties in order to construe and enforce this Order. Dated: July 3, 2024 New York, New York SO ORDERED. __________________________ JENNIFER L. ROCHON United States District Judge 10

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