Virgil Abloh has used the ubiquitous diagonal striped logo that can be found on many crosswalks to build his brand, and his counsel has been in and out of court in attempts to protect against others’ use of the mark, which has come to be known – in some circles, at least – to indicate the Off-White brand. Following a battle with Paige Denim, Off-White has waged a $300 million-plus battle against individual sellers on e-commerce marketplace Wish.com.
According to a complaint filed in early March and unsealed by the U.S. District Court for the Southern District of New York this week, Wish.com has played host to approximately 161 different merchants – including Trendy_World, Vintage Collections, Wang Store, Love of God, Billy Crystal Shop, and White Off Shop, among others – which were offering up counterfeit Off-White garments and accessories.
Milan-based Off-White Off-White, which is based in Milan and owned at least in part by Marcello Burlon, Claudio Antonioli and Davide de Giglio’New Guards Group, was already awarded a temporary restraining order – a form of immediate (but very temporary) relief that serves to immediately bar the defendants from continuing to sell the allegedly infringing products – and a preliminary injunction, the latter of which bans the defendants from selling counterfeit Off-White products for the duration of the case.
Now the buzzy streetwear brand is seeking a permanent injunction and monetary damages to the tune of $2 million per infringement, which could amount to upwards of $300 million dollars, in addition to lost profits. According to Off-White, the defendant sellers brought in an estimated $41 million in connection with their sale of Chinese-made counterfeits, and at least $1.18 million can be attributed to the sale of counterfeit Off-White products, including denim jackets, t-shirts, and hoodies.
While Wish.com’s parent company ContextLogic is not a party to the suit, it did file a memorandum in opposition to the scope of the preliminary injunction, arguing, per WWD, that Off-White ran afoul of the platform’s established procedures for identifying and removing counterfeit goods. ContextLogic brand protection manager Maral Behnam-Garcia asserted that Wish.com maintains a notice-and-takedown program that enabled brands to register and identify infringing goods being sold and request that the listings be removed. Off-White did not exercise this measure before filing suit, argued Behnam-Garcia.
Off-White's founder – and Louis Vuitton’s new men’s artistic director – Virgil Abloh filed a memo with the court, as well, in support of Off-White, alleging that Off-White’s success is “due to its use of the highest-quality materials and processes” and the “word-of-mouth buzz that its consumers have generated.”
He further asserted that the widespread availability of counterfeits goods on Wish.com’s platform have caused Off-White to sustain lost profits, damaged the “inherent value” of Off-White’s trademarks and negatively impacted its relationships with retailers and shoppers. Still yet, the counterfeits have hindered Off-White’s “ability to attract new customers.”
Interestingly, unlike how most of these matters play out, in which none of the defendants respond to the claims made against them and the suit is settled by way of a default judgment in favor of the plaintiff, at least one of the Wish.com merchant defendants has responded to the suit. The operator of the Trendy_World account provided the court with a declaration, sales data in connection with its Wish.com account, and proof of “non-infringing product.”
As for whether any of the other defendants – 36 of which have had their accounts with Wish.com suspended according to Behnam-Garcia’s memo – will respond to the suit, it seems unlikely, but stay tuned.
* The case is OFF-WHITE LLC v. A445995685, et al., 1:18-cv-02099 (SDNY).