Off-White™ Case Reaches Settlement

Image use credit: Eva Al Desnudo @ Fashion, Law & Business

A settlement has been reached in light of Off-White™ trademark infringement claims against 161 online sellers trading on the e-commence auction website Wish.com for allegedly selling counterfeit merchandise, making use of its trademarked stripe and arrow designs, as well as the Off-White name.

Court documents were filed mid-April reporting the settlement, which is still subject to court approval. The settlement appears to be a victory for the Off-White™ brand who were seeking in the amount of 2 million dollars in damages for each instance of alleged infringement of goods sold, distributed and/or offered for sale on the website.

Virgil Abloh, the founder of the five-year-old luxury streetwear brand Off-White™ filed its suit late in March 2018 in the in New York federal court. According to the original suit "in light of Off-White’s success, the Off-White Products, as well as the reputation they gained…have become targets for unscrupulous individuals and entities that wish to exploit the goodwill, reputation and fame that Off-White amassed in its Off-White Products and Off-White."

For those familiar with brand, the mainstream success has been due in part to the commercially successful collections, social media as well cult like following.

In a declaration filed to the court, Abloh who has recently been appointed by LVMH Louis Vuitton Moët Hennessy to lead men’s wear at Louis Vuitton, said that "the success of the Off-White Products is due in part to Off-White’s marketing and promotional efforts." Which according to Abloh "include advertising and promotion through social media, Off-White’s website, retailer websites and other internet-based and print advertising, among other efforts domestically and abroad, including New York." Asserting that "Off-White’s efforts, the quality of its Off-White Products, its marketing, promotion and distribution efforts, and the word-of-mouth buzz generated by its consumers" is what has "made the Off-White Products and Off-White Marks prominently placed in the minds of the public," which associate them exclusively with Off-White.

According Abloh, the Founder and creative director Off-White™ the defendants misconduct has allegedly "resulted in lost profits to Off-White and damaged the inherent value of the Off-White Marks, impaired Off-White’s reputation for providing high-quality products, diluted Off-White’s brand and the goodwill" and even negatively affected "Off-White’s relationships with current customers including both retail and end consumers and its ability to attract new customers."

Along with Off-White™'s multi-million dollar request for damages, Off-White™ was asking the court for a preliminary injunction that would prevent the accused sellers from continuing operating on Wish.com during the pending litigation, (which is standard in infringement complaints like this though the defendant) Wish.com had subsequently asked the court to reduce Off-White™'s injunction request and to partially lift the temporary restraining order already imposed on the sellers, arguing that it creates “undue restraints on non-infringing conduct” on the platform.

Recent developments

Since the filing of the original lawsuit, according to court documents released in April it appears that the parties have reached a settlement. In a letter recently filed to the courts on behalf of the Plaintiff Off-White™, the parties report that they have come to a settlement and agreed upon all material terms. Accordingly, pending consummation of the agreed settlement, Off-White™ requests that the Court maintain the existing Preliminary Injunction Order.

It is expected that the parties will execute the settlement agreement and comply with its terms within a specified timeframe whereupon Off-White™ will then file a Voluntary Notice of Dismissal thereby terminating the Preliminary Injunction.

This isn’t the first time the streetwear brand Off-White™ has been embroiled in legal action. Last year, the label was involved in a trademark lawsuit against Paige denim over its diagonal stripe design. However, a New York District Judge Jed S. Rakoff dismissed Off-White's case on the infringement matter, stating the lawsuit was too "hypothetical scenario" without any particular disputed use of the Off-White diagonal marks in question before the court.