Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 1 of 24 Page ID #:1
1 EPSTEIN DRANGEL LLP Peter J. Farnese (SBN 251204) 2 [email protected] 11601 Wilshire Blvd., Suite 500 3 Los Angeles, California 90025 Telephone: 310-356-4668 4 Facsimile: 310-388-1232
5 Jason M. Drangel [email protected] 6 William C. Wright [email protected] 7 Ashly E. Sands [email protected] 8 Kerry B. Brownlee [email protected] 9 60 East 42nd Street, Suite 2520 New York, NY 10165 10 Telephone: 212-292-5390 Facsimile: 212-292-5391 11 Pro Hac Vice Applications Forthcoming
12 BELLIZIO + IGEL 13 Brian Igel [email protected] 14 One Grand Central Place 305 Madison Avenue, 40th Floor 15 New York, New York 10165 Tel.: 212-873-0250 16 Fax: 646-395-1585 Pro Hac Vice Application Forthcoming 17 Attorneys for Plaintiff Off-White LLC 18 19 UNITED STATES DISTRICT COURT 20 FOR THE CENTRAL DISTRICT OF CALIFORNIA - SOUTHERN DIVISION 21 OFF-WHITE LLC, CASE NO. 8:20-cv-2121
22 Plaintiff COMPLAINT FOR: 23 v. TRADEMARK INFRINGEMENT / 24 UNFAIR COMPETITION 25 AFTERS ICE CREAM, INC.,
26 Defendant.
27 JURY TRIAL DEMANDED 28
COMPLAINT
Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 2 of 24 Page ID #:2
1 Plaintiff Off-White LLC (“Off-White” or “Plaintiff”), a limited liability company
2 organized and existing under the laws of the State of Illinois, by and through its
3 undersigned counsel, alleges as follows:
4 NATURE OF THE ACTION
5 1. This case involves claims for trademark infringement of Plaintiff’s
6 federally registered trademarks in violation of § 32 of the Lanham Act, 15 U.S.C. §
7 1114; unfair competition in violation of Section 43(a) of the Trademark Act of 1946, as
8 amended (15 U.S.C. § 1125(a)); and related state and common law claims, arising from
9 Defendant Afters Ice Cream, Inc.’s (“Afters” or “Defendant”) infringement of Plaintiff’s
10 Off-White Marks (as defined infra), including, without limitation, by manufacturing,
11 advertising, marketing, promoting, distributing, displaying, offering for sale, and/or
12 selling products that infringe one or more of the Off-White Marks (as defined infra)
13 (collectively, the “Infringing Products”), and using one or more of the Off-White Marks,
14 or marks that are confusingly similar thereto (collectively, the “Infringing Marks”), in
15 connection with Defendant’s business and the advertisement and marketing thereof,
16 including on retail fixtures, signage, interior décor, a branded vehicle, and other
17 promotional materials.
18 JURISDICTION AND VENUE
19 2. This Court has federal subject matter jurisdiction, pursuant to 28 U.S.C.
20 §§ 1331 and 1338(a) and (b), and 15 U.S.C. § 1121, because this is a trademark action
21 that arises under the laws of the United States. This Court has supplemental jurisdiction
22 pursuant to 28 U.S.C. § 1367(a).
23 3. This Court has general and/or specific personal jurisdiction over
24 Defendant because, upon information and belief, Defendant is a California corporation,
25 with its principal place of business in this judicial district, and conducts business, on a
26 continuous and systematic basis, throughout the State of California and in this judicial
27 district, and/or otherwise avails itself of the privileges and protections of the laws of the 28
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 3 of 24 Page ID #:3
1 State of California, such that this Court’s assertion of jurisdiction over Defendant does
2 not offend traditional notions of fair play and due process.
3 4. Venue for this action is proper in the United States District Court for the
4 Central District of California, inter alia, pursuant to 28 U.S.C. § 1391 because, upon
5 information and belief, Defendant resides in this judicial district and/or a substantial part
6 of the events or omissions giving rise to the asserted counts occurred in this judicial
7 district, and harm to Plaintiff has occurred in this district. Alternatively, as noted supra,
8 this Court has personal jurisdiction over Defendant.
9 THE PARTIES
10 5. Off-White is a limited liability company, organized and existing under the
11 laws of the State of Illinois, with an address of 360 Hamilton Avenue, #100, White
12 Plains, New York 10601.
13 6. Upon information and belief, Defendant is a California corporation, with
14 its principal place of business at 1632 E Wilshire Avenue, Santa Ana, California 92705
15 (according to the records on file with the California Secretary of State), a self-
16 proclaimed headquarters at 16130 Gothard Street, Huntington Beach, California 92647,
17 and at least twenty-seven (27) operating locations throughout the State of California
18 (i.e., in Alhambra, Azusa, Cerritos, Chino Hills, Costa Mesa, Fountain Valley,
19 Fullerton, Highland Park, Los Angeles, two (2) in Irvine, Long Beach, Orange, Oxnard,
20 San Diego, Pasadena, Riverside, Ranch Cucamonga, Rowland Heights, Sherman Oaks,
21 San Bernardino, Temecula, Tustin, Upland, Venice, West Covina, and Woodland
22 Hills).1
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24 1 On Defendant’s website, available at www.aftersicecream.com (“Defendant’s 25 Website”), twenty-seven (27) locations are listed, with two (2) additional locations 26 listed as “coming soon” in Newport Beach and Westcliff Plaza. On Defendant’s Instagram handle, @aftersicecream, Defendant advertised a grand opening of the 27 Newport Beach location on September 19, 2020; therefore, Defendant likely now has twenty-eight (28) current locations. 28
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 4 of 24 Page ID #:4
1 GENERAL ALLEGATIONS
2 Off-White and the Off-White Marks
3 7. Off-White is the owner of a young, successful, and high-end line of
4 men’s and women’s apparel, as well as accessories, jewelry, furniture and other ready
5 made goods (collectively, “Off-White Product(s)”), marketed under the trademarks Off-
6 White™ and Off-White c/o Virgil Abloh™ (“Off-White Brand”), launched in or about
7 2013, all of which are manufactured in Milan and distributed through various channels
8 of trade in the United States and abroad.
9 8. More specifically, the Off-White Products are sold at top-tier and/or
10 luxury retailers such as Barneys New York, Selfridges, Bergdorf Goodman and Saks
11 Fifth Avenue, as well as Off-White’s boutiques located in prominent fashion epicenters
12 such as London, Tokyo, Hong Kong, Seoul, Beijing, Shanghai, Toronto, Singapore and
13 New York City.
14 9. The success of Off-White, the Off-White Brand, and the Off-White
15 Products is largely attributable to Virgil Abloh (“Abloh”), the founder of Off-White,
16 who is, among other things, an artist, architect and designer. Abloh is well known due
17 to his work with Kanye West over the years, as well as his role as the Artistic Director
18 of Menswear at Louis Vuitton.
19 10. Abloh has been nominated for, and has won, a number of prestigious
20 awards and accolades. For example, Abloh was named one of TIME’s 100 Most
21 Influential People in 2018, won the Urban Luxe Brand Award at The Fashion Awards in
22 2017 and 2018, and won the International Designer of the Year Award at the GQ Men
23 of the Year Awards in 2017.
24 11. Abloh has presented his work at major design schools throughout the
25 United States, such as the Harvard Graduate School of Design and Columbia Graduate
26 School of Architecture.
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 5 of 24 Page ID #:5
1 12. Additionally, Abloh has exhibited his work at various shows and
2 institutions throughout the world. For example, in 2019, Abloh has an exhibition of his
3 past and current work at the Museum of Contemporary Art of Chicago, Illinois.
4 13. Abloh sought out to, and did indeed create a cutting-edge brand (i.e., the
5 Off-White Brand) that is rooted in current culture, and geared towards youthful
6 consumers.
7 14. Since the launch of the Off-White Brand and the Off-White Products
8 approximately seven (7) years ago, the Off-White Brand and Off-White Products, as
9 well as Abloh and Off-White, have been featured in numerous press publications,
10 including, but not limited to, New York Magazine, GQ, W Magazine, and Vogue, among
11 others.
12 15. The Off-White Brand has been recognized for its distinctive graphic and
13 logo-heavy apparel designs, including, a unique design mark comprised of alternating
14 parallel diagonal lines, which has been used on or in connection with Off-White Products
15 since at least as early as 2013. True and correct photographs of a hang tag, interior
16 labels, and Off-White Products featuring the Off-White Diagonal Marks are depicted
17 below:
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 6 of 24 Page ID #:6
1 16. Off-White has gained significant common law trademark and other rights
2 in its Off-White Marks (as defined infra) and Off-White Products through its use,
3 advertising and promotion of the same.
4 17. Off-White has also protected its valuable rights by filing for and obtaining
5 a number of federal trademark registrations. For example, Off-White has protected its
6 valuable rights by filing for and obtaining federal trademark registrations with the United
7 States Patent and Trademark Office (“USPTO”), including, but not limited to, the
8 following U.S. Trademark Registration Numbers, among others: 5,119,602 for “OFF
9 WHITE” for goods in Class 25, with a constructive date of first use of January 25, 2012;
10 5,572,836 for “Off-White C/O Virgil Abloh” for goods in Class 25, with a date of first
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12 use of March 25, 2013; 5,150,712 covering for goods in Class 18 and Class 25,
13 with dates of first use of August 15, 2015 and June 30, 2015, respectively; 5,307,806
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15 covering for goods in Class 18 and Class 25, with a date of first use of February 17,
16 2014; and 5,601,825 covering for services in Class 35, with a constructive
17 date of first use of July 20, 2016 (collectively, the “Off-White Registration(s)”, and the
18 marks covered thereby are collectively referred to herein as the “Off-White Mark(s)”).
19 True and correct copies of the Off-White Registrations are attached hereto as Exhibit A
20 and incorporated herein by reference.
21 18. Off-White’s efforts, the quality of its Off-White Products, its marketing,
22 promotional and distribution efforts, as well as the word-of mouth-buzz generated by its
23 consumers, have made the Off-White Products and Off-White Marks prominently
24 placed in the minds of the public. Retailers, retail buyers, consumers and members of
25 the public have become familiar with the Off-White Products and Off-White Marks and
26 associate them exclusively with Off-White.
27 19. As a result of such associations, Off-White and its Off-White Marks have 28 acquired a valuable reputation and goodwill among the public.
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 7 of 24 Page ID #:7
1 20. Off-White has gone to great lengths to protect its interests in and to the
2 Off-White Products and Off-White Marks. No one other than Off-White is authorized
3 to use the Off-White Marks and/or manufacture, import, export, advertise, offer for sale
4 or sell any goods utilizing the Off-White Marks without the express written permission
5 of Off-White.
6
7 Defendant’s Wrongful and Infringing Conduct
8 21. Off-White recently became aware of Defendant’s actions, which vary and
9 include the following: manufacturing, advertising, marketing, promoting, distributing,
10 displaying, offering for sale and/or selling Infringing Products to U.S. consumers,
11 including, upon information and belief, those located in the State of California; and
12 extensively using the Infringing Marks in connection with Defendant’s business, and the
13 advertisement and marketing thereof, including repeatedly on retail fixtures, signage,
14 interior décor, a branded vehicle, and other promotional materials.
15 22. Upon information and belief, Afters is a corporation that specializes in
16 premium handcrafted ice cream, which maintains at least twenty-seven (27) locations
17 throughout the State of California, and has had pop up locations at various events and
18 festivals, such as Coachella, and ComplexCon.
19 23. Upon information and belief, Afters—founded by Scott Nghiem and
20 Andy Nguyen, each of which has a background in clothing and/or streetwear—has been
21 described as a business that is not only known for ice cream, but also “for its sharp
22 design, streetwear aesthetics”. 2
23 24. On Defendant’s Website, through which Afters offers for sale and/or sells
24 “swag”, including the Infringing Products, Defendant advertises that “Afters is more
25 than just ice cream. It’s a lifestyle.”
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27 2 See https://www.ocweekly.com/how-two-guys-from-westminster-are-taking-over- dessert-in-southern-california-6615322/. 28
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 8 of 24 Page ID #:8
1 25. On the homepage of Defendant’s Website, Defendant displays a
2 “lookbook”, which prominently features several Infringing Products, some of which are
3 depicted below:
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15 True and correct screenshots of Defendant’s homepage, including the pages of the
16 lookbook with some of the Infringing Products featured thereon, are attached hereto as
17 Exhibit B.
18 26. On the “swag” page of Defendant’s Website, Defendant currently
19 advertises, offers for sale and/or sells what it denotes as “tour merch”, available in store
20 and online, such as apparel, hats and socks, including the Infringing Products. True and
21 correct screenshots of examples of Infringing Products currently being advertised,
22 offered for sale and/or sold via Defendant’s Website are attached hereto as Exhibit C.
23 27. In addition to manufacturing, advertising, marketing, promoting,
24 distributing, displaying, offering for sale and/or selling Infringing Products, Defendant
25 has also pervasively used the Infringing Marks in connection with Defendant’s business,
26 and the branding thereof. True and correct examples of Defendant’s usage of the
27 Infringing Marks appear below: 28
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13 28. Defendant has also actively promoted the Infringing Products via, at a
14 minimum, its Instagram handle, @aftersicecream, and Facebook page, and has featured
15 the Infringing Marks thereon. True and correct screenshots of examples of the
16 foregoing are attached hereto as Exhibit D.
17 29. After Plaintiff became aware of Defendant’s infringing actions, Plaintiff’s
18 counsel sent a cease and desist letter to Afters on or about June 23, 2020 (the “C&D”).
19 A true and correct copy of the C&D is attached hereto as Exhibit E.3
20 30. Although Afters, through its counsel, has responded to the C&D, to date,
21 the parties have been able to resolve this matter, and Afters has continued engaging in
22 its illegal and infringing actions, as set forth herein.
23 31. Defendant is not, and has never been, authorized by Off-White or any of its
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25 3 26 Exhibit E is the final, unsigned version of the C&D, given that a signed copy, on Plaintiff ’s counsel’s letterhead, is not currently in Plaintiff’s possession. In light of the 27 fact that Afters, through its counsel, has responded to the C&D, there is no question that it received the same. 28
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 10 of 24 Page ID #:10
1 authorized agents to use any of the Off-White Marks or the Infringing Marks on or in
2 connection with the Infringing Products, Defendant’s business, or otherwise.
3 32. By Defendant’s use of the Infringing Marks, along with its dealing in
4 Infringing Products (including, without limitation, manufacturing, advertising,
5 marketing, promoting, distributing, displaying, offering for sale, and/or selling
6 Infringing Products), Defendant has violated Off-White’s exclusive rights in the Off-
7 White Marks, and has used marks that are confusingly similar to, identical to and/or
8 constitute infringement of the Off-White Marks in order to confuse consumers into
9 believing that Defendant’s Infringing Products are Off-White Products and/or that
10 Defendant and/or Defendant’s business is affiliated with Off-White, and aid in the
11 promotion of Defendant’s business and its sales of Defendant’s Infringing Products.
12 Defendant’s conduct began long after Off-White’s adoption and use of the Off-White
13 Marks, after Off-White obtained the federal registrations in the Off-White Marks, as
14 alleged above, and after the Off-White Products and Off-White Marks became well-
15 known to the purchasing public.
16 33. Upon information and belief, prior to and contemporaneous with its
17 infringing actions alleged herein, Defendant had knowledge of Off-White’s ownership
18 of its Off-White Marks, of the fame and incalculable goodwill associated therewith, and
19 of the popularity and success of the Off-White Products, and in bad faith adopted the
20 Off-White Marks.
21 34. Defendant’s unquestionable bad faith intent to trade off of Off-White’s
22 goodwill is demonstrated by, among other things, Defendant’s ubiquitous use of the
23 Infringing Marks in connection with Defendant’s business, as well as a side-by-side
24 comparison of examples of Infringing Products to examples of Off-White Products, true
25 and correct images of which appear below:
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 11 of 24 Page ID #:11
1 Examples of Off-White Products Examples of Infringing Products
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1 Examples of Off-White Products Examples of Infringing Products
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27 35. Defendant has been engaging in the illegal and infringing actions, as 28 alleged herein, knowingly and intentionally, or with reckless disregard or willful
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 14 of 24 Page ID #:14
1 blindness to Off-White’s rights, or in bad faith, for the purpose of trading on the
2 goodwill and reputation of Off-White, the Off-White Marks and Off-White Products.
3 36. In fact, even after receiving the C&D, Defendant has brazenly continued
4 to manufacture, advertise, market, promote, distribute, display, offer for sale and/or sell
5 Infringing Products and use the Infringing Marks. See the date-stamped screenshots on
6 Exbibits B, C, and D.
7 37. Defendant’s use of the Infringing Marks and its dealing in Infringing
8 Products, as alleged herein, has caused, and will continue to cause, confusion, mistake,
9 economic loss and has, and will continue to deceive consumers, the public, and the trade
10 with respect to the source or origin of Defendant’s Infringing Products and/or
11 Defendant’s business, thereby causing consumers to erroneously believe that such
12 Infringing Products and/or Defendant’s business are licensed by or otherwise associated
13 with Off-White, and damaging Off-White.
14 38. In engaging in these actions, Defendant has, among other things, willfully
15 and in bad faith infringed the Off-White Marks and committed unfair competition, and
16 in doing so, has caused, and unless enjoined, will continue to cause, irreparable harm to
17 Off-White.
18 CAUSES OF ACTION
19 FIRST CAUSE OF ACTION 20 (Infringement of Registered Trademarks) [15 U.S.C. § 1114/Lanham Act § 32(a)] 21
22 39. Plaintiff repleads and incorporates by reference each and every allegation
23 set forth in the preceding paragraphs as if fully set forth herein.
24 40. Off-White has continuously used the Off-White Marks in interstate
25 commerce since on or before the dates of first use, as reflected in the Off-White
26 Registrations attached hereto as Exhibit A.
27 41. Off-White, as the owner of all rights, title and interest in and to its Off- 28 White Marks has standing to maintain an action for trademark infringement under 15
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 15 of 24 Page ID #:15
1 U.S.C. § 1114.
2 42. Upon information and belief, Defendant was, at the time it engaged in its
3 actions as alleged herein, actually aware that Off-White is the owner of the federal
4 trademark registrations for the Off-White Marks.
5 43. Defendant did not seek and thus, inherently failed to obtain consent or
6 authorization from Off-White, as the registered trademark owner of the Off-White
7 Marks, to use the Off-White Marks and/or the Infringing Marks, and/or deal in and
8 commercially manufacture, advertise, market, promote, distribute, display, offer for sale
9 and/or sell Off-White Products and/or related products bearing the Off-White Marks
10 into the stream of commerce.
11 44. Defendant knowingly and intentionally used the Off-White Marks and/or
12 the Infringing Marks in connection with Defendant’s business and/or manufactured,
13 advertised, marketed, promoted, distributed, displayed, offered for sale and/or sold
14 Infringing Products, bearing and/or utilizing the Off-White Marks and/or the Infringing
15 Marks.
16 45. Defendant’s egregious and intentional use of the Off-White Marks, and/or
17 the Infringing Marks, in commerce on or in connection with Defendant’s business
18 and/or the Infringing Products has caused, and is likely to continue to cause, actual
19 confusion and mistake, and has deceived, and is likely to continue to deceive, the
20 general purchasing public as to the source or origin of Defendant’s business and/or the
21 Infringing Products, and is likely to deceive the public into believing that Defendant’s
22 Infringing Products are Off-White Products or Defendant’s business and Infringing
23 Products are otherwise associated with, or authorized by, Off-White.
24 46. Defendant’s actions have been deliberate and committed with knowledge
25 of Off-White’s rights and goodwill in the Off-White Marks, as well as with bad faith
26 and the intent to cause confusion, mistake and deception.
27 47. Defendant’s continued knowing, and intentional use of the Off-White 28 Marks without Off-White’s consent or authorization constitutes intentional infringement
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 16 of 24 Page ID #:16
1 of Off-White’s federally registered Off-White Marks in violation of § 32 of the Lanham
2 Act, 15 U.S.C. § 1114.
3 48. As a direct and proximate result of Defendant’s illegal and infringing
4 actions as alleged herein, Off-White has suffered substantial monetary loss and
5 irreparable injury, loss and damage to its business and its valuable rights in and to the
6 Off-White Marks and the goodwill associated therewith in an amount as yet unknown,
7 but to be determined at trial, for which Off-White has no adequate remedy at law, and
8 unless immediately enjoined, Defendant will continue to cause such substantial and
9 irreparable injury, loss and damage to Off-White and its valuable Off-White Marks.
10 49. Based on Defendant’s actions, as alleged herein, Off-White is entitled to
11 injunctive relief, damages for the irreparable harm that Off-White has sustained, and
12 will sustain, as a result of Defendant’s unlawful and infringing actions as alleged herein,
13 and all gains, profits and advantages obtained by Defendant as a result thereof,
14 enhanced discretionary damages, as well as other remedies provided by 15 U.S.C. §§
15 1116, 1117, and 1118, and reasonable attorneys’ fees and costs.
16 SECOND CAUSE OF ACTION (False Designation of Origin & Unfair Competition) 17 [15 U.S.C. § 1125(a)/Lanham Act § 43(a)] 18 50. Plaintiff repleads and incorporates by reference each and every allegation 19 set forth in the preceding paragraphs as if fully set forth herein. 20 51. Off-White, as the owner of all right, title and interest in and to the Off- 21 White Marks, has standing to maintain an action for false designation of origin and 22 unfair competition under the Lanham Act § 43(a) (15 U.S.C. § 1125). 23 52. The Off-White Marks are inherently distinctive and/or have acquired 24 distinctiveness. 25 53. Defendant knowingly and willfully used in commerce products, and 26 marketing and promotional materials, utilizing the Off-White Marks and/or the 27 Infringing Marks, and affixed, applied and used false designations of origin and false 28
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1 and misleading descriptions and representations on or in connection with the
2 manufacture, advertisement, marketing, promotion, distribution, display, offering for
3 sale and/or sale of Infringing Products with the intent to cause confusion, to cause
4 mistake and to deceive the purchasing public into believing, in error, that Defendant’s
5 substandard Infringing Products are Off-White Products or related products, and/or that
6 Defendant’s Infringing Products are authorized, sponsored, approved, endorsed or
7 licensed by Off-White and/or that Defendant and/or its business is affiliated, connected
8 or associated with Off-White, thereby creating a likelihood of confusion by consumers
9 as to the source of such Infringing Products, and/or Defendant’s business, allowing
10 Defendant to capitalize on the goodwill associated with, and the consumer recognition
11 of, the Off-White Marks, to Defendant’s substantial profit in blatant disregard of Off-
12 White’s rights.
13 54. By manufacturing, advertising, marketing, promoting, distributing,
14 displaying, offering for sale, selling and/or otherwise dealing in the Infringing Products
15 that are identical and/or confusingly similar to the Off-White Products using marks that
16 are identical and/or confusingly similar to the Off-White Marks, Defendant has traded
17 off the extensive goodwill of Off-White and its Off-White Products and did in fact
18 induce, and intends to, and will continue to induce customers to purchase Defendant’s
19 Infringing Products, thereby directly and unfairly competing with Off-White. Such
20 conduct has permitted and will continue to permit Defendant to make substantial sales
21 and profits based on the goodwill and reputation of Off-White and its Off-White Marks,
22 which Off-White has amassed through its nationwide marketing, advertising, sales and
23 consumer recognition.
24 55. Defendant knew, or by the exercise of reasonable care should have
25 known, that its adoption and commencement of and continuing use in commerce of the
26 Infringing Marks would cause confusion, mistake or deception among purchasers, users
27 and the public. 28 56. Upon information and belief, Defendant’s aforementioned wrongful
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1 actions have been knowing, deliberate, willful, intended to cause confusion, to cause
2 mistake and to deceive the purchasing public and with the intent to trade on the
3 goodwill and reputation Off-White, its Off-White Products and Off-White Marks.
4 57. As a direct and proximate result of Defendant’s aforementioned actions,
5 Defendant has caused irreparable injury to Off-White by depriving Off-White of sales
6 of its Off-White Products and by depriving Off-White of the value of its Off-White
7 Marks as commercial assets in an amount as yet unknown, but to be determined at trial,
8 for which it has no adequate remedy at law, and unless immediately restrained,
9 Defendant will continue to cause substantial and irreparable injury to Off-White and the
10 goodwill and reputation associated with the value of Off-White Marks.
11 58. Based on Defendant’s wrongful conduct, Off-White is entitled to
12 injunctive relief as well as monetary damages and other remedies as provided by the
13 Lanham Act, including damages that Off-White has sustained and will sustain as a
14 result of Defendant’s illegal and infringing actions as alleged herein, and all gains,
15 profits and advantages obtained by Defendant as a result thereof, enhanced discretionary
16 damages and reasonable attorneys’ fees and costs.
17
18 THIRD CAUSE OF ACTION (Unfair Competition) 19 [Cal. Bus. & Prof. Code § 17200] 20 59. Plaintiff repleads and incorporates by reference each and every allegation 21 set forth in the preceding paragraphs as if fully set forth herein. 22 60. California Business and Professions Code § 17200, et seq., states that 23 unfair competition shall mean and include any “unlawful, unfair or fraudulent business 24 act or practice.” 25 61. Defendant’s unlawful and improper actions, as set forth above, are likely 26 to cause confusion, mistake, and/or deception as to the source, origin, and/or 27 sponsorship of Defendant’s business and/or Defendant’s Infringing Products, and to 28
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1 falsely mislead consumers into believing that the Infringing Products themselves, along
2 with Defendant’s business, are those of, affiliated with, and/or approved by Off-White.
3 62. Accordingly, Defendant’s unauthorized use of the Off-White Marks and/or
4 the Infringing Marks constitutes unfair competition in violation of California Business
5 and Professionals Code § 17200, et seq.
6 63. Defendant’s acts of unfair competition have caused Off-White to sustain
7 monetary damage, loss, and injury, in an amount to be determined at trial.
8 64. In light of the foregoing, Off-White is entitled to an injunction under
9 California Business and Professions Code § 17200 et seq. restraining Defendant from
10 engaging in further such unlawful conduct, as well as to restitution of those amounts
11 unlawfully obtained by Defendant through its wrongful conduct.
12 FOURTH CAUSE OF ACTION (Unfair Competition) 13 [California Common Law] 14 65. Plaintiff repleads and incorporates by reference each and every allegation 15 set forth in the preceding paragraphs as if fully set forth herein. 16 66. By using the Infringing Marks and/or manufacturing, advertising, 17 marketing, promoting, distributing, displaying, offering for sale, selling, and/or 18 otherwise dealing in the Infringing Products, Defendant has traded off the extensive 19 goodwill of Off-White and its Off-White Products to induce, and did induce and intends 20 and will continue to induce, customers to purchase its Infringing Products, thereby 21 directly competing with Off-White and engaging in unfair competition in violation of 22 the common law of the State of California. Such conduct has permitted and will 23 continue to permit Defendant to make substantial sales and profits based on the 24 goodwill and reputation of Off-White, which Off-White has amassed through its 25 nationwide marketing, advertising, sales, and consumer recognition. 26 67. Defendant’s use of the Infringing Marks and its advertising, marketing, 27 promotion, distribution, display, offering for sale, sale, and/or otherwise dealing in the 28
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1 Infringing Products was and is in violation and derogation of Off-White’s rights and is
2 likely to cause confusion and mistake, and to deceive consumers and the public as to the
3 source, origin, sponsorship, or quality of Defendant’s Infringing Products and/or
4 Defendant’s business.
5 68. Defendant knew, or by the exercise of reasonable care should have
6 known, that its use of the Infringing Marks and its advertising, marketing, promotion,
7 distribution, display, offering for sale, sale, and/or otherwise dealing in the Infringing
8 Products and its continued use of the Infringing Marks and its continued advertising,
9 marketing, promotion, distribution, display, offering for sale, sale and/or otherwise
10 dealing in the Infringing Products would cause confusion and mistake, or deceive
11 purchasers, users, and the public.
12 69. Upon information and belief, Defendant’s aforementioned wrongful
13 actions have been knowing, deliberate, willful, intended to cause confusion and mistake,
14 and to deceive, in blatant disregard of Off-White’s rights, and for the wrongful purpose
15 of injuring Off-White and its competitive position while benefiting Defendant.
16 70. As a direct and proximate result of Defendant’s aforementioned wrongful
17 actions, Off-White has been and will continue to be deprived of substantial sales of its
18 Off-White Products, and of the value of its Off-White Marks as commercial assets, in an
19 amount as yet unknown but to be determined at trial, for which Off-White has no
20 adequate remedy at law.
21 71. As a result of Defendant’s actions alleged herein, Off-White is entitled to
22 injunctive relief, an order granting Off-White’s damages and Defendant’s profits
23 stemming from its infringing activities, and exemplary or punitive damages for
24 Defendant’s intentional misconduct.
25 PRAYER FOR RELIEF
26 WHEREFORE, Off-White respectfully prays for judgment against Defendant as
27 follows: 28 A. For an award of Defendant’s profits and Off-White’s damages in an amount to
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1 be proven at trial for willful trademark infringement of Off-White’s federally
2 registered Off-White Marks, and such other compensatory damages as the
3 Court determines to be fair and appropriate pursuant to 15 U.S.C. § 1117(a);
4 B. For an award of Defendant’s profits and Off-White’s damages in an amount to
5 be proven at trial and such other compensatory damages as the Court
6 determines to be fair and appropriate pursuant to 15 U.S.C. § 1117(a) for false
7 designation of origin and unfair competition under 15 U.S.C. §1125(a);
8 C. For restitution of those amounts unlawfully obtained by Defendant through its
9 illegal and infringing conduct, as alleged herein, pursuant to California
10 Business and Professionals Code § 17200;
11 D. For damages to be proven at trial for common law unfair competition;
12 E. For a preliminary and permanent injunction by this Court enjoining and
13 prohibiting Defendant, or its agents, and any employees, agents, servants,
14 officers, representatives, directors, attorneys, successors, affiliates, assigns,
15 and entities owned or controlled by Defendant, and all those in active concert
16 or participation with Defendant, and each of them who receives notice directly
17 or otherwise of such injunction from:
18 i. manufacturing, importing, exporting, advertising, marketing,
19 promoting, distributing, displaying, offering for sale, selling and/or
20 otherwise dealing in Infringing Products;
21 ii. directly or indirectly infringing in any manner any of the Off-White
22 Marks;
23 iii. using any reproduction, counterfeit, copy or colorable imitation of
24 the Off-White Marks, including the Infringing Marks, to identify any
25 goods or services not authorized by Off-White;
26 iv. using any of Off-White’s trademarks, including, without limitation,
27 the Off-White Marks, or any other marks that are confusingly similar 28 to the Off-White Marks, on or in connection with Defendant’s
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 22 of 24 Page ID #:22
1 business, including without limitation, including on retail fixtures,
2 signage, interior décor, any branded vehicles, or other promotional
3 materials, and/or Defendant’s manufacture, advertisement,
4 marketing, promotion, distribution, display, offering for sale, sale,
5 and/or otherwise dealing in Infringing Products;
6 v. using any false designation of origin or false description, or engaging
7 in any action that is likely to cause confusion, cause mistake, and/or
8 to deceive members of the trade and/or the public as to the
9 affiliation, connection, origin or association of any product
10 manufactured, advertised, marketed, promoted, distributed,
11 displayed, offered for sale, or sold by Defendant with Off-White
12 and/or as to the sponsorship or approval of any product
13 manufactured, advertised, marketed, promoted, distributed,
14 displayed, offered for sale, or sold by Defendant and Defendant’s
15 commercial activities by Off-White;
16 vi. engaging in the unlawful, unfair, or fraudulent business acts or
17 practices, including, without limitation, the actions described herein,
18 including the use of the Off-White Marks and the advertising of
19 and/or dealing in any Infringing Products;
20 vii. engaging in any other actions that constitute unfair competition with
21 Off-White;
22 viii. engaging in any other act in derogation of Off-White’s rights;
23 ix. secreting, destroying, altering, removing, or otherwise dealing with
24 the Infringing Products or any books or records that contain any
25 information relating to the manufacture, advertisement, marketing,
26 promotion, distribution, display, offering for sale, and/or sale of
27 Infringing Products; 28 x. effecting assignments or transfers, forming new entities or
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1 associations, or utilizing any other device for the purpose of
2 circumventing or otherwise avoiding the prohibitions set forth in any
3 Final Judgment or Order in this action; and
4 xi. instructing, assisting, aiding or abetting any other person or entity in
5 engaging in or performing any of the activities referred to in
6 subparagraphs (i) through (x) above; and
7 F. For an order of the Court requiring that Defendant deliver up to Off-White for
8 destruction any and all Infringing Products and any and all advertising and
9 promotional materials in the possession, custody or control of Defendant that
10 infringe the Off-White Marks, or bear any of the Infringing Marks;
11 G. For an order from the Court requiring that Defendant provide complete
12 accountings for any and all monies, profits, gains and advantages derived by
13 Defendant from its manufacture, advertisement, marketing, promotion,
14 distribution, display, offering for sale, sale and/or otherwise dealing in the
15 Infringing Products as described herein, including prejudgment interest;
16 H. For an order from the Court that an asset freeze or constructive trust be
17 imposed over any and all monies, profits, gains and advantages in Defendant’s
18 possession which rightfully belong to Off-White;
19 I. For an award of exemplary or punitive damages in an amount to be
20 determined by the Court;
21 J. For Off-White’s reasonable attorneys’ fees;
22 K. For all costs of suit; and
23 L. For such other and further relief as the Court may deem just and equitable.
24
25 DEMAND FOR JURY TRIAL
26 Plaintiff hereby demands a jury trial on all issues and claims so triable.
27 28
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Case 8:20-cv-02121 Document 1 Filed 11/03/20 Page 24 of 24 Page ID #:24
1 Dated: November 3, 2020 Respectfully submitted,
2 EPSTEIN DRANGEL LLP
3 BY: /s/ Peter J. Farnese______4 Peter J. Farnese (SBN 251204)
5 Jason M. Drangel 6 [email protected] William C. Wright 7 [email protected] Ashly E. Sands 8 [email protected] 9 Kerry B. Brownlee [email protected] 10 60 East 42nd Street, Suite 2520 New York, NY 10165 11 Telephone: 212-292-5390 12 Facsimile: 212-292-5391 Pro Hac Vice Applications to be Submitted 13 BELLIZIO + IGEL 14 Brian Igel [email protected] 15 One Grand Central Place 16 305 Madison Avenue, 40th Floor New York, New York 10165 17 Tel.: 212-873-0250 Fax: 646-395-1585 18 Pro Hac Vice Application to be Submitted 19 Attorneys for Plaintiff Off-White LLC 20
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