The Off-White Papers

Inside Virgil Abloh’s trademark ballet.

The Off-White Papers

The Off-White Papers

Pages from OFF-WHITE LLC v. 2019CHEAPJORDAN.COM, et al.

Inside Virgil Abloh’s trademark ballet.

Originality is fashion’s most confused virtue. Because nearly all good ideas are based on ideas that came before them, clothing that resembles a vintage style or an earlier design may be praised as smartly referential.

But stray too close to copying an idea, and you have created a knockoff.

There is a deeper war zone still: The realm of counterfeiting, when sellers copy not just a brand’s style but impersonate its identity — replicating its logos, tags or trademarked designs in order to market a fake as the real deal.

Off-White is among the most sought-after streetwear brands in the world. Like many other big brands, it sues over trademark infringement. A lot.

Part 1 —

The Ironic and the Sincere

How Off-White defends its identity.

Since 2017, lawyers for Off-White have filed suit against nearly 1,500 entities in the United States federal court in Manhattan alone.

Since 2017, lawyers for Off-White have filed suit against nearly 1,500 entities in the United States federal court in Manhattan alone.

Most were suits filed against large groups of sellers. They name defendants such as the Welcome DropShip DropShip Store, Lisa's Crochet, HENGXING CAPS & GARMENTS CO., LTD. (GREAT CAREER) and QUI SHI CO., LTD, which the suit noted was “doing business as COOOLMAN.”

Most were suits filed against large groups of sellers. They name defendants such as the Welcome DropShip DropShip Store, Lisa's Crochet, HENGXING CAPS & GARMENTS CO., LTD. (GREAT CAREER) and QUI SHI CO., LTD, which the suit noted was “doing business as COOOLMAN.”

These lawsuits target sellers making clothing adorned with designs that imitate Off-White’s strikingly minimalist designs.

These lawsuits target sellers making clothing adorned with designs that imitate Off-White’s strikingly minimalist designs.

These elements include quotation marks around sans-serif capital letters, arrows and black-and-white diagonal lines.

These elements include quotation marks around sans-serif capital letters, arrows and black-and-white diagonal lines.

Off-White’s founder, Virgil Abloh, has become famous for these winking typographical motifs.

Off-White’s founder, Virgil Abloh, has become famous for these winking typographical motifs.

“Quotation marks are one of the many tools that Abloh uses to operate in a mode of ironic detachment,” Thom Bettridge wrote in the magazine 032c.

“Quotation marks are one of the many tools that Abloh uses to operate in a mode of ironic detachment,” Thom Bettridge wrote in the magazine 032c.

“If I take a men’s sweatshirt and write ‘woman’ on its back, that’s art,” Mr. Abloh told the magazine.

“If I take a men’s sweatshirt and write ‘woman’ on its back, that’s art,” Mr. Abloh told the magazine.

Mr. Abloh’s widely recognizable visual language offers a tantalizing target for counterfeiters.

Mr. Abloh’s widely recognizable visual language offers a tantalizing target for counterfeiters.

Like many brands, Off-White believes that the best defense is a good offense.

Like many brands, Off-White believes that the best defense is a good offense.

“Filing a lawsuit is both a direct attack and a public statement that the label has an active brand protection program,” Susan Scafidi, a professor who runs the Fashion Law Institute at Fordham University, wrote in an email.

“Filing a lawsuit is both a direct attack and a public statement that the label has an active brand protection program,” Susan Scafidi, a professor who runs the Fashion Law Institute at Fordham University, wrote in an email.

In the savvy world of online fakes, which includes everything from drugs to perfume, clothing is a huge and lucrative category.

In the savvy world of online fakes, which includes everything from drugs to perfume, clothing is a huge and lucrative category.

Trademarks are a brand’s main ammunition in the war against anyone it perceives to be a counterfeiter.

Trademarks are a brand’s main ammunition in the war against anyone it perceives to be a counterfeiter.

Part 2 —

The Counterfeit Industry

From physical warehouses to online markets.

In the United States, fashion designs do not enjoy copyright protections like those that protect literature or music. Copyright law classifies apparel as “useful articles” with an “intrinsic utilitarian function.”

In the United States, fashion designs do not enjoy copyright protections like those that protect literature or music. Copyright law classifies apparel as “useful articles” with an “intrinsic utilitarian function.”

This means, broadly speaking, that fashion brands defend their designs through trademark protection, rather than copyright law.

This means, broadly speaking, that fashion brands defend their designs through trademark protection, rather than copyright law.

A trademark is defined by the United States Patent and Trademark Office as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.”

A trademark is defined by the United States Patent and Trademark Office as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.”

One job of a lawyer working for a fashion brand, then, is to prove that someone else’s use of a word, phrase or symbol is confusingly similar to the brand’s trademarked word, phrase or symbol — and that this was done knowingly by the seller “to cause confusion” or “to deceive.”

One job of a lawyer working for a fashion brand, then, is to prove that someone else’s use of a word, phrase or symbol is confusingly similar to the brand’s trademarked word, phrase or symbol — and that this was done knowingly by the seller “to cause confusion” or “to deceive.”

This does not include the similar but nonidentical knockoffs of designer brands often found in fast-fashion stores.

This does not include the similar but nonidentical knockoffs of designer brands often found in fast-fashion stores.

For decades, brands that wanted to sue sellers of counterfeit items had to physically locate warehouses full of those products. But the internet has radically shifted that equation.

For decades, brands that wanted to sue sellers of counterfeit items had to physically locate warehouses full of those products. But the internet has radically shifted that equation.

“It used to be much easier, when I started, to just find the warehouse in the U.S.; they’d ship pallets and products into the U.S., we’d walk into the warehouse, with the sheriffs, the marshals, and shut it down, grab it and arrest them,” said Jason Drangel, a prominent lawyer. His firm, Epstein Drangel, routinely sues counterfeiters for Off-White, in addition to working with other fashion and toy companies.

“It used to be much easier, when I started, to just find the warehouse in the U.S.; they’d ship pallets and products into the U.S., we’d walk into the warehouse, with the sheriffs, the marshals, and shut it down, grab it and arrest them,” said Jason Drangel, a prominent lawyer. His firm, Epstein Drangel, routinely sues counterfeiters for Off-White, in addition to working with other fashion and toy companies.

“Those warehouses are not here anymore.”

“Those warehouses are not here anymore.”

Now, sellers can ship products directly to the doorsteps of consumers (as this storefront notes below),

Now, sellers can ship products directly to the doorsteps of consumers (as this storefront notes below),

who can peruse endless listings on Chinese platforms like Alibaba, AliExpress and DHGate favored by counterfeiters, as well as eBay and Amazon. (The Department of Homeland Security reported that nearly 90 percent of counterfeit items it had seized in 2018 came from mainland China or Hong Kong.)

who can peruse endless listings on Chinese platforms like Alibaba, AliExpress and DHGate favored by counterfeiters, as well as eBay and Amazon. (The Department of Homeland Security reported that nearly 90 percent of counterfeit items it had seized in 2018 came from mainland China or Hong Kong.)

In 2010, a ruling in a lawsuit brought by Tiffany & Co. against eBay found that platforms could not be held liable in court for allowing third parties to sell counterfeit goods.

In 2010, a ruling in a lawsuit brought by Tiffany & Co. against eBay found that platforms could not be held liable in court for allowing third parties to sell counterfeit goods.

So over the past decade, many brands have begun pursuing sellers directly,

So over the past decade, many brands have begun pursuing sellers directly,

often with the help of the platforms themselves.

often with the help of the platforms themselves.

Now hundreds of lawsuits are filed each year against thousands of defendants in courts around the country, concentrated heavily in New York, though also often in courts in Chicago and Miami.

Now hundreds of lawsuits are filed each year against thousands of defendants in courts around the country, concentrated heavily in New York, though also often in courts in Chicago and Miami.

Part 3 —

A Typical Suit of Clothing

In which DJ Khaled arrives.

“We started filing cases back in around 2017,” Mr. Drangel said. “We have filed probably over 200 cases at this point in the Southern District of New York.”

“We started filing cases back in around 2017,” Mr. Drangel said. “We have filed probably over 200 cases at this point in the Southern District of New York.”

Here’s what you need to do, as a law firm representing a fashion brand, to sue someone you believe is a copycat:

Here’s what you need to do, as a law firm representing a fashion brand, to sue someone you believe is a copycat:

Establish that the brand owns a certain set of trademarks, either by showing the trademark registration or by showing that the brand has filed an application for a mark to be registered —

Establish that the brand owns a certain set of trademarks, either by showing the trademark registration or by showing that the brand has filed an application for a mark to be registered —

even if that application has yet to be approved.

even if that application has yet to be approved.

Case in point,

Case in point,

the red zip tie.

the red zip tie.

Within some of their court filings,

Within some of their court filings,

Off-White’s lawyers have included the full trademark application for this mark,

Off-White’s lawyers have included the full trademark application for this mark,

which they describe as “a zip tie with a substantially rectangular end, all in the color red,”

which they describe as “a zip tie with a substantially rectangular end, all in the color red,”

complete with pictures of celebrities wearing it:

complete with pictures of celebrities wearing it:

ASAP Rocky,

ASAP Rocky,

Bella Hadid,

Bella Hadid,

Chris Brown,

Chris Brown,

DJ Khaled,

DJ Khaled,

Jordan Henderson, a British soccer player,

Jordan Henderson, a British soccer player,

Mike Conley,

Mike Conley,

Travis Scott,

Travis Scott,

Tristan Thompson.

Tristan Thompson.

It doesn’t hurt to include some good press when establishing the validity of your brand.

It doesn’t hurt to include some good press when establishing the validity of your brand.

A declaration by Mr. Abloh in one lawsuit notes that “Lyst named Off-White as the ‘hottest fashion brand in the World.’”

A declaration by Mr. Abloh in one lawsuit notes that “Lyst named Off-White as the ‘hottest fashion brand in the World.’”

The exhibits to that lawsuit are a testament to hotness.

The exhibits to that lawsuit are a testament to hotness.

They include screenshots of a GQ article titled: “Off-White’s Virgil Abloh Is the Creative Director Everyone Wants to Be.” (Press clips bolster a brand’s argument in court that its trademarks are legitimate and widely recognized.)

They include screenshots of a GQ article titled: “Off-White’s Virgil Abloh Is the Creative Director Everyone Wants to Be.” (Press clips bolster a brand’s argument in court that its trademarks are legitimate and widely recognized.)

Another complaint, filed in 2017 against a denim brand called Paige, declared: “The success of Off-White, the Off-White Brand, and the Off-White Products is largely attributable to Virgil Abloh, the founder of Off-White, who is well known due to, among other things, his work with Kanye West over the years.”

Another complaint, filed in 2017 against a denim brand called Paige, declared: “The success of Off-White, the Off-White Brand, and the Off-White Products is largely attributable to Virgil Abloh, the founder of Off-White, who is well known due to, among other things, his work with Kanye West over the years.”

It also said: “Abloh sought out to, and did in fact, create a cutting-edge brand that is rooted in current culture, and geared towards youthful consumers.”

It also said: “Abloh sought out to, and did in fact, create a cutting-edge brand that is rooted in current culture, and geared towards youthful consumers.”

The next step is to establish that a trademark has, in fact, been infringed upon.

The next step is to establish that a trademark has, in fact, been infringed upon.

You may do so by providing comparisons of Off-White’s products alongside listings of the look-alike items in question.

You may do so by providing comparisons of Off-White’s products alongside listings of the look-alike items in question.

Finally, establish jurisdiction under the Lanham Act, a U.S. statute governing trademarks, by showing that the counterfeiter intends to ship, or has already shipped, the product to wherever the suit is being filed.

Finally, establish jurisdiction under the Lanham Act, a U.S. statute governing trademarks, by showing that the counterfeiter intends to ship, or has already shipped, the product to wherever the suit is being filed.

You can show this with screenshots of messages showing intent to sell — or photos of actual purchased products, or through seizure of those goods.

You can show this with screenshots of messages showing intent to sell — or photos of actual purchased products, or through seizure of those goods.

Epstein Drangel goes about it, for example, by employing various investigators, both online and in the real world, whose job is to identify counterfeit merchandise and gather evidence that the sellers are marketing it in the district where the lawsuit will be filed.

Epstein Drangel goes about it, for example, by employing various investigators, both online and in the real world, whose job is to identify counterfeit merchandise and gather evidence that the sellers are marketing it in the district where the lawsuit will be filed.

Exhibits in the lawsuits demonstrate how investigators communicate with sellers: They ask questions not unlike any other customer might, in order to establish a relationship.

Exhibits in the lawsuits demonstrate how investigators communicate with sellers: They ask questions not unlike any other customer might, in order to establish a relationship.

“Is this shirt made with cotton? Comfortable to wear?” an investigator from a company hired by Epstein Drangel called New Alchemy Solutions Limited asked a seller named apparel_jsg in a message on the platform DHGate. (The investigator’s company offers, according to legal documents, “trademark infringement research services.”) “This shirt is made of cotton blend. It’s suitable to wear outside. A casual one and comfortable,” the seller responds.

“Is this shirt made with cotton? Comfortable to wear?” an investigator from a company hired by Epstein Drangel called New Alchemy Solutions Limited asked a seller named apparel_jsg in a message on the platform DHGate. (The investigator’s company offers, according to legal documents, “trademark infringement research services.”) “This shirt is made of cotton blend. It’s suitable to wear outside. A casual one and comfortable,” the seller responds.

“Well that’s good.”

“Well that’s good.”

In another message, an investigator asks, “Hello Friend! Will you accept Zhifubao” — that’s Alipay, a Chinese payment processor — “for the payment?”

In another message, an investigator asks, “Hello Friend! Will you accept Zhifubao” — that’s Alipay, a Chinese payment processor — “for the payment?”

“Hi my friend, I am here, of course I accept Zhifubao for the payment,” the seller responded, adding, “Have a good time.”

“Hi my friend, I am here, of course I accept Zhifubao for the payment,” the seller responded, adding, “Have a good time.”

To establish jurisdiction, investigators must remember to ask whether the items can be shipped to America.

To establish jurisdiction, investigators must remember to ask whether the items can be shipped to America.

Different judges have different thresholds of what is required to establish jurisdiction.

Different judges have different thresholds of what is required to establish jurisdiction.

Sometimes just a screenshot confirming the ability to sell to New York will suffice — but product in hand is always preferable.

Sometimes just a screenshot confirming the ability to sell to New York will suffice — but product in hand is always preferable.

“There’s not a case where we don’t do buys,” Mr. Drangel said.

“There’s not a case where we don’t do buys,” Mr. Drangel said.

“We don’t just order things to our office,” he said. “We use different addresses to ship products to, so the counterfeiters don’t get wind of our investigations.”

“We don’t just order things to our office,” he said. “We use different addresses to ship products to, so the counterfeiters don’t get wind of our investigations.”

Law firms end up with piles of counterfeit merchandise.

Law firms end up with piles of counterfeit merchandise.

“At the end of the cases, we typically destroy everything,” Mr. Drangel said.

“At the end of the cases, we typically destroy everything,” Mr. Drangel said.

Part 4 —

Action

Chatting with the ^_^WARM HOUSE^_^ STORE.

Once the investigators have targeted a batch of counterfeiters and established jurisdiction, they prepare an action. Typically, Mr. Drangel said, his firm groups up to 200 counterfeiters together in a single lawsuit, often based on what platform they are using; they might file one suit against counterfeiters on Alibaba, and another against those using DHGate, or eBay, or DHGate sellers in China.

Once the investigators have targeted a batch of counterfeiters and established jurisdiction, they prepare an action. Typically, Mr. Drangel said, his firm groups up to 200 counterfeiters together in a single lawsuit, often based on what platform they are using; they might file one suit against counterfeiters on Alibaba, and another against those using DHGate, or eBay, or DHGate sellers in China.

This is how you might create a lawsuit called: OFF-WHITE LLC v. ^_^WARM HOUSE^_^ STORE, et al.

This is how you might create a lawsuit called: OFF-WHITE LLC v. ^_^WARM HOUSE^_^ STORE, et al.

In this particular lawsuit, which was filed in 2017, Off-White’s lawyers stated, in their initial complaint:

In this particular lawsuit, which was filed in 2017, Off-White’s lawyers stated, in their initial complaint:

“Defendants are sophisticated sellers operating commercial businesses through their respective User Accounts through which Defendants offer for sale and/or sell Infringing Products in wholesale qualities at significantly below-market prices to consumers worldwide.”

“Defendants are sophisticated sellers operating commercial businesses through their respective User Accounts through which Defendants offer for sale and/or sell Infringing Products in wholesale qualities at significantly below-market prices to consumers worldwide.”

It also stated:

It also stated:

“Defendants were and/or are systematically directing and/or targeting their business activities at consumers in the U.S., including New York, through accounts with the Digital Marketplaces.”

“Defendants were and/or are systematically directing and/or targeting their business activities at consumers in the U.S., including New York, through accounts with the Digital Marketplaces.”

We wanted to ask questions of ^_^WARM HOUSE^_^ but could only reach the company through its customer service portal. The person working replied: “:)”

We wanted to ask questions of ^_^WARM HOUSE^_^ but could only reach the company through its customer service portal. The person working replied: “:)”

Each suit asserts the harm that has been done to the brand by the counterfeiters.

Each suit asserts the harm that has been done to the brand by the counterfeiters.

“Defendants’ intentional and deceitful misconduct has likely resulted in lost profits to Off-White and has damaged the inherent value of the Off-White Marks, impaired Off-White’s reputation for providing high-quality products and services and diluted Off-White’s brands and the goodwill associated therewith, thereby negatively affecting Off-White’s relationships with current customers (including both retail customers and end consumers) and their ability to attract new customers,” said Off-White founder Virgil Abloh in a signed declaration in another lawsuit, from 2019, that went after 26 sellers.

“Defendants’ intentional and deceitful misconduct has likely resulted in lost profits to Off-White and has damaged the inherent value of the Off-White Marks, impaired Off-White’s reputation for providing high-quality products and services and diluted Off-White’s brands and the goodwill associated therewith, thereby negatively affecting Off-White’s relationships with current customers (including both retail customers and end consumers) and their ability to attract new customers,” said Off-White founder Virgil Abloh in a signed declaration in another lawsuit, from 2019, that went after 26 sellers.

The lawyers first file for temporary restraining orders under seal, which demand that platforms and third party payment processors like PayPal freeze the sellers’ activities and their assets.

The lawyers first file for temporary restraining orders under seal, which demand that platforms and third party payment processors like PayPal freeze the sellers’ activities and their assets.

Once the orders are unsealed and the lawsuits become public, the firms attempt to negotiate with the sellers. Some will end up settling simply in order to get their bank accounts and storefronts back.

Once the orders are unsealed and the lawsuits become public, the firms attempt to negotiate with the sellers. Some will end up settling simply in order to get their bank accounts and storefronts back.

“We have back and forth with a regular arsenal of attorneys who represent sellers in China, which will bring a lot of it to a head quickly, and we end up with financial payments and final injunctions where they agree not to counterfeit products going forward,” Mr. Drangel said.

“We have back and forth with a regular arsenal of attorneys who represent sellers in China, which will bring a lot of it to a head quickly, and we end up with financial payments and final injunctions where they agree not to counterfeit products going forward,” Mr. Drangel said.

Part 5 —

The Power of Default Judgments

Seized assets and choosing whom to counterfeit.

Many of the sellers never respond — or may not know there is a legal filing. They default in the lawsuits, allowing judgments to be issued against them.

Many of the sellers never respond — or may not know there is a legal filing. They default in the lawsuits, allowing judgments to be issued against them.

These judgments can be vast; Hermès once won a $100 million award in a trademark lawsuit. Substantial sums can sometimes be seized, although it’s rare for the full amount to be recovered.

These judgments can be vast; Hermès once won a $100 million award in a trademark lawsuit. Substantial sums can sometimes be seized, although it’s rare for the full amount to be recovered.

Counterfeiters are increasingly savvy about routing their money through banks outside the U.S. rather than through the accounts of American companies like Paypal, where it can be seized.

Counterfeiters are increasingly savvy about routing their money through banks outside the U.S. rather than through the accounts of American companies like Paypal, where it can be seized.

Sometimes sellers who default will just start a new account and begin selling the same items.

Sometimes sellers who default will just start a new account and begin selling the same items.

But because of a recent shift by platforms to create more onerous seller identification requirements, this is increasingly less of an option for them.

But because of a recent shift by platforms to create more onerous seller identification requirements, this is increasingly less of an option for them.

Instead, sellers — many of whom are mom-and-pop operations buying counterfeit products from wholesalers on other e-commerce platforms, including Taobao — will simply shift to selling counterfeits of brands that are less aggressively defended.

Instead, sellers — many of whom are mom-and-pop operations buying counterfeit products from wholesalers on other e-commerce platforms, including Taobao — will simply shift to selling counterfeits of brands that are less aggressively defended.

“There are lots of products to be knocked off,” Mr. Drangel said. “Everything’s being counterfeited.”

“There are lots of products to be knocked off,” Mr. Drangel said. “Everything’s being counterfeited.”

You would think brands would want to just give up. But they can’t.

You would think brands would want to just give up. But they can’t.

“If you don’t do it, there is no brand,” Mr Drangel said. “There’s no reason to counterfeit a product that no one wants.”

“If you don’t do it, there is no brand,” Mr Drangel said. “There’s no reason to counterfeit a product that no one wants.”