OFF-WHITE LLC v. 5HK5584
- Ronnie Abrams
- 1:19-cv-00672
- U.S. District Court · Southern District of New York
- 3
In OFF-WHITE LLC v. 5HK5584, Judge Cott ordered more support for proposed counterfeit-trademark damages before deciding the amounts.
OFF-WHITE LLC and the defendants against whom it sought statutory damages for alleged trademark counterfeiting and infringement, including the defaulting defendants.
What happened
OFF-WHITE LLC asked the court to award statutory damages against defendants who had not defended claims involving counterfeit and infringing trademarks. Its proposed awards ranged from $100,000 to $2,000,000, based partly on the number of counterfeit products allegedly sold.
The court found that OFF-WHITE had not explained how it calculated the proposed amounts for each defendant. It also required more information about an eBay report listing sales and about whether the defendants sold products through other online marketplaces.
Judge James L. Cott ordered OFF-WHITE to file a letter by March 19, 2020, explaining the legal and factual basis for each requested award and why the eBay report could be admitted as evidence. The order did not decide the damages amounts.
The detailed version
- OFF-WHITE LLC v. 5HK5584 · No. 1:19-cv-00672
- Ronnie Abrams
- Mar. 12, 2020
Background
By an order of reference, Judge Ronnie Abrams referred the case to Magistrate Judge James L. Cott to conduct an inquest concerning OFF-WHITE LLC’s damages on claims for trademark counterfeiting and infringement. The court had previously required OFF-WHITE to submit proposed findings about damages and other monetary relief permitted after the entry of default judgment.
OFF-WHITE timely submitted materials requesting tiered statutory damages for each defaulting defendant. The requested amounts ranged from $100,000 for defendants alleged to have sold fewer than 100 counterfeit products to $2,000,000 for one defendant alleged to have sold 3,136 counterfeit products. The submissions did not explain how OFF-WHITE reached the different amounts or tiers.
Order
Judge Cott ordered OFF-WHITE to file an electronic letter by March 19, 2020, explaining the basis for the statutory damages requested for each defaulting defendant and showing that the requests were consistent with applicable law. The order noted that statutory damages generally should bear some relationship to the actual damages suffered, even though they need not equal actual damages.
The letter had to address three matters:
- OFF-WHITE had to file the eBay report underlying its summary of the defendants’ counterfeit-product sales and explain, with supporting legal authority, why the report was admissible evidence.
- OFF-WHITE had to explain why its proposed tiered amounts—from $100,000 to $2,000,000—were appropriate rather than some other amounts.
- OFF-WHITE had to state whether it had identified other online marketplaces used by the defaulting defendants and whether it knew of sales not reflected in the eBay data.
Disposition
The order required additional submissions concerning damages. It did not set or award damages and did not otherwise state a final damages determination.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.