http://www.forbes.

com/pictures/ehlm45glee/hermes-vs-thursday-friday/
Hermes vs. Thursday Friday
Hermes' Bi rki n bag i s one of the most expensi ve and most coveted bag i nt he worl d.
So when a Los Angel es-based company cal l ed Thursday Fri day started pri nti ng
i mages of Hermes Bi rki n bags on canvas totes, Hermes sued for copyri ght
i nfri ngement and unfai r competi ti on. Thursday Fri day countered that the bags are
not si mi l ar and woul d not confuse consumers because the Bi rki n i s made from
l eather and thei rs i s a pri nt on canvas. The case settl ed out of court and Thursday
Fri day i s no l onger sel l i ng the Bi rki n pri nt canvas tote on thei r websi te.
http://www.avvo.com/legal-guides/ugc/hermes-v-thursday-friday-aka-the-birkin-tote-case-in-a-
nutshell
Hermes v. Thursday Friday (a/k/a "The
Birkin Tote case") in a nutshell

Written by Charles Colman
Trademark Infringement Attorney - New York, NY
Contributor Level 11
Posted over 3 years ago. 2 helpful votes
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For those not active on the fashion blog circuit, the parties in the highly publicized case of
Herms v. Thursday Friday have reached a settlement. The dispute hinged on a $35 tote
bearing an image of a $6000 Birkin bag:
Good clean fun, or improper free-riding? Looks like the federal courts won't be deciding
(because of the aforementioned settlement.) But you can decide for yourself, thanks to the
court filings, via Scribd, via me, if you have time to kill and want to weigh the competing
arguments.
If you don't have time to wade through 100+ pages of legal briefing, here's a (necessarily
incomplete) summary of the initial volley between the parties, with passages taken from their
court documents [and bracketed additions, which I have added for clarity and flavor]:
Herms: "Defendant is selling cotton tote bags which bear, on each of their surfaces, a color
photograph of . . . what appears to be a Birkin Bag. Defendant is simply riding on the
reputation and recognition of the Birkin Bag to sell its otherwise generic tote bags. . . . [A]s a
result of the enormous sales, extensive advertising and promotion and ubiquitous publicity
and attention in the press and media, the design of the Birkin Bag has acquiredsecondary
meaning and has become a famous trademark."
T/F: "[We recognize that it is too soon in the case for the Court to thoroughly address this
issue, but at] the heart of this matter is plaintiff Herms International's attempt to destroy a
new business for the alleged sin of producing a tote bag that has the gall to imply that paying
$6,000 for a fancy purse is just a little ridiculous . . . . [If Thursday Friday] did make use of
the Birkin Bag Trademark or the Birkin closure trademark, [it] intended to create and
successfully created a parody of those marks under the Lanham Act. . . . [M]edia coverage
from the New York Times and Huffington Post . . . recognize the humorous association
between the Herms Birkin and the Together Bag . . . noting the 'humor' and 'irony' behind
the bag, respectively."
Herms:"[They call it parody; we call it] a novel but pernicious form of infringement. . . .
[Apart from the usual harm caused by producing a confusing good,] Defendant's use dilutes
[Herms's] rights in its famous Birkin Bag Trademark by leading people to believe that
Herms has engaged in the licensing of the image of its bag in connection with inexpensive
goods (something that Herms does not do [and] would never do) and is thereby tarnishing
Herms' reputation for quality and commercial integrity."
T/F: "[First, as to the plaintiff's insults, case law in this court] stands for the proposition,
exceedingly relevant to this case, that even if plaintiff proves a lower price and lower quality
for defendant's good, it is not sufficient to [tarnish a plaintiff's trademark.] [But even more
importantly,] plaintiff has not shown -- and cannot show -- that the design of the Herms
Birkin bag is an enforceable trademark . . . . [T]he Amended Complaint's recitation of
'distinctive' characteristics . . . is far from sufficient to describe a protectable trade dress . . . .
Importantly, Herms has not alleged -- nor could it -- that the Together Bag is a knock-off of
the Herms Birkin bag. Nowhere does [the Complaint] use the words'counterfeit,' 'copy,'
'imitation,' 'copyright,' 'design patent,' or 'trade dress' . . . . There are no facts to support any
allegation that the designs of an Herms Birkin and the Together Bag look in any way alike,
or that a Together Bag could ever be confused with an Herms Birkin bag."
Herms: "The crux of Defendant's argument is that the [Amended Complaint] does not
sufficiently plead that the Birkin Bag Trademark is a protectable trademark. This is wrong on
both the facts and the law. . . . Courts in the Second Circuit have consistently approved
descriptions of trade dress similar to that pleaded by Herms [which includes] inter alia, (a) a
three lobed flap design with keyhole shaped notches to fit around the base of the handle, (b) a
dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps with
metal plates at their end that fit over a circular turn lock, and (d) a padlock, which sometimes
is placed within the turn lock and sometimes placed at the end of a leather fob. . . . Herms
has . . . alleg[ed] facts sufficient to give the defendant fair notice of what each claim is and
the grounds upon which each claim rests. Such factual matters are accepted as true in
considering a motion to dismiss, and these facts are sufficiently plausible to support the
claims."
T/F: "[W]hile plaintiff claims that it has pleaded trade dress 'in at least as much specificity' as
the parties [in past cases], plaintiff fails to fix and limit its trade dress description as required
by the Second Circuit [by] preced[ing] the list with 'inter alia,' which means 'amongst other
things.' . . . [This] was not a closed list that gives any notice as to the 'specific elements' that
compromise [sic] its trade dress."
The Court:"[No, I agree with Herms, at least at this very early stage of the case.] The
complaint adequately alleges a legally sufficient claim for relief."
And... scene. The court's ruling meant that the case would proceed to the
dreadeddiscovery stage, where the parties exchange information, documents, and often petty
barbs -- apparently an unappealing prospect for both parties, given the recent settlement. A
bit of a let-down for IP lawyers, truth be told: many were probably eager to see how the court
would deal with (in Herms's own words) this "novel" form of infringement parody product
depiction.
http://www.thefashionlaw.com/hermes-v-thursday-friday/
Herms v. Thursday Friday
By TFL | Published August 1, 2011
Herms filed a complaint against Southern California-based brand, Thursday Friday, Inc. this
week, stemming from the companys production of its Together Bag, a canvas tote adorned
with a screenprinted Birkin bag (minus the traditional Hermes logo markings). Herms
trademark infringement complaint is being backed by their allegation that the $35.00
Thursday Friday bag is creating consumer confusion. Thursday Friday has had quite a bit of
sucess since the launch of the Together Bag. The bag was noted in the New York Times
Style Magazine in January of this year, and likely as a result, the bags were backordered for
months.
Because the Thursday Friday bag lacks any Herms-Paris markings, Herms can likely only bring a
successful trade dress claim, as a trademark infringement case requires that the infringing party utilizes to
a trademark (or logo) without the authorization of the trademark owner. By bringing a trade dress
complaint, Herms would be able to claim that even though Thursday Friday did not print the Herms logo
on its Together Bag, the Birkin bag is so iconic that its appearance alone signifies the source of the
product to consumers. In essence, that an unmarked Birkin bag is famous enough to signify its source.
UPDATE: Looks like Thursday Friday got the point. The company has settled the lawsuit brought by
Herms after their motion to dismiss was denied [Case number: 1:11-cv-00580-AKH]. In addition to
permanently removing the Birkin version from their site, I wonder how much they had to pay up to Herms
to make this lawsuit go away
ANSWER AND AFFIRMATIVE DEFENSESTO FIRST AMENDED COMPLAINT OFDEFENDANT
THURSDAY FRIDAY, INC
Defendant Thursday Friday, Inc. (Thursday Friday), through its attorneys TheCimbalo Firm, P.C. and
Niehaus LLP, responds to the First Amended Complaint in thisaction as follows:

INTRODUCTION
1.

Thursday Friday admits that plaintiff creates, manufactures, and sells theBirkin handbag. Thursday
Friday lacks knowledge or information sufficientto form a belief as to the truth of the allegation of how many
womenrecognize the Birkin bags appearance. Thursday Friday denies the remainingallegations in Paragraph
1.2.

As to the allegations in Paragraph 2, the allegations set forth legal conclusionsthat do not require a response. To
the extent that a response is required,Thursday Friday denies the allegations in Paragraph 2.
PARTIES
3.

Thursday Friday admits the allegations in Paragraph 3, but states thatHermss address is believed to be 24 rue
du Faubourg St.-Honor 75008,Paris, France.4.

As to the allegations in Paragraph 4, the allegations set forth legal conclusionsthat do not require a response. To
the extent that a response is required,Thursday Friday denies the allegations in Paragraph 4