Hermès settles lawsuit against Thursday Friday over Birkin tote (continued!)

Posted by Charles Colman

Bet you didn't think LAW OF FASHION would get back to this, right?  Wrong.  Here's the fashion law equivalent of a rapid replay in the now-settled Hermès v. Thursday Friday lawsuit.  LOF will use a dialogue format, with passages taken piecemeal from the court filings linked to in the previous post; it won't be complete, by any means, but it's certainly easier than reading 100 pages of legal documents.  [Bracketed portions are LOF's additions, some for clarity and some for flavor.]  Here we go...

Hermès: "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 acquired secondary 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 Hermès 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 Hermès Birkin and the Together Bag . . . noting the 'humor' and 'irony' behind the bag, respectively."

Hermès: "[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 [Hermès's] rights in its famous Birkin Bag Trademark by leading people to believe that Hermès has engaged in the licensing of the image of its bag in connection with inexpensive goods (something that Hermès does not do [and] would never do) and is thereby tarnishing Hermès' 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 Hermès 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, Hermès has not alleged -- nor could it -- that the Together Bag is a knock-off of the Hermès 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 Hermès Birkin and the Together Bag look in any way alike, or that a Together Bag could ever be confused with an Hermès Birkin bag."

Hermès: "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 Hermès [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. . . . Hermès 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 Hermès, at least at this very early stage of the case.]  The complaint adequately alleges a legally sufficient claim for relief."

This meant that the case would proceed to the dreaded discovery 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 Hermès's own words) this "novel" form of infringement parody product depiction.

[This post does not constitute legal advice or form an attorney-client relationship with any person or entity.  The parties' briefs have intentionally been chopped apart and pieced back together, for ease of reading.  Although it should go without saying, the parties may not have intended the passages in the manner LOF has characterized them here.  To see the court filings in their entirety, click on the links to Scribd provided in LOF's previous post.]