Written by attorney Charles E. Colman

Hermes v. Thursday Friday (a/k/a "The Birkin Tote case") in a nutshell

For those not active on the fashion blog circuit, the parties in the highly publicized case of Hermès 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]:

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."

And... scene. The court's ruling 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.

For those who want to inspect the quoted documents in their entirety, here are the Scribd links:

Hermès Complaint

Thursday Friday's Motion to Dismiss (with brief)

Hermès Opposition Brief to MTD

Thursday Friday's Reply Brief in Support of MTD

Judge Hellerstein's (very concise) order denying MTD

Thursday Friday's Answer to Hermès Complaint

Case docket showing that the parties have settled

Additional resources provided by the author

Free Q&A with lawyers in your area

Can’t find what you’re looking for?

Post a free question on our public forum.

Ask a Question

- or -

Search for lawyers by reviews and ratings.

Find a Lawyer