hermes v. thursday friday answer

8/6/2019 Hermes v. Thursday Friday Answer

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Jeffrey L. Cimbalo (JC-6680)THE CIMBALO FIRM, P.C.1306 W. Main St.Richmond, VA 23220Tel: (804) 313-6266

[email protected] R. Niehaus (PN-3394)S. Gabriel Hayes-Williams (SH-0075)NIEHAUS LLP1359 BroadwaySuite 2001New York, NY 10018Tel: (212) 631-0223Fax: (212) 624-0223

Attorneys for DefendantThursday Friday, Inc.

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

____________________________________)

HERMS INTERNATIONAL, a French )corporation, )

)Plaintiff, )

) No. 11 Civ. 580 (AKH))) The Honorable Alvin K. Hellerstein

THURSDAY FRIDAY, INC., a California )corporation, ) JURY TRIAL DEMANDED

)Defendant. )

)____________________________________)

ANSWER AND AFFIRMATIVE DEFENSES

TO FIRST AMENDED COMPLAINT OF

DEFENDANT THURSDAY FRIDAY, INC.

Case 1:11-cv-00580-AKH Document 16 Filed 04/18/11 Page 1 of 16


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Defendant Thursday Friday, Inc. (Thursday Friday), through its attorneys The

Cimbalo Firm, P.C. and Niehaus LLP, responds to the First Amended Complaint in this

action as follows:

INTRODUCTION

1. Thursday Friday admits that plaintiff creates, manufactures, and sells theBirkin handbag. Thursday Friday lacks knowledge or information sufficient

to form a belief as to the truth of the allegation of how many women

recognize the Birkin bags appearance. Thursday Friday denies the remaining

allegations 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,




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10. Thursday Friday lacks knowledge or information sufficient to form a beliefabout the truth of the allegations in Paragraph 10, and they are consequently

denied.

11. Thursday Friday admits that the design of the Birkin bag contains the featureslisted, and more, but the remaining allegation in Paragraph 11 calls for a legal

conclusion, to which no response is required.

12. Thursday Friday admits the existence of a registration as shown in Exhibit B,which document speaks for itself. As to the remaining allegations in

Paragraph 12, the allegations set forth legal conclusions that do not require a

response. To the extent that a response is required, Thursday Friday denies

the allegations as to the remaining allegations in Paragraph 12.

13. Thursday Friday admits that the Birkin bag is often made of leather, but lacksknowledge or information sufficient to form a belief about the truth of the

remaining allegations in Paragraph 13, and they are consequently denied.

14. Thursday Friday lacks knowledge or information sufficient to form a beliefabout the truth of the allegations in Paragraph 14, and they are consequently

denied.

15. Thursday Friday admits that fashion magazines show the Birkin bag, as shownin Exhibit C, and those documents speak for themselves. Thursday Friday

lacks knowledge or information sufficient to form a belief about the truth of

the remaining allegations in Paragraph 15, and they are consequently denied.



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16. Thursday Friday admits that Exhibit D describes a plot of the television show,which document speaks for itself. Thursday Friday lacks knowledge or

information sufficient to form a belief about the truth of the remaining

allegations of Paragraph 16, and they are consequently denied.

17. Thursday Friday admits that Exhibits E and F show documents related to abook about Birkin bags, which documents speak for themselves. Thursday

Friday lacks knowledge or information sufficient to form a belief about the

truth of the remaining allegations in Paragraph 17, and they are consequently

denied.

18. Thursday Friday denies the allegations in Paragraph 18.19. Thursday Friday admits that the case cited was filed, and that any final

judgment speaks for itself. The remaining allegations in Paragraph 19 set

forth legal conclusions that do not require a response.

Defendants Acts

20. Thursday Friday denies the allegations in Paragraph 20, except ThursdayFriday admits that it is a relatively recently formed corporation.

21. Thursday Friday admits the allegations in Paragraph 21, except ThursdayFriday denies that the photographs on the Together Bags sides appear to be of

a genuine Herms Birkin, since genuine Herms Birkin bags have plaintiffs

word trademarks that are not present on the photographs.

22. Thursday Friday admits the allegations in Paragraph 22.23. Thursday Friday denies the allegations in Paragraph 23.24. Thursday Friday denies the allegations in Paragraph 24.



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25. Thursday Friday denies the allegations in Paragraph 25.COUNT ONE

(False Designation of Origin 15 U.S.C. 1125(a)(1)(A))

26. In response to the allegations in Paragraph 26, Thursday Friday restates andincorporates herein responses set forth above to each allegation in Paragraphs

1 through 25.

27. The allegations in Paragraph 27 set forth legal conclusions that do not requirea response. To the extent that a response is required, Thursday Friday denies

the allegations in Paragraph 27.



29. Thursday Friday denies the allegations in Paragraph 29.30. The allegations in Paragraph 30 set forth legal conclusions that do not require

a response. To the extent that a response is required, Thursday Friday denies


31. The allegation in Paragraph 31 sets forth a legal conclusion that does notrequire a response. To the extent that a response is required, Thursday Friday

denies the allegation in Paragraph 31.



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COUNT TWO

(Federal Trademark Infringement 15 U.S.C. 1114)


1 through 32.



34.






COUNT THREE

(New York Common Law Trademark Infringement and Unfair Competition)


1 through 36.





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39. Thursday Friday denies the allegations in Paragraph 39.40. The allegations in Paragraph 40 set forth legal conclusions that do not require





COUNT FOUR

(Dilution 15 U.S.C. 1125(c))


1 through 41.









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COUNT FIVE

(Dilution Under New York General Business Law Section 360-I [sic])


1 through 46.

48.

The allegations in Paragraph 48 set forth legal conclusions that do not require







PRAYER FOR RELIEF

The Prayer for Relief does not contain allegations of law or fact that require a

response from Thursday Friday. To the extent a response is required, Thursday Friday

denies the allegations of the Prayer for Relief. WHEREFORE, Thursday Friday denies

that plaintiff is entitled to any relief whatsoever and respectfully requests judgment

dismissing the Complaint with prejudice and with such costs and attorneys fees as may



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be allowed by law, and any further relief the Court deems appropriate.

AFFIRMATIVE DEFENSES

Thursday Friday asserts the following affirmative defenses in the alternative when

appropriate and without assuming the burden of proof or persuasion as to such defenses

that would otherwise rest on plaintiff. Thursday Friday restates and incorporates herein

responses set forth above to each allegation in Paragraphs 1 through 50.

First Affirmative Defense

The Complaint fails to state a claim upon which relief may be granted.

Second Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because Thursday Friday did not

make use of the Birkin Bag Trademark or the Birkin Closure trademark as a trademark,

or as a designation of source, or otherwise, as required by the Lanham Act.

Third Affirmative Defense


use photographs of any product made by plaintiff, nor any copyrighted material

whatsoever, for the artwork on the sides of the Together Bag.

Fourth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because Thursday Friday, if they

did make use of the Birkin Bag Trademark or the Birkin closure trademark, intended to

create and successfully created a parody of those marks under the Lanham Act, without

using any more of the mark than necessary, without using the mark as Thursday Fridays

own trademark, and without creating a likelihood of confusion or dilution of plaintiffs

mark(s). Exhibit 1 to this Answer consists of media coverage from the New York Times



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and Huffington Post that recognize the humorous association between the Herms Birkin

and the Together Bag, referring to the surrealist Ren Magritte painting Ceci nest pas

une pipe in the title of the article (meaning This is not a Birkin) and noting the

humor and irony behind the bag, respectively.

Fifth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because Thursday Friday, if they

did make use of the Birkin Bag Trademark or the Birkin closure trademark, did so in a

way that constitutes a fair use of one or both of those trademarks within the meaning of

the Lanham Act because the Together Bag does not use any more of the mark than

necessary to make that fair use, does not use the mark as Thursday Fridays own

trademark, and does not use the mark in a way that creates a likelihood of confusion with

or dilution of plaintiffs mark(s).

Sixth Affirmative Defense


intend to confuse, mislead, or deceive the public in any way, but instead to create a

parody.

Seventh Affirmative Defense


confuse, mislead, or deceive the public in any way.

Eighth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because plaintiff has suffered no

damage as a result of any action or inaction on the part of Thursday Friday.



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Ninth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because the Herms Birkin

contains word trademarks Herms Paris on the Birkin closure and elsewhere, and the

Together Bag does not contain either plaintiffs word trademarks nor any other word

trademark.

Tenth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because the presence of word

trademarks as part of the Birkin Bag Trademark and the Birkin Closure are the primary

means for consumers to identifying the Birkin bags source, and because the absence of

these word trademarks on any other bag than those made by plaintiff is sufficient to

distinguish it as one not made by or affiliated with plaintiff.

Eleventh Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because plaintiffs alleged

injuries were not legally or proximately caused by any acts or omissions of Thursday

Friday.

Twelfth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because there is no likelihood of

confusion between the Birkin Bag Trademark, or indeed any aspect of any Birkin bag,

and the Together Bag, and because the Together Bag and the Herms Birkin, with its

registered closure, are not at all similar to each other.



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Thirteenth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because there is no likelihood of

injury or actual injury of any type to plaintiff as a result of any of Thursday Fridays acts

or omissions.

Fourteenth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because the design of the Birkin

Bag Trademark is functional. The Chief Executive Officer of Herms, Robert Chavez,

stated in an interview in 2004 that I think one of the things that makes [the Herms

Birkin] so desirable is that it is very functional.

Fifteenth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because any and all of Thursday

Fridays actions alleged by plaintiff were lawful, justified, procompetitive, carried out in

furtherance of Thursday Fridays legitimate business interests, and/or constituted fair

business competition, to the extent Thursday Friday and plaintiff compete at all.

Sixteenth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because the design of the

Together Bag, and its use as a mark, is original and fanciful, and the photographs on its

sides ornamental and not a designator of source.

Seventeenth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because the Birkin Bag

Trademark and Birkin closure are not famous enough to merit protection from dilution,

and in any event are not famous aside from the registered marks visible on the Herms

Birkin and Birkin closure.



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Eighteenth Affirmative Defense

Plaintiffs claims are barred, in whole or in part, because the Birkin Bag

Trademark does not have secondary meaning separate and apart from the word

trademarks that appear on it.

Defenses Reserved

The foregoing affirmative defenses are raised by Thursday Friday without waiver

of any other defenses that may come to light during the discovery proceedings in this

case or otherwise. Thursday Friday hereby reserves the right to amend or supplement its

Answer to assert any other related defenses as they become available.

JURY DEMAND

Defendant demands a jury trial of all issues so triable.

PRAYER FOR RELIEF

Defendant prays that this Court dismiss all Counts in the First Amended



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Complaint with prejudice.

Dated: Richmond, Virginia

April 18, 2011

Respectfully submitted,

THE CIMBALO FIRM, P.C.

By:____/s/Jeffrey L. Cimbalo__________

Jeffrey L. Cimbalo (JC-6680)THE CIMBALO FIRM, P.C.1306 W. Main St.Richmond, VA 23220Tel: (804) 313-6266

[email protected] R. Niehaus (PN-3394)S. Gabriel Hayes-Williams (SH- 0075)NIEHAUS LLP1359 BroadwaySuite 2001New York, NY 10018Tel: (212) 631-0223Fax: (212) 624-0223

Attorneys for DefendantThursday Friday, Inc.



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CERTIFICATE OF SERVICE

I, Jeffrey L. Cimbalo, an attorney duly admitted to the bar of this court, and the Principal

of the law firm The Cimbalo Firm, P.C., Counsel to Defendant Thursday Friday, Inc., hereby

certify that on April 18, 2011, a true and correct copy of the Answer to the First Amended

Complaint which has been electronically filed with the Clerk of Court using the CM/ECF

system, which automatically sent e-mail notification to counsel of record to Andrew Baum at

[email protected].

Dated: April 18, 2011Richmond, Virginia

/s/ Jeffrey L. CimbaloJeffrey L. Cimbalo



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Case 1:11-cv-00580-AKH Document 16-1 Filed 04/18/11 Page 1 of 6


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hermes v. thursday friday answer

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