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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.
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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,
Thursday Friday denies the allegations in Paragraph 4.
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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.
28. The allegations in Paragraph 28 set forth legal conclusions that do not requirea response. To the extent that a response is required, Thursday Friday denies
the allegations in Paragraph 28.
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
the allegations in Paragraph 30.
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)
32. In response to the allegations in Paragraph 32, Thursday Friday restates andincorporates herein responses set forth above to each allegation in Paragraphs
1 through 32.
33. The allegation in Paragraph 33 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 33.
34.
Thursday Friday denies the allegations in Paragraph 34.
35. The allegations in Paragraph 35 set forth legal conclusions that do not requirea response. To the extent that a response is required, Thursday Friday denies
the allegations in Paragraph 35.
36. The allegation in Paragraph 36 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 36.
COUNT THREE
(New York Common Law Trademark Infringement and Unfair Competition)
37. In response to the allegations in Paragraph 37, Thursday Friday restates andincorporates herein responses set forth above to each allegation in Paragraphs
1 through 36.
38. The allegations in Paragraph 38 set forth legal conclusions that do not requirea response. To the extent that a response is required, Thursday Friday denies
the allegations in Paragraph 38.
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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
a response. To the extent that a response is required, Thursday Friday denies
the allegations in Paragraph 40.
41. The allegation in Paragraph 41 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 41.
COUNT FOUR
(Dilution 15 U.S.C. 1125(c))
42. In response to the allegations in Paragraph 42, Thursday Friday restates andincorporates herein responses set forth above to each allegation in Paragraphs
1 through 41.
43. The allegation in Paragraph 43 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 43.
44. The allegations in Paragraph 44 set forth legal conclusions that do not requirea response. To the extent that a response is required, Thursday Friday denies
the allegations in Paragraph 44.
45. The allegations in Paragraph 45 set forth legal conclusions that do not requirea response. To the extent that a response is required, Thursday Friday denies
the allegations in Paragraph 45.
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46. The allegation in Paragraph 46 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 46.
COUNT FIVE
(Dilution Under New York General Business Law Section 360-I [sic])
47. In response to the allegations in Paragraph 47, Thursday Friday restates andincorporates herein responses set forth above to each allegation in Paragraphs
1 through 46.
48.
The allegations in Paragraph 48 set forth legal conclusions that do not require
a response. To the extent that a response is required, Thursday Friday denies
the allegations in Paragraph 48.
49. The allegations in Paragraph 49 set forth legal conclusions that do not requirea response. To the extent that a response is required, Thursday Friday denies
the allegations in Paragraph 49.
50. The allegation in Paragraph 50 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 50.
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
Plaintiffs claims are barred, in whole or in part, because Thursday Friday did not
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
Plaintiffs claims are barred, in whole or in part, because Thursday Friday did not
intend to confuse, mislead, or deceive the public in any way, but instead to create a
parody.
Seventh Affirmative Defense
Plaintiffs claims are barred, in whole or in part, because Thursday Friday did not
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
Dated: April 18, 2011Richmond, Virginia
/s/ Jeffrey L. CimbaloJeffrey L. Cimbalo
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