On January 28, 2011, Hermès filed a fashion law case against Thursday Friday Inc., a California Corporation. Thursday Friday’s “Together Bag” displays images of what appears to be the front, back, sides, and bottom of a birkin on all corresponding exterior sides of the Together Bag.
The complaint is filed under federal and state law for trademark infringement, false designation of origin, unfair competition, and dilution by tarnishment.
Hermès claims that the advertising and sale of the Together Bag is likely to create “confusion, mistake or deception, in that persons will believe that the bag is either sold by [Hermès] or has been licensed, sponsored or endorsed by [Hermès].”*
Discussion of the claims and possible defenses
The complaint alleges that (1) Thursday Friday sought to use an unfair advantage of the fame and reputation of the Birkin Bag, and (2) if people believe Hermès licensed the Birkin image in connection with inexpensive goods, Hermès’s reputation for quality and commercial integrity would be tarnished.
(1) This unfair competition claim seems valid because printing an unrecognizable generic handbag on a tote would seemingly be unlikely to produce the same automatic lure as would an already coveted luxe item such as a Birkin bag.
I ultimately side with Hermès but I think Thursday Friday may have a compelling argument with an aesthetic functionality defense.
This defense could also seek to have Hermès’s trademark invalidated. Such an argument can work when the aesthetic development of a good is intended to enhance the design and make the product more commercially desirable, because trademark protection may be denied since the consumer is innately drawn to the design. Still, I believe Hermès would be the victor because I think the Birkin design was only made desirable because of its connection to Hermès.
(2) Although it seems obvious that the Together Bag is not manufactured by Hermès craftsmen, it is plausible that people may think there is some sort of licensing agreement between the brands. Failure to voice out against a possibly infringing bag that is growing in popularity would further make it seem as though Hermès is allowing the copy of its creation. Also, given that Hermès has a trademark on its Birkin bag image, a failure to protect this intellectual property could later be grounds for loss of trademark protection.
Of course, parodies are a recognized defense to trademark infringement. And a parody defense can be taken even if the defendant did not initially intend a parody but can still argue an existing of a parody. Thursday Friday may have a viable argument by using a parody defense to trademark infringement.
It is of no shock that in Thursday Friday’s motion to dismiss filed in March, the company denied infringing any Hermès trademark and claimed that its product was not even a knockoff, but rather a commentary on the fashion industry:
“At the heart of this matter is plaintiff Hermes 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.”
Thursday Friday also claimed that the image on the Together Bag was not of a genuine Birkin bag because it does not depict the Hermès trademark present on a real Birkin bag. This claim was a shockingly weak one given that Birkin bags do not bear visible word trademarks on its exterior, and such was noted by Hermès in its complaint.
Just like the Louboutin v. YSL case, the trademark law issues in this case would have been a fun trial topic.
Unfortunately, in June 2011, the defendants in this fashion law case settled. The terms of the settlement were not released.
*Hermes International v. Thursday Friday Inc., case number 1:11-cv-00580, filed in the U.S. District Court for the Southern District of New York