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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ) ) ) ) ) ) ) ) ) ) ) ) ) )

HERMÈS INTERNATIONAL, a French corporation, Plaintiff, v. THURSDAY FRIDAY, INC., a California corporation, Defendant.

No. 11 Civ. 580 (AKH) ORAL ARGUMENT REQUESTED

REPLY MEMORANDUM IN SUPPORT OF DEFENDANT’S MOTION TO DISMISS UNDER RULE 12(b)(6)

THE CIMBALO FIRM, P.C. Jeffrey L. Cimbalo (JC-6680) 1306 W. Main St. Richmond, VA 23220 Tel: (804) 313-6266 Paul R. Niehaus (PN-3394) S. Gabriel Hayes-Williams (SH-0775) NIEHAUS LLP 1359 Broadway Suite 2001 New York, NY 10018 Tel: (212) 631-0223 Fax: (212) 624-0223 Attorneys for Defendant Thursday Friday, Inc.

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TABLE OF CONTENTS PRELIMINARY STATEMENT ........................................................................................ 1 STATEMENT OF FACTS ................................................................................................. 2 ARGUMENT ...................................................................................................................... 3 I. II. Ashcroft v. Iqbal Dictates the Pleading Standard in this Case..................................... 3 Plaintiff Does Not Allege a “Birkin Bag Trademark” ................................................ 4 A. Plaintiff pleads an open set of distinctive design features ..................................... 4 B. Plaintiff does not plead its claimed design features are distinctive........................ 6 C. Plaintiff does not adequately allege secondary meaning of the unregistered trade dress ........................................................................................................... 7 D. Likelihood of confusion between the two marks is pleaded only in the most conclusory way................................................................................ 11 III. IV. V. VI. VII. Plaintiff Does Not Plead “Use” of the Claimed “Birkin Bag Trademark”................. 12 Plaintiff Does Not Plead a “Colorable Imitation” of its Registered Mark ....................................................................................................................... 15 The Federal Dilution Claim Is Inadequately Pleaded ............................................... 17 Plaintiff Does Not Plead a Cause of Action for New York Common Law Trademark Infringement or Unfair Competition ...................................................... 17 The State Dilution Claim Is Inadequately Pleaded ................................................... 18

CONCLUSION ................................................................................................................. 19

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TABLE OF AUTHORITIES Page(s) CASES 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005) .............................................................................. 12, 13 Abercrombie & Fitch Co., et al., v. Moose Creek Inc., et al., 468 F.3d 629 (9th Cir. 2007) ................................................................................... 16 American Steel Foundries v. Robertson, 269 U.S. 372, 46 S. Ct. 160 (1926) .......................................................................... 11 Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009) ...................................................................................... 3, 4, 7 Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 127 S. Ct. 1955 (2007) .................................................................. 3, 12 Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217 (S.D.N.Y. 2004) .................................................................. 8, 14 Clinique Laboratories, Inc. v. Dep Corp., 945 F. Supp. 547 (S.D.N.Y. 1996)........................................................................... 17 Coach, Inc. v. We Care Trading Co., 67 Fed. Appx. 626, 2002 U.S. App. LEXIS 28143 *1 (2d Cir. May 20, 2002) .....................................................................................5, 8, 14 Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979) .................................................................................... 14 In re Edward Ski Prods., Inc., 49 USPQ2d 2001 (TTAB 1999) .............................................................................. 10 Grotrian, Helfferich, Shulz, Th. Steinweg Nachf. v. Steinway and Sons, 523 F.2d 1331 (2d Cir. 1975) .................................................................................. 11 Heller, Inc. v. Design Within Reach, Inc., No. 09 Civ. 1909, 2009 WL 2486054 *1 (S.D.N.Y. Aug. 14, 2009) .................. 4, 6, 7 Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 102 S. Ct. 2182 (1982) ........................................................................ 7

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Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373 (2d Cir. 1997) ...................................................................................... 5 McLean v. Fleming, 96 U.S. 245, 24 L.Ed. 828 (1877) ............................................................................ 16 Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989) .................................................................................. 18 Metrokane Inc. v. Built NY, 2008 U.S. Dist. LEXIS 107937 *1 (S.D.N.Y. September 3, 2008) ....................5, 6, 14 In re Mogen David Wine Corp., 372 F.2d 539 (C.C.P.A. 1967) ................................................................................. 10 Nat’l Lighting v. Bridge Metal Indus., LLC, 601 F. Supp.2d 556 (S.D.N.Y. 2009) ..................................................................... 5, 7 Rescuecom v. Google, 562 F.3d 123 (2d Cir. 2009) .................................................................................... 13 Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037 (2d Cir. 1980) .................................................................................. 18 Sherwood 48 Assoc. v. Sony Corp. of Am., 76 Fed. Appx. 389 (2d Cir. 2003) .............................................................................. 4 Shevy Custom Wigs, Inc. v. Aggie Wigs, No. 06 Civ. 1657, 2006 WL 3335008 *1 (E.D.N.Y. Nov. 17, 2006) .......................... 6 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) .................................................................................................. 13 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S. Ct. 2753 (1992) .................................................................. 8, 14 In re Visual Communications Co., 51 USPQ2d 1141 (TTAB 1999) .............................................................................. 10 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 U.S.P.Q.2d 1065 (2000) ............................................................... 13 Western Pub. Co. v. Rose Art Industries, Inc., 910 F.2d 57 (2d Cir.1990) ....................................................................................... 12

iii

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Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001) .................................................................................. 5, 6 U.S.C.A. 15 U.S.C.A. §1114(1)(a) (2010).......................................................................................... 15 15 U.S.C.A. § 1125(a)(1)(A) (2010) ................................................................................... 15 15 U.S.C.A. § 1125(a)(3) (2010)........................................................................................... 4 15 U.S.C.A. § 1127 (2010).......................................................................................12, 15, 16 STATUTES AND REGULATIONS Fed. R. Evid. 1002, 1006....................................................................................................... 9 Fed. R. Civ. P. 12(b)(6)......................................................................................................... 1 Trademark Rule 2.51(a)(1).................................................................................................... 9 PERIODICAL PUBLICATIONS Stacey L. Dogan & Mark A. Lemley, Grounding Trademark Law through Trademark Use, 98 Trademark Reporter no. 6 1345 (Nov.-Dec. 2008) ...................................... 12 Thomas P. Gressette, Jr., The Heightened Pleading Standard of Bell Atlantic Corp. v. Twombly and Ashcroft v. Iqbal: A New Phase in American Legal History Begins, 58 Drake L. Rev. 401 (2010) ..................................................................................... 3 William P. Kratzke, Normative Economic Analysis of Trademark Law, 21 Memphis St. U.L. Rev. 199 (1991)............................................................................................... 13 NON-PERIODICAL PUBLICATIONS 1 Jeffrey A. Handelman, Guide to TTAB Practice § 10.11 (2008) ......................................................................................................... 11 James Love Hopkins, The Law of Trademarks, Tradenames, and Unfair Competition § 123 (3d ed. 1917) ................................................................................................. 15 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 8:2, 19:58, 15:16 (multivolume treatise) ..................................................13, 16, 18 iv

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T.M.R.P. 2.52(b)(2) ............................................................................................................ 16 7 The Oxford English Dictionary, 1081 (2d ed. 1989) ........................................................... 5

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Defendant Thursday Friday, Inc. (“Thursday Friday”) respectfully submits this reply memorandum of law in support of its motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. PRELIMINARY STATEMENT After filing a Complaint, and filing an Amended Complaint, plaintiff has finally clarified that the basis for its claims is an alleged unregistered trade dress infringement. Having staked out that position, plaintiff’s Opposition brief (“Opp.”) then must labor mightily to distract the Court from the most seminal fact in this case as to trade dress: that the overall image of the Together Bag does not in any way resemble the overall look and feel of a bag in the Hermès Birkin line. Even if the images on the sides of the Together Bag were those of a genuine Hermès Birkin, complete with word marks,1 a viable claim for trade dress violation requires that the component distinctive parts of the total image of a product be adopted and “used.” The Amended Complaint does not allege that Thursday Friday adopted even one stated feature of the Hermès Birkin trade dress, as the Together Bag does not have 1) a three-lobed flap design, 2) a dimpled triangular profile, 3) a closure at all with any features, 4) a circular turn lock for the closure to fit into, 5) a leather fob, or 6) a padlock (Am. Compl. ¶ 11), but instead an open, boxy tote bag design and profile and none of the other features. As such, and in addition to failing to articulate a precise trade dress, plaintiff cannot allege that Thursday Friday has created a product that infringes on its claimed trade dress. Its claims of the existence and infringement or dilution of the “Birkin Bag Trademark” thus fail, and with it any protection of it under federal or state statute or common law.
1

Now that plaintiff is forced to admit the presence of word trademarks, it states they are “tiny” and “irrelevant.” (Opp. at pp. 12-13.) Plaintiff admits, though, that the word marks are on two of the four distinctive elements it actually states are part of its trade dress, the closure and the padlock. (Id. at p. 12.) Resolution of images is limited by this Court’s ECF system, as it would make some attachments too large to file, but here showing the original images, without magnification, was sufficient to show the trademarks.

1

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Similarly, nothing in the Amended Complaint or plaintiff’s Opposition pleads or argues that the images on the Together Bag can constitute a “colorable imitation” or “use” of plaintiff’s three-dimensional registered closure design, since the design is of an object, by the registration’s terms, that has physical moving parts and serves a particular purpose of closing a flap on a handbag. The physical features of the Together Bag do not include either a strap or a flap. Just as plaintiff cannot plausibly state that disconnected photographs of a non-Hermès bag can serve to replicate the overall look and feel of the Hermès Birkin, the use of a photograph of a closure on a bag that has no closure at all cannot possibly serve as a “colorable imitation” or “use” of plaintiff’s trademark, plaintiff’s attempts to argue the contrary notwithstanding. Under Supreme Court precedent, none of plaintiff’s several conclusory allegations in the Amended Complaint, including legal conclusions, are entitled to the presumption of truth.2 What remains is a thin gruel for the Court to analyze, but entirely appropriate to be analyzed under Iqbal and found to be implausible either on their face or after the application of the Court’s experience and common sense. STATEMENT OF FACTS The relevant facts are set forth in the memorandum in support of this motion. Plaintiff also adds three relevant facts: that plaintiff is attempting to plead an unregistered trade dress claim, which was far from clear (Opp. at p. 5 n.2); that plaintiff admits that there are word trademarks on the Hermès Birkin (Opp. at pp. 12-13); and that plaintiff believes itself to have been awaiting a trademark registration certificate for parts of the Hermès Birkin’s design from the United States Patent and Trademark Office since February 11, 2011. (Opp. Exh. A.)

2

Throughout, plaintiff hopes its legal conclusions will be presumed true: “If the Birkin Bag design is a valid trademark or trade dress – as must be assumed for the purposes of this motion . . . .” (Opp. at p. 15) (to choose one example). Iqbal indicates that the opposite is true. See infra at pp. 3-4.

2

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ARGUMENT I. Ashcroft v. Iqbal Dictates the Pleading Standard in this Case. Plaintiff’s Opposition opens with an attack on Thursday Friday’s reliance on Ashcroft v. Iqbal. (Opp. at p. 4 n.1.) Thursday Friday’s reliance is well-placed, however, since Iqbal unequivocally extended the Twombly pleading standards to all civil cases, was cited 8500 times in the District Courts and 400 times in the Circuit Courts of Appeals in its first year alone, and has been referred to as the “most important procedural ruling since Conley v. Gibson.” Thomas P. Gressette, Jr., The Heightened Pleading Standard of Bell Atlantic Corp. v. Twombly and Ashcroft v. Iqbal: A New Phase in American Legal History Begins, 58 Drake L. Rev. 401, 402 (2010). In extending the Twombly pleading standards to all federal civil cases, the Supreme Court précised its holding in the syllabus: Two working principles underlie Twombly. First, the tenet that a court must accept a complaint’s allegations is true is inapplicable to threadbare recitals of a cause of action’s elements, supported by mere conclusory statements. [Twombly], at 555, 127 S. Ct. 1955. Second, determining whether a complaint states a plausible claim is context-specific, requiring the reviewing court to draw on its experience and common sense. Id., at 556, 127 S. Ct. 1955. A court considering a motion to dismiss may begin by identifying allegations that, because they are mere conclusions, are not entitled to the assumption of truth. While legal conclusions can provide the complaint’s framework, they must be supported by factual allegations. When there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief. Ashcroft v. Iqbal, 129 S. Ct. 1937, 1940-41 (2009); see also id. at 1949-50; see also Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 599, 127 S. Ct. 1955, 1964-65 (2007) (“While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, a plaintiff's obligation to provide the ‘grounds’ of his ‘entitle[ment] to relief’ requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not

3

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do.”) (citations omitted). Using this method, this Court need not consider the myriad conclusory allegations in the Amended Complaint that are completely devoid of factual enhancement. Id. at 1951 (“It is the conclusory nature of respondent’s allegations, rather than their extravagantly fanciful nature, that disentitles them to relief.”). With those allegations that remain, this Court may use its experience and common sense to analyze whether those residual allegations make plaintiff’s claims of a trademark, of infringement, and of dilution plausible. Id. As set forth below, the Amended Complaint wholly fails this common sense test. II. Plaintiff Does Not Allege a “Birkin Bag Trademark.” Now that plaintiff has revealed that its Amended Complaint intended to plead infringement and dilution of an unregistered trade dress, analysis of its inadequacy is straightforward.3 The parties agree on the legal standard expressed in Sherwood 48 Assoc. v. Sony Corp. of Am., 76 Fed. Appx. 389, 391 (2d Cir. 2003).4 (Defendant’s Memorandum in Support of Motion to Dismiss (“Mem.”) at p. 11; Opp. at p. 17.) Though plaintiff does not discuss the existence or adequacy of the facts pleaded for each element, it nevertheless concludes that “all four of these requirements” are satisfied. (Opp. at 17.) In fact, none are. A. Plaintiff pleads an open set of distinctive design features. Plaintiff does not deny or address that Heller v. Design Within Reach articulates the specificity standard required to plead the existence of a protectable unregistered trade dress. Heller, Inc. v. Design Within Reach, Inc., No. 09 Civ. 1909 (JGK), 2009 WL 2486054 *1 at *6
3

Thursday Friday did not suggest that there is anything talismanic about the term “trade dress,” just that it was difficult to tell that the Amended Complaint was trying to plead one, since the statute plaintiff attempts to sue under uses the term “trade dress infringement” for certain types of actions under that chapter but the Amended Complaint does not. 15 U.S.C.A. § 1125 (a)(3) (2010). 4 Plaintiff “must 1) offer a “precise explanation of the character and scope of the claimed trade dress; 2) allege that the claimed trade dress has secondary meaning; 3) allege a likelihood of confusion between the plaintiff’s good and the defendant’s; and 4) allege that the claimed trade dress is non-functional.” Id.

4

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(S.D.N.Y. 2009). As to the first Sherwood factor, and as in Heller, plaintiff must articulate “the specific elements which compromise its distinct dress.” Id., citing Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 379 (2d Cir. 1997). Moreover, the list of design elements must be fixed and finite. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 117 (2d Cir. 2001). So while plaintiff claims that it has pleaded trade dress “in at least as much specificity” as the parties in a number of cited cases (Opp. at p. 7),5 plaintiff fails to fix and limit its trade dress description as required by the Second Circuit, and as required to permit the Court to properly analyze the claim.6 Here, plaintiff states four broad features with sub-features that are supposedly distinctive, but precedes the list with “inter alia,” which means “amongst other things.” (Am. Compl. ¶ 11); 7 The Oxford English Dictionary, at p. 1081 (2d ed. 1989) (under definition of “inter”). By these prefatory words, which are nowhere disclaimed in the Opposition, and its further statement that what they have identified are “at least four specific distinctive elements of the Birkin Bag,” plaintiff admits that its claimed trade dress is an open set. (Opp. at p. 18) (emphasis added). Perhaps the Court and Thursday Friday are expected to guess the other elements from the photographs attached (Opp. at. p. 8), but in any event, what plaintiff pleaded was not a closed list that gives any notice as to the “specific elements that compromise its trade dress.”7 Plaintiff fails

5

See, e.g., Coach, Inc. v. We Care Trading Co., 67 Fed. Appx. 626, 2002 U.S. App. LEXIS 28143 *1 at *6 (2d Cir. May 20, 2002) (set of four elements claimed in trade dress); Metrokane Inc. v. Built NY, 2008 U.S. Dist. LEXIS 107937 *1, **44-46 (S.D.N.Y. September 3, 2008) (set of four elements described). 6 Heller, decided by this Court after Metrokane, clearly used Landscape Forms as imposing a requirement of proof that affects what must be pleaded in trade dress cases. The guidance sought by the Magistrate Judge for pleading standards in Metrokane when only summary judgment cases were available (Opp. at p. 7) need not concern this Court, as Heller has settled whatever ambiguity existed at the time of Metrokane. 7 As to those design features not listed in the text of the Amended Complaint but claimed by plaintiff to have still been pleaded, they cannot but be guessed at by reference to the images attached. Nat’l Lighting v. Bridge Metal Indus., LLC, 601 F. Supp.2d 556, 563 (S.D.N.Y. 2009) (where a laundry list and photographs were contained in a complaint, court stated that it “could not be expected to distill from a set of images those elements that are common to a line of products and both distinctive and non-functional”). However, even if more may be discerned from the photos, from the top to the bottom of the Hermès Birkin, from its stiff long leather handles to its protruding metal

5

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to specify its supposed trade dress not because it did not plead enough features, it fails because it does not cut off the list at all, which is the essence of fair notice in this context. The Second Circuit has identified four reasons for the requirement of a finite description of a plaintiff’s trade dress: First, without a specification of the design features that compose the trade dress, different jurors viewing the same line of products may conceive the trade dress in terms of different elements and features . . . . Second, no juror can evaluate secondary meaning, overbreadth or nonfunctionality without knowing precisely what plaintiff is trying to protect . . . . Third, . . . the identification of design elements that compose the asserted trade dress will . . . assist in winnowing out claims that are overbroad as a matter of law .... Fourth, “[c]ourts will . . . be unable to shape narrowly tailored relief if they do not know what distinctive combination of ingredients deserve protection.” . . . And if a court is unable to identify what types of design will infringe a trade dress, how is a competitor . . . to know what new designs would be subject to challenge . . . ? Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 117 (2d Cir. 2001), cited in Metrokane, 2008 U.S. Dist. LEXIS 107937 at **42-43. Here, all four concerns are implicated where plaintiff has failed to close the set of features at all, no matter how many are listed. Thus, plaintiff has failed to satisfy the requirement that it settle on a closed list of factors that make up its trade dress such that their combined effect on the total image of the bag may be analyzed, and a narrow remedy for infringement fashioned. B. Plaintiff does not plead its claimed design features are distinctive. Plaintiff must, but failed utterly to, plead “not just which features are distinctive but also how they are distinctive.” Heller, 2009 WL 2486054 at *6, citing Shevy Custom Wigs, Inc. v. Aggie Wigs, No. 06 Civ. 1657, 2006 WL 3335008 *1, at *5 (E.D.N.Y. Nov. 17, 2006) (emphases

feet, plaintiff would only be claiming, without the embarrassment of actually having to claim, even more features that it does not share with the Together Bag.

6

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in original). Plaintiff does not address this requirement in its Opposition. It is not the place of the movant on a motion to dismiss to analyze whether each listed feature is in fact distinctive, and indeed it is impossible to analyze the unlisted but allegedly distinctive features indicated by “inter alia” setting off the list of features and repeated throughout the Opposition. But it is sufficient to say that the Amended Complaint contains no facts whatsoever that state how the elements of its supposed trade dress it does list are distinctive, as required. Relatedly, plaintiff also does not plead any facts to support its formulaic conclusion that the design of the Hermès Birkin bag is non-functional. (Am. Compl. ¶ 11); see also Nat’l Lighting, 601 F. Supp. 2d at 563 (complaint should make clear elements that are both distinctive and non-functional). This naked conclusion is not entitled to the presumption of truth, Ashcroft v. Iqbal, 121 S. Ct. at 1949, and no other facts support any inference relating to it, such as whether the component parts of its claimed trade dress are themselves non-functional. Indeed, a number of the elements it lists, such as a highly functional “padlock” (Am. Compl. ¶ 11), appear to directly contradict this conclusory allegation. For this reason also, plaintiff fails to offer “a precise expression of the character and scope of the claimed trade dress,” or to allege any facts in support that “the claimed trade dress is non-functional” and dismissal is appropriate under either the first or fourth Sherwood prongs, or both. Heller, 2009 WL 2486054 at *5. C. Plaintiff does not adequately allege secondary meaning of the unregistered trade dress. To establish secondary meaning, “a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n. 11, 102 S.Ct. 2182, n. 11 (1982). In the trade dress context the product feature requiring secondary meaning is the “total image” or “overall appearance” of the product, and

7

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may include may include features such as size, shape, color, color combinations, texture and graphics. Two Pesos, 505 U.S. at 765 n. 1, 112 S. Ct. at 2755 n.1. Plaintiff properly expresses six elements that may indicate secondary meaning, and acknowledges that its pleading must include at least some of them. (Opp. at p. 9.)8 But plaintiff concedes that it does not allege advertising expenditures sufficient to bolster its claims of secondary meaning for the “Birkin Bag Trademark.” (Id.) Plaintiff does not state any attempts to plagiarize the mark, nor the scope of that alleged plagiarism,9 other than a vague reference that two juries, apparently in the same case, came to some finding of distinctiveness of some design features of the Hermès Birkin. (Am. Compl. ¶ 10.) It does not even cite an opinion in the case. Moreover, plaintiff claims it alleges unsolicited media coverage (Id.), but nowhere is that coverage alleged in the Amended Complaint to be unsolicited, and in fact may well be heavily solicited, eliminating that possible factor as well. Because it also does not claim that there are any consumer studies in existence that show secondary meaning, plaintiff does not plead any aspect of four of the six elements it cites to test for secondary meaning. (Opp. at p. 9.) This itself renders its claim of secondary meaning implausible. Additionally, plaintiff cites cases where those very elements that it does not plead at all were enormously influential toward a finding of secondary meaning. Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217, 224 (S.D.N.Y. 2004) (noting that Cartier spent $500,000 - $2,000,000 per year advertising and a “considerable amount of unsolicited advertising in the form of media commentary”); Coach, 67 Fed. Appx. at 630, 2002 U.S. App. LEXIS 28143 at *6 (noting “Coach’s promotional efforts,” “inherently distinctive” elements, and
8

Those features are 1) advertising expenditures, 2) consumer studies linking the mark to the source, 3) unsolicited media coverage of the product, 4) sales success, 5) attempts to plagiarize the mark, and 6) length and exclusivity of the mark’s use. Id. 9 Plaintiff claims that “intentional copying” can overwhelm this analysis (Opp. at pp. 13-14), but pleads no facts relating to similarity that meet any legal definition of copying, putting aside intent. See infra at pp. 13-18.

8

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200,000 copies per year being plagiarized). None of these factors important to the Coach and Cartier courts are alleged by plaintiff, and one of them, inherent distinctiveness, is expressly disclaimed as irrelevant in contemporary cases. (Opp. at p. 12 n.7.) Nor can an uncited, apparently unreported, and presumably not precedential jury finding in another case based on an unstated trade dress operate to prove secondary meaning. (Opp. at pp. 10-11.) Plaintiff had an opportunity to state any authority that emanates from those jury findings that may have some res judicata or other effect on this analysis. That it did not do so means that the jury findings in some other case have no effect at all, and are simply another legal conclusion offered without factual enhancement. Equally perplexing is plaintiff’s inclusion of partial correspondence with the USPTO regarding what seems to be plaintiff’s application to register some aspects of its trade dress.10 It offers the correspondence as a constructive registration, as no certificate has been issued. (Opp. Exh. A.) Even if a routine notification of non-final status can be a “public document,” it is incomplete, so judicial notice is inappropriate. Fed. R. Evid. 1002, 1006. Its incompleteness masks what details the application is seeking to register, so it is also irrelevant, because the image offered is not clearly coterminous with a fixed set of distinctive design features, or with those it chose to list in the Amended Complaint. (Opp. Exh. A.) And, pursuant to Trademark Rule 2.51(a)(1), which provides that, “in an application under section 1(a) of the Act” (as is the case herein), “the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services,” the fact that the drawing, from what
10

To the extent the correspondence is relevant at all, it is to show the seemingly endless reservoir of bad faith of plaintiff in imposing costs on the defendant to first deal with an obvious factual misstatement and then to answer or defend Counts relating to the unregistered “Birkin Bag Trademark” when plaintiff knew as of February 11, 2011 (six days before the Amended Complaint was filed), that a certificate would issue, which would obliterate its unregistered trade dress claims. (Opp. p. 11 n.6.) To plead and maintain a cause of action that a plaintiff knows will be legally frivolous in the very near future (or right now, if plaintiff’s judicial notice proffer is to be considered) is the very definition of a meritless legal claim, and provides a strong argument for dismissing all counts relating to the claimed unregistered “Birkin Bag Trademark” in itself.

9

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can be seen of the correspondence, does not contain the “Hermès-Paris” word mark on the closure, implies that plaintiff may have been just as forthcoming with the USPTO about the presence of word marks as it was in the original Complaint (that is, until a sanctions motion was about to issue). Id.11 Further, the chimera that proof of a registration of a trade dress provides an argument not to dismiss an unregistered trade dress claim (because registered trade dresses are claimed not to need to prove secondary meaning) is so devoid of legal merit as to be totally frivolous. The content of the correspondence, if accepted as true, provides ample reason to dismiss all claims relating the “Birkin Bag [unregistered] Trademark” at once. Nowhere does Thursday Friday state that the presence of word trademarks causes there to be no secondary meaning. (Opp. at p. 12.) Instead, Thursday Friday merely cites the long line of cases that any secondary meaning of other parts of an object that also contains word trademarks must plead and prove secondary meaning separate and apart from those word marks. (Mem. at pp. 8-9.) This line of cases has long applied to trade dress. See In re Mogen David Wine Corp., 372 F.2d 539 (C.C.P.A. 1967) (wine bottle design does not create a “commercial impression separate and apart from the word marks.”); In re Visual Communications Co., 51 USPQ2d 1141, 1145-46 (TTAB 1999) (no evidence of promotion of product configuration apart from word marks, so no secondary meaning found); In re Edward Ski Prods., Inc., 49 USPQ2d 2001, 2005 (TTAB 1999) (“The deficiency in applicant’s claim of acquired distinctiveness lies in the absence of any evidence of the promotion by applicant of the configuration of its ski masks as a trademark. While the product design may be shown on each and every advertisement, there is no indication that a potential purchaser would view this as more than a picture of the goods.

11

Should discovery occur, and it be shown that in either registration, the word trademarks present on the Hermès Birkin were not revealed to the USPTO upon application, Thursday Friday will seek to amend its responsive pleading to add a counterclaim for cancellation of that registration, as the registration(s) may have been procured by fraud.

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The shape of the mask has not been advanced as a means of recognizing applicant as the source of the product; only the word mark THE MASQUE has been used in the manner of a trademark.”). See also 1 Jeffrey A. Handelman, Guide to TTAB Practice § 10.11 at p. 10 (2008) (“[I]n a product configuration case, the relevant secondary-meaning inquiry is whether the product’s shape – apart from any word trademark appearing on the product – signifies a single producer. The key question is whether the shape itself creates a commercial impression as a signifier of source separate and apart from any labeling appearing on the product.”). The Amended Complaint cannot be seen to plead secondary meaning apart from the word marks, which could explain why plaintiff could not bring itself to acknowledge the word marks in either the Complaint or the Amended Complaint. Further, Thursday Friday’s Memorandum shows how plaintiff’s claims of secondary meaning are simple conclusions with no additional factual enhancement as to its formulas and labels, providing no substance for the Court to analyze on the point. (Mem. at pp. 13-14). Accordingly, and for all these reasons, secondary meaning is not adequately pleaded as to the “Birkin Bag Trademark.” D. Likelihood of confusion between the two marks is pleaded only in the most conclusory way. In its initial Memorandum, Thursday Friday made clear how conclusory and devoid of factual content plaintiff’s claims of likelihood of confusion between the two bags are. (Mem. at pp. 17-18 n.5.) None are entitled to the presumption of truth, and no other facts can be said to enhance those conclusions sufficient to raise the plausibility, in the Court’s mind, that likelihood of confusion is “probable.” American Steel Foundries v. Robertson, 269 U.S. 372, 383, 46 S. Ct. 160 (1926) (“[W]e are of the opinion that it does not appear that the use of the word as a trademark upon the goods of the plaintiff will probably confuse or deceive the public, . . .”); Grotrian, Helfferich, Shulz, Th. Steinweg Nachf. v. Steinway and Sons, 523 F.2d 1331, 1342 n.20 (2d Cir.

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1975) (“A mere possibility [of confusion] would not be enough.”). Nor is it plausible working from the non-conclusory allegations that Thursday Friday’s supposed use of the plaintiff’s overall image of the Together Bag is likely to confuse “an appreciable number of ordinary prudent purchasers as to the source of the product or service in question.” Western Pub. Co. v. Rose Art Industries, Inc., 910 F.2d 57, 59 (2d Cir.1990). Merely arguing that it recited the legal formula is not enough. (Opp. at p. 19) (“Hermès’ [sic] claim . . . includes allegations that Defendant’s acts are likely to . . . cause confusion among consumers.”); Twombly, 550 U.S. at 559, 127 S. Ct. at 1964-65. Plaintiff thus fails to adequately plead likelihood of confusion. III. Plaintiff Does Not Plead “Use” of the Claimed “Birkin Bag Trademark.”

Plaintiff argues in its Opposition that “Defendant affixes . . . images” of the Hermès Birkin and that this constitutes affixing its trade dress to constitute “use” under the Lanham Act. (Opp. at p. 18.) Plaintiff does not anywhere allege that Thursday Friday used plaintiff’s actual trade dress, which in this context can only mean that it uses the elements that make up the “overall image” of the Hermès Birkin as is necessary to make out a trademark “use.” 15 U.S.C.A. § 1127 (2010). To the contrary, plaintiff simply conflates “use” and “in commerce” to bootstrap its arguments about the commercial sale of the Together Bag and “use.” (Opp. at pp. 18-19.) This is exactly the opposite of what the Second Circuit requires, that “use,” “in commerce” and “likelihood of confusion” be pleaded separately and have substance. 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 412 (2d Cir. 2005). Generally speaking, “If a party adopts its competitor’s protected, non-functional product configuration in a way that confuses potential customers over source, sponsorship, or affiliation, it is engaged in a trademark use of that trade dress.” Stacey L. Dogan & Mark A. Lemley, Grounding Trademark Law through Trademark Use, 98 Trademark Reporter no. 6 1345, 1376

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(Nov.-Dec. 2008). The Second Circuit’s separate and iconoclastic “use” pleading requirement, derived from its reading of the statutory meaning of the terms “use” and “in commerce,” can only mean, in trade dress cases, that defendant adopted its competitor’s protected, non-functional product configuration, without reference to likelihood of similarity. 1-800 Contacts, 414 F.3d at 412 (“absent improper use of 1-800’s trademark, however, such conduct does not violate the Lanham Act”), citing TrafFix Devices, Inc. v. Mktg. Displays, inc., 532 U.S. 23, 29, 121 S. Ct. 1255 (2001).12 The Second Circuit’s requirement of pleading “use” has particular value where, as here, there is no “multiplicity of similarities” of the two trade dresses to analyze at all and, ideally, disposed early in the litigation process. 1 McCarthy on Trademarks § 8:2 at 8-10 (“It is the ‘multiplicity of similarities,’ each of which may be nonexclusive with plaintiff, that may result in unfair competition.”) (citation omitted); Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 214, 54 U.S.P.Q.2d 1065, 1069 (2000) (need for clear rules in trademark law to allow summary disposition of anti-competitive strike suits). Plaintiff’s Opposition does not even acknowledge the requirement. To further stretch the Lanham Act beyond any language or conceivable intent, plaintiff asserts that even though the photographed bag is a “lookalike” bag (though one without word trademarks (Opp. at 19)), there is some type of derivative infringement occurring. That is, plaintiff has apparently alone determined that the bag photographed for the sides of the Together
12

Nothing in the expansive analysis of the meaning of the terms “use” and “in commerce” as defined in 15 U.S.C.A. § 1127, and as applying to infringement claims under 15 U.S.C.A. §§ 1114 and 1125, can be seen to be restricted to the facts of 1-800 Contacts or its progeny in the keyword advertising context. The requirement of pleading use, meaning “use” as separate from “in commerce” or “likelihood of confusion,” is applicable to all Lanham Act cases. Id.; Rescuecom v. Google, 562 F.3d 123, 127 (2d Cir. 2009) (1-800 Contacts court “ruled that a complaint fails to state a claim under the Lanham Act” unless it follows 1-800 Contacts’s precedential definition of “use in commerce.”). Important also was the 1-800 Contacts court’s citation of William P. Kratzke, Normative Economic Analysis of Trademark Law, 21 Memphis St. U.L. Rev. 199, 223 (1991), which “criticiz[ed] importation into trademark law of “unjust enrichment” and “free riding” theories based on a trademark holder’s goodwill.” Id. at 411. That importation is exactly what plaintiff seeks as punishment for “simply riding on the reputation and recognition of the Birkin Bag to sell its otherwise generic tote bags” (Am. Compl. ¶ 1), and provides another reason for dismissal of the counts related to the claimed “Birkin Bag Trademark.”

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Bag infringes on its trade dress, so any photograph of that bag must also do that. These judgments by plaintiff did not make the text of the Complaint, however, and would only have added to the legal frivolity and practical implausibility of its claims if they had. The one case of relatively ancient vintage offered as authority on the matter of images, Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979), actually involved the creation and (vulgar) depiction by defendant of a three-dimensional and almost identical copy of all elements of the plaintiff’s trade dress, where defendant did not argue that the “use” requirement was at issue, and the case turned on damage to reputation and consumer confusion. Id. at 205. Plaintiff’s suggestion that Dallas Cowboys applies in this case denies the fact that here, the product in question is a three-dimensional bag that may be compared to plaintiff’s trade dress directly. Far from “miss[ing] the point” (Opp. at p. 15), the existence of an infringing trade dress, created by the adoption of the senior trade dress’s features, is a requirement for a trade dress infringement case. The only relevant point is that, where there are no physical similarities between two trade dresses there is no infringing trade dress, as here. 1-800 Contacts sets a standard of pleading “use” of trademarks by defendant, meaning here the actual use of the “overall design” made up of all of the plaintiff’s distinctive trade dress elements. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 112 S. Ct. 2753, 2755 n.1 (1992); Cartier, 348 F. Supp. 2d at 224 (defendants’ watch designs were nearly identical in every way pleaded); Coach, 2002 U.S. App. LEXIS 28143 *6 (all four of plaintiff’s pleaded design elements were adopted by defendant); Metrokane, 2008 U.S. Dist. LEXIS 107937 at *4446 (every design element pleaded was adopted by defendant). The Together Bag exists in three dimensions, and its “overall appearance” when compared to the Hermès Birkin’s overall appearance must be analyzed without regard for likelihood of confusion, but contains none of the

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design features on the also-three-dimensional Hermès Birkin.13 Any “use” of the Hermès Birkin’s overall appearance by Thursday Friday is implausible. The Opposition’s reliance on the “in commerce” requirement is not enough. Plaintiff simply does not plead use of any three-dimensional trade dress elements that could possibly make up an infringing trade dress (an infringing “overall image” including the trapezoidal shape, actual loops, actual strap, and actual padlock). It cannot be said either that plaintiff pleaded any “use” separate from its conclusory statements on likelihood of confusion, since they can only be derived, if at all, from the exact same allegations attempting to plead likelihood of confusion. (Mem. at pp. 17-18 n.5.) For all these reasons, plaintiff does not plead a “use” of its trademark by Thursday Friday under the Lanham Act as required in this Circuit. 15 U.S.C.A. §§ 1114(1)(a), 1125(a)(1)(A) (2010). IV. Plaintiff Does Not Plead a “Colorable Imitation” of its Registered Mark. Plaintiff argues that the Amended Complaint states a “knockoff” or “colorable imitation.” (Opp. at p. 16.) The law disagrees. There can be no question that plaintiff cannot plead that Thursday Friday has “counterfeited” (“knocked off”) its registered closure, as that requires it be “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” 15 U.S.C.A. § 1127 (2010). No allegations exist that the “photographic production,” whatever that might mean (Am. Compl. ¶ 27), is actually a copy or reproduction of the mark within the meaning of the Lanham Act, which has long been thought to also include a requirement of identity or near-identity. See James Love Hopkins, The Law of Trademarks, Tradenames, and Unfair Competition § 123 at p. 300 (3d ed. 1917) (“A counterfeit mark is a facsimile, that is an exact copy or reproduction of a genuine trademark.”). All that is left is
13

Under plaintiff’s reading of Dallas Cowboys, the cover design for “Bringing Home the Birkin,” essentially photocopying the actual three-dimensional registered closure (including the word mark) would also be a trademark “use” of the registered closure, though it does not appear that plaintiff so objected. (Am. Compl ¶ 17.)

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“colorable imitation,” which has long meant “any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.” 15 U.S.C.A. § 1127 (2010). Careful inspection is required to distinguish a “colorable imitation” from the genuine, in contrast to situations “when ordinary attention by the purchaser of the article would enable him at once to discriminate the one from the other.” Abercrombie & Fitch Co., et al., v. Moose Creek Inc., et al., 468 F.3d 629, 638 (9th Cir. 2007), citing McLean v. Fleming, 96 U.S. 245, 255, 24 L.Ed. 828 (1877). All four statutory possibilities require near identity of the marks to be actionable. Here, the Lanham Act’s test is whether the Together Bag contains any feature that closely resembles the actual closure on the Hermès Birkin. Because there is no closure at all, anyone can distinguish the two immediately, including the Court. The same analysis of “use” as for trade dress, supra at pp. 13-16, leading to the conclusion that it was not adequately pleaded here, applies to plaintiff’s claim of infringement on its three-dimensional closure design, which actual closure nowhere appears on the Together Bag. In addition to the obvious physical dissimilarities between the registered closure and the photograph of the closure on a bag with no flap and no strap, which the Court may take into account on a motion to dismiss, lack of pleading likelihood of confusion adequately also is insufficient to plead a colorable imitation of the closure of the Hermès Birkin. But the fact that the mark itself has three-dimensional features is also extremely relevant to finding that Thursday Friday “used” a “colorable imitation” of the registered closure on the Together Bag. “If the mark has three-dimensional features, the applicant [for registration] must include a description of the mark indicating that the mark is three-dimensional, and the applicant must submit a drawing that depicts a single rendition of the mark.” T.M.R.P. 2.52(b)(2) (Trademark Rules and Practice of the Patent and Trademark Office), cited in 3 McCarthy on

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Trademarks § 19:58 at 19-179. Plaintiff, in its Opposition, does not and certainly cannot deny that the registration expresses a mark that requires three dimensions to function. (Am. Compl. Exh. B) (showing a closure wrapping around stated to be “attached to the flap of a handbag” and rendering a perspective view of the three-dimensional mark). It cannot be, then, that an infringing “colorable imitation” of a three-dimensional mark on a handbag could ever be expressed in two dimensions on a handbag, particularly one that has no flap, loops, or straps as might be actionable on an identical or near-identical three-dimensional bag with those features. V. The Federal Dilution Claim Is Inadequately Pleaded.

In addition to failing to plead “fame” adequately within the prudential limits set forth in Heller (Mem. at pp. 22-24), plaintiff does not state anything in its Complaint that alleges fame outside its registered word marks shown on the Hermès Birkin, and does not address it in its Opposition, even after admitting that there are word marks on the bag. (Opp. at pp. 12-13.) The federal dilution claim may be dismissed on this ground as well as the others stated in the Memorandum. (Mem. at pp. 21-26.) As to tarnishment, Plaintiff’s reliance on the posture of the case at the time of the decision in Clinique is equally meritless. Clinique 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 prove “shoddiness.” Clinique Laboratories, Inc. v. Dep Corp., 945 F. Supp. 547, 562 (S.D.N.Y. 1996). Since that is all plaintiff pleads in this case, it cannot raise the plausibility of its federal and state tarnishment claims. VI. Plaintiff Does Not Plead a Cause of Action for New York Common Law Trademark Infringement or Unfair Competition. Plaintiff does not plead a state infringement claim for the same reasons it cannot plead its federal claims. Plaintiff also does not claim that it adequately pleads bad faith as to the New

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York State common law unfair competition claim. Instead, it argues that it does not have to. (Opp. at 20-21); but see, Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1044 (2d Cir. 1980) (“The essence of an unfair competition claim under New York law is that the defendant has misappropriated the labors and expenditures of another . . . . Central to this motion is some element of bad faith.”); 3 McCarthy on Trademarks §§ 15:16 at 15-31, 23:113 at 23-357 (“[S]everal Second Circuit and New York decisions recite that to prevail in any claim of unfair competition, New York law requires proof of bad faith,” defined by the Second Circuit as “the intent to sow confusion between the two companies’ products”). Its recitations as to bad faith cannot withstand even the most cursory review when the Court culls conclusory allegations from the Amended Complaint on this motion to dismiss, and they ought not be assumed to be true. Thursday Friday cannot be said, and were not said by plaintiff, to have taken all steps possible, or any steps at all, to create confusion as to the two totally dissimilar trade dresses or between the two-dimensional photo of a closure and Hermès’s registered three-dimensional closure, complete with word marks. To the vast extent that those articles differ physically, the differences can be assumed to have been intentional, not assumed to imply bad faith. (Opp. at p.14 ("the obvious intent is to make people believe that it is a photo of a Birkin Bag.").) There are no other statements that make such a claim of bad faith plausible in the Amended Complaint. VII. The State Dilution Claim Is Inadequately Pleaded.

Plaintiff makes no effort to contend with the fact that the design of the Hermès Birkin and the design of the Together Bag must be “very” or “substantially” similar to invoke New York General Business Law Section 360-l. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1028-29 (2d Cir. 1989); (Mem. at p. 28-29). Though plaintiff relies on bloodless abstraction after bloodless abstraction to try to imply physical similarity, or encourage

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the Court to ignore its total lack thereof, despite the clear legal standard that the dresses or imitation actually resemble one another, neither the appearance of the two trade dresses nor the three-dimensional registered mark when compared to the photograph of another’s mark can be said to be “very similar” to each other, so this claim fails as well. In addition, plaintiff’s pleading of “injury to business reputation” is admittedly “tracking the language of the statute” (Opp. at p. 22), and adds no facts that raise the plausibility of its claim. Without more, not only is the elemental recitation not entitled to the presumption of truth, it is also rendered implausible by its lack of factual enhancement. CONCLUSION For all the above reasons, all Counts in the Amended Complaint should be dismissed with prejudice. Dated: Richmond, Virginia April 1, 2011 THE CIMBALO FIRM, P.C. /s/ Jeffrey L. Cimbalo Jeffrey L. Cimbalo (JC-6680) 1306 W. Main St. Richmond, VA 23220 Tel: (804) 313-6266 Paul R. Niehaus (PN-3994) S. Gabriel Hayes-Williams (SH-0775) NIEHAUS LLP 1359 Broadway Suite 2001 New York, NY 10018 Tel: (212) 631-0223 Fax: (212) 624-0223 Attorneys for Defendant Thursday 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 1, 2011, a true and correct copy of the Reply Memorandum in Support of Defendant’s Motion to Dismiss under Rule 12(b)(6) 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 abaum@foley.com. Dated: April 1, 2011 Richmond, Virginia /s/ Jeffrey L. Cimbalo Jeffrey L. Cimbalo

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