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Hermès International v. Kiernan

August 28, 2008

HERMÈS INTERNATIONAL, ET AL., PLAINTIFFS,
v.
SERAFINA KIERNAN, ET AL., DEFENDANTS.



The opinion of the court was delivered by: Wexler, District Judge

MEMORANDUM AND ORDER

Plaintiffs Hermès International, Hermès International Corporation, Hermès International Corporation France, Hermès Sellier, and Hermès of Paris, Inc. (collectively, "Hermès") bring this action against defendant Serafina Kiernan, individually and d/b/a Impursenator Handbags and www.impursenator.com ("Kiernan"), and others, asserting claims for trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq. On August 9, 2007, the Court granted Hermès summary judgment against Kiernan on liability. The issue of damages against Kiernan, who appeared without counsel, was tried before this Court on June 23, 2008. The following are the Court's findings of fact and conclusions of law.

FINDINGS OF FACT

Hermès is a leading designer and producer of high-quality luxury goods that include handbags and other leather items. Hermès is the owner and/or the exclusive United States licensee of many U.S. registered trademarks that are closely associated with its goods and famous throughout the world (the "Hermès Marks"). Among its most famous trademarks are the following six infringed by Kiernan: (1) the "Caleche," represented by a distinctive drawing of a horse and carriage with an "H" (U.S. TM Reg. No. 2436099); (2) the word-mark HERMÈS (U.S. TM Reg. No. 0369681); (3) the word-mark KELLYBAG (U.S. TM Reg. No. 2957154); (4) the word-mark BIRKIN (U.S. TM Reg. No. 2991927); (5) a distinctive drawing of a horse and carriage and the word HERMÈS (U.S. TM Reg. No. 0883588); and (6) a handbag closure design featured on the Hermès Birkin bag (U.S. TM Reg. No. 1806107).

At the direction of Hermès' counsel, George Arnold & Associates ("GAA") began an investigation into the sale of fake Hermès products on the website www.impursenator.com. In May 2006, GAA investigator Matthew Hewlett ("Hewlett") found various handbags bearing Hermès Marks available for sale on the website. Hewlett emailed Impursenator Handbags at impursenator@aol.com about buying an Hermès handbag and was directed to send payment to Impursenator Handbags at P.O. Box 7592, Freeport NY 11520. In a live chat with "Serafina" at impursenator@aol.com, Hewlett was advised that Impursenator Handbags sold fake Hermès handbags at wholesale and claimed to have many fake handbags available. Thereafter, GAA bought a fake Hermès handbag from Impursenator Handbags, electronically paying $369 via PayPal. On or about June 20, 2006, GAA received the handbag and dust cover (which protects the product during shipment), with packaging showing a return address in China. Hermès sent the handbag and dust cover for authentication, which confirmed they were counterfeit.

Following its investigation, Hermès filed a summons and complaint in this action, with an application for, inter alia, an ex parte temporary restraining order ("TRO") and seizure order (the "Application"). The seizure order was directed to 100 Irving Street, Freeport, New York ("100 Irving"), Kiernan's probable residence. On July 25, 2006, the Court granted the Application, directing the TRO and seizure order (the "July 25th Order"). On July 31, 2006, two Freeport police officers, accompanied by Hermès' counsel and GAA employees, executed the July 25th Order at 100 Irving. According to Hewlett, Kiernan was not at the house and Hermès' counsel attempted to contact Kiernan and left her a phone message. The police and Hermès' representatives entered the house after a locksmith unlocked a rear door. After they had entered the house, Hermès counsel Scott Gelin spoke with Kiernan on the phone. The police and Hermès' representatives then searched the house.

During the search, Hermès' representatives found, in a walk-in attic a few feet from the master bedroom, 26 handbags and dust covers bearing the Hermès Marks. The attic also had containers holding other brands of handbags. In addition, the search uncovered, inter alia, computers and assorted papers that appeared related to Kiernan's counterfeit handbag business, including a notebook containing a record of handbags and items Kiernan purchased from her supplier. Upon concluding the search, the locksmith replaced the rear lock and the Hermès' representatives left at the house a new set of keys and copies of, inter alia, the July 25th Order, the Application, and a receipt for the property seized.*fn1

Kiernan testified that she resides at 100 Irving. She admitted that she operated a business there selling multiple brands of fake handbags through Impursenator Handbags and www.impursenator.com -- a website that she established in 2005 in her maiden name, "Antoinette Nigro." She maintained that she purchased fake handbags from a supplier and "drop shipped" them directly from the supplier to her customers following the customers' orders. She also admitted either at trial or in her deposition that she: (1) told the website's designer that she intended to sell fake handbags; (2) sold fake handbags knowing they were counterfeit; (3) sold fake Hermès handbags to purchasers inside and outside the United States; (4) received fake Hermès handbags at 100 Irving; (5) accepted returns at 100 Irving and resold them to other consumers from that location; and (6) had counterfeit goods seized by the U.S. Customs Service and, as a result, changed her "ship to" address to that of her son's fiancee, "Anjelyne Martinez."*fn2

On the website, she touted the fake Hermès handbags as "mirror image quality," stating further: "Designer handbags can be prohibitively expensive, never fear, it's Impursenator to the rescue. We have replica designed handbags that are indistinguishable in every way except one, the price."

Kiernan admitted recording in the seized notebook the purchases of fake Hermès handbags from one of her suppliers, Dinese Kestly ("Kestly").*fn3 The seized notebook shows that she purchased at least 51 fake Hermès handbags for resale, most of which were fake Birkin and Kelly bags. Kiernan occasionally paid Kestly by check. However, only one check was discovered, and Kiernan denied knowing the location of any remaining checks. She denied having any records related to other suppliers, even though she admitted having at least one other supplier. She admitted that her records were incomplete, missing data as to sales and pricing. Nevertheless, she claimed to have made approximately $25 to $50 per handbag.

Following the seizure, Kiernan apparently ceased her counterfeiting activities. However, she did not cooperate fully during discovery. At trial, she claimed that she never saw or discussed with her attorney, Eliot Bloom ("Bloom"), Hermès' interrogatories or document requests or her responses thereto, even though, in her responses, she denied knowledge as to the total number of handbags she purchased, how much she paid for them, and to whom and for how much they were sold, and maintained that she had no recollection or record of, inter alia, when she bought and sold infringing products, except for what was in the notebook. As a result, there is very little evidence to determine the full extent of her illegal activities.

Following the seizure, Kiernan retained Bloom, who accepted service of the July 25th Order, summons, complaint, and remainder of the Application within the 10-day time period required by the July 25th Order. In this respect, Bloom executed on August 3, 2006, an "Acknowledgment and Acceptance of Service of Process." Thereafter, Kiernan entered into a "Stipulated Preliminary Injunction," which also acknowledged service of process. Kiernan, through Bloom, eventually filed an "Answer and Counterclaim," which did not include any challenge to service of the July 25th Order and accompanying documents. Thus, service of the July 25th Order, summons, complaint and accompanying documents was sufficient. In any event, Kiernan waived any challenge thereto. Kiernan later executed a "Stipulation of Dismissal with Prejudice," dismissing her counterclaims.

Robin Adelman ("Adelman"), director of the main floor at Hermès' New York City store -- the largest Hermès store in North America -- testified that the fake Hermès handbag and dust cover GAA purchased from Kiernan bore numerous Hermès Marks, including U.S. Trademark Reg. Nos. 1806107 and 369681 on the handbag, and U.S. Trademark Reg. No. 2436099 on the dust cover. Kiernan admitted to selling fake Hermès handbags having bright orange paper tags displaying "HERMÈS," which is the subject of U.S. Trademark Reg. No. 0883588. Adelman testified that Hermès never uses paper hang tags. Kiernan also admitted using various Hermès Marks on her website to describe some of the handbags she sold, including, inter alia, the word-marks "BIRKIN" and "KELLY," subjects of U.S. Trademark Reg. Nos. 2991927 and 295154.

According to Adelman, the New York City store sold approximately 4,000 handbags, totaling $22 million, in 2007. Of those bags, 1,200 were Birkin bags and 1,000 were Kelly bags. She testified that the price range for Birkin bags is $5,900 to $150,000, with the two most popular sizes priced at $7,650 and $8,300, and ...


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