Sports

Apparel Company Hopes To Smack Seattle Kraken NHL Team In Federal Court

This is not the first time that Smack Apparel has found itself in the middle of a trademark spat.

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(Image via Shutterstock)

Smack Apparel is a company that looks to print and sell sports-related T-shirts, but refuses to pay licensing fees. In fact, it boasts that it produces a nonlicensed brand not because it is adverse to being licensed, but it claims to be adverse to the creative restrictions that go along with being licensed. Apparently, it is not adverse to litigating over whether it crosses the line from time to time.

On January 18, Smack Apparel initiated a lawsuit in the United States District Court for the Western District of Washington against the NHL and the Seattle Kraken hockey team. It is a request for the judge to declare that its actions do not infringe upon the trademark rights of the defendants and a response to the letters and emails it received from the defendants claiming that its T-shirts constitute infringement, tarnishment, and dilution of various trademarks.

There appears to be a minimum of three T-shirt designs at issue. First, there is a shirt with a design that says “Welcome to the – Krak – House – Seattle, Washington,” which includes an artistic rendering of a red eye and squid-like appendages that make it look like a sea monster. Next, is a T-shirt design with the literal element, “Straight Outta The Krak House,” which also includes the design of tentacles wrapped around the letters. Finally, Smack Apparel has a “Krakheads Anonymous” T-shirt for sale with a “Meeting Schedule” that appears to be the Seattle Kraken’s team schedule featured on the back.

Smack Apparel has registered copyrights with the United States Copyright Office for each of the designs on the aforesaid T-shirts listed for sale. It would like the court to believe that its unique artistic designs constitutionally protect it under the First Amendment of the United States Constitution as opposed to being liable for damages under a theory of trademark infringement, as the defendants have suggested prior to the initiation of the lawsuit. It is more likely than not to claim that any use of the images on the T-shirts is ornamental and not intended or actually designating the source of the apparel.

This is not the first time that Smack Apparel has found itself in the middle of a trademark spat. Over a decade ago, Smack Apparel was sued by Louisiana State University, the University of Oklahoma, Ohio State University, and the University of Southern California for using the respective schools’ colors on apparel without consent. The schools alleged that it constituted trademark infringement even though the color schemes had not been registered as trademarks with the United States Patent and Trademark Office.

They claimed that Smack Apparel’s T-shirts infringed on their trademarks because the shirts combined the schools’ colors with references to well-known and very publicized sporting events connected to the schools as well as the schools’ geography. Smack Apparel lost that case on summary judgment. The Fifth Circuit affirmed the lower court’s decision and also pointed out the overwhelming similarity of the marks used by Smack Apparel as compared to what the universities use as well as Smack Apparel’s admitted intent to profit from the universities’ reputations.

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Smack Apparel was found to have intentionally copied the universities’ marks with the bad-faith intent to capitalize on the schools’ goodwill and thus lacked clean hands. It is plausible that Smack Apparel will receive a similar smackdown in its case against the NHL and the Seattle Kraken due to the overt copying of important marks attached to the hockey team and its complete unwillingness to enter into licensing deals. It is perhaps more plausible than not that consumers will be confused as to whether the NHL and/or Seattle Kraken endorse or are affiliated with the T-shirts offered for sale, particularly the one with the Seattle Kraken’s schedule of games featured prominently on the back.

Darren Heitner is the founder of Heitner Legal. He is the author of How to Play the Game: What Every Sports Attorney Needs to Know, published by the American Bar Association, and is an adjunct professor at the University of Florida Levin College of Law. You can reach him by email at heitner@gmail.com and follow him on Twitter at @DarrenHeitner.

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