Smack Apparel is finally out of the penalty box after ending a trademark dispute with the NHL and the Seattle Kraken.
- Jay Deutsch, CEO and co-founder of Bensussen Deutsch & Associates (PPAI 109381, D14) – ranked the No. 12 distributor in this year’s PPAI 100 – is a minority owner in the professional hockey team.
All entities have agreed to voluntarily dismiss the lawsuit that Smack Apparel filed in January 2022 after the team and the league had threatened legal action if the Tampa, Florida-based company didn’t stop producing and selling T-shirts featuring Kraken-related branding, according to a new filing on Wednesday.
Legal Battle
After receiving cease-and-desist letters from the team and the NHL in September and October 2021, Smack Apparel filed a preemptive lawsuit claiming that its Kraken-inspired merchandise was protected speech, according to court filings.
The company argued that it had copyrights for its T-shirts, which “express clever messages and commentary that are constitutionally protected under the First Amendment,” according to the complaint.
- Specializing in unlicensed college and professional sports merch, the apparel-maker argued that it displays its own brand on its products, which are sold on its website and Amazon.
Conversely, the Kraken and the NHL argued that Smack Apparel had a history of trademark infringement, citing a 2008 Fifth Circuit ruling that found the company had infringed on the trademarks of popular college football teams in an “attempt to capitalize” on their brands.
The team and the league also claimed that the company engages in deceptive marketing, associating itself with professional sports teams and advertising merch related to those organizations following championship games.
