Looking to ‘smack’ the National Hockey League (NHL) and Seattle Kraken “Straight Outta The Krak House” and into a Washington district court, a Florida apparel company initiated a civil action against the league and hockey team back in January of 2022. Following correspondence from the NHL parties in early September 2021 that it was infringing and diluting team and league trademarks, Smack Apparel Company filed the suit to obtain a ruling that its Kraken-themed t-shirt designs are expressive and transformative works protected by the First Amendment and not explicitly misleading to consumers.

The first t-shirt at issue depicts, “Welcome to the Krak House,” on the front with “an artistic rendering of a red eye and squid-like appendages that conjure up the image of a sea monster,” as Smack described in its Complaint.

Another t-shirt states, “Krakheads Anonymous,” with Smack’s brand logo on the front while the back reads, “Krakheads Anonymous Meeting Schedule,” and lists the schedule of the Kraken’s 2021–2022 home games at Climate Pledge Arena where the team plays.

A third shirt sold by Smack features on the front, “Straight Outta the Krak House,” a parody of N.W.A.’s iconic hip hop track, “Straight Outta Compton,” with tentacles wrapping around the text.

Smack Apparel argued that its t-shirts contain creative, original artwork and humorous messages that provide commentary on the Kraken “hockey club, its fans, and pop culture.” But the NHL and the Kraken were not laughing in their Response last Monday, where the parties stated that intellectual property misappropriation is Smack’s “business model” and indeed, this is not Smack’s first trademark dispute.

In support of its point, the NHL parties cited the 2008 decision in Board of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack Apparel Company, which found Smack liable for trademark infringement as it attempted to capitalize on the color schemes and other indicia identifying four popular universities’ football programs. Notably, Smack admitted to intentionally incorporating the plaintiffs’ color schemes, logos, and designs, relying on their power to entice fans of the universities to buy the company’s shirts.

The NHL and Seattle Kraken argued that the t-shirt manufacturer’s Motion for Judgement on the Pleadings in the current dispute ignored many pertinent fact-intensive issues, including the likelihood of consumer confusion between Smack’s products and the NHL’s officially-licensed ones. Smack claimed that it dispels confusion with disclaimers on its website that state “all of [its] designs are not endorsed or sponsored by any organization or individual” but rather “licensed only by the 1st Amendment.” But the NHL parties responded that such disclaimer is not enough to resolve the dispute. Furthermore, by using filters on its website, SmackApparel.com, that specifically designate NHL Clubs and timing its advertising with “NHL Clubs’ real-world events,” the NHL parties asserted that Smack Apparel targets and misleads NHL and NHL Club fans.

In their Response, the NHL parties also contended that Smack sought to evade the discovery process by providing incomplete responses to discovery requests in the countersuit brought against the company for unfair competition and trademark and copyright infringement. These requests included the bases for Smack’s assertion that its t-shirts constitute parody and feature unique designs. Smack’s claim that its shirts are “spoofs” are rather contradictory, according to the NHL parties, since the company declared in its own Complaint, for example, that the “Straight Outta the Krak House” design parodies the rap song, “Straight Outta Compton,” and not the NHL or Kraken hockey club.

The t-shirts that the NHL believes infringe on its Stanley Cup trademarks and copyrights cater to Tampa Bay Lightning fans. One such shirt, among others, sold by Smack says, “2020 We Got the Cup” and “Champions” over hockey sticks and palm trees with the company’s brand name, while the back reads, “Stanley Gets Another Tan” above a pair of sunglasses.

After concluding that the company has misappropriated the NHL parties’ reputation and goodwill to entice consumers and fans to purchase its t-shirts, the NHL and Seattle Kraken requested that the U.S. District Court for the Western District of Washington deny Smack Apparel’s motion for judgment on the pleadings completely.

Nancy Mouradian is an incoming 1L at Pepperdine Caruso School of Law in Malibu, CA with a B.S. in Business Law.