Seattle Metropolitans Hockey Owner Sues NHL’s Kraken Over Jersey Logos
“After Seattle Metropolitans requested that Kraken use a design concept that did not implicate the S-shaped logo, Kraken allegedly responded that they would be “going in a different direction.”
On December 27, less than one week before the National Hockey League’s (NHL) Seattle Kraken defeated the Vegas Golden Knights in the 2024 Winter Classic, a lawsuit was filed in the Western District of Washington against the Kraken. The lawsuit alleges that Seattle’s NHL franchise wore an infringing jersey during the Winter Classic, and has sold infringing merchandise, after shutting out the legitimate business interests of a passionate Seattle-area fan who revived that city’s championship legacy more than 90 years after the previous franchise folded.
Paul Kim Single-Handedly Revives Championship Legacy of Seattle Hockey
Paul Kim, owner of Seattle Metropolitans Hockey LLC, was already playing hockey before his family immigrated from South Korea to Seattle, WA, according to the Metropolitans’ complaint. While learning to speak English, Kim read a book about the history of the Seattle Metropolitans, winners of the NHL’s Stanley Cup in 1917 who also tied for the 1919 Stanley Cup, which was canceled during the Great Pandemic. Kim allegedly developed a strong passion for the team and during his college years, he acquired the trademark rights to the Seattle Metropolitans logos after finding out that no one, including the NHL, had any plans to commemorate the 100th anniversary of the Metropolitans’ 1915 founding.
Along with federal trademark registrations to the Metropolitans’ name and iconic S-shaped logo, Kim also allegedly acquired common law rights in the team’s branding by marketing hockey paraphernalia and organizing fundraising events for local youth hockey programs. In June 2017, a year-and-a-half prior to the NHL’s Board of Governors approving the Seattle Kraken as an expansion team, Kim was being recognized by Seattle news outlets as “the de facto ambassador of the Seattle Metropolitans.” The NHL itself has credited Kim with reviving the Metropolitans’ legacy and building hockey fervor across the Pacific Northwest. A screenshot attached to the Metropolitans’ recent complaint shows a February 2019 tweet by the Kraken acknowledging Kim’s efforts to revive the legacy of Seattle hockey.
Despite the Kraken’s consistent efforts to build an association with the Metropolitans brand, the NHL franchise allegedly did not communicate about a formal arrangement to use the Metropolitans’ trademarks until July 2020. Kim declined the Kraken’s first licensing offer, which was a single season ticket. One month later, the Kraken allegedly offered 5% of net sales while offering zero minimum guarantee, online sales, resale, or sell off period. The Metropolitans’ complaint cites 12% to 15% with a minimum guarantee and sell off period as an industry standard for exclusive jersey rights.
Kraken’s ‘Different Direction’ Included Allegedly Infringing Jersey Logo
Without a formal agreement in place, the Seattle Kraken allegedly continued to make unauthorized uses of the Metropolitans’ branding, including an October 2021 banner-raising commemorating the Metropolitans’ 1917 Stanley Cup championship run. Kraken executives allegedly reached out to Metropolitans in January 2023 to begin discussions on developing the jersey design for the following year’s Winter Classic, but those discussions broke down by February. After Seattle Metropolitans requested that Kraken use a design concept that did not implicate the S-shaped logo, Kraken allegedly responded that they would be “going in a different direction.”
Seattle Metropolitans filed its lawsuit about two weeks after sending a cease-and-desist letter to Kraken regarding both the Kraken’s redesigned S-logo for the Winter Classic jersey as well as the reproduction of the Metropolitans’ S-logo on clothing apparel and other team merchandise. Metropolitans’ lawsuit includes causes of action for federal and common law trademark infringement, false designation of origin and unfair competition, violations of the Consumer Protection, unjust enrichment, conversion and tortious interference. Relief requested by the Metropolitans includes $2.5 million for lost goodwill, equivalent to the money required for corrective advertising as well as Metropolitans’ foreseeable revenues. The Metropolitans also seek injunctive relief against the Kraken’s use of infringing marks and destruction of all infringing merchandise.
As in other NHL trademark cases that we’ve covered in recent years, the resulting issues seem inevitable from an IP attorney’s standpoint. Unlike other forms of IP, trademark rights must be enforced against infringers or owners risk losing those rights. In January 2018, the NHL’s Vegas Golden Knights faced an opposition proceeding at the U.S. Patent and Trademark Office from the U.S. Army after Vegas executives made clear associations with the Army’s Golden Knights parachute squad. The two sides settled that trademark infraction by July of that year with a co-existence agreement that preserved trademark rights for both Vegas and the Army in their respective sports.
Since the team’s inception, the Seattle Kraken have been very motivated to make a positive impact on the global community. After all, they do play in Climate Pledge Arena. The franchise has also been a leader among all North American sports teams in working with local indigenous communities.
The Seattle Kraken have previously shown their ability to diffuse legal battles over trademark rights with successful business agreements, such as they did with Kraken Rum. Further rulings will decide whether the Kraken’s alleged misappropriation was legally permissible in this case.
Images taken from complaint
Steve Brachmann
Steve Brachmann is a graduate of the University at Buffalo School of Law, having earned his Juris Doctor in May 2022 and served as the President of the Intellectual Property […see more]
