When the Kraken recently unveiled their Winter Classic jersey (above left), most of us loved the design, which was based on uniforms worn by the old Seattle Metropolitans (above right). But at least one person — a Seattle entrepreneur named Paul Kim — was not pleased.
The Seattle Times published a fascinating article last night about a trademark-infringement lawsuit that Kim has filed against the Kraken in U.S. District Court. I strongly recommend reading the entire article, which is full of behind-the-scenes details, but here is the gist:
- In 2014, Kim acquired the trademark rights to the Metropolitans’ brand, including their team colors and distinctive “S” logo, and began selling throwback Metropolitans merchandise. He and his merchandise have apparently become enmeshed in the Seattle hockey scene since then.
- The lawsuit alleges that the Kraken made several lowball licensing offers to Kim in recent years, including a lowball offer to license the Metropolitans’ logo and colors for the Kraken’s Winter Classic jersey. After Kim turned down those offers because he felt they were below market value (the lawsuit provides numbers to back up Kim’s position), the Kraken then informed him the team would go in a different direction with their Winter Classic jersey design. Instead, the design turned out to be transparently Metropolitans-based. That’s the essence of the lawsuit — that the Kraken violated Kim’s trademark rights by using the Metropolitans brand as the basis for their Winter Classic design. He’s seeking at least $2.5 million in damages.
- Per the Times article, “[T]he lawsuit seeks a temporary and permanent injunction blocking the Kraken from using Metropolitans trademarks — though there isn’t time to block the Winter Classic jerseys at Monday’s game.”
Again, go check out the entire article for additional details.
This seems like a situation that could have and should have resulted in a mutually beneficial partnership between Kim and the team, and it’s sad to see that it hasn’t worked out that way. Judging from the article and the lawsuit, the blame for that appears to lie with the Kraken — a classic “corporate bully vs. little guy” scenario — but of course that’s just one side of the story. The team hasn’t yet responded to the lawsuit, so we’ll see how that plays out.
(My thanks to Justin Adler, Harry F. Higgins, and Phil for bringing this story to my attention.)
I understand the lawsuit. I am not smart enough to say how it would/ will play out. It’s definitely inspired by the Metros, but I don’t think this logo hurts his trademark for the Metropolitans.
i’d love to see the actual figures associated with all this. what he paid for the trademark and what the “below market” offer was and how much actual business he does. the website looks legit and the jerseys look awesome, pretty much everything is sold out. it’s tough because i feel like you see a lot of times where a person will buy up naming rights to a team that is prospectively coming to an area just to make a quick buck, which i hate. This doesn’t seem to be that though.
The practice you’re referring to is called “trademark squatting.” And yeah, that does not appear to be what Paul Kim was engaging in.
“trademark squatting” is the reason that we have the Tampa Bay Devil Rays originally.
“though there isn’t time to block the Winter Classic jerseys at Monday’s game.”
Seems like there is to me, it is Friday at 7am PT. I’d think the point of an injunction would be to get the parties moving to settle quickly rather than wasting the court’s time over a lengthy battle. And if they can’t, Seattle wears their normal jerseys.
The big boys (Kraken) think they are entitled to everything and expect everything for nothing. That is how most professional sports franchises are these days so this case comes as no surprise. They want everything for nothing while their revenues, profits, and franchise values continue to skyrocket.
While Kim did provide some numbers as far as fair market value in the industry, I would be curious what Kim actually paid for those trademark rights in 2018.
The team has not yet responded to the lawsuit, so it will be interesting to see their side of the story.
I think this case will be settled out of court as we see with so many other cases involving intellectual property. It will just come down to how much money each party can agree to.
It’s unfair to to say they “feel entitled to everything” and “expect everything for nothing.”
If they expected everything for nothing, they wouldn’t have made Kim an offer (which he claims was lowball but he curiously wouldn’t say how high when telling his side of the story).
If they felt entitled to everything, they would have made the jersey much closer to the original (a true throwback with the same colors and similar S).
I don’t know who is going to win, but it is clear the team didn’t just stomp on him.
Well said! The pro sport teams owned by billionaires do whatever they want and they just do not care, they know they can Outlast anyone in court. There ought to be laws changed that give the smaller a better chance to not be bullied and taking advantage of, otherwise the billionaires will just tied up in court until the small guy runs out of money fighting it.
So, here’s the weird thing: the NHL actually owns the rights to the Metropolitans trademarks… in Canada only. Seems there was a missed opportunity for the league to acquire the US trademarks somewhere in there.
Feel like the Kraken are in the right here. It’s inspired by the original logo, but uses none of the original elements (logo, font, colors) – I don’t think a one-time “homage” jersey is worth suing over, but what do I know.
I don’t really think the Seattle stuff hurts his business for a number of reasons.
1. The Seattle Mets stuff is unique enough in it’s own right. If I were a Kraken fan I’d want both.
2. Winter Classic gear sells out pretty quick. It’ll all be gone by February, latest. I’m a Bruins fan, loved the quarter zip they put out for the Fenway game, bought it immediately b/c I knew it’d disappear from sale forever quickly and it did.
I don’t particularly see the confusion here. The S-stylizations are different, the colors are different, the words are different.
It’s possible that the NHL’s attempt to license would be a statement against their own interest in defending the infringement, but I’m not sure I see the likelihood of confusion here.
A lawsuit that will cost $3M in lawyers fees to get a $2.5M court settlement. Awesome.
What a read. Thank you PL for bringing this to us.
Lots of assumptions here. Just because one side said it was a low-ball offer doesn’t mean it was. It could also be the case of someone trying to overvalue it simply because the Big Bad Corporate has the money to pay it.
From what it sounds like to me is that the Kracken would have liked to have the TM for it, but at a price that makes sense to them. When the owner was unwilling to sell at that price they moved on.
Does the Winter Classic jersey take inspiration from the Met’s…Yes, but the logo to me, is distint enough that when I see it, I don’t think Mets, I think Kraken. The colors are in Kraken colors, and the jersey itself is different enough, not to mention how many other teams have used barber pole stripped jerseys.
Now I say all that not knowing what was offered and what not but to me I would side with the Kraken that they didnt infringe, but perhaps this can bring them back to the table to purchase the TM for future use
Some interesting points in the story by Geoff Baker:
1. “Winter Classic jerseys …reference the prior Cup win by featuring “1917” prominently on the collar.”
2. “…team vice president (brand) Aaron Wiggan said in an interview it had a stylized “S” logo reminiscent of what the Metropolitans wore…”
3. “…according to the lawsuit, when the team formally approached him (Kim) in July 2020 looking to license Metropolitans trademarks, Kraken legal counsel Lopes offered a lone season ticket account in exchange for jersey rights.” The price of a season ticket in the lower bowl is about $15,000.
4. “Kraken … offered Kim a licensing deal paying him 5% of net sales, with no minimum guarantee, no online sales, no resale and no sell off period for existing licenses. But Kim again refused, it alleges, because typical industry licenses paid 12%-to-15% on all gross sales and included minimum sales requirements…”
5. USPTO shows the trademark was abandoned in 1993 in the US. When Kim filed for the trademark protection, nobody in the NHL nor Seattle contested it. And many stories at that time were of Gary Bettman saying the NHL had “no interest” in Hockey in Seattle until a new building was built…yet the NHL scooped up the Canadian rights to Seattle Metropolitans (among a number of other teams from that era).
NHL speaking out of both sides of its mouth. Again. I love a good David vs Goliath story…
So what was copyrighted???? Hockey jerseys have used that striped jersy way prior to any Seattle hockey team. The colors are different. Also you can’t copyright a letter S unless the design is unique the S’s are completely different.
You are confusing copyright with trademark. Two different things, though related in that they are based on intellectual property concepts
Meanwhile, in other Kraken copyright related news, the Kraken Bar & Lounge, a dive punk bar which sued the Seattle Kraken for naming their new bar at the Kraken Community Complex the Kraken Bar & Grill (and which the Kraken later changed to the 32 Bar & Grill) has found a new home in the University District after losing their lease earlier this year.