Cleary Gottlieb won a recent appeal for The Heisman Trophy Trust in the Second Circuit Court of Appeals. On May 26, the Court affirmed the permanent injunction and award of attorneys’ fees previously won by the Heisman Trust against Smack Apparel Company, based upon Smack’s manufacture and sale of t-shirts that infringed the Heisman Trust’s trademarks and also violated the parties’ prior settlement agreement stemming from Smack’s previous infringements.
In 2008 the Trust caught Smack selling t-shirts featuring the “Heisman” trademarks and references to leading candidates for the Heisman Trophy award. The Trust sued Smack in New York federal court for trademark infringement and dilution and breach of the agreement by which Smack had previously agreed not to misuse the “Heisman” marks following a prior infringement. U.S. District Judge Victor Marrero granted the Trust a preliminary injunction, and then partial summary judgment and a permanent injunction against Smack’s misconduct. He also enforced the prior settlement agreement’s requirement that Smack pay the bulk of the Trust’s attorneys’ fees and costs. The May 26 Second Circuit decision affirms the District Court’s rulings in full.