09-0761-cv, 09-4777-cv
The Heisman Trophy Trust v. Smack Apparel Company

                                    UNITED STATES COURT OF APPEALS
                                       FOR THE SECOND CIRCUIT

                                            SUMMARY ORDER
        Rulings by summary order do not have precedential effect. Citation to a summary order
filed on or after January 1, 2007, is permitted and is governed by Federal Rule of Appellate
Procedure 32.1 and this court’s Local Rule 32.1.1. When citing a summary order in a document
filed with this court, a party must cite either the Federal Appendix or an electronic database
(with the notation “summary order”). A party citing a summary order must serve a copy of it
on any party not represented by counsel.
        At a stated term of the United States Court of Appeals for the Second Circuit, held at the
Daniel Patrick Moynihan United States Courthouse, 500 Pearl Street, in the City of New York,
on the 26th day of May, two thousand ten.



PRESENT:
                     JOSÉ A. CABRANES,
                     ROBERT A. KATZMANN ,
                                  Circuit Judges,
                     J. GARVAN MURTHA ,*
                                  District Judge.

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THE HEISMAN TROPHY TRUST,

                     Plaintiff-Appellee,

                     v.                                                              No. 09-0761-cv, 09-4777

SMACK APPAREL COMPANY ,

                     Defendant-Appellant,
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FOR APPELLANT:                                                  JAMES W. TILLY , The Tilly Law Firm, Tulsa, OK.

FOR APPELLEES:                                                 LAWRENCE B. FRIEDMAN , (Arminda B. Bepko, of
                                                               counsel) Cleary Gottlieb Steen & Hamilton LLP, New
                                                               York, NY.



*
   The Honorable J. Garvan Murtha of the United States District Court for the District of Vermont
sitting by designation.
     Appeal from a judgment of the United States District Court for the Southern District of
New York (Victor Marrero, Judge).

    UPON DUE CONSIDERATION IT IS HEREBY ORDERED, ADJUDGED, AND
DECREED that the judgment of the District Court be AFFIRMED.

        Defendant-appellee, Smack Apparel Company, appeals from the following judgments and
orders of the District Court: (1) the January 26, 2009 decision and amended order granting the
motion of plaintiff, the Heisman Trophy Trust, for a preliminary injunction, (2) the March 9, 2009
order denying defendant’s request for additional discovery, (3) the July 17, 2009 decision and order
granting plaintiff’s motion for partial summary judgment, (4) the October 19, 2009 decision and
order awarding plaintiffs attorneys’ fees, and (5) the October 20, 2009 judgment of the District
Court.

         On appeal, defendant argues that the District Court erred as follows: (1) the District Court
erred in granting plaintiff’s motion for a preliminary injunction, (2) the District Court erred in
granting plaintiff’s motion for partial summary judgment by failing to draw all inferences in favor of
defendant, (3) the District Court erred in denying defendant’s motion for additional discovery, and
(4) the District Court erred in awarding attorneys’ fees that plaintiff had incurred, but that plaintiff
had not yet paid. We assume the parties’ familiarity with the underlying facts and procedural history
of this case.

          We first consider whether the District Court erred in granting plaintiff’s motion for partial
summary judgment and in issuing a permanent injunction against defendant. We review the District
Court’s grant of summary judgment de novo. See, e.g., Jeffreys v. City of New York, 426 F.3d 549, 553 (2d
Cir. 2005). Summary judgment is appropriate if “there is no genuine issue as to any material fact and
. . . the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c)(2). We review a
District Court’s grant of a permanent injunction for abuse of discretion. Shain v. Ellison, 356 F.3d
211, 214 (2d Cir. 2004); cf. Sims v. Blot, 534 F.3d 117, 132 (2d Cir. 2008) (“A district court has abused
its discretion if it based its ruling on an erroneous view of the law or on a clearly erroneous
assessment of the evidence or rendered a decision that cannot be located within the range of
permissible decisions.” (citations, alterations, and quotation marks omitted)). Substantially for the
reasons stated in the District Court’s thoughtful and thorough decision and order of July 17, 2009,
Heisman Trophy Trust v. Smack Apparel Co., 637 F. Supp. 2d 146 (S.D.N.Y. 2009), we conclude that the
District Court did not err in granting plaintiff’s motion for partial summary judgment and
permanently enjoining defendant from using the Heisman Trophy Trust’s marks or confusingly
similar marks in connection with defendant’s goods or services.

        Next, we consider whether the District Court erred in awarding attorneys’ fees to plaintiff, in
accordance with the earlier settlement agreement. Substantially for the reasons stated in the District
Court’s careful and comprehensive order filed October 19, 2009, Heisman Trophy Trust v. Smack
Apparel Co., 665 F. Supp. 2d 420 (S.D.N.Y. 2009), we conclude that the District Court did not err in
awarding attorneys’ fees to plaintiff.

        Finally, we consider whether the District Court erred in denying defendant’s motion for
additional discovery. We will reverse a district court’s denial of a discovery request “only upon a
clear showing of an abuse of discretion.” Wills v. Amerada Hess Corp., 379 F.3d 32, 51 (2d Cir. 2004).
Here, the District Court stayed further discovery pending plaintiff’s motion for partial summary
judgment on plaintiff’s claim that defendant breached the settlement agreement. The discovery that
defendant requested was relevant only to defendant’s laches and equitable estoppel defenses, and the
District Court properly concluded that any discovery related to laches and equitable estoppel
defenses were irrelevant to the contract dispute regarding the settlement agreement because the
settlement agreement expressly provided that a failure to enforce any right provided under the
settlement agreement “shall not be construed as a waiver or relinquishment of the future of such
term or right, which shall continue in full force and effect.” See Heisman Trophy Trust, 637 F. Supp.
2d at 158. Moreover, the party from which the discovery was sought had previously informed the
District Court that it did not have documents pertaining to the t-shirts at issue. Accordingly, we
conclude that the District Court did not err in denying defendant’s request for additional discovery.

                                         CONCLUSION

         For the reasons stated above, the following orders and judgments of the District Court are
AFFIRMED: (1) the March 9, 2009 order denying defendant’s request for additional discovery, (2)
the July 17, 2009 order granting plaintiff’s motion for partial summary judgment and entering a
permanent injunction against defendant, (3) the October 19, 2009 order awarding attorneys’ fees to
plaintiff in accordance with the settlement agreement, and (4) the October 20, 2009 judgment of the
District Court. Because we have affirmed the District Court’s entry of a permanent injunction,
defendant’s appeal from the January 26, 2009 decision and amended order entering a preliminary
injunction is DISMISSED as moot.

                                                 FOR THE COURT:
                                                 Catherine O’Hagan Wolfe, Clerk
