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Cross-Office Latham Team Scores Critical Preliminary Injunction for Disaster-Relief Non-Profit

May 26, 2020
Latham is representing Team Rubicon, Inc. in a contentious federal trademark dispute with a former licensee.

A New York-Chicago litigation team notched an important early victory on May 19, 2020, when a New York federal judge granted Latham’s preliminary injunction motion, filed on behalf of Team Rubicon, Inc. (TRI), a non-profit organization with more than 150 staff and 120,000 volunteers that deploys US Military Veterans in response to large-scale disasters, including the California Wildfires, Hurricanes Sandy, Harvey, Dorian, and Michael, and most recently the COVID-19 pandemic. Founded in 2010 following the devastating 7.0 magnitude earthquake in Haiti, TRI raises over US$30 million annually for disaster relief.

TRI recently became involved in a trademark dispute with a former licensee, Team Rubicon Global, Ltd. (TRG). TRG claimed TRI wrongfully terminated its trademark licensing agreement due to TRG’s failure to address adequately certain allegations of sexual harassment involving executives from two of TRG’s sublicensees. Once the licensee filed suit challenging the termination of the license in the US District Court for the Southern District of New York, the client engaged Latham to handle the case. 

Shortly after it filed its lawsuit, TRG filed a motion for preliminary injunction seeking to enjoin TRI from representing that TRG did not have a valid license to use and sublicense Team Rubicon’s trademarks outside the US. Latham subsequently filed counterclaims and a motion for preliminary injunction on TRI’s behalf to protect the organization’s trademarks and intellectual property, as well as to vindicate its charitable interests. 

Following submission of extensive briefing and declarations by the parties, on May 19, 2020, Judge Laura Taylor Swain entered an order granting TRI’s motion and entering all of the injunctive relief it had requested. The court also denied TRG’s motion in its entirety. The court noted that Latham demonstrated a clear likelihood of success on the merits of TRI’s breach of contract and trademark infringement counterclaims, because it found that TRG “materially breached the [license agreement] in a manner that affects TRI’s public image and reputation” and, as a result, TRI “properly terminated” the license agreement in accordance with its plain language.

New York partner Jeff Hammel and Chicago partner Matthew Walch are leading the case for Team Rubicon with New York associates Matthew Salerno and Elizabeth Parvis.