Panini America answered Upper Deck’s lawsuit over images of Michael Jordan that appear in the background of three sets released by the Dallas-based company with a motion for dismissal.
Panini’s response, filed Friday in the U.S. District Court, Southern District of California, was basically this: Upper Deck’s claims are baseless and Panini claims its trading card rival resorted to “vague allegations, third-party Internet posts, and an unrelated lawsuit by Panini which did not involve background imagery in cards or memorabilia.”
The original case, The Upper Deck Company v. Panini America, Inc., was filed Jan. 29 in the same federal court. Upper Deck alleged Jordan was not the main focus of two Panini cards featuring Scottie Pippen and another of Dennis Rodman, but the California-based company claimed its exclusive contract with MJ was violated by background images of the basketball Hall of Famer.
Upper Deck argued it had exclusive rights to produce and market Jordan’s image on a trading card, and even an incidental appearance on a rival’s card was a violation of its exclusivity.
Panini, in its response, argued that “notably absent” from Upper Deck’s objection is “the alleged license agreement” the claims are based upon. “Because Upper Deck has failed to state plausible claims for relief, its complaint must be dismissed,” Panini wrote. Panini also claimed that Upper Deck did not address the issue that Jordan’s appearance on the cards, which labeled Pippen and Rodman by name and did not mention MJ, was at best incidental.
The Pippen cards were part of Panini’s 2017-2018 Donruss Basketball set and Donruss’ 2017-2018 Optic NBA Retro series. Pippen is shown in both series driving to the basket. According to Upper Deck, Panini intentionally cropped the image from the first set to remove any images of Jordan. In the higher-end Optic set, the same image was used — only this time, the image was not cropped and Jordan can be seen in the bottom right corner of the card.
Panini argued that Jordan was not “readily identifiable” on the Pippen card and asserted that Jordan’s jersey number was not visible in the photograph. Panini added that Upper Deck conceded the image of Jordan was “no bigger than Pippen’s shoe.”
A shadowy image of Jordan can also be seen on the right side of a 2018-2019 Panini Contenders card featuring Rodman.
In its complaint, Upper Deck alleged Panini did not crop the photo to exclude Jordan because it wanted to increase the card’s value. The background, Upper Deck alleged, “caught more consumer interest and excitement” than Rodman because the card “prominently and intentionally featured Jordan.”
Panini responded that it “requires an implausible flight of fancy” to suggest Jordan endorsed Rodman’s and Pippen’s cards “based merely on his passing appearance.”
Upper Deck, in its original filing, alleged two violations under the Lanham Act, trademark infringement, intentional interference with a prospective economic relationship, intentional interference with a contractual relationship, commercial misappropriation, right of publicity, and unfair competition.
The Lanham Act, passed by Congress on July 5, 1946, is a federal law that governs trademarks, service marks and unfair competition. It went into effect July 5, 1947.
The January lawsuit alleged that Panini, which has had a license to produce and market NBA cards since 2009, “hatched a scheme” to trade on Michael Jordan’s image “without paying a dime of those rights.” Since Jordan has retired and has an exclusive agreement, Upper Deck argues he is not fair game to be shown on a card — even if his image is a minor part of the overall picture.
The unrelated lawsuit Panini references in its answer involved Kobe Bryant merchandise. Panini’s lawsuit involving Kobe Bryant merchandise did not result in a decision and is not “authority,” the response claims.
Finally, Panini argues in its response that it is exempt from liability because Jordan’s “alleged appearance” in the cards is “solely as a result of being present at the time,” and that the Bulls’ star “ha(s) not been singled out . . . in any manner.”
“The clear purpose of the cards is to highlight Pippen and Rodman, not Jordan.” Panini wrote.