Background has come to the forefront in a legal battle between Upper Deck and Panini America.
Upper Deck has filed a lawsuit against its trading card rival over images of Michael Jordan that appear in the background of three sets released by Panini. Jordan is not the main focus of two cards featuring Scottie Pippen and another of Dennis Rodman, but Upper Deck claims its exclusive contract with MJ was violated by background images of the Hall of Famer.
The lawsuit, The Upper Deck Company v. Panini America, Inc., was filed Wednesday in the U.S. District Court, Southern District of California.
It comes on the heels of Panini filing four separate trademark infringement lawsuits against defendants it claimed made homemade Zion Williamson cards that featured Panini’s trademarked “Rated Rookie” logos.
Upper Deck’s reasoning for taking legal action in Wednesday’s lawsuit boils down to this: Image is everything, and the company has exclusive rights to produce and markets Jordan’s image on a trading card.
Upper Deck is alleging 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 lawsuit alleges 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.
“This lawsuit is about Panini America, Inc. falsely representing to consumers that it possesses the rights to sell trading cards of the greatest, most famous basketball player of all time: Michael Jordan,” Upper Deck alleges in court documents. “Panini has never had those rights, and likely never will. Panini refuses to accept that Mr. Jordan long-ago decided to affiliate himself with the premier trading card company in America: Upper Deck.”
Upper Deck’s complaint first focuses on a comparison between 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 (shown at right, below).
The Optic card, Upper Deck alleges, “cleverly and purposely features Jordan … significantly enhancing the value” of the card.
A shadowy image of Jordan can be seen on the right side of a 2018-2019 Panini Contenders card featuring Rodman. While it appears to be an incidental shot, Upper Deck contends Panini did not crop the photo to exclude Jordan because it wanted to increase the card’s value.
The background, Upper Deck alleges, “caught more consumer interest and excitement” than Rodman because the card “prominently and intentionally featured Jordan.”
Upper Deck alleges that these images — even those in the background and not the main subject of the card — harms its exclusive agreement with Jordan. Upper Deck explains that exclusive agreements with athletes are very important in the trading card business.
Upper Deck argues that background images can enhance the value of a card, using as an example the 2007 Topps baseball card of Derek Jeter that pictured President George W. Bush in the stands and New York Hall of Famer great Mickey Mantle in the Yankee dugout.
Other examples the company used included a 1990-1991 Hoops NBA Sam Vincent card where Jordan “is prominently featured,” and a 1997-1998 Metal Universe Titanium card of Anfernee Hardaway that included an image of Jordan. Upper Deck claims that in both instances, the values of the cards rose because they featured Jordan; the company alleges the same scenario for Panini’s Pippen and Rodman cards.
Upper Deck, which is seeking a jury trial, is asking for compensatory and consequential damages; restitution, statutory damages and penalties; an injunction to prohibit Panini from using Jordan images on any of its cards; enhanced or punitive damages; “disgorgement of profits”; the destruction of the cards; and for reasonable attorneys’ fees.
Upper Deck alleges Panini understood the exclusive deal by removing Jordan’s image from the lower-end Donruss card, but then tried to skirt the issue by including MJ in the higher-end Optic card.
The case “really could help show the limits of exclusive licenses with athletes,” attorney/collector Paul Lesko tweeted Thursday afternoon.
Panini America has yet to respond to the suit.