I See Me, I Sue You: Jordan Jumps At Card Cameos

• Published date: 10 August 2020
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Trademark, Advertising, Marketing & Branding
• Law Firm: Frankfurt Kurnit Klein & Selz
• Author: Ms Mma H. Afoaku

Before the NBA season resumed down in Florida, basketball fans received a big dose of nostalgia with the 10 part airing of the documentary miniseries "The Last Dance" which chronicled the 1997-1998 season of the legendary Chicago Bulls, the last season the star-laden team was together before getting disbanded. It also capped the Bulls' sixth NBA Championship led by none other than Michael Jordan. While watching the 10 hour miniseries, we saw how Jordan's brand and image expanded from the hungry and tenacious student-athlete at UNC to a global icon who has become bigger than basketball. Jordan created the blueprint for how athletes can leverage their platform to build empires spanning athletic apparel and shoes, film and television, team ownership, real estate and restaurants, and sports memorabilia and trading cards. This has translated to a net worth of approximately $2.1 billion for Jordan, with less than $100 million of that coming from his player salary. It is no wonder that Jordan is the wealthiest former professional athlete in the world.

Jordan's brand is so big that for decades he has granted The Upper Deck Company ("Upper Deck") -- which produces sports memorabilia and trading card products among other sports and entertainment products -- an exclusive license to "use his image, name, likeness, marks, and other rights on and in connection with, among other products, trading cards" (the "License"). In fact, Upper Deck has been the only trading card manufacturer to have such a license agreement with Jordan. In light of this, it is worth noting that (1) Jordan's name and jersey number 23 are federally registered as trademarks with the USPTO (collectively, the "Trademarks"), and (2) as part of the License, Jordan assigned Upper Deck the right to begin an action relating to a third party's infringing use of Jordan's rights.

Let's run through some math here (don't worry, no calculations required). We have Jordan, one of the most recognizable athletes and brands in the world + Upper Deck, which has been granted an exclusive license from Jordan to manufacture trading cards using his name, image, likeness, and those federally registered Trademarks + that a new trading card featuring Jordan in his number 23 Bulls jersey has not been released for at least 10 years = $$$. According to Upper Deck, a single rare trading card featuring Jordan sold on eBay for a whopping $350,100!

On The Card? Off To Court!

Against this backdrop, let us proceed. We previously mentioned that back on January 29, 2020, Upper Deck filed a complaint against one of its direct competitors, Panini America, Inc. ("Panini"), for producing retro trading cards which feature Jordan in the background (the "Complaint"). Umm wait, the background? Yes, according to Upper Deck, the "background imagery of a trading card can have substantial bearing on the value of the card. Use of cameos featuring ancillary figures in the background of trading cards increases the value of those cards, and individuals in the background of an image on a trading card can dramatically increase the value of both the trading card and the trading card release."

The Complaint alleged eight claims under the Lanham Act and related state law causes of action, including (1) false endorsement and false advertising under the Lanham Act (15 U.S.C. ' 1125(a)); (2) trademark dilution under the Lanham Act (15 U.S.C. ' 1125(c)); (3) trademark infringement under the Lanham Act (15 U.S.C. '...