Law of Cards: Panini Admits in Court Filing That It Has No Taste in Music

Law of Cards: Panini Admits in Court Filing That It Has No Taste in Music

Two months ago, guitarist Mark Durante sued Kevin Durant, Panini America and Nike for using his Durantula trademark without permission. Yesterday, Panini answered Durante's complaint, and its filing contained a shocking admission: Panini knows nothing about early industrial music.

This startling confession is contained in the below paragraph:

Paragraph 12 of the Complaint relates to Plaintiff’s experience with the bands The Revolting Cocks, KMFDM, and The Waco Brothers, and the strength of Plaintiff’s DURANTULA persona. Panini America lacks sufficient information to admit or deny the allegations of paragraph 12 of the Complaint, and therefore denies them.

I may be reading too much into this, but is Panini admitting it is ignorant of KMFDM? Come on!

OK, I confess. I grew up in the suburbs of Chicago in the late 80s and early 90s. Because KMFMD's label, Wax Trax, was located in Chicago, I was subjected to a lot more of its music than the average person. But still, I find Panini's claim of ignorance baffling. I mean, hasn't everyone heard someone else mistakenly think the acronym for the band's name stands for Kill Motherf'n Depeche Mode?

Oh wait, you're reading this column because you want an actual legal analysis of Panini's filing? Okay. In its answer, Panini denied, denied, denied everything.

But really, who cares in view of Panini's unbelievable statement?

Now, wait a second. Maybe Panini is trying a legal strategy. Part of a trademark infringement analysis turns on the strength of the trademark at issue and how famous that mark is. If Panini can show no one has ever heard of these bands (outside of 30-somethings who grew up in the suburbs of Chicago), then its use of a Durantula mark on trading cards stands a better chance of winning. This is especially true given that the original Durantula trademark literally only covers the use in music, not trading cards.

Gotcha Panini. Nudge, nudge, wink, wink. Your secret is safe with me.

Seriously though, I can't believe Panini is still in this suit. Panini's alleged infringement focused on Durantula cards that were never released. So, like, Mr. Durante, you already won. Also, it looks like the total damages that could be assessed against Panini would be less than what it cost to prepare Panini's answer to Durante's complaint.

If Panini wants to really get into the whole "no one outside of Chicago has heard of your bands" defense, that's going to cost quite a bit of money. Why? To prove no one has heard of the bands, Panini will need to submit evidence of that to the court. To get that evidence, Panini will need to conduct consumer surveys. And then hire an expert to explain what the consumer surveys mean. Having done these cases, I can tell you, most times, the first time you do a consumer survey, the results are either unclear, or prove the opposite point (what, everyone surveyed was a member of KMDFM's fan club?). That usually means a second set of surveys needs to be done. And after all that, A LOT of money has been spent on what looks like a little case.

Given all of this, I don’t know why both sides haven't just settled this one out.

On a related noted, Mark Durante could be bringing another trademark suit in the near future. This time, an opposition action, because someone else is attempting to register the mark "Durantula" with the Trademark Office. And it looks like the trademark filing was not brought by Panini, Nike or even Kevin Durant, but by Leslie B. Sanders (who?) and Angela Davilier (who???) for jackets, polo shirts, sweat pants, T-shirts and tennis shoes.

I bet they haven't heard of KMFDM either. Wink, wink, nudge, nudge.

What would be amusing is, I could see Kevin Durant joining in with Durante on a trademark opposition because this new trademark application could be seen as Sanders/Davilier attempting to get a free ride on Kevin Durant's reputation.

To recap—Kevin Durant didn't coin this nickname, and does not care about owning it, but got sued anyway because, occasionally, he might have used it. Panini wanted to use it, but then stopped in light of the Durante lawsuit. And, now, someone else wants to register the Durantula name, too.

This seems like a lot of work for what is arguably a pretty lame nickname.

But, hey, at least it reminded me of some music from my past, and motivated me to purchase a few, older KMFDM songs (e.g., Juke Joint Jezebel, Boots, etc.). Which, amusingly, might go to fund this lawsuit.

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Paul Lesko is a shareholder at Simmons Hanly Conroy and the chair of its Intellectual Property Department (http://www.simmonsfirm.com). Don’t hold the fact that Paul is a lawyer against him, he’s also a rabid baseball and college basketball fan, and an avid baseball card collector. Paul can be found on Twitter @Paul_Lesko and Google+.

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