Oklahoma City Thunder star Kevin Durant was undoubtedly spending
Thursday preparing for the tip-off in Game 5 of the NBA Finals,
which his team must win to stay alive against the Miami Heat.
But his lawyers are most likely reviewing a new trademark suit filed against Durant and Nike by a guitarist who's been known on
stage as "Durantula" since the 1980s, a persona he officially
trademarked in 2010. Sometimes, however, the law is a cruel
game, and the original Durantula could end up not protecting his
mark -- but losing it.
The suit, filed Wednesday in federal court in Chicago,
claims that Durant, Nike and another of Durant's sponsors -- the
memorabilia company Panini America -- are unfairly infringing
musician Mark Durante's trademark DURANTULA by using that
nickname on items like basketballs and photographs and in shoe
campaigns, including one that features a cartoon superhero named Durantula. (The commercial also depicts a cartoon "Sir Charles"
Barkley in a crown and purple-and-gold Santa-like suit.)
Durante, according to the complaint, is a long-time Chicago
musician who has been a member of such well-known bands as
Public Enemy. He has released albums under the name Durantula
and has maintained the website durantula.com for more than 10
years. Durante has asserted rights to a "common law mark" on
Durantula in connection with music, recordings, apparel,
T-shirts and related merchandise, as well as a "registered mark"
on music, ringtones, sound recordings and the like.
Though the complaint, filed by Durante's lawyers at Drinker,
Biddle & Reath, leaves little doubt that Durante has been using
the moniker for decades, his suit is no slam dunk. For starters,
it might be difficult to show that anyone would confuse a
23-year-old basketball phenom with a middle-aged rocker,
especially since Durante's officially registered mark is for
uses related to music and accompanying promotional items. Even
if a mark itself is identical, there is still a question of
whether consumers will actually be confused, said intellectual
property litigator Joseph Gioconda of the Gioconda Law Group.
To prove there is confusion, Gioconda said, Durante is
likely to rely on the theory known as reverse confusion,
asserting that the "second comer," Durant, has become so popular
that his use dwarfs that of the "senior user," Durante. In other
words, the "confusion" stems from people believing that the
older and less-known guitarist is ripping off the younger sports
The origin of the nickname for Durant may be a key to the
case. According to the complaint, when Durant's representatives
were notified of the alleged infringement on several occasions,
they said that Durant had never used Durantula as a nickname or
authorized any company or media outlet to use it. Even though
that would seem to contradict the fact that Durant's sponsors
are using Durantula and they are paying him, his
representatives' responses could give some insight into their
defense of the suit, said trademark expert Harley Lewin of
McCarter & English. Durant may be able to assert that the
nickname really developed organically from wide use by fans and
commentators and took on a public life of its own. That could
support an argument that "Durantula" has passed into the public
domain, so Durante's mark should be canceled, Lewin said. In
other words, if Nike started using it after it was already
widely used by the public, no harm, no foul.
This isn't the first basketball-and-nickname legal story of
the year. New York Knicks player Jeremy Lin got a crash course
in the importance of trademark when his streak of brilliance
resulted in local tabloids going Linsane for Linsanity. (Our
Reuters colleague Carlyn Kolker took a fun look at whether
Carlynsanity was a trademark opportunity for her.) Lin eventually filed to trademark "Linsanity" -- we'll have to see
if Kevin "Durantula" Durant does the same.
But first he's got a game to play.
We reached out to Panini and Kevin Durant's agent at
Landmark Sports Agency, but did not hear back. Drinker Biddle
also did not immediately comment. Nike declined to comment.
(Reporting by Erin Geiger Smith)
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