Upper Deck Files for Dismissal of Topps Lawsuit


Upper Deck says its rival doesn’t have a leg to stand on in the case of baseball cards picturing dead Hall of Famers Topps claims are under contract to them.

Upper Deck has asked a federal judge to dismiss trademark claims by Topps over the names and images of several deceased players which appear in Upper Deck’s 2008 Legendary Cuts baseball card issue.

Topps filed suit in June alleging that the cards would infringe on trademarks the company says it controls after signing an exclusivity agreement with the players’ estates through CMG Worldwide. Upper Deck filed a motion to dismiss the case in federal court in Indianapolis last week.

In court papers obtained by Sports Collectors Daily, Upper Deck states that the complaint "fails even to adequately identify the statutes under which Plaintiffs purport to sue for the alleged publicity violations".

“The alleged use of the intellectual property is not a ‘trademark use’ and it is impossible for plaintiffs to establish consumer confusion,” Upper Deck attorneys stated.

Topps is seeking unspecified monetary damages and a court order barring Upper Deck’s use of the names and images. CMG, which joined the suit with Topps, is based in Indianapolis.

Legendary Cuts was scheduled to be released in mid-June, but a temporary restraining order filed by Topps caused the product’s distribution to grind to a screeching halt. Distributors were told not to sell the product, but on June 18, a judge dissolved the order, allowing Upper Deck to issue the cards. Topps maintains that under its agreement with CMG, other companies are prohibited from making cards featuring Jackie Robinson, Lou Gehrig, Mel Ott, Jimmie Foxx, Rogers Hornsby, Thurman Munson, George Sisler, Johnny Mize, Ty Cobb, Roy Campanella, Pee Wee Reese, Walter Johnson, Cy Young, Honus Wagner, Christy Mathewson and Tris Speaker.

Topps is claiming Upper Deck is guilty of trademark infringement, violations of Indiana’s statutory and common law rights of publicity, false endorsement under the Lanham act, unfair competition under Indiana common law, unjust enrichment, damages under the Indiana Crime Victims Act for criminal deception and conversion and tortious interference with contract. Upper Deck disagrees with all of those charges, claiming Topps’ claims are flawed.

In the motion to dismiss, attorneys for Upper Deck wrote that the use of cards featuring the likenesses of the players doesn’t constitute an endorsement.

"Were Upper Deck to create a ‘Jackie Robinson Brand’ of baseball cards, the use of Jackie Robinson’s name would arguably be a source identifier and fall within the ambit of the Lanham Act," the papers state. "A baseball card of Jackie Robinson, on the other hand, is merely a description of the player himself, and is not protected by trademark law."

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