Upper Deck is asking a federal judge to divide MLB’s trademark infringement case against it into two phases while stating its case that the photos on the cards in question violate no laws.
Upper Deck claims the photos its using in its first three 2010 baseball card products don’t run afoul of Major League Baseball’s exclusive agreement with Topps.
After a judge recently turned down MLB’s request for a temporary restraining order, Upper Deck’s Series One, Signature Stars and Ultimate Collection are now being sold to collectors.
In court papers obtained by Sports Collectors Daily, Upper Deck spells out why it believes it’s not doing anything wrong and claims Major League Baseball Properties hasn’t backed up its claim that consumer confusion will result by the images on its baseball cards.
Late last week, Upper Deck asked the federal court to bifurcate MLBP’s case into separate liability and damages phases. MLBP objected, stating that holding the trademark/unfair competition-related damages phase of the litigation until after liability is determined "increases the likelihood that Upper Deck would seek bankruptcy protection or go out of business altogether during the interim period between trials, prejudicing MLBP’s ability to fully and promptly recover its damages."
A ruling on Upper Deck’s motion has not yet been made.
In its papers filed in objection to MLBP’s temporary restraining order request, Upper Deck claims its use of MLB Properties’ trademarks amounts to nominative fair use and that the use of game action photos is protected under the First Amendment.
"If showing an action shot from a public sporting event impairs the distinctiveness of MLBP’s trademarks, then MLBP should have banned all sports writers and reporters from its stadiums years ago," wrote Upper Deck’s attorneys with Quinn Emanuel Urquhart, Oliver and Hedges.
"Upper Deck’s 2010 Series make no use of MLBP trademarks other than those that happen to be visible in the high-quality, game-action photographs of the baseball players in uniform. Upper Deck has gone to great lengths to ensure that its 2010 Series products are respectful of MLBP and do not run afoul of its legitimate trademark rights. There is no alternative way to make a marketable baseball card without depicting the players in their team uniform."
Upper Deck has included disclaimers on its packaging stating that the company is not associated with Major League Baseball. MLB Properties, however, claims Upper Deck is using intellectual property without permission.
Upper Deck also submitted copies of stories and blog posts from collectors stating they "clearly show that card collectors understand that Upper Deck’s 2010 series are not licensed or approved by MLBP."
If MLBP had succeeded in obtaining a temporary restraining order against delivery of the products in question, Upper Deck claimed it "could sustain economic losses in the millions," and that the TRO would have "devastating financial and reputational consequences, not only for Upper Deck, but for its business partners–many of whom are mom-and-pop hobby shops that are counting on the revenue from the sales of Upper Deck products in the next few weeks to help them weather the difficult economy."
MLBP also claims that Upper Deck has failed to make contractually-required payments under its old contract as a licensed provider of trading cards.
Upper Deck appears to have won the first round. The company claims that by only sixty days after a product is released, 80% has been sold to the consumer. With a trial not scheduled to begin until April, it’s clear that the cards the company is releasing will have found their way into collectors’ hands despite MLBP’s protests.