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Old 02-01-2010, 09:59 AM   #1 (permalink)
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Default Upper Deck responds to Major League Baseball Properties in letter to distributors

Upper Deck responds to Major League Baseball Properties in letter to distributors




While Upper Deck declined to comment to Beckett Media regarding its two recently released baseball card sets that feature MLB players in uniforms displaying MLB logos, the Carlsbad, Calif.-based company sent a letter to its distributors on Friday defending its products after MLB Properties issued a statement Friday morning that said MLBP will “vigorously use all legal means to protect the intellectual property of Major League Baseball and its member Clubs.”

Upper Deck’s letter was in response to a letter sent to distributors by MLB Properties on Friday asking them to not sell the sets that are in question — 2009 Ultimate Collection and 2009 Signature Stars as well as the forthcoming 2010 Upper Deck set.

“Although MLBP contends in its letter that Upper Deck may not lawfully use images of professional baseball players in uniform, there is absolutely no law to support this position,” said Upper Deck in its letter, which also tells distributors that it has “reached out to MLBP” and offered to meet next week on the subject.

The letter also promises its own legal response: “If we cannot do so, then the issue will be resolved in court.”

The two 2009 products carry statements saying they are not approved by Major League Baseball or its clubs on both the packaging and cards and do not utilize MLB logos as part of the card designs. However, none of the photographs have been altered to remove or obscure trademarks that MLB Properties claims are being used without permission. Upper Deck’s baseball card sets are licensed by the MLB Players Association, but not by MLB Properties, as Topps was awarded the exclusive contract beginning this year.

In its letter, Upper Deck said its “products are neither infringing nor unlawful. As you can see from even the most cursory inspection of the cards and packaging, Upper Deck has gone to great lengths to produce high-quality baseball trading cards that are respectful of MLBP’s trademark rights.”

Upper Deck also cites a U.S. Court of Appeals’ dismissal of an injunction from July 1998 that sought to prevent Pacific Trading Cards from distributing cards showing players in uniform. Those cards were approved by the MLBPA but not MLB Properties. Pacific stopped making baseball cards by 2001 and was out of business by 2004.

“Upper Deck urges you not to be dissuaded by MLBP’s scare tactics,” reads its letter. “MLBP’s letters were entirely out of line, and in fact, constitute illegal interference with our valued business relationships.

“If MLBP believes that Upper Deck’s products are unlawful and infringing it should seek an order so stating from a court of law. However, MLBP certainly has no right to demand that you stop selling Upper Deck’s products.”

It’s worth noting that Upper Deck’s settlement in its long-running lawsuit with Konami was officially filed on Friday in a U.S. District Court over UD’s production of more than 600,000 unauthorized Yu-Gi-Oh! trading cards. It’s a lawsuit in which Konami sought hundreds of millions of dollars in damages, and a case that included business-damaging accusations from both companies. (Read more about the case and download court documents regarding Konami’s claims by clicking here.)

Upper Deck, which was found to have made counterfeit cards, opted to settle the case after the first day of trial and was due to make the with the first multi-million-dollar payment (specifics of the settlement were confidential) on Friday. It’s a case in which a New York Post story says has fueled “widespread speculation that this case could severely hurt its financial health. Some believe the company is on the brink of bankruptcy.”

On Friday evening, Upper Deck issued a statement on the Konami case, which touted its building of a “a solid foundation on which Yu-Gi-Oh! will benefit for years to come” and that it was “pleased to announce that it has come to a successful resolution.”

It did not mention terms of the agreement.

“Though we are delighted that Konami was finally forced to see the light regarding its claims, there is, of course, a bittersweet side to the ending of this dispute,” said Richard McWilliam, Upper Deck CEO, in the release. “During the six years we spent building the Yu-Gi-Oh! brand we formed strong ties to the playing community, and, in the end, they are the ones that suffered most because of this lawsuit. Instead of focusing on the merits of the case, Konami focused its efforts on pursuing exaggerated claims and damages which it could not establish in the courtroom.”

Konami has not yet issued a statement on the settlement.

We’ll have more on this story as it develops.

Upper Deck responds to Major League Baseball Properties in letter to distributors The Beckett Blog
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Old 02-01-2010, 12:02 PM   #2 (permalink)
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Wow, UD makes it sound like it was Konami that buckled under the pressure and settled, and then have the gaul to print bald-faced lies about their images not infringing on MLBP copyrights.

Quote:
“Although MLBP contends in its letter that Upper Deck may not lawfully use images of professional baseball players in uniform, there is absolutely no law to support this position,”
No twisting of MLBP's words here! That's completely NOT what MLBP said. It's like somehow Upper Deck's new business plan is based on insulting and lying their way into a successful relationship with their clients and customers.
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Old 02-01-2010, 12:11 PM   #3 (permalink)
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Why didn't I go to law school, and why didn't I move to California afterwards? I could be rich working as a lawyer for UD. Those folks seem to want to live in court.
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Old 02-01-2010, 12:20 PM   #4 (permalink)
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Well, does a newspaper need to get MLB permission to use game images for the paper? If not, then UD might have a case.
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Old 02-01-2010, 12:20 PM   #5 (permalink)
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What a joke
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Old 02-01-2010, 12:22 PM   #6 (permalink)
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They are trying to play on a technicality that the cards themselves do not have logos but the images do. And the images are of players whom are all part of the MLB Players Association of which UD is licensed by. Interesting.

Make sure you sell all of your redemptions quick. This could get ugly.
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Old 02-01-2010, 12:56 PM   #7 (permalink)
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I wonder when Topps will speak up on the topic. They have to spent some HUGE coin and if UD finds a loophole they will surely want compensation.
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Old 02-01-2010, 01:11 PM   #8 (permalink)
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I see what UD is saying...since they aren't using logos or team names as a part of the card design (i.e not actually printing the logo or team name or incorporating it into their design) they think they are in the right.

These guys are idiots if they think this "loophole" will hold up in court. Its hard to believe too that the Yu-gi-oh stuff won't have a bearing on this case as well. Once a company goes that far out of its way to defraud in one instance means that they are likey to do it again due to poor company ethics. UD really went for broke on this arguement...

I am no lawyer but have several college buddies who are young lawyers. I discussed this with 2 of them yesterday and they laughed at UDs stance...one of them even worked on a case like this on behalf of the company that had the crappy reasoning. He said they lasted about 90 minutes in court before the judge tossed them and the case out.
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Old 02-01-2010, 01:25 PM   #9 (permalink)
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Maybe it is a calculated risk by UD. You know what they say - There is no such thing as negative publicity.
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Old 02-01-2010, 02:00 PM   #10 (permalink)
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150 F3d 149 Major League Baseball Properties Inc v. Pacific Trading Cards Inc | Open Jurist

150 F3d 149 Major League Baseball Properties Inc v. Pacific Trading Cards Inc | Open Jurist
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Old 02-01-2010, 02:19 PM   #11 (permalink)
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Seems like UD is completely right according to the Pacific case and talking to IP lawyers.

I can take a photo of Jimmy Rollins in a Phillies uniform and publish it. MLB can't stop me - even if I can't put MLB logos on the back of the card. They can't trump the First Amendment, much as they'd like to.
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Old 02-01-2010, 02:26 PM   #12 (permalink)
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- There is no such thing as negative publicity.
Tell that to Tiger.....
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Old 02-01-2010, 02:41 PM   #13 (permalink)
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Originally Posted by gomiamigo View Post
Seems like UD is completely right according to the Pacific case and talking to IP lawyers.

I can take a photo of Jimmy Rollins in a Phillies uniform and publish it. MLB can't stop me - even if I can't put MLB logos on the back of the card. They can't trump the First Amendment, much as they'd like to.
My experience is that you can use a photo with logos, etc of a player as "news" in articles and current reports.

I have photos in a couple of books that didn't need to be authorized since they were just part of a report. I can't make a coffee table book of my photos though because then it would be me making money more directly on their images and logos, etc.

When you make it into a product (like me selling 8X10s of my old baseball shots) that's where it gets dicey. I think that's where the pro leagues fight to protect their own products with trademarks.

On another note, I believe if I take one of my photos and produce limited art from it, say with PhotoShop and printed on archival art paper, I may have the ability to sell it. It just can't be mass produced like card sets, etc.

IMHO,
Vinny
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Old 02-01-2010, 03:12 PM   #14 (permalink)
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So this is something I have been wondering. What would happen if I took the complete set of 2010 Topps Series 1 baseball and adhered a magnet to the back of each card and sold them individually as magnets? Can I do that if it is sold as a craft at a craft fair?
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Old 02-01-2010, 06:28 PM   #15 (permalink)
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So this is something I have been wondering. What would happen if I took the complete set of 2010 Topps Series 1 baseball and adhered a magnet to the back of each card and sold them individually as magnets? Can I do that if it is sold as a craft at a craft fair?
I think the criteria for artwork would have to be more than just the magnet. MLB probably has some company making magnets and keychain thingys already.
If you took the cards and did some wacky collage for each team you might have a case.

IMHO,
Vinny

8X10 would be trouble

limited art work, may be okay
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Old 02-01-2010, 07:35 PM   #16 (permalink)
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The technicality arises in the amount of artwork made. Anyone can make one piece of artwork from a trademarked/licensed image without running into trouble. It's when you make more than one with a goal of making a profit from it that gets you in trouble.

Newspaper photos are all Associated Press or UPI licensed photos. Much different license.

Let's say one made a comic book with essentially the same powers as Superman, same costume except for an "M" on his chest instead of an "S". If you made one comic strictly for entertainment purposes, no biggie, but if you mass produced it for retail sale, DC would come calling.

This is a bad play by UD in my opinion, a delay tactic solely.
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Old 02-02-2010, 07:10 AM   #17 (permalink)
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Major League Baseball Properties filed federal lawsuit against Upper Deck for trademark infringement
By Michael O'Keeffe
DAILY NEWS SPORTS WRITER

Monday, February 1st 2010, 9:16 PM
Related NewsArticlesReport: Boras says Damon has eye on the TigersMora signs one-year deal with RockiesEditorial: Big moneyRocket launches an appealPutz hurls blame at Met quacksMajor League Baseball Properties accused Upper Deck of trademark infringement for using team logos on baseball cards without permission in a federal lawsuit filed on Monday in Manhattan.

The lawsuit was filed six months after Major League Baseball Properties, the licensing arm for MLB's 30 clubs, signed a multi-year agreement with Upper Deck rival Topps that gave the New York company exclusive rights to team logos and uniforms.

Upper Deck executives vowed after that deal was announced that the company would continue to produce baseball cards, since it still had an agreement with the Players Association, which represents baseball's 1,200 players.

The complaint said said Upper Deck's 2010 cards improperly feature MLB and team logos

"Upper Deck's current conduct is reflective of a pattern of utter disrespect for the contractual and intellectual property rights of those from whom it licenses valuable trademarks," the complaint said.

Major League Baseball wants to stop the sale of what it calls unauthorized cards, and seeks triple and punitive damages

Major League Baseball Properties filed federal lawsuit against Upper Deck for trademark infringement
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Old 02-02-2010, 10:52 AM   #18 (permalink)
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Tell that to Tiger.....
Very good point! LOL
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Old 02-02-2010, 10:53 AM   #19 (permalink)
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MLB Properties files lawsuit against Upper Deck


This sure didn’t take long …

Major League Baseball Properties filed suit against Upper Deck in a New York federal court on Monday alleging that the Carlsbad, Calif-based company is in violation of its trademarks in a pair of recently released baseball card products.

On Friday, MLBP issued a statement that it would “vigorously use all legal means to protect the intellectual property of Major League Baseball and its member Clubs.”

The filing notes that Upper Deck owes MLB Properties $2.4 million and that the company’s actions are “reflective of a pattern of utter disrespect for the contractual and intellectual property rights of those from whom it licenses valuable trademarks.”

Upper Deck’s baseball cards are not licensed by MLB Properties but are approved by the MLB Players Association. MLB awarded Topps its exclusive contract beginning in 2010. A pair of recently released baseball card sets — 2009 Signature Stars and 2009 Ultimate Collection — show logos in photos of players but do not otherwise use MLB trademarks as part of the card designs.

Upper Deck declined to comment on the licensing issue. However, in a letter to its distributors, the company threatened legal action of its own against MLBP after MLBP told distributors that it should not sell the products.

We’ll have more on the case as it develops.

MLB Properties files lawsuit against Upper Deck The Beckett Blog
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Old 02-02-2010, 11:03 AM   #20 (permalink)
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This is just getting better and better.
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Old 02-02-2010, 01:24 PM   #21 (permalink)
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I hope Topps knows to just be quiet and let this unfold... This will change our industry, and could possibly be the beginning of the end for UD....
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Old 02-02-2010, 02:30 PM   #22 (permalink)
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Originally Posted by VinnyH View Post
When you make it into a product (like me selling 8X10s of my old baseball shots) that's where it gets dicey. I think that's where the pro leagues fight to protect their own products with trademarks.
It's not dicey at all. Most states don't even recognize likeness rights, the Federal circuit doesn't recognize them *at all*. You always have the copyright of your own works, at least until your copyright ends and it enters public domain. UD has MLBPA approval for the likeness rights of the players anyway.

If you take a photo of Derek Jeter, print up an 8x10 and put his stats on the back [already ruled nontrademarked, public info by the US SC] that is perfectly legal. You can print up 100 and give them to your friends, or sell them to local dealers. [As stated eariler, you cannot put MLB trademarked terms like Yankees or MLB on the card, but that's not the issue here.] Are you saying if Jeter was wearing a Jets hat you couldn't sell it? Of course you could.

Put differently, my friend was in the front row at a Lakers playoff game a few years ago when Kobe hit that buzzer-beater to beat the Spurs, SI put a similar shot in their mag spread -- various magazines also bid for his photo -- he was like 5' away and got a perfect shot that was eventually published in hundreds of thousands of magazines. He doesn't need NBA or NBAPA approval to sell that image of Kobe. It's his property - until he sells it of course.

We just went thru this discussion 18 months ago with Legendary Cuts. UD won then also.
Just because Topps/MLB doesn't *want* them to sell the cards doesn't make it illegal. Obvs they will sue anyway to disincentivize other people from trying the same thing.
Of course, whether or not UD should get in another expensive shouting match with Topps/[or MLB, et al] is a different story. And many judges on a given day are susceptible to creating new case law - that's the amazing thing about our legal system, everyone gets to have a say and who knows how the judge will rule? I'm certainly not saying it's a wise business move for UD...

Seems applicable: 'Upper Deck also cites a U.S. Court of Appeals’ dismissal of an injunction from July 1998 that sought to prevent Pacific Trading Cards from distributing cards showing players in uniform. Those cards were approved by the MLBPA but not MLB Properties.'

See also Sixth Circuit ruling against Tiger Woods:
ETW CORPORATION, Plaintiff-Appellant, v. JIREH PUBLISHING, INC., Defendant-Appellee. - Altlaw
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Old 02-02-2010, 04:22 PM   #23 (permalink)
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By JAMES COVERT

Last Updated: 1:24 PM, February 2, 2010

Baseball card maker Upper Deck is facing a major league lawsuit.

Major League Baseball sued the Carlsbad, Calif., company, accusing it of
using the league's logos without permission and distributing
unauthorized lines of trading cards.

Upper Deck's cards improperly feature various sport and team logos,
which were licensed six months ago to Topps, the filing said. The
58-year-old Topps was bought in 2007 by Tornante, the investment firm
run by former Disney chief Michael Eisner.

Some 2010 Upper Deck packaging features New York Yankee shortstop Derek
Jeter, and may confuse collectors because of its similarity to
authorized packaging used in 2009, according to the suit.

The suit, filed in Manhattan federal court, also says Upper Deck "is on
the verge" of distributing several other fake lines -- and claims that
Upper Deck owes MLB $2.4 million.

The lawsuit follows a legal settlement last week between Upper Deck and
Konami Digital Entertainment. The Japanese firm had accused Upper Deck
of illegally printing more than 600,000 Yu-Gi-Oh! trading cards, which
are based on an animated show that's wildly popular in Japan.

According to reports, Upper Deck was forced to shell out millions of
dollars in damages to Konami. A judge had called internal documents at
Upper Deck "damning," saying they "detail blatant, improper, perhaps
criminal, conduct by individuals at the top."

Major League Baseball seeks to halt sales of unauthorized cards, and
also seeks triple and punitive damages.

"Upper Deck's current conduct is reflective of a pattern of utter
disrespect for the contractual and intellectual property rights of those
from whom it licenses valuable trademarks," the complaint said.

An Upper Deck spokesman declined to comment on yesterday's suit, which
specifically fingers unauthorized "Signature Stars" and "Ultimate
Collection" lines of trading cards.

james.covert@nypost.com
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Old 02-02-2010, 06:02 PM   #24 (permalink)
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Originally Posted by gomiamigo View Post
It's not dicey at all. Most states don't even recognize likeness rights, the Federal circuit doesn't recognize them *at all*. You always have the copyright of your own works, at least until your copyright ends and it enters public domain. UD has MLBPA approval for the likeness rights of the players anyway.

If you take a photo of Derek Jeter, print up an 8x10 and put his stats on the back [already ruled nontrademarked, public info by the US SC] that is perfectly legal. You can print up 100 and give them to your friends, or sell them to local dealers. [As stated eariler, you cannot put MLB trademarked terms like Yankees or MLB on the card, but that's not the issue here.] Are you saying if Jeter was wearing a Jets hat you couldn't sell it? Of course you could.

Put differently, my friend was in the front row at a Lakers playoff game a few years ago when Kobe hit that buzzer-beater to beat the Spurs, SI put a similar shot in their mag spread -- various magazines also bid for his photo -- he was like 5' away and got a perfect shot that was eventually published in hundreds of thousands of magazines. He doesn't need NBA or NBAPA approval to sell that image of Kobe. It's his property - until he sells it of course.

We just went thru this discussion 18 months ago with Legendary Cuts. UD won then also.
Just because Topps/MLB doesn't *want* them to sell the cards doesn't make it illegal. Obvs they will sue anyway to disincentivize other people from trying the same thing.
Of course, whether or not UD should get in another expensive shouting match with Topps/[or MLB, et al] is a different story. And many judges on a given day are susceptible to creating new case law - that's the amazing thing about our legal system, everyone gets to have a say and who knows how the judge will rule? I'm certainly not saying it's a wise business move for UD...

Seems applicable: 'Upper Deck also cites a U.S. Court of Appeals’ dismissal of an injunction from July 1998 that sought to prevent Pacific Trading Cards from distributing cards showing players in uniform. Those cards were approved by the MLBPA but not MLB Properties.'

See also Sixth Circuit ruling against Tiger Woods:
ETW CORPORATION, Plaintiff-Appellant, v. JIREH PUBLISHING, INC., Defendant-Appellee. - Altlaw
I defer to everyone else since I'm not knowledgeable about the law. I have a bunch of nice slides if anyone wants to go into business.

I did see MLBP going around autograph/card shows about 15-20 years ago threatening dealers with action if they sold 8X10s that weren't authorized by them. Back then if I had a nice shot of say, Dave Winfield, guys would pay me to make 100 or so 8X10s for his autograph appearance. It wasn't anything I relied on but the regular promoters seemed to be threatened and started using more photos from places like PhotoFile, a licensed photo seller.

What dealer trying to make a living was going to challenge them and spend the money to argue lawsuits. That may have been the tactic of MLBP.

Best to All,
Vinny
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Old 02-02-2010, 11:44 PM   #25 (permalink)
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man they need to fire dillweed and promote carlin or someone to try and right the ship!!! and by saying this im not a upperdeck slappy!!! but i would think as a investor they would want him gone!!!
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