In response to the request by Major League Baseball Properties (MLBP) to issue a temporary restraining order on the distribution of questioned baseball cards, Upper Deck has filed an official opposition brief. Upper Deck is attempting to provide legal reasoning for producing baseball trading cards that use exclusive licensed logos and trademarks.
The filed document addresses these issues and more:
A. MLBP has not shown that it will suffer irreparable harm.
B. MLBP is not likely to succeed on the merits of its trademark claims:
- MLBP has not shown consumer confusion is likely.
- Upper Deck cannot compete in the market for baseball cards unless it can produce cards that contain action photographs of baseball players in their uniforms.
- Upper Deck’s use of MLBP’s marks is nominative fair use.
- MLBP has not shown that dilution is likely.
C. MLBP will not succeed on the merits of its breach of contract claim:
- The License’s language prohibiting non–trademark use of the MLBP’s marks after expiration of the license is unenforceable.
This is all in relation to the recent release of a pair of 2009 baseball card sets from Upper Deck that use MLB logos as part of the cards, despite Topps‘ role as the exclusive licensee of MLB.
“We are surprised and disappointed that Upper Deck, a former partner of ours, would violate our contract by clearly using our intellectual property without our permission,” said Matt Bourne MLB’s VP of Business Public Relations. “We will vigorously use all legal means to protect the intellectual property of Major League Baseball and its member Clubs.”
Upper Deck is licensed solely by the MLB Players Association, not MLB Properties. The products that MLB is addressing are 2009 Ultimate Collection and 2009 Signature Stars, which carry statements that the cards are not authorized by MLB but also do not obscure team logos in the photographs.