COMMENTARY: MLB Properties vs. Upper Deck — What does one trademark expert think?

COMMENTARY: MLB Properties vs. Upper Deck — What does one trademark expert think? by Chris Olds

February 23, 2010, 2:21 pm
Filed under: MLB, MLBP vs. Upper Deck, Topps, Upper Deck | Tags: baseball, baseball cards, intellectual property, licensing, MLB, MLB Properties vs. Upper Deck, MLBPA, Sports licensing, Topps, trademarks, Upper Deck

With the MLB Properties case against Upper Deck set for an April 19 court date, Beckett Media will be examining several aspects of the complicated and wide-scoped case through a series of commentary pieces. We’ll examine MLBP’s complaint, Upper Deck’s argument, try to address some key questions and more …

By CHRIS OLDS | Beckett Baseball Editor | COMMENTARY

Part 4 … One trademark attorney’s view

We’ve examined the various pieces of the April 19 court case  (links above), but we haven’t had anyone examine the arguments from a legal standpoint.

Miguel Danielson of Danielson Legal LLC in Cambridge, Mass., is not only a trademark and intellectual property attorney, but he’s also an avid sports card collector.

Beckett Media posed a couple of questions to him about the case in an effort to help clarify some things for readers (and for us … there were a lot of documents) as simply as possible — and to get his take on the case. We asked him about fair use and Upper Deck‘s point that it should be able to use the unaltered photographs in its baseball cards.

“The type of fair use that Upper Deck is claiming is called ‘nominative’ fair use,” Danielson said. “Nominative fair use is a concept in trademark law that permits parties to use the trademarks of others if that use is necessary to refer to a party’s product or service (by its trademark) in order to identify the product or service being offered by the party making the fair use.  The classic example of this comes from an important Supreme Court case in which the newspaper USA Today was permitted to use the trademark New Kids on the Block in order to refer to the band in a promotional contest that USA Today was running without permission or collaboration with the band.”

In that case, New Kids on The Block vs. News America Publishing, the newspaper used the band’s name as part of its promotion of a 1-900-number telephone survey it created to determine which band member was the most popular.

“You can see how this case is quite different from the New Kids case,” Danielson said. “For one thing, trademarks at issue here are graphical logos used in the context of photographs.  That’s a very different type of use than referring to a trademark in text form.  There’s never been any cases dealing with this type of possible nominative fair use, and so this case would be the first to deal with it head on.”

So the fair use argument is a usable one, right?

“It is certainly very much the case that Upper Deck can legitimately raise the defense of nominative fair use under trademark law.  It is a completely open question as to whether it could win such an argument.  Clearly, the stakes are extremely high for MLBP because if a card company can publish cards by securing only a [MLB] Players Association license and avoiding using logos anywhere but in the photographs, then I think you’ll see a whole lot more baseball cards in the marketplace that are not resulting in a single dime going to MLB.”

Danielson also talked about the Pacific case that both Upper Deck and MLB Properties have cited in their court filings.

“Upper Deck has referred to a case that MLBP had with Pacific Trading Cards under very similar circumstances,” he said. “In that case, MLBP’s motion for a temporary injunction was denied by the trial court, but the ruling was eventually set aside by agreement of the parties upon settlement — it is easy to understand why MLBP wanted this because if the judgment hadn’t been set aside, it would be precedent for this case.”

And Danielson also noted the consumer confusion portion of the argument that MLB Properties pushed hard in its court filing as a key factor for the case.

“One big question in this case is whether anybody is really confused as to the source of Upper Deck’s products — this is the hallmark question in trademark disputes,” he said. “MLBP is claiming that buyers of the unlicensed Upper Deck cards are going to assume that MLBP has blessed them, which is the classic sort of confusion that trademark law seeks to prevent.

“Upper Deck is arguing that all of the notices it is putting all over its cards and packaging that say ‘not licensed by MLB,’ combined with the fact that they’re only using the trademarks in the context of action photographs and not anywhere else on the cards, means that consumers will know that MLB has not licensed or approved them.  If this case goes forward, I think this question is going to be the most important issue because where the court ends up on it will ultimately determine whether a nominative fair use defense is even possible to reasonably make.”

As for the photographs, Danielson noted that collectors might have a built-in expectation for baseball cards compared to newspapers and magazines — and past card releases that did not have Properties licensing might play into those expectations, too.

“Upper Deck will undoubtedly argue that press organizations typically use action photographs of players and nobody thinks that MLB has sponsored or otherwise affiliated itself with those organizations,” Danielson said. “I’m not sure that such an argument is all that persuasive because consumers of newspapers have very different expectations about the photographs they see in The New York Times than collectors of cards do about the photographs they see on cards.

“In part, MLB’s very active policing of its rights over the years has ultimately created an environment where many collectors have been well-trained to expect that any card showing logos of the MLB baseball teams has been licensed by MLB.  And, we’ve all seen those really terrible airbrush jobs that get used when promotional baseball cards distributed with breakfast cereal or other products have had MLB logos removed, which reinforces the expectation that baseball card consumers have on this issue.”

Chris Olds is the editor of Beckett Baseball and Beckett Graded Card Investor. Have a comment, question or idea? Send an e-mail to him at colds@beckett.com.

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