Story copyright 2009 Beckett Media
Major League Baseball Properties Inc. has filed a lawsuit against Donruss Playoff in a U.S. District Court over unauthorized use of trademarks, dress rights, rights of publicity and “breach of the surviving terms of its contracts” in its products released since last fall.
According to the complaint, MLBP says “Donruss cards depict certain Major League Baseball and Minor League Baseball players in their team’s proprietary uniforms. The trademarks featured on the uniforms (as well as the overall trade dress of the uniforms) remain visible and identifiable to consumers, despite Donruss’ calculated attempts on some cards to have such marks modified or partially obscured.”
Attempts to reach Donruss officials for a statement were unsuccessful.
The amount of damages is not estimated, but the lawsuit states that damages would be determined at trial and that for exemplary damages MLBP would seek three times the amount of Donruss’ profits or MLBP’s damages, whichever is greater, “for willful infringement and dilution.”
Major League Baseball Properties is the licensing arm of MLB and also acts as the licensing agent for the National Association of Professional Baseball Leagues Inc. (Minor League Baseball). The suit also covers minor league logos and the use of minor league players’ images “for advertising or trade purposes without the written consent of the owners of such rights.”
The suit says that MLBP “has been damaged and has suffered, and continues to suffer, immediate and irreparable injury for which it has no adequate remedy at law” and that the cards released are “likely to cause confusion, mistake or deception as to the source or origin of such trading cards and are likely to cause consumers to draw the false impression that Donruss and/or its trading cards are associated with, authorized, endorsed or sponsored by, or that Donruss is a sponsor of” MLBP, Major League Baseball, Minor League Baseball or other corporate entities.
Citing an overabundance of products on the market, MLBP cut its licensees down to two – Topps and Upper Deck – beginning with the 2006 season. At that time, Donruss did not have its license renewed and ceased production on baseball products. However, it revived its baseball product line with prospects in 2007 with Elite Extra Edition and expanded its baseball offerings to included retired Major League Baseball players in products — Threads, Americana Sports Legends and Prime Cuts — beginning in the fall of 2008. According to the complaint, Donruss received a cease and desist order in August after sell sheets for Threads were released.
In the last decade, according to the suit, the overall revenues from baseball card licensing have topped more than $100 million. However the overall card market has steadily declined from its peak of $1 billion down to about $200 million. The market share has also dropped to approximately 15 to 20 percent of the peak amounts at that same time.
According to the suit, the most recent licensing agreement noted the terms of a license – that “a license from the MLB Entities and/or Licensor is required to use such MLB marks or create derivatives thereof, and agrees that it will during or after the License Period make no use of any such MLB marks other than as provided in this Agreement, without the prior written consent of Licensor or the appropriate individual MLB entity … licensee further acknowledges that for purposes of this Paragraph 15, ‘use’ includes, but is not limited to trademark, fair, incidental, descriptive or functional uses.”
According to the complaint, Donruss also would not use the primary colors of MLB teams in association with logos or geographic locations.
Chris Olds has collected sports cards and memorabilia since 1987. Before coming to Beckett Media, he wrote about the hobby for the Orlando Sentinel on his blog, SportsStuff, and for the San Antonio Express-News and The Tuscaloosa (Ala.) News. Do you have a comment, question or idea? Send e-mail to him at firstname.lastname@example.org.
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