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 (Toll Free)

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

By CHRIS OLDS | Beckett Baseball Editor

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 question2009 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.”

More after the jump …

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.

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.

8 Comments

Kevin

oh please, I didn’t see this coming…oh please
don’t sell this stuff…..yeah Ok. Please Upper Deck, go away. Anything to sell something huh.

Posted January 29, 2010 at 9:55 pm | Permalink

I like Upper Deck. In fact, of my favorite sets to collect, Upper Deck Piece of History is top two. I know I would be greatly disappointed if Topps (in their infinite “wisdom”) monopolized the industry so only they could sell baseball cards. Because while Topps has some nice card sets (Allen and Ginter, for example), they also have some really bad ones (like this new Chicle football stuff, or the Topps 206).

Diversity in the marketplace isn’t a bad thing – it helps keep prices down, it provides collectors with variety (I collect because I like the various designs of the cards, not for how many hits there are per box), and it keeps things interesting on a year-to-year basis.

I hope the courts side with Upper Deck.

Posted January 30, 2010 at 10:46 am | Permalink

I don’t think Upper Deck should win this battle, but it’s going to be very interesting to see how this goes down. If UD can get away with this then there’s really no stopping any company from printing up some cards without approval.

Posted January 30, 2010 at 7:52 pm | Permalink
Phil Regetta

What exactly is a pingback and why do I keep seeing them in the comments? They don’t seem to be of any benefit.

Posted February 1, 2010 at 11:41 am | Permalink
Mac

Um, the law is pretty clear here and has been upheld a LOT in court. You can not use the trademark of another company (teams logos) without permission in commercial products like cards. UD is going under fast!

Posted February 5, 2010 at 2:20 am | Permalink
Erik

Hey, wait a minute…I am a father of two baseball fanatic sons (6 & 8) and I am also a Patent and Trademark Attorney. I am certain MLB has a good position here, but come on…As season ticket holders, we get gauged by MLB and MLB properties all year (especially at Christmas) — but it becomes silly when a big company wants to prevent the “B” on Kevin Y’s batting helmut from being displayed in a photograph. My kids (and us big kids too) know who Keven Y’ plays for (and we are Orioles fans!) and Photoshopping(R) the “B” out of the photo is absurd and would be stupid. There is some fair use here, and, more importantly, in a time when our children need to see their heros, let them…the players want kids to see images as they really are. My son’s hero is Jackie Robinson and it was shocking this year when a little white boy was told by a MLB spokesman at a MLB game that my son could not be Jackie for Halloween because my son “was not black.” This MLB stuff is going too far, and we need to get back to the fundamentals of the game — not whose making making money from pictures or otherwise. In simpler times, we respected players like Honus Wagner who stood up and said no to supporting a particular product, and now we want to help MLB stamp out the littler guy in commerce and hurt our kids in the process — We need to look at ourselves!

Posted February 6, 2010 at 7:30 am | Permalink
Zach

It will be interesting to see how all this turns out. If it goes in favor of UD. It could be big for both UD and Donruss.

Posted February 7, 2010 at 6:07 pm | Permalink
Erik

Yes, UD would likely and rightly lose under applicable legal standards and theories. But, seriously, I am going to not buy Topps cards this year as we should be concerned about baseball and not about exclusive rights, etc. We should all be able to buy cards from numerous sources free of the thought that MLB is again raising prices, etc.

Posted February 8, 2010 at 12:43 pm | Permalink

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