Wednesday, January 28, 2009

MLB Properties v. Donruss: MLBP should prevail

As a trademark attorney and avid baseball card collector, I could not resist a post regarding the recent complaint filed by MLB Properties against Donruss. A full account of the lawsuit can be found at the Beckett blog,

Essentially Donruss, which no longer has a license to create officially-licensed MLB baseball cards (and thus no longer has the right to use MLB trademarks, trade dress, and the like), has been distributing and selling baseball cards featuring current and past ballplayers, featured in their MLB uniforms albeit with logos obscured or blurred in most cases. As an example, here is a 2008 Alan Trammell Donruss Threads:

As is obvious, Donruss made efforts to avoid use of the Tiger's logo and name. However, the card still undoubtedly features MLB "trade dress" via the color scheme of the Detroit Tigers, which is protectable under federal trademark law. MLBP seeks injunctive relief, to prevent Donruss from further use of the trade dress and trademarks. To succeed, MLBP must show that Donruss is using a similar mark or dress, on related goods, that could cause consumer confusion about the sponsorship of the Donruss products.

MLB Properties has a strong case here, as there is no denying that Donruss is using official trademarks and dress on baseball cards and memorabilia cards, which are licensed by MLB exclusively to Topps and Upper Deck. Furthermore, MLB Properties can show trademark "injury", simply based on the popularity of the Donruss cards that have (at least arguably) diverted sales away from similar products from Topps and Upper Deck. My take is that MLBP will likely prevail on the trademark infringement claims, and perhaps on its dilution count as well.

A more interesting claim is MLBP's right of publicity claim, which states that Donruss has infringed the players' right of publicity by using their likeness. Courts have generally been hesitant to recognize these types of claims. Recently, a court upheld a website owner's use of MLB player statistics for a fantasy baseball league. There is, of course, a substantial legal difference between using one's name and statistics versus a picture of the person. Thus it remains to be seen how far the court will reach.

One can debate whether the absence of Donruss has been good or bad for the industry. But what is not debatable is that Donruss attempted to skirt the exclusive licensing rules, and they are likely going to pay the consequence.

Finally, as a reminder of more innocent times, here is one of the first major Donruss must-have cards, Cal Ripken's 1982 rookie card.

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