MLB settles infringement lawsuit with Upper Deck

The lawsuit that pitted MLB against trading card maker Upper Deck was settled March 3 prior to its scheduled April court date. The suit, in which Major League Baseball Properties alleged Upper Deck had broken trademark infringement laws with three unlicensed baseball card products released early this year, was settled out of court for an unspecified amount. The suit ends with UD being allowed to continue sales of the three Upper Deck baseball card products, 2009 Signatures Stars, 2009 Ultimate Collection and 2010 Series 1 Baseball, but will be prohibited from producing any other baseball brands moving forward. 

In August of 2009, MLB granted Topps. an exclusive, long-term license to produce its trading cards, beginning on Jan. 1 of this year. The deal gave Topps exclusive rights to all licensed baseball cards and ultimately ended Upper Deck’s 22-year relationship with MLB. Upper Deck soon agreed to a licensing agreement with the MLB Players Association, a deal that provides rights to sell cards with players’ images and likenesses. Upper Deck then debuted two new sets of cards, its "Signature Stars" and "Ultimate Collection" lines for the 2009 season and later its signature baseball brand Upper Deck Series 1 that do not have team names or logos printed on the borders of the cards, but do include pictures of players in MLB uniforms. MLBP then sued Upper Deck in February for trademark infringement violations and sought a temporary restraining order to halt the release of all three products and set the stage for the courtroom battle that was set to begin April 19.

The following is a summary of the non-confidential portions of the settlement released March 3 by MLB.

  • Upper Deck will pay MLBP more than $2.4 million (the entire amount in dispute with UD’s 2009 debts)
  • Upper Deck will pay MLBP a substantial sum of monies for the unlicensed 2010 cards it sold
  • Upper Deck has agreed not to issue any additional infringing releases that in 2010
  • Upper Deck has agreed it will not make any new sets of cardsusing MLB logos, uniforms, trade dress or Club color combinations
  • Upper Deck also agreed it will not airbrush, alter or blockMLB marks in future products
  • Upper Deck must receive approval from MLB for use of baseball jerseys, pants, jackets, caps or helmets in future products featuring MLB players
  • "Our settlement in the case against Upper Deck is a clear and decisive vistory for Major League Baseball," said Ethan Orlinsky, Senior VP and general counsel of MLB Properties. "Upper Deck will be unable to release baseball trading cards that incorporate MLB’s intellectual property in the future. The real winners today are the millions of fans who collect baseball cards. They will be able to clearly identify official MLB trading cards without any confusion."

    "Upper Deck is pleased wirth the settlement including the amount paid as it relates to the trading cards released in 2010," said Jason Masherah, UD’s director of sports brands. "As a company, we are changing the direction of Upper Deck’s baseball products going forward. We are looking forward to creating fresh and innovative set content that will continue to get collectors excited."

    Tuff Stuff will provide more information on this story as it continues to unfold so stay tuned.

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