MLB Properties v. Upper Deck Trademark Infringement Suit

Maury Brown of the Biz of Baseball blog reports that Major League Baseball Properties, MLB's trademark licensing and enforcement entity, filed a trademark infringement suit yesterday against trading card manufacturer Upper Deck. The suit was filed in the United States District Court for the Southern District of New York, and alleges that two new sets of trading cards produced by Upper Deck – the Ultimate Collection and Signature Stars sets – improperly use MLB trademarks without permission.

The issue arises out of MLB's decision last summer to name Topps as its exclusive licensee for official MLB sanctioned trading cards. At the time, Upper Deck threatened to file an antitrust lawsuit against MLB, but in lieu of a suit the company apparently elected instead to produce two sets of cards without MLB logos or trademarks, but featuring photos of players in their official MLB uniforms. MLB Properties's suit alleges that this unauthorized depiction of official MLB uniforms constitutes trademark infringement.

For its part, Upper Deck maintains that MLB's position is without legal basis, citing a 1998 decision by the Southern District of New York refusing to grant MLB an injunction under similar circumstances -- a decision later vacated by agreement of the parties. See Major League Baseball Properties, Inc. v. Pacific Trading Cards, Inc., 150 F.3d 149 (2d Cir. 1998).

It will be interesting to see if Upper Deck now elects to assert an antitrust counterclaim challenging MLB's decision to grant Topps an exclusive license. Such a claim would be similar to the exclusive license at issue in American Needle v. NFL, and might also raise interesting issues regarding the scope of MLB's historic antitrust exemption (although MLB Properties notably elected not to rely on the antitrust exemption in another recent trademark related antitrust suit, Major League Baseball Properties, Inc. v. Salvino, 542 F.3d 290 (2d Cir. 2008)).