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Tuesday, January 27, 2009

Donruss being sued by MLB and my take on it

This is my own take on the lawsuit. This is not legal advice or the opinion of my employer. This is not an offer to represent any of the parties or assert any of the claims below. This is merely a summary of possible defenses.

Trademark Infringement Generally: Donruss has a few defense options in regards to trademark infringement including trade dress violations: MLBPA/MLB has not effectively defended their trademarks in the method and manner to which they are seeking to against Donruss. Blue and white, for example, and other color combinations as used by major league teams are used from time to time in various methods and manner to promote many other baseball related items such as little league baseball uniforms bearing the names of the trademarked teams MLB is seeking to enforce here. In other words, little league teams using a blue and white color scheme and calling themselves The Dodgers.

Donruss may have an issue with this defense because, unlike the little league teams, they are using players that are associated with said teams in combination with team names and colors. However, Donruss may assert that similar situations have occurred when MLB has not tried to vigorously defend their trademark such as other unlicensed card products (cereal cards, etc.), Newspaper pictures, websites using photos without permission, Fred McGriff appearing in those Tom Emansky videos wearing colors of a particular team and advertising himself as an MLB player, card shops, and sports bars to name a few. The point is that Donruss may be able to show that MLB, with their extensive resources, have not adequately defended their trademarks.
Breach of Contract: Donruss may be able to rebut the breach of contract claim because the contract essentially expired. MLB, in their complaint, acknowledges this as a possibility.

Specific allegation of confusion, mistake or deception amongst consumers: This is an extremely subjective claim. MLB must show that Donruss’ product is likely to create confusion, mistake or deception amongst consumers. What consumers? Are any of us confused? Certainly not I. I know that Donruss is putting out an unlicensed product. Is MLB going to trot 100 potential customers up to the witness stand to sustain its claim? Is some 7 year old going to be deposed to show the confusion. Some soccer mom from Reseda maybe? Similar to the above, MLB must show that Donruss’ products are likely to create a false impression that their products are licensed. Very, very difficult to prove in this case.

Count III: Dilution. Yes, some of the trademarks were famous before Donruss used them, but some not such as the Marlins, Rockies, and newer teams as well as any logos that were used by Donruss while they held a license. This claim may need to be fleshed out more in an amended complaint. Thus, this claim may not have been pled with enough specificity. In addition, what is the threshold for dilution? Are 1 million cards dilution?

Count IV: Unfair Competition: This claim is not pled with specificity.

Count V: Trademark infringement under the common Law of the State of New York. Again, more specificity may be needed.

Count VI: See Count III above.

Count VII: Paragraph 50 does not sufficiently plead which players they are referring to. Some players may not be under contract, the picture may be from before any contracts were signed. Some are in their college uniforms and thus MLB cannot assert the trademark or dilution claims.

As much as I loathe the RIAA, if you look at their complaints you will see that the specific Artist, song, and copyright holder is pled for each claim. That has not occurred here. This could present problems for MLB. MLB may need to plead each instance, i.e. card, promotional item, etc., to support these claims. A motion to make more definite and certain, Motion to Dismiss for Failure to State a Claim, Motion to Dismiss for Bad Faith for asserting trademarks the Plaintiff does not own. There are many motions to be filed here.


Motherscratcher said...

I was hoping you would weigh in on this. Thanks for the post.

My only advice would be that Donruss stay away from the Dick Cheney Defense (whatever that is). I tried it once and just ended up looking like an asshole.

Grand Cards said...

Although I don't have a professional legal background, I do have some experience with dissecting legal cases. I see two things here: 1. Donruss clearly uses the MLB teams color scheme in combination with geographic location. These seems clear-cut to me. The "little league" argument seems fallacious, as those groups don't use the colors and logos for commercial objectives. As for older unlicensed cards, the logos and jerseys on those were completely destroyed on those, not just partially hidden. More importantly, there was a specific agreement in place the prevented Donruss from doing this, possibly not so with other companies. As for "intentionally deceptive", subjective as it may be, I don't know that the argument is that they are intentionally trying to deceive people into believing that they have a licensed product. Rather, they are intentionally showing colors and partial logos (easily recognizable) to add value to their product--in effect intentionally deceiving consumers into thinking that they are buying a card of a Los Angeles Dodgers player. The consumers are OK with this, given that it looks like a dodgers player etc. I think MLB has a solid case, if there was an agreement in place the explicitly banned this behavior.