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Thursday, January 29, 2009

More thoughts on Donruss Being Sued by MLB - The other side

Regardless of my last post on the topic, I think Donruss is in some trouble. I am sure they got tons of legal advice before they went into production and certainly after they received the cease and desist letter from MLB. I still think that the complaint needs to be amended and it probably will be. Some of the counts are a bit skimpy. The worst thing that can happen is that MLB ends up on the business end of a bad faith claim because they tried to assert trademark claims on trademarks they do not own, such as the players that are in college uniform or independent league uniforms etc. In addition, the trade dress may not make it in the case of cards that show the player in a plain blue, grey, white, or simple pin stripe uniform. Those could be any uniform and in the case of pin stripes, which one is it, yankees, cubs, white socks, phils, or any other team that has ever had a basic pin stripe. Assuming the complaint will be amended I present my view of the other side.

Trademark infringement: Each player is shown in a uniform with specific color combinations and uniforms "trade dress" that are associated with the trademarks of the plaintiff. In addition, the stats on the back along with the city name on the front associate the trademark holder's trademarks In fact, some cards do not adequately block out the trademarks including where much of the team name is visable on the jersey but is merely obscured but not completely obliterated.

Confusion, mistake and deception: Donruss may concentrate on the learned collector knowing the difference of licensed v. non licensed cards, however, there are plenty of consumers, both actual and potential that do not. The seven year old says "I want some baseball cards" thinking he or she is getting major league baseball cards, but is essentially getting a cheap imposter. The packs of donruss cards are often merchandised and sold near or in the middle of licensed products and therefore a consumer does not have adequate notice of the non licensed product. Thus the way that cards are merchandised and sold allows donruss products to masquerade as a licensed product. Therefore, donruss is benefiting directly from the confusion that a consumer is likely to have.

Count III: Sport team trademarks, trade dress, logos etc are widely known and associated with MLB. There can be no other conclusion. In fact, if I say New York 4 out of the top 5 things most people would associate with the city name would be a sports team. Donruss acknowledged this when they signed the contract (now expired) but MLB may be able to show bad faith on behalf of Donruss because of their level of knowledge about the trading card and sports industry. The trademarks et al are being diluted by Donruss because of the number of cards and products produced in addition to the cards making the value of those logos much less by essentially doing away with the exclusivity of them.

Count IV Unfair Competition: Donruss is intentionally using the trademarks of others without permission to gain an advantage in the marketplace because they are not paying licensing fees or abiding by the trademark holder's wishes. This gives them a cost and marketing advantage.

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