Major League Baseball Properties, Inc. recently sued Donruss Playoff, LP and Donruss LLC alleging that Donruss, a former licensee of MLB with respect to baseball trading cards, has continued to make and distribute baseball cards that use images of Major League Baseball and Minor League Baseball players in their team’s proprietary uniforms, thereby infringing up on the trademarks owned by the individual teams. In the federal complaint, filed with the United States District Court for the Southern District of New York, MLB also alleges that Donruss breached the terms of its now expired contract as well. As a former baseball card collector myself this is a case that I will definitely be keeping an eye on as it moves through the judicial process. I just wish that MLB had tried to curtail the number of baseball card companies operating much sooner than now. Major League Baseball over extended itself and allowed virtually anyone to make baseball cards, which virtually killed the market. It may be to late for any real recovery, but if the allegations in the complaint are true it would seem that this is an open and shut case. Of course, after reading only the complaint that is exactly how it ought to look though.
Major League Baseball Properties is the entity that is owned by the 30 Major League Baseball clubs and is responsible for licensing the manufacture, production, distribution, sale and promotion of products bearing the trademarks of the MLB clubs. The complaint filed by Richard S. Mandel, of Cowan, Liebowitz & Latam, alleges that Donruss has breached the now expired contract previously controlling the business relationship between the company and MLB Properties, and also alleges two different federal trademark law claims, as well as several New York State law claims. The two federal trademark claims are Counts II and III, which allege a likelihood of confusion and dilution, respectively.
The likelihood of confusion claim is an all-purpose trademark infringement claim that is brought in virtually every trademark case. The reason it is so often used is that you do not even have to own a federally registered trademark in order to make a claim under this section of the law – 15 USC 1125(a). Specifically, this section of the law prevents anyone from using “any word, term, name, symbol, or device, or any combination thereof” in a manner that would likely cause confusion in the mind of the consuming public. While there are different tests to determine whether there is a likelihood of confusion, virtually all of them are substantively identical, although the actual wording may vary from court to court. One of the things that does get factor into the equation all the time is whether the plaintiff owns a federally registered trademark and how strong that mark is. While you do not need to have a federally registered trademark in order to rely upon a likelihood of confusion theory, if you do have one your case is much stronger. On top of that, if you have a strong, well established and recognizable trademark then you have an even stronger case. Here, where there are federally registered trademarks that are extremely strong, recognizable and closely identified with the sport and various teams, it would seem that Donruss has their work cut out for them on this theory.
One aspect of the likelihood of confusion comes into play when someone is using a word, term, name or symbol that is so close to one used previously by someone else that the relevant consuming public might be tricked into believing they are purchasing goods or services from a different entity. For example, would public be likely confused by business starting to use the trademark “Sleekcraft” after another company has already been using the trademark “Slickcraft”? This was the question in AMF, Inv. v. Sleekcraft Boats some 30 years ago. If the answer is yes, then the person who is second has engaged in a form of trademark infringement due to the likely creation of confusion. In this case it was determined that there was trademark infringement, which seems to make a lot of sense.
This type of confusion is not the type of confusion that Major League Baseball is claiming in its dispute with Donruss. Donruss is not fielding a competing league and then trying to convince people it is really Major League Baseball. Rather, what is actionable here is likely going to be the perception that Major League Baseball is authorizing or even supporting the Donruss use of its trademarks. This would also be a form of confusion that could be stopped by the owners of a trademark, both under a likelihood of confusion theory as well as under a dilution theory.
A claim based on the theory of dilution is always harder to make than a claim for the likely creation of confusion. First, under a likelihood of confusion theory you really do not have to prove the existence of confusion, just that it is likely to happen. Under dilution you need to first have a famous trademark, which the trademarks in question likely are, but then you also need to have either blurring or tarnishment. Tarnishment is when you have a use that is in some way scandalous, not unlike the use of American Idol trademarks by Stripper Idol and associated with a gentleman’s club. That is not what we have here in this case, but rather an issue of blurring. Blurring occurs when a trademark is so pervasive that any use of the trademark would be viewed as by or with the permission of the trademark owner.
All of this talk about what trademark theory will be successful against Donruss is largely academic. The trademarks are owned by Major League Baseball and the trademark owners can allow them to be used by others or not. If I were a betting man I would say that this dispute will never see the inside of a courtroom, except perhaps for preliminary motions and maybe a procedural hearing. It looks like a quick and easy victory for MLB. Of course, maybe Donruss will try and drag it on in hopes of securing a new licensing deal for themselves.
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide