MLB, Upper Deck settle lawsuit

Posted Mar 3, 2010 by Bob D'Angelo

Updated Mar 3, 2010 at 10:07 PM

Upper Deck won, sort of. Major League Baseball won, definitely. And when you think about it, Topps won, too.

But did card collectors?

On Wednesday, the Upper Deck Company and Major League Baseball announced that they mutually settled a lawsuit that had been filed in federal court by MLB on Feb. 1.

That suit sought unspecified damages against Upper Deck for trademark infringement.

Wednesday, UD agreed to pay MLB’s licensing department more than $2.4 million on sales of unlicensed cards in 2009.

Upper Deck also agreed to pay Major League Baseball Properties an undisclosed sum for 2010 sales.

In a news release, MLBP senior vice president and general counsel Ethan Orlinsky called the decision “a clear and decisive victory for Major League Baseball.”

“The real winners today are the millions of fans who collect baseball cards,” Orlinsky said.

Any UD baseball product not already on the shelves has been shelved — and will not be released.

Upper Deck still will be allowed to sell the three products already on the market: 2009 Signature Stars, 2009 Ultimate Collection and 2010 Upper Deck Series One. Last year, Upper Deck produced 15 different brands of baseball cards.

So despite the reduction in product, count that as a minor victory for the Carlsbad, Calif., company.

But now the landscape of baseball cards has changed. Upper Deck, known for its full, rich photography and its innovative “UV” coating on cards that changed the industry, will have to retool future baseball products.

“Great cards of great players have always been the cornerstone of Upper Deck products,” company CEO Richard McWilliam said in a news release. “We’ll just have to see how innovative and creative we can become now.”

In an e-mail late Wednesday, Upper Deck public relations manager Terry Melia echoed those thoughts.

“The balance of our scheduled baseball releases for 2010 are affected,” he wrote. “So we need to re-strategize and see what we can come up with given the new parameters.”

Here are some of the other particulars of the settlement, quoting from the MLBP release:

Upper Deck agreed it will not make any new sets of cards using MLB logos, uniforms, trade dress or club color combinations;

Upper Deck also agreed it will not airbrush, alter or block MLB marks in future products;

And Upper Deck must receive approval from MLB for the use of baseball jerseys, pants, jackets, caps, helmets or catcher’s equipment in future products featuring players.

That sounds awfully restrictive. So chalk that up as a major win for MLB.

Still, as Robert Lloyd Raskopf, a lawyer for Upper Deck, told The Associated Press, “we’re very pleased we were able to resolve it.”

Beats being totally shut out.

This settlement was revealed hours after Topps, which won exclusive licensing rights to MLB products last year, announced a multiyear licensing deal to make the company the official card of USA Baseball.

Topps had held those rights from 1984 to 1993. In a news release Wednesday, Topps vice president Warren Friss sounded euphoric.

“Now we’re the only trading card licensed by Major League Baseball, Minor League Baseball and USA Baseball,” Friss said. “We are covering the game of baseball at every level.”

The first USA Baseball release will be 2010 Bowman Baseball, which will debut in May and feature cards of the 2009 collegiate national team and 2009 18-under national team.

So Topps wins big, too. Their licensing agreement with MLB has withstood a major test and they’ve tapped back into the prospects and college market that had been Upper Deck’s for some time.

I will be interested to see what Upper Deck comes up with in the future as far as baseball is concerned.