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UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK----------------------------------------------------------------- X
THE TOPPS COMPANY, INC.,
Plaintiff,
- against -
THE UPPER DECK COMPANY, INC.,
Defendant.
----------------------------------------------------------------- X
09 Civ. 3780 (RMB)
ECF case
SECONDAMENDED COMPLAINT
JURY TRIAL DEMANDED
Plaintiff, The Topps Company, Inc., by its attorneys, Ingram Yuzek Gainen Carroll &
Bertolotti, LLP, for its second amended complaint against defendant, The Upper Deck Company,
Inc., alleges as follows:
Jurisdiction
1. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338, and 15
U.S.C. § 1121 because this case arises under 17 U.S.C. § 101 et seq. and 15 U.S.C. 1051 et seq.
This Court has supplemental jurisdiction over the related state law claims under 28 U.S.C.
§§ 1367 and 1338.
2. This Court has personal jurisdiction over Upper Deck because Upper Deck
conducts business in this district, or committed a tort in this district.
The Parties
3. Topps is a Delaware corporation with its principal place of business at 1
Whitehall Street, New York, New York 10004.
4. Upon information and belief, Upper Deck is a Nevada corporation with its
principal place of business at 5909 Sea Otter Place, Carlsbad, California 92010. Upper Deck
326571 2/00695-0073
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 1 of 38
conducts business in New York and throughout the country through stores , distributors, and on
its www.operdeck.com website.
Factual Background
5. Topps is a leading marketer, manufacturer, and distributor of sports and
entertainment products, including trading cards, stickers, confectionery products, and related items.
6. Since 1952, Topps has manufactured and sold trading cards bearing a baseball
player's name, signature, likeness, team name, position, and statistics. Topps's baseball cards,
along with its other sports and entertainment trading card products, have become a well-
established part of American culture.
Topps' s Trademarks
7. Continuously since in or about 1938, Topps has used the name and mark TOPPS
to identify its products. Topps has used the name and mark TOPPS, and variants of it,
extensively in the United States and throughout the world on its products, including trading
cards, packaging for its products, and in advertising and promoting its products in trade and
consumer magazines, television, and on the Internet.
8. Topps registered its name and mark TOPPS in the United States Patent and
Trademark Office, and owns numerous registrations incorporating the name and mark TOPPS
including, without limitation, the following:
Mark Registration No. Issue Date
TOPPS 835,967 Sept. 26, 1967
TOPPS(stylized)
1,809,166 December 7, 1993
Goods
Trading cards and stickers
Trading cards, comic books,magazines and books onsports and entertainment
326571_2/00695-0073 2
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 2 of 38
These registrations are currently valid , subsisting and in full force, registered on the Principal
Trademark Register of the USPTO, and are incontestable in accordance with 15 U.S.C. § 1065.
Copies of the registration certificates for the above marks are annexed as Exhibit A.
9. Topps has used the name and mark TOPPS extensively and continually in sales,
advertising, and promotion in the United States for over 70 years, and has been using the name
and mark TOPPS on sports trading cards for over 50 years. Topps has expended substantial
time, effort and money to ensure that the purchasing public associates its marks exclusively with
Topps and its products.
10. As a result of its efforts, the TOPPS name and mark has acquired secondary
meaning, substantial goodwill, has become famous, and uniquely identifies Topps's products.
The TOPPS name and mark is an asset of incalculable value as symbols of Topps's high quality
entertainment and other products, including, without limitation, sports trading cards.
Topps's Copyrights
11. Topps created, developed, and published for sale baseball cards that were
registered with the United States Register of Copyrights as follows:
Card Name Year U.S. Copyright No. Reg. Date
Topps 1963 Baseball 1963 Appears in January 29, 1986TX0001730597
Topps 1971 Baseball 1971 Appears in January 29, 1986TX0001730597
Topps 1972 Baseball 1972 Appears in January 29, 1986TX0001730597
Topps 1975 Baseball 1975 VA0000305111;
Appears in
May 31, 1988
January 29, 1986TX0001730597
326571 2/00695-0073 3
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 3 of 38
Topps 1977 Baseball 1977 VA0000314529; July 25, 1988
Appears inTX0001730597
January 29, 1986
Topps 1988 Baseball 1987 VA0000523948 September 15, 1992
12. Topps created, developed, and published for sale hockey cards that are registered
with the United States Register of Copyrights as follows.
Card Name Year U.S. Copyright No. Reg. Date
1979-1980 Topps Hockey 1979-1980 VA 1-666-231 May 28, 2009
Topps's 1963 Baseball Cards
13. The Topps 1963 Baseball series consists of 576 cards. An image of each of these
cards appears in "Topps® Baseball Cards: The Complete Picture Collection (A 35 Year History,
1951-1985)," a 1985 publication, which Topps copyrighted and registered with the Register of
Copyrights under its former name, Topps Chewing Gum, Inc., on January 29, 1986, under U.S.
Copyright No. TX0001730597, as a non-dramatic literary work ("the Book"). This registration
is prima facie valid under 17 U.S.C. § 410(c). A copy of Topps's registration certificate for the
Book is annexed as Exhibit B.
14. This is the front and back image of the Topps 1963 Baseball card featuring Bob
Buhl:
326571_2/00695-0073 4
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 4 of 38
15. Topps owns the copyright in this card.
Topps 's 1971 Baseball Cards
16. The Topps 1971 Baseball series consists of 752 cards. An image of each of these
cards also appears in the Book. Copies of the images of the Topps 1971 Baseball series as they
appear in the Book are annexed as Exhibit C.
17. This is a representative example of a Topps 1971 Baseball card:
P- with n f-f- arm,John,) lri HL LLItf1a:n A-sots, }9F?56 . Ha d,d not co,mit we?nd ; all cf 1568 f, ;.dthe`malw kagun3 =with,IDCC
ui"r " T"Pl" HllhHT in 19Fi5.'.
11111 IT IMI IU-195i, F.S G1E I. LS -7958
18. Except for a few variations, the basic design of the Topps 1971 Baseball card
includes the following elements:
(a) A black border;
326571_2/00695-0073 5
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 5 of 38
(b) A photo of the player superimposed over a thin white rectangular bordersuperimposed over the black border;
(c) Curved photo corners so that the edges of the white border show atriangular blank space;
(d) The player's autograph toward the bottom of the player's photo;
(e) The player's team's name at the top, in stylized, all capital letters;
(f) The player's name immediately underneath and to the left of the teamname, in stylized lower case letters that are smaller and in a different colorthan the team name;
(g) To the right of the player's name, the player's position, also in a differentcolor and stylized lower case letters; and
(h) A contrasting colored dot between the player's name and position.
19. Topps owns the copyright to each card in the Topps 1971 Baseball series.
Topps's 1972 Baseball Cards
20. The Topps 1972 Baseball series consists of 787 cards. An image of each of these
cards also appears in the Book.
21. This is the front image of the Topps 1972 Baseball Rookie Stars card featuring
Johnny Oates, Rori Harrison, and Don Baylor:
22. Topps owns the copyright in this card.
326571_2/00695-0073 6
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 6 of 38
Tom's 1975 Baseball Cards
23. The Topps 1975 Baseball series consists of 660 cards. An image of each of these
cards appears in the Book. Topps deposited and registered each card in the Topps 1975 Baseball
series with the Register of Copyrights under its former name, Topps Chewing Gum, Inc., on May
31, 1988, under U.S. Copyright No. VA0000305 1 11 as a work of visual art. Copies of the
images of the Topps 1975 Baseball series as they appear in the Book are annexed as Exhibit D.
A copy of Topps's registration certificate for the Topps 1975 Baseball series is annexed as
Exhibit E.
24. This is a representative example of a Topps 1975 Baseball card:
25. Except for a few variations , the basic design of the Topps 1975 Baseball card
includes the following elements:
(a) A colorful , divided two-tone border;
(b) The player ' s picture superimposed on a thin white border superimposedover the two -tone border;
(c) A white border around the photo , curved on all four corners;
(d) The player ' s autograph toward the bottom of the player's photo;
(e) The player's team ' s name at the top, in stylized, all capital letters, withblack shading underneath the team ' s name;
326571_2/00695-0073 7
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 7 of 38
(f) The player's name at the bottom of the card in stylized, all capital lettersin a contrasting color; and
(g) The player's position inside of an image of a baseball superimposed on thebottom right corner of the player's photo, with black shading underneaththe baseball image.
26. Topps owns the copyright to each card in the Topps 1975 Baseball series.
Topps's 1977 Baseball Cards
27. The Topps 1977 Baseball series consists of 660 cards. An image of each of these
cards appears in the Book. Topps deposited and registered 12 card designs from the 660 cards in
the Topps 1977 Baseball series with the Register of Copyrights under its former name, Topps
Chewing Gum, Inc., on July 25, 1988, under U.S. Copyright No. VA0000314529, as a work of
visual art. Copies of the images of the Topps 1977 Baseball series as they appear in the Book are
annexed as Exhibit F. A copy of Topps's registration certificate for the Topps 1977 Baseball
series is annexed as Exhibit G.
28. This is a representative example of a Topps 1977 Baseball card:
PAU. B.La-. w-lr era wn-^nE n^ ,r °a1+.Rwa w ,,^lfu,-A[d1: is KK1II -SFL'L>. n :.!-u-GU^y.:f,+ xm,. M:zr<.111 ^.
"9tf:4f.1ctttl Esti1rt Yyw
:1fa^-ea1r. ;
r,a xm-
'.k to- I. A 11.1x.
-Z`' 15]1TOf1 [H:R- G - ---1.ll.1. ♦
29. Except for a few variations, the basic design of the Topps 1977 Baseball card
includes the following elements:
326571_2/00695-00738
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 8 of 38
(a) A white border, with the player's picture superimposed over a double-linewhite rectangular border;
(b) The player's team name at the top in stylized, all capital italicized letters;
(c) The player's name in smaller stylized, all capital letters immediatelyunderneath the team name;
(d) The player's autograph toward the bottom of the player's photo; and
(e) A distinctive colored banner with the player's position in the top-rightcorner, with black shading underneath the banner.
30. Topps owns the copyright to each card in the Topps 1977 Baseball series.
Topps's 1988 Baseball Cards
31. The Topps 1988 Baseball series consists of 792 cards. Topps deposited and
registered each card in the Topps 1988 Baseball series with the Register of Copyrights under The
Topps Company, Inc., on September 15, 1992, under U.S. Copyright No. VA0000523948, as a
work of visual art. A copy of Topps's registration certificate for the Topps 1988 Baseball series
is annexed as Exhibit H.
32. This is the front image of the Topps 1988 Baseball Ken Caminetti card:
33. This is the front image of the Topps 1988 Baseball Joe Niekro card:
326571_2/00695-0073 9
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 9 of 38
34. Topps owns the copyright in both cards.
35. Topps secured the exclusive rights and privilegeT-and to the copyright in the
1963, 1971, 1972, 1975, 1977, and 1988 Baseball cards by complying with the statutory
formalities required under the 1909 and 1976 Copyright Acts.
1979-1980 Topps Hockev Cards
36. The 1979-1980 Topps Hockey card consists of 264 cards. Topps applied for a
copyright registration for this product on an expedited basis by depositing a complete set of
images of the front and back of the cards with the Register of Copyrights on May 27, 2009, as a
work of text and visual art. A copy of Topps's registration certificate for the 1979-1980 Topps
Hockey series is annexed as Exhibit I.
37. This is a representative example of a 1979-1980 Topps Hockey card:
326571_2/00695-0073 10
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 10 of 38
38. Except for a few variations, the basic design of the 1979-1980 Topps Hockey card
includes the following elements:
(a) A blue background; with the player's picture superimposed on a thin whiteborder superimposed over the blue background;
(b) The curving of the white border around the photo on all four corners,except the bottom right corner that is inverted along the circular graphicimage, with the image of the team logo within the circle;
(c) The player's name at the top in white color, in stylized, all capital letters,with a circled white dot between the player name and the abbreviation ofthe player's position in the team;
(d) A swooshing, curved strip of line in varying colors that spans from the topleft of the card to the bottom right until it coils into the circular graphicbearing the image of the team logo in the circle (as if to resemble a puck);
(e) The manner in which the team name appears inside the thick portion of theswooshing strip of line, at the top, in all capital, italicized letters, indifferent colors; and
(f) The use of the ice skate image on the back, the cartoon on the upper rightcorner, and the unique layout of the statistical and other player informationon the back of the card.
39. Topps owns the copyright to each card in the Topps 1979-1980 Hockey series.
326571_2/00695-007311
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 11 of 38
40. Topps secured the exclusive rights and privilege in and to the copyright in the
1979-1980 Hockey cards by complying with the statutory formalities required under the 1976
Copyright Act.
The Parties' Relationship with O-Pee-Chee
41. The cards at issue in this action are commonly known in the trading card industry
as the "Topps/O-Pee-Chee" cards. O-Pee-Chee Company, Ltd. is a Canadian company that had
a license agreement with Topps from the late 1950s through the early 1990s under which Topps
granted O-Pee-Chee the right to produce baseball and hockey trading cards using O-Pee-Chee's
trademarks. During this period, Topps and O-Pee-Chee sold identical, or nearly-identical,
trading cards, including the cards described in this complaint. Topps sold them in the United
States, and O-Pee-Chee sold in Canada.
42. The O-Pee-Chee cards bore French language on the back of the cards, but in other
respects were fundamentally a replica of the Topps sets.
43. Topps did not transfer to O-Pee-Chee or any other person or entity any of its
rights in any of the card designs at issue.
Public Recoenition of the Topps Baseball and Hockey Cards
44. The unique combination and spatial relationship of each of the individual design
elements that appear on the front of the Topps 1971, 1975, and 1977 Baseball, and on the front
and back of the 1979-1980 Topps Hockey cards (collectively, the "Topps Cards") produces a
particular trade dress that is unique, and gives the Topps Cards a distinctive overall look and
commercial impression.
45. Topps has expended great sums to advertise and promote the Topps Cards in the
United States. As a result of these efforts, and the quality and craftsmanship of these cards,
326571_2/00695 -0073 12
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 12 of 38
Topps has enjoyed significant sales success. 'The Topps Cards have obtained vast media
coverage through the publication of Topps's Book, card collector guides and publications, and
unsolicited media coverage, including on the Internet. The Topps Cards have gained substantial
value and recognition in the United States and have become an asset to Topps of incalculable
value.
46. In the trading card world, cards that were sold in the past do not necessarily lose
their value after the point of first sale and, in fact, many cards increase in value after the initial
sale. There is a vast secondary market for trading cards as collectibles. Card shows throughout
the country enable collectors and dealers to buy and sell trading cards. Hobby and memorabilia
stores deal in old baseball and other sports trading cards. Individuals sell and purchase trading
cards on eBay and other auction sites. In this way, the Topps Cards are in vibrant circulation in
the secondary market and are still actively sought after by collectors and dealers. The Topps
Cards have garnered significant consumer recognition.
47. In short, the Topps Cards are iconic products that continue to gain recognition
with age.
48. Topps has extensively reused the card designs of the Topps Cards in subsequent
series, including in the last few years.
49. The Topps Cards's designs are not functional.
Upper Deck's InfrinEement
50. Upper Deck, a Topps competitor, has been manufacturing and selling sports and
entertainment trading cards in the United States and abroad since 1988.
51. In 2007, Upper Deck launched a campaign to "re-introduce" the O-Pee-Chee
brand name. In a March 1, 2007 press release, Upper Deck announced on its web site (without
326571_2/00695 -0073 13
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 13 of 38
images of any anticipated card designs) that it secured the rights to the O-Pee-Chee brand name,
and stated that it "is proud to re-introduce the O-Pee-Chee name to a new generation of
collecting enthusiasts." A copy of this press release is annexed as Exhibit J. In re-introducing
the O-Pee-Chee brand name, Upper Deck has used certain designs that Topps owns exclusively.
Upper Deck's Copyin2 of Topps's Baseball Cards
52. Upon information and belief, on or about January 19, 2009, Upper Deck started
selling cards that copy the Topps 1975 Baseball card design, which, in turn, are being sold on the
secondary market. A copy of Upper Deck's company web page showing the release date for this
product is annexed as Exhibit K. Copies of the auction pages from eBay are annexed as Exhibit
L.
53. Below is a side-by-side comparison of a 2009 Upper Deck product that copies the
Topps 1975 Baseball card design:
2009 MLB Upper Deck Series 1 Topps 1975 Baseball
54. Upper Deck has copied the following design features from Topps's 1975 Baseball
series:
(a) The colorful, divided two-tone border;
326571_2/00695-0073 14
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 14 of 38
(b) The player's picture superimposed on a thin white border superimposedover the two-tone border;
(c) The white border around the photo, curved on all four corners;
(d) The player's team's name at the top, in stylized, all capital letters, withblack shading underneath the team's name, in a font that is similar to theTopps card;
(e) The player's name at the bottom of the card in stylized, all capital lettersin a contrasting color, in a font that is similar to the Topps card; and
(f) The use of the baseball image superimposed on the bottom corner of thecard.
55. According to one baseball card-related blog site, at
http:Hcompletist .wordpress.com/2009/02/18/upper-deck-series-two-preview/, Upper Deck
intended to release baseball cards in May 2009 that copy the Topps 1977 Baseball card design.
A copy of that web page is annexed as Exhibit M.
56. Below is a side-by-side comparison of a 2009 Upper Deck product that copies the
Topps 1977 Baseball card design:
Upper Deck Series 2 Topps 1977 Baseball
57. Upper Deck has copied the following design features from Topps 's 1977 Baseball
series:
326571_2/00695-0073 15
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 15 of 38
(a) The white border, with the player's picture superimposed over a double-line white rectangular border;
(b) The player's team name at the top in stylized, all capital italicized letters,in a font that is the same as, or very similar to, the font used in the Toppscard;
(c) The player's name in smaller stylized, all capital letters immediatelyunderneath the team name, in a font that is the same as, or very similar to,the font used in the Topps card;
(d) The distinctive colored banner with the player's position in the top-rightcorner, with black shading underneath the banner; and
(e) The player's autograph toward the bottom of the player's photo.
58. According to the same blog at http://completist.wordDress.com/2009/02/09/2009-
o-pee-chee-preview/, Upper Deck intended to release cards in June 2009 that copy the Topps
1971 Baseball card design . A copy of that web page annexed as Exhibit N.
59. Below is a side-by-side comparison of a 2009 Upper Deck product that copies the
Topps 1971 Baseball card design:
2009 Upper Deck O-Pee-Chee Baseball Topps 1971 Baseball
60. Upper Deck has copied the following design features from Topps's 1971 Baseball
series:
326571_2/00695-007316
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 16 of 38
(a) The black border;
(b) The photo of the player superimposed over a thin white rectangular bordersuperimposed over the black border;
(c) Curved photo corners so that the edges of the white border show atriangular blank space;
(d) The player's autograph toward the bottom of the player's photo;
(e) The player's team's name at the top, in stylized, all capital letters, in a fontthat is the same as , or very similar to, the font used in the Topps card;
(fl The player's name immediately underneath and to the left of the teamname, in stylized lower case letters that are smaller and in a different colorthan the team name, in a font that is the same as, or very similar to, thefont used in the Topps card;
The player's position to the right of the player's name, also in a differentcolor and stylized lower case letters; and
(h) A contrasting colored dot between the player's name and position.
Upper Deck's Copying of Tom's Hockey Cards
61. Topps discovered after commencing this action that Upper Deck started selling in
October 2008 its 2008-2009 NHL O-Pee-Chee product, which includes card designs that are
almost identical to the 1979-1980 Topps Hockey card design. A copy of Upper Deck's company
web page showing the release date for this product is annexed as Exhibit O. Copies of auction
pages from eBay showing sales of these cards on the secondary market are annexed as Exhibit P.
62. Below is a side-by-side comparison of Upper Deck's 2008-2009 NHL O-Pee-
Chee product that copies the 1979-1980 Topps Hockey card design:
326571_2/00695-0073 17
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 17 of 38
Upper Deck's 2008-09 NHL O-Pee-Ghee Upper Deck 's 2008-09 NHL O-Pee-CheeFRONT BACK
Topps's 1979-1980 Topps HockeyFRONT
563MUGHi: 5'!o'. WLGHT: 1S5SHOOIS:L11:Ut HHL $WON : IS5; 'S80BH :1 1^4, Pac; A^x.. Cn!
2008.09
ri.il's pa er ^ ^fMt s:+• ^ kmtp C ^ i+;i ^o►Sts nl9btmt ie c.^.o a,» fir ro =6 t. N n'rFe rt ai.x a?c 'u savve timtc cnd
M'_:-'.::l e.+ae the 9ar^:..re RI IM-51.
Topps's 1979-1980 Topps HockeyBACK
63. Topps also discovered after commencing this action that Upper Deck, according to
its website, started on March 25 or April 14, 2009 (which is the day that Topps filed its original
complaint in this action) to distribute its 2008-2009 NHL OPC Update Hockey set, which includes
Upper Deck cards that are also nearly identical to Topps's 1979-1980 Hockey card design. A copy
326571 _2/00695-0073 18
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 18 of 38
of Upper Deck's company web page, showing both March 25 and April 14, 2009 as the release
date for this product, is annexed as Exhibit Q. Copies of auction pages from eBay showing sales
of these cards on the secondary market are annexed as Exhibit R.
64. Below is a side-by-side comparison of Upper Deck's 2008-2009 NHL OPC
Update Hockey product that copies the 1979-1980 Topps Hockey card design:
Upper Deck's 2008-09 NHL O-Pee-Chee Upper Deck's 2008-09 NHL O-Pee-CheeUpdate Hockey Update Hockey
FRONT BACK
Topps's 1979-1980 Topps HockeyFRONT
795KEh^il
01i\V EI XT
SH0u not e^soti 2008.09rioah
MOO Reewd - Roa eomme ioueur
_,_7--. - - v. ---s
a•co.,mq his f:;rcem-: , S=-,i, ci OKI, Stamk;:acr .,i.e^ Ople WS^e:e, 6^Ii sstttbNstsack-
.`.^.Gler
Topps's 1979-1980 Topps HockeyBACK
IN:
326571_2/00695-0073 19
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 19 of 38
65. On June 18, 2009, Topps discovered that Upper Deck had released on June 16 or
19, 2009, its 2009 O-Pee-Ghee Baseball product (the same product described above in which
Upper Deck intended to release cards bearing designs that were similar to the Topps 1971
Baseball series). Copies of Upper Deck's company web pages, which identify both June 16 and
June 19, 2009 as the release date for this product, are annexed as Exhibit S.
66. Upper Deck included in its 2009 O-Pee-Chee Baseball product cards bearing
designs that are nearly identical to the 1979-1980 Topps Hockey series.
67. Below is a side-by-side comparison of Upper Deck's 2009 O-Pee-Chee Baseball
product that copies the 1979-1980 Topps Hockey card design:
Upper Deck 2009 O-Pee-Chee Baseball Upper Deck 2009 O-Pee -Chee BaseballFRONT BACK
MI-W
DEREK JETER SS
326571_2/00695-0073 20
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 20 of 38
Topps's 1979-1980 Topps Hockey Topps's 1979-1980 Topps HockeyFRONT BACK
68. In each of these products (2008-2009 NHL O-Pee-Chee Hockey, 2009 NHL O-
Pee-Chee Update Hockey and 2009 O-Pee-Chee Baseball) Upper Deck has copied the following
design features from the 1979-1980 Topps Hockey series:
(a) The blue background; with the player's picture superimposed on a thinwhite border superimposed over the blue background;
(b) The player's name at the top in white color, in stylized, all capital letters,with a circled white dot between the player name and the abbreviation ofthe player's position in the team;
(c) The curving of the white border around the photo on all four corners,except the bottom right corner that is inverted along the circular graphicimage, with the image of the team logo within the circle;
(d) A swooshing, curved strip of line in varying colors that spans from the topleft of the card to the bottom right until it coils into the circular graphicbearing the image of the team logo in the circle (for the hockey cards, as ifto resemble a puck; and for the baseball cards, as if to resemble abaseball);
(e) The manner in which the team name appears inside the thick portion of theswooshing strip of line, at the top, in all capital, italicized letters, indifferent colors; and
(f) For the hockey cards only, the use of the ice skate image on the back, andthe manner in which the statistical and other player information appears on
326571_2/00695-0073 21
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 21 of 38
the back of the card; and for the back of the baseball card, the same overalllook and feel, including the manner in which the player's informationappears inside the image of a sports footwear
69. Topps has not granted Upper Deck a license or authorization to use any of the
designs of the Topps Cards.
70. Upon information and belief, Upper Deck continues to manufacture, reproduce,
distribute, display, advertise, promote, offer to sell, and sell its Upper Deck Cards.
Upper Deck's Use of Tom ' s Cards and Trademarks in Its 2009 Legendary Cuts Series
71. According to its website, Upper Deck released its 2009 Upper Deck SP
Legendary Cuts product on May 8, 2009 (the "Legendary Cuts Cards"). A copy of Upper
Deck's company web page showing the release date for this product is annexed as Exhibit T.
Copies of auction pages from eBay showing sales of these cards on the secondary market are
annexed as Exhibit U.
72. Upper Deck included in its design of certain of the Legendary Cuts Cards a copy
of a card previously issued by Topps. In some cases , Upper Deck also included the TOPPS
trademark on the Legendary Cuts Cards.
73. This is an Upper Deck Legendary Cuts Card that includes a portion of a 1988
Topps Baseball card featuring Ken Caminetti and the TOPPS name and mark (which appears to
the lower left of the signature):
326571_2/00695-0073 22
Case 1:09-cv-03780-RMB Document 31 Filed 08/24/2009 Page 22 of 38
74. This is an Upper Deck Legendary Cuts Card that includes a portion of a 1988
Topps Baseball card featuring Joe Niekro and the TOPPS name and mark (which appears to the
lower left of the signature):
75. This is an Upper Deck Legendary Cuts Card that includes a portion of a 1972
Topps Baseball card featuring Johnny Oates (without the TOPPS name and mark):
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76. This is an Upper Deck Legendary Cuts Card that includes a portion of thel963
Topps Baseball card featuring Bob Buhl (without the TOPPS name and mark):
77. Upon information and belief, there is another Legendary Cuts Card that uses a
Topps card featuring Roberto Clemente, an image of which Topps has been unable to locate.
78. There appears to be no indication on the front of the Legendary Cuts Cards that
they are published by Upper Deck.
79. Topps has not granted Upper Deck a license or authorization to reprint or use any
Topps cards or the TOPPS name or mark.
80. Upper Deck used the TOPPS name and mark on the Legendary Cuts Cards in an
attempt to exploit the tremendous goodwill associated with the TOPPS name and mark.
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81. Upper Deck's use of the TOPPS name and mark is likely to confuse and deceive
consumers as to the source of Upper Deck's products, or as to an affiliation between Topps and
Upper Deck.
82. Upper Deck used the TOPPS name and mark intentionally, willfully, in bad faith,
and with full knowledge that Topps owns the name and mark, and has the exclusive right to use
and license it. Upper Deck has acted and continues to act with the intent to capitalize on Topps's
rights and to diminish the value of and goodwill associated with the Topps name and mark.
COUNT ONE
Copyright Infringement (17 U.S.C. § 501(a))Upper Deck's 2009 O-Pee-Chee Baseball
83. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
84. The designs of the Topps 1971 Baseball series are Topps's original designs.
85. Topps has always been the sole owner and proprietor of all right, title and interest
in the copyright in the Topps 1971 Baseball series. The copyrights in the Topps 1971 Baseball
series are valid and subsisting and were valid and subsisting at the time of Upper Deck's
infringing conduct.
86. Upper Deck had access to, and intentionally copied, the designs of the Topps
1971 Baseball series in bad faith to evoke and cash-in on the goodwill associated with the
Topps/O-Pee-Chee cards.
87. The designs used for Upper Deck's 2009 O-Pee-Chee Baseball product are
substantially similar to Topps's 1971 Baseball series.
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88. Upper Deck's conduct violates Topps's exclusive rights under 17 U.S.C.
§ 106(1), (2), (3), and (5).
89. Unless enjoined by this Court, Upper Deck's copyright infringement will continue
irreparably to harm Topps, for which Topps has no adequate remedy at law.
COUNT TWO
Copyright Infringement (17 U.S.C. § 501(a))Upper Deck Series 1 Baseball
90. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
91. The designs of the Topps 1975 Baseball series are Topps's original designs.
92. Topps has always been the sole owner and proprietor of all right, title and interest
in the copyright in the Topps 1975 Baseball series. The copyrights in the Topps 1975 Baseball
series are presently valid and subsisting and were valid and subsisting at the time of Upper
Deck's infringing conduct.
93. Upper Deck had access to, and intentionally copied, the designs of the Topps
1975 Baseball series in bad faith to evoke and cash-in on the goodwill associated with the
Topps/O-Pee-Chee cards.
94. The designs used for Upper Deck's 2009 Upper Deck Series 1 Baseball product
are substantially similar to Topps's 1975 Baseball series.
95. Upper Deck's conduct violates Topps's exclusive rights under 17 U.S.C.
§ 106(1), (2), (3), and (5).
96. Unless enjoined by this Court, Upper Deck's copyright infringement will continue
irreparably to harm Topps, for which Topps has no adequate remedy at law.
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COUNT THREE
Copyright Infringement (17 U.S.C. § 501(a))Upper Deck Series 2 Baseball
97. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
98. The designs of the Topps 1977 Baseball series are Topps's original designs.
99. Topps has always been the sole owner and proprietor of all right, title and interest
in the copyright in the Topps 1977 Baseball series. The copyrights in the Topps 1977 Baseball
series are presently valid and subsisting and were valid and subsisting at the time of Upper
Deck's infringing conduct.
100. Upper Deck had access to, and intentionally copied, the designs of the Topps
1977 Baseball series in bad faith to evoke and cash-in on the goodwill associated with the
Topps/O-Pee-Chee cards.
101. The designs used for Upper Deck's 2009 Upper Deck Series 2 Baseball product
are substantially similar to Topps's 1977 Baseball series.
102. Upper Deck's conduct violates Topps's exclusive rights under 17 U.S.C.
§ 106(1), (2), (3), and (5).
103. Unless enjoined by this Court, Upper Deck's copyright infringement will continue
irreparably to harm Topps, for which Topps has no adequate remedy at law.
COUNT FOUR
Copyright Infringement (17 U.S.C. § 501(a))Upper Deck 2008-09 NHL O-Pee-Chee
104. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
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105. The designs of the 1979-1980 Topps Hockey series are Topps's original designs.
106. Topps has always been the sole owner and proprietor of all right, title and interest
in the copyright in the 1979-1980 Topps Hockey series. The copyrights in the 1979-1980 Topps
Hockey series are valid and subsisting and were valid and subsisting at the time of Upper Deck's
infringing conduct.
107. Upper Deck had access to, and intentionally copied, the designs of the 1979-1980
Topps Hockey series in bad faith to evoke and cash-in on the goodwill associated with the
Topps/O-Pee-Chee cards.
108. The designs used for Upper Deck's 2008-09 NHL O-Pee-Chee product are
substantially similar to the 1979-1980 Topps Hockey series.
109. Upper Deck's conduct violates Topps's exclusive rights under 17 U.S.C.
§ 106(1), (2), (3), and (5).
110. Unless enjoined by this Court, Upper Deck's copyright infringement will continue
irreparably to harm Topps, for which Topps has no adequate remedy at law.
COUNT FIVE
Copyright Infringement (17 U.S.C. § 501(a))Upper Deck's 2008-09 NHL O-Pee-Chee Update Hockey
111. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
112. The designs of the 1979-1980 Topps Hockey series are Topps's original designs.
113. Topps has always been the sole owner and proprietor of all right, title and interest
in the copyright in the 1979-1980 Topps Hockey series. The copyrights in the 1979-1980 Topps
Hockey series are valid and subsisting and were valid and subsisting at the time of Upper Deck's
infringing conduct.
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114. Upper Deck had access to, and intentionally copied , the designs of the 1979-1980
Topps Hockey series in bad faith to evoke and cash-in on the goodwill associated with the
Topps/O-Pee-Chee cards.
115. The designs used for Upper Deck's 2008-09 NHL O-Pee-Chee Update Hockey
product are substantially similar to the 1979-1980 Topps Hockey series.
116. Upper Deck's conduct violates Topps ' s exclusive rights under 17 U.S.C.
§ 106(1), (2), (3 ), and (5).
117. Unless enjoined by this Court , Upper Deck's copyright infringement will continue
irreparably to harm Topps , for which Topps has no adequate remedy at law.
COUNT SIX
Copyright Infringement (17 U.S.C. § 501(a))Upper Deck's 2009 O-Pee-Chee Baseball
118. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
119. The designs of the 1979-1980 Topps Hockey series are Topps's original designs.
120. Topps has always been the sole owner and proprietor of all right, title and interest
in the copyright in the 1979-1980 Topps Hockey series. The copyrights in the 1979-1980 Topps
Hockey series are valid and subsisting and were valid and subsisting at the time of Upper Deck's
infringing conduct.
121. Upper Deck had access to, and intentionally copied, the designs of the 1979-1980
Topps Hockey series in bad faith to evoke and cash-in on the goodwill associated with the
Topps/O-Pee-Chee cards.
122. The designs used for Upper Deck's 2009 O-Pee-Chee Baseball product are
substantially similar to the 1979-1980 Topps Hockey series.
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123. Upper Deck's conduct violates Topps's exclusive rights under 17 U.S.C.
§ 106(1), (2), (3), and (5).
124. Unless enjoined by this Court, Upper Deck's copyright infringement will continue
irreparably to harm Topps, for which Topps has no adequate remedy at law.
COUNT SEVEN
Copyright Infringement (17 U.S.C. § 501(a))Upper Deck's Legendary Cuts Cards
125. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
126. The Topps Cards that Upper Deck has reprinted in its Legendary Cuts Cards (the
"Reprinted Topps Cards") are Topps ' s original designs.
127. Topps has always been the sole owner and proprietor of all right, title and interest
in the copyright in the Reprinted Topps Cards. The copyrights in the Reprinted Topps Cards are
valid and subsisting and were valid and subsisting at the time of Upper Deck's infringing
conduct.
128. Upper Deck had access to, and intentionally reprinted , the Reprinted Topps Cards
in bad faith to evoke and cash-in on the goodwill associated with the Topps Reprinted Cards/O-
Pee-Chee Cards.
129. Upper Deck ' s conduct violates Topps's exclusive rights under 17 U.S.C.
§ 106(1), (2), (3), and (5).
130. Unless enjoined by this Court, Upper Deck's copyright infringement will continue
irreparably to harm Topps , for which Topps has no adequate remedy at law.
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COUNT EIGHT
Federal Trademark Infringement (15 U.S.C. § 1114(1))Upper Deck's Legendary Cuts Cards
131. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
132. Upper Deck has, without consent from Topps, intentionally and knowingly used
in interstate commerce the name and mark TOPPS that is identical to Topps's federally
registered trademarks in connection with the sale, offering for sale, distribution and advertising
of goods or services, in bad faith to evoke and cash-in on the goodwill associated with Topps.
133. Upper Deck's use and adoption of the TOPPS name and mark is likely to cause
consumer confusion, or to cause mistake or to deceive as to source, sponsorship, or authorization
of Upper Deck's directly competing products.
134. Upper Deck's conduct has caused and will continue to cause damage and injury to
Topps's business, goodwill, and reputation.
135. Upper Deck's conduct constitutes trademark infringement in violation of § 32(1)
of the Lanham Act, 15 U.S.C. § 1114(1).
136. Unless enjoined by the Court, Upper Deck's acts of unfair competition will
continue irreparably to harm Topps, for which Topps has no adequate remedy at law.
COUNT NINE
Federal False Designation of Origin and Unfair Competition (15 U.S.C. § 1125(a))Upper Deck's 2009 Legendary Cuts Cards
137. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
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138. Upper Deck's use and adoption of the name and mark TOPPS and/or the use and
adoption of the Topps Reprinted Cards in its Legendary Cuts Cards product are likely to confuse,
mislead, and deceive consumers into believing that Upper Deck's Legendary Cuts Cards
originate, are affiliated, or are otherwise connected to Topps. Such actions trade unfairly on
Topps and its products and misappropriate the goodwill that Topps has expended time, labor, and
money to create over time.
139. Upper Deck's use and adoption of the name and mark TOPPS and/or the Topps
Reprinted Cards was intentional, willful, in bad faith, and was committed with full knowledge of
Topps's ownership of the Topps Reprinted Cards and a federal trademark registration in the
name and mark TOPPS.
140. Upper Deck's conduct has caused and will continue to cause damage and injury to
Topps's business, goodwill, and reputation.
141. Upper Deck's conduct constitutes unfair competition, false designation of origin,
and passing off in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
142. Unless enjoined by the Court, Upper Deck's acts of unfair competition will
continue irreparably to harm Topps, for which Topps has no adequate remedy at law.
COUNT TEN
Federal Trade Dress Infringement (15 U.S.C. & 1125(a))
143. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
144. The Topps Cards have garnered substantial goodwill and secondary meaning
through unique, distinctive, non-functional designs; through extensive advertising and promotion
of the product; and through primary and secondary sales . As a result, the Topps Cards have
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become well known to the consuming public as identifying and distinguishing Topps as the
exclusive and unique source of the Topps Cards.
145. Each of the designs used for the Upper Deck Cards is a nearly identical
reproduction of one of the Topps Cards. By manufacturing and selling cards with a substantially
similar or identical design , and due to the same or proximate retail circles in which these
products are offered , Upper Deck is putting in the marketplace products that are confusingly
similar to the distinctive Topps Cards.
146. Upper Deck's conduct is likely to cause consumers to be confused, mistaken, or
deceived as to the origin of the Upper Deck Cards , or that Upper Deck ' s conduct is authorized,
or is somehow sponsored by, or associated with , Topps.
147. Upper Deck' s use and adoption of Topps's trade dress was intentional , willful,
and in bad faith to evoke and cash-in on the goodwill associated with the Topps trade dress.
148. Upper Deck ' s conduct has caused and will continue to cause damage and injury to
Topps's business , goodwill , and reputation.
149. Upper Deck ' s conduct constitutes trade dress infringement in violation of § 43(a)
of the Lanham Act, 15 U.S.C. § 1125(a).
150. Unless enjoined by the Court, Upper Deck's trade dress infringement and unfair
competition will continue irreparably to harm Topps , for which Topps has no adequate remedy at
law.
COUNT ELEVEN
Common Law Trademark InfringementUpper Deck's Legendary Cuts Cards
151. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
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152. Upper Deck's use of the name and mark TOPPS in its Legendary Cuts Cards
product constitutes trademark infringement in violation of New York common law.
153. Upper Deck intentionally and knowingly used the name and mark TOPPS in bad
faith to evoke and cash-in on the goodwill associated with the Topps.
154. Upper Deck's conduct has caused and will continue to cause damage and injury to
Topps's business, goodwill, and reputation.
155. Unless enjoined by this Court, Upper Deck's trademark infringement will
continue irreparably to harm Topps, for which Topps has no adequate remedy at law.
COUNT TWELVE
Common Law Trade Dress infringement
156. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
157. By the conduct described above, Upper Deck has intentionally engaged in acts of
trade dress infringement in violation of the common laws of New York.
158. Upper Deck intentionally and knowingly used Topps's trade dress in bad faith to
evoke and cash-in on the goodwill associated with the Topps trade dress.
159. Upper Deck's conduct has caused and will continue to cause damage and injury to
Topps's business, goodwill, and reputation.
160. Unless enjoined by the Court, Upper Deck's trade dress infringement will
continue irreparably to harm Topps, for which Topps has no adequate remedy at law.
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COUNT THIRTEEN
Common Law Unfair Competition
161. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
162. By the conduct described above, Upper Deck has intentionally engaged, with bad
faith, and is continuing to engage in acts of unfair competition by misappropriating the skills,
expenditures, and labor of Topps, in violation of the common laws of New York.
163. Upper Deck's conduct has caused and will continue to cause damage and injury to
Topps's business, goodwill, and reputation.
164. Unless enjoined by the Court, Upper Deck's acts of unfair competition will
continue irreparably to harm Topps, for which Topps has no adequate remedy at law.
COUNT FOURTEEN
Deceptive Trade Practice Under New York Law(N.Y. Gen . Bus. Law 4 349)
165. Topps repeats and realleges the preceding paragraphs of this second amended
complaint.
166. Upper Deck used and adopted the name and mark TOPPS, its copyright, and its
trade dress as described above in bad faith to evoke and cash-in on the goodwill associated with
Topps, with the intent to deceive or mislead the public, and has caused consumers to be deceived
or confused in a material way.
167. Upper Deck's foregoing conduct has caused and will continue to cause damage
and injury to Topps's business, goodwill, and reputation.
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168. Upper Deck's use and adoption of the name and mark TOPPS , its copyright, and
its trade dress constitute deceptive trade practices in violation of New York Gen. Bus. Law
§ 349.
169. Unless enjoined by the Court, Upper Deck's acts of deceptive business practices
will continue irreparably to harm Topps, for which Topps has no adequate remedy at law.
WHEREFORE, Topps asks for the following relief against Upper Deck:
A. Under 17 U.S.C. § 502 and 15 U.S.C. § 1116, preliminarily and permanently
enjoining Upper Deck, its officers, directors, principals, agents, servants, employees, successors and
assigns, and all those in active concert or participation with any of them, from:
i. Selling, offering for sale, promoting, or advertising, in any medium, any
good or service, using the TOPPS name or mark, or any other mark or designation confusingly
similar to the TOPPS name or mark;
ii. Manufacturing, reproducing, distributing, adapting, displaying, advertising,
promoting, offering for sale, or selling any baseball or hockey cards that are substantially similar to
the Topps Cards or the Topps Reprinted Cards;
iii. Registering, imitating, copying, or making unauthorized use of the designs
of the Topps Cards or Reprinted Topps Cards, in a manner likely to cause confusion, deception, or
mistake on or in connection with the manufacture, reproduction, distribution, adaptation,
advertisement, promotion, offering for sale, or sale of any products not manufactured by Topps, or
not authorized by Topps to be sold in connection with the Topps Cards or Reprinted Topps Cards;
iv. From representing, suggesting in any manner to any third party, or .
performing any act that may give rise to the belief that Upper Deck, or any of its products, are
authorized or sponsored by Topps;
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v. From passing off, inducing, or enabling others to sell or pass off any goods
as products produced by Topps that are not, in fact, genuine Topps products, or not produced under
the control and supervision of Topps and approved by Topps; and
vi. From otherwise competing unfairly with Topps in any manner.
B. Directing Upper Deck to deliver to the Court for destruction all products,
labels, prints, signs, packages, dies, wrappers, plates, molds, matrices, and advertisements in its
possession, custody or control bearing the TOPPS name and mark, or designs of the Topps Cards or
Reprinted Topps Cards, or the means for producing cards that are substantially similar to the
designs of the Topps Cards or Reprinted Topps Cards, under 17 U.S.C. § 503 and 15 U.S.C. § 1118;
C. Granting Topps relief under 17 U.S.C. § 504(b) and 15 U.S.C. § 1117(a);
D. Granting Topps relief under 17 U.S.C. § 504(c);
E. Directing Upper Deck under 15 U.S.C. § 1116(a) to file with the Court and
serve upon Topps within 30 days of the entry of injunction a written report under oath or affirmed
under penalty of perjury stating in detail the form and manner in which it has complied with the
injunction;
F. Damages in an amount to be determined at trial;
G. Punitive damages in an amount to be determined at trial;
H. Pre judgment and post judgment interest on each and every damage award;
1. The costs and disbursements of this action , including reasonable attorneys'
fees , under 17 U.S.C. § 505 and 15 U.S.C. § 1117(a)(3); and
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J. Such other and further relief as to the Court appears just and proper.
Dated: New York, New YorkAugust 24, 2009
INGRAM YUZEK GAINEN CARROLL& BERTOLOTTI, LLP
Attorneys for Plaintiff, The Topps Company, Inc.
By: CA**^C'0^David G. EbertMioko C. Tajika
250 Park Avenue, 6th FloorNew York, New York 10177Tel: (212) 907-9600
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