topps amended complaint

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 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


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 1975 Baseball 1975 VA0000305111;

Appears in

May 31, 1988

January 29, 1986TX0001730597

326571 2/00695-0073 3


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


15. Topps owns the copyright in this card.

Topps 's 1971 Baseball Cards


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


(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.



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


Tom's 1975 Baseball Cards


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.


25. Except for a few variations , the basic design of the Topps 1975 Baseball card


(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


(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.




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.


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


326571_2/00695-00738


(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.



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


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


38. Except for a few variations, the basic design of the 1979-1980 Topps Hockey card


(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


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


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


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


(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.



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


(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.



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


(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


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


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

795KEhîl

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 WSê:e, 6Îi sstttbNstsack-

.`.^.Gler

Topps's 1979-1980 Topps HockeyBACK

IN:

326571_2/00695-0073 19


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


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


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



Topps Baseball card featuring Joe Niekro and the TOPPS name and mark (which appears to the

lower left of the signature):


Topps Baseball card featuring Johnny Oates (without the TOPPS name and mark):

326571_2/00695-0073 23


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.

326571_2/00695-0073 24


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.

326571_2/00695-0073 25


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


complaint.




series are presently valid and subsisting and were valid and subsisting at the time of Upper

Deck's infringing conduct.




94. The designs used for Upper Deck's 2009 Upper Deck Series 1 Baseball product

are substantially similar to Topps's 1975 Baseball series.


§ 106(1), (2), (3), and (5).



326571_2/00695-0073 26


COUNT THREE

Copyright Infringement (17 U.S.C. § 501(a))Upper Deck Series 2 Baseball


complaint.




series are presently valid and subsisting and were valid and subsisting at the time of Upper

Deck's infringing conduct.




101. The designs used for Upper Deck's 2009 Upper Deck Series 2 Baseball product

are substantially similar to Topps's 1977 Baseball series.


§ 106(1), (2), (3), and (5).



COUNT FOUR

Copyright Infringement (17 U.S.C. § 501(a))Upper Deck 2008-09 NHL O-Pee-Chee


complaint.

326571_2/00695 -0073 27


105. The designs of the 1979-1980 Topps Hockey series are Topps's original designs.


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


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.


§ 106(1), (2), (3), and (5).



COUNT FIVE

Copyright Infringement (17 U.S.C. § 501(a))Upper Deck's 2008-09 NHL O-Pee-Chee Update Hockey


complaint.





infringing conduct.

326571_2/00695-0073 28


114. Upper Deck had access to, and intentionally copied , the designs of the 1979-1980



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


complaint.





infringing conduct.

121. Upper Deck had access to, and intentionally copied, the designs of the 1979-1980



122. The designs used for Upper Deck's 2009 O-Pee-Chee Baseball product are

substantially similar to the 1979-1980 Topps Hockey series.

326571_2/00695-0073 29



§ 106(1), (2), (3), and (5).



COUNT SEVEN

Copyright Infringement (17 U.S.C. § 501(a))Upper Deck's Legendary Cuts Cards


complaint.

126. The Topps Cards that Upper Deck has reprinted in its Legendary Cuts Cards (the

"Reprinted Topps Cards") are Topps ' s original designs.


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).


irreparably to harm Topps , for which Topps has no adequate remedy at law.

326571_2/00695-0073 30


COUNT EIGHT

Federal Trademark Infringement (15 U.S.C. § 1114(1))Upper Deck's Legendary Cuts Cards


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


complaint.

326571_2/00695-007331


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.



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).



COUNT TEN

Federal Trade Dress Infringement (15 U.S.C. & 1125(a))


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

326571_2/00695-0073 32


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


complaint.

326571_2/00695-0073 33


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.



155. Unless enjoined by this Court, Upper Deck's trademark infringement will


COUNT TWELVE

Common Law Trade Dress infringement


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.



160. Unless enjoined by the Court, Upper Deck's trade dress infringement will


326571_2/00695-0073 34


COUNT THIRTEEN

Common Law Unfair Competition


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.





COUNT FOURTEEN

Deceptive Trade Practice Under New York Law(N.Y. Gen . Bus. Law 4 349)


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.

326571_2/00695-0073 35


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;

326571_2/00695-0073 36


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

326571_2/00695-0073 37


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

326571_2/00695-007338


topps amended complaint

Documents