Professional Documents
Culture Documents
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,
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.
2. This Court has personal jurisdiction over Upper Deck because Upper Deck
The Parties
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
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conducts business in New York and throughout the country through stores , distributors, and on
Factual Background
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-
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
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
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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
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
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12. Topps created, developed, and published for sale hockey cards that are registered
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
14. This is the front and back image of the Topps 1963 Baseball card featuring Bob
Buhl:
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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
18. Except for a few variations, the basic design of the Topps 1971 Baseball card
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(b) A photo of the player superimposed over a thin white rectangular border
superimposed over the black border;
(c) Curved photo corners so that the edges of the white border show a
triangular 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 team
name, in stylized lower case letters that are smaller and in a different color
than the team name;
(g) To the right of the player's name, the player's position, also in a different
color 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.
20. The Topps 1972 Baseball series consists of 787 cards. An image of each of these
21. This is the front image of the Topps 1972 Baseball Rookie Stars card featuring
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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.
25. Except for a few variations , the basic design of the Topps 1975 Baseball card
(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, with
black shading underneath the team ' s name;
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(f) The player's name at the bottom of the card in stylized, all capital letters
in a contrasting color; and
26. Topps owns the copyright to each card in the Topps 1975 Baseball series.
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
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29. Except for a few variations, the basic design of the Topps 1977 Baseball card
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(a) A 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;
(c) The player's name in smaller stylized, all capital letters immediately
underneath 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-right
corner, with black shading underneath the banner.
30. Topps owns the copyright to each card in the Topps 1977 Baseball series.
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:
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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
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
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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 white
border 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 graphic
image, 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 of
the player's position in the team;
(d) A swooshing, curved strip of line in varying colors that spans from the top
left of the card to the bottom right until it coils into the circular graphic
bearing 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 the
swooshing strip of line, at the top, in all capital, italicized letters, in
different colors; and
(f) The use of the ice skate image on the back, the cartoon on the upper right
corner, and the unique layout of the statistical and other player information
on the back of the card.
39. Topps owns the copyright to each card in the Topps 1979-1980 Hockey series.
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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.
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
42. The O-Pee-Chee cards bore French language on the back of the cards, but in other
43. Topps did not transfer to O-Pee-Chee or any other person or entity any of its
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,
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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
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
50. Upper Deck, a Topps competitor, has been manufacturing and selling sports and
entertainment trading cards in the United States and abroad since 1988.
brand name. In a March 1, 2007 press release, Upper Deck announced on its web site (without
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
the O-Pee-Chee brand name, Upper Deck has used certain designs that Topps owns exclusively.
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
54. Upper Deck has copied the following design features from Topps's 1975 Baseball
series:
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(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, with
black shading underneath the team's name, in a font that is similar to the
Topps card;
(e) The player's name at the bottom of the card in stylized, all capital letters
in 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 the
card.
intended to release baseball cards in May 2009 that copy the Topps 1977 Baseball card design.
56. Below is a side-by-side comparison of a 2009 Upper Deck product that copies the
57. Upper Deck has copied the following design features from Topps 's 1977 Baseball
series:
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(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 Topps
card;
(c) The player's name in smaller stylized, all capital letters immediately
underneath 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-right
corner, with black shading underneath the banner; and
(e) The player's autograph toward the bottom of the player's photo.
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
60. Upper Deck has copied the following design features from Topps's 1971 Baseball
series:
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(b) The photo of the player superimposed over a thin white rectangular border
superimposed over the black border;
(c) Curved photo corners so that the edges of the white border show a
triangular 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 font
that 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 team
name, in stylized lower case letters that are smaller and in a different color
than the team name, in a font that is the same as, or very similar to, the
font used in the Topps card;
The player's position to the right of the player's name, also in a different
color and stylized lower case letters; and
(h) A contrasting colored dot between the player's name and position.
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.
Chee product that copies the 1979-1980 Topps Hockey card design:
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Upper Deck's 2008-09 NHL O-Pee-Ghee Upper Deck' s 2008-09 NHL O-Pee-Chee
FRONT BACK
563
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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
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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
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-Chee
Update Hockey Update Hockey
FRONT BACK
795
KEh^il \V EI XT
SH0 01i
u not e^soti 2008.09
rioah
IN:
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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.
Upper Deck 2009 O-Pee-Chee Baseball Upper Deck 2009 O-Pee -Chee Baseball
FRONT BACK
MI-W
DEREK JETER SS
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Topps's 1979- 1980 Topps Hockey Topps's 1979- 1980 Topps Hockey
FRONT 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
(a) The blue background; with the player's picture superimposed on a thin
white 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 of
the 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 graphic
image, with the image of the team logo within the circle;
(d) A swooshing, curved strip of line in varying colors that spans from the top
left of the card to the bottom right until it coils into the circular graphic
bearing the image of the team logo in the circle (for the hockey cards, as if
to resemble a puck; and for the baseball cards, as if to resemble a
baseball);
(e) The manner in which the team name appears inside the thick portion of the
swooshing strip of line, at the top, in all capital, italicized letters, in
different colors; and
(f) For the hockey cards only, the use of the ice skate image on the back, and
the manner in which the statistical and other player information appears on
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the back of the card; and for the back of the baseball card, the same overall
look and feel, including the manner in which the player's information
appears inside the image of a sports footwear
69. Topps has not granted Upper Deck a license or authorization to use any of the
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
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
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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
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
79. Topps has not granted Upper Deck a license or authorization to reprint or use any
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
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
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88. Upper Deck's conduct violates Topps's exclusive rights under 17 U.S.C.
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
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
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
95. Upper Deck's conduct violates Topps's exclusive rights under 17 U.S.C.
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
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
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
102. Upper Deck's conduct violates Topps's exclusive rights under 17 U.S.C.
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
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
109. Upper Deck's conduct violates Topps's exclusive rights under 17 U.S.C.
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
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
116. Upper Deck's conduct violates Topps ' s exclusive rights under 17 U.S.C.
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
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
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123. Upper Deck's conduct violates Topps's exclusive rights under 17 U.S.C.
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
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
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.
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
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
134. Upper Deck's conduct has caused and will continue to cause damage and injury to
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
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
140. Upper Deck's conduct has caused and will continue to cause damage and injury to
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
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
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
deceived as to the origin of the Upper Deck Cards , or that Upper Deck ' s conduct is authorized,
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
149. Upper Deck' s conduct constitutes trade dress infringement in violation of § 43(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
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
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
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
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
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
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
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
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
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
167. Upper Deck's foregoing conduct has caused and will continue to cause damage
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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:
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:
good or service, using the TOPPS name or mark, or any other mark or designation confusingly
promoting, offering for sale, or selling any baseball or hockey cards that are substantially similar to
of the Topps Cards or Reprinted Topps Cards, in a manner likely to cause confusion, deception, or
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;
performing any act that may give rise to the belief that Upper Deck, or any of its products, are
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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
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;
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;
H. Pre judgment and post judgment interest on each and every damage award;
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J. Such other and further relief as to the Court appears just and proper.
By: CA
**^C'0^
David G. Ebert
Mioko C. Tajika
250 Park Avenue, 6th Floor
New York, New York 10177
Tel: (212) 907-9600
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