Reprinting Vintage Trading Cards: It ’ S Better Than Counterfeiting Currency (And It’S Legal)
Reprinting Vintage Trading Cards: It ’ s Better Than Counterfeiting Currency (and It’s Legal)
PHILLIP W. GILLET, JR.
[Mickey Mantle] was our guy. When he was hot we Trading Cards in a Nutshell7 felt great. When he slumped or got hurt, we sagged a bit too. We tried to crease our caps like him; kneel in Trading cards are a hot commodity and big busi- an imaginary on-deck circle like him; run like him, n e s s .8 The importance of trading card revenue was heads-down, elbows-up.—Bob Costas1 highlighted when Alex Rodriguez refused to play on ports and trading cards have sparked the the 1992 U.S.A. Olympic team because he was not emotions of generations of children around allowed to negotiate an individual trading card con- 9 the world.2 The “emotional truths of child- t r a c t . Rodriguez capitalized on his athletic prowess S 3 and business acumen and went on to sign a $252-mil- hood have a power to transcend objective fact” an d 10 often last well into adulthood. “We can still recall the lion-dollar contract with the Texas Rangers. immediate tingle in the instant of recognition when a Many dealers entered the business during the late Mickey Mantle popped up in a pack of Topps bubble 1980s and early 1990s and some made handsome prof- 11 gum cards—a treasure lodged between an Eli Grba and it s . By the late 1980s, there were nearly 100,000 full- a Pumpsie Green.”4 The trading card industry has a time card shops and tens of thousand of so-called 12 place in the market that serves these emotional truths weekend warriors, people who displayed their wares 13 of children and adults alike. at card shows. Some shows, such as the Frank and In an attempt to carve out a new niche in the mar- Son Card Show in southern California, became semi- ket, this article examines the legal framework of weekly events. reprinting pre-World War II trading cards. After exam- There were a few high-profile dealers, such as Alan ining a history of the trading card industry, the article Rosen (known as Mr. Mint), who spent hundreds of reviews potential copyright problems and examines thousands of dollars on merchandise and advertising. the tort of misappropriation of likeness from the per- He received considerable publicity on the T o d a y spectives of both statute and common law. It also sug- Sh o w and elsewhere as a dealer of sports cards and gests possible defenses to these causes of action. It memorabilia. Although he was portrayed in the media concludes with an observation that reprinting vintage as a typical dealer, the reality was far different. trading cards appears to be legally viable, at least in Many dealers have a difficult time turning a profit. 14 Ca l i f o r n i a . There are an estimated 40,000 card shops currently in A discussion on trademarks is intentionally omitted business, and the number of the uncountable15 we e k - because no significant trademark issues are apparent. end warriors is down considerably, as evidenced by A trademark is “[a] word, phrase, logo or other graphic the decreasing number of shows and fewer tables at symbol used by a manufacturer or seller to distinguish the remaining ones.16 The revenue generated by the its product or products from those of others. The main new trading card market has also shrunk. The exact purpose of a trademark is to guarantee a product’s gen- amount is unknown because the Topps Company is ui n e n e s s . ” 5 First, most vintage trading cards were not the only major manufacturer that is publicly traded, licensed by the sports leagues, and logos are not but some estimates suggest that the market is only shown on jerseys worn by individual players. Second, $500 million dollars a year—down from more than $1 most of the tobacco trademarks on vintage sport cards billion per year in the early 1990s.17 are from companies that are now defunct. Even the Moreover, the tastes of collectors have changed dra- card backs that have trademarks from existing compa- matically over the years. In the beginning, cards in nies can be changed to include data about the player tobacco packages allowed the gentleman smoker to and any trademarks can be easily removed.6 share something other than second-hand smoke with Furthermore, the card should bear the logo of the new his family. People who collected these cards did so for publisher, and disclaimers should be included on all the sheer enjoyment of collecting their favorite base- boxes, packages, and advertisements, stating that the ball player, actress, or boxer. In the 1930s, manufac- original producers, sports leagues, and players do not turers of chewing gum began to insert gum into pack- endorse these cards. ages of baseball cards to promote sales, a practice that
ENTERTAINMENT AND SPORTS LAWYER 10 VOLUME 19, NUMBER 1 • SPRING 2001 is now almost defunct.18 The modern era was rushed by the 1980s were forced to institute maximum orders. in when Bowman inserted trading cards in their pack- Most dealers made enough money in the hot market of ages of gum in 1948. The company’s primary competi- the late 1980s to invest in larger amounts of inventory. tor, Topps,1 9 inserted a game that featured cards of Thus the two major obstacles for entering the new baseball players in 1951. Fans during the post-World card market disappeared, and returns of between 100 War II era collected cards based primarily on their love percent to 1,000 percent were not uncommon. (or intense dislike) for particular players or teams. Consumers’ tastes also changed. In 1990, Upper 25 Building upon the limited success of the 1951 prod- De c k , inspired by Willie Wonka and the Chocolate uct, Topps changed its format to a large-size card (clos- Factory’s gold ticket, randomly inserted 2,500 cards er to the style used today) and ushered in the modern signed by Reggie Jackson into its packs. This started 2 6 2 7 era. It was not, however, until 1957 that Topps intro- the “insert card” or “chase card” p h e n o m e n o n . duced the now standard-size baseball card (2–1/2² x While consumers chased insert cards between 1991 28 3– 1 / 2 ² ). The smaller size and somewhat unattractive and 1996, the market for vintage cards faltered. But card was actually a step backward that resulted from the chase phenomenon lost its luster as early as 29 Topps’s monopoly of the trading card market after 19 9 3 , and collectors, by 1997 tired of the manufac- 1955. There were few incentives for the company to tured scarcity and growing number of different “insert cards,” renewed their interest in vintage cards. create more attractive cards that collectors prized.2 0 Because of the true scarcity of vintage cards, the Many card collectors find Topps sets produced demand for reprints skyrocketed. Reprint sets are fea- between 1952 and 1956 to be among the most attrac- tured almost exclusively in full-page ads placed by a tive cards, despite the absence of modern printing New York card company30 in major periodicals, such techniques. Many collectors regard the 1957 set as dull as Sports Collectors Digest 31 and Tuff Stuff.32 The mar- and boring, second only to Topps sets issued between ket for reprints, which appear to be exact replicas of 1966 and 1969, which featured the same photographs the originals, must be considerable to justify advertis- year after year. ing expenditures for full-page ads costing between By the 1970s, trading clubs started to surface and $500 and $1,500 per issue. people recognized that a secondary market existed for their baseball cards. Prices were highly regional and Legal Issues of Reprinting Vintage Cards 21 individually variable until James Beckett, who holds a The potential market for reprints inspired the doctorate in statistics, wrote an annual book and price author to examine the legal issues involved in reprint- guide in the mid-1970s. Although Topps had produced ing and selling pre-World War II (WWII) trading cards. basketball, football, hockey, and nonsports cards since Most of the companies that originally produced the the 1950s, their popularity did not take off until the cards have long since gone out of business, and many late 1980s when Beckett started a monthly price guide of the sports and other celebrities featured on vintage for these cards. cards died years ago. Seemingly, there would be lit- The trading card market exploded in 1981 when tle opposition for the intellectual property rights of the Fleer Corporation received a license to produce a these cards—unlike the problems that would be second competing set of baseball cards.2 2 P o t e n t i a l encountered by reprinting the more recent Topps profits in the trading card market whetted the cards. In addition, Topps has reproduced some of appetites of collectors and others to buy cards as an their own sets.3 3 i n v e s t m e n t .2 3 Many investors bought thousands of Therefore, this article focuses on pre-WWII trading cheap cards of rookies, gambling that their on-field cards. The discussion has been limited to the California performance would translate into higher value and law for three reasons: (1) because the author lives in generate a handsome return.24 Even the true collectors California, the state would be the most convenient started to buy cards for investment purposes. Before place for any business venture (2) California courts the late 1980s, most collectors prized vintage cards; would have jurisdiction because of the author’s resi- cards from the 1950s and 1960s offered the most vol- dence and (3) space limitations preclude a discussion ume and profit for dealers. To get into the new card of laws in other states, many of which would not be market, smaller dealers had to place orders that met able to assert jurisdiction in the first place. the card manufacturers’ steep requirements for mini- mum amounts and pay cash up front. The long delays What About Copyr i g h t ? between payment and shipment (usually two to three The subject matter of copyright laws is covered in months) also created a strong barrier to entry. 17 U.S.C § 102. Copyrightable works must include two The public’s unquenchable thirst created such a elements: the work must be original, and fixed in a demand for trading cards that the card manufacturers tangible medium.34 Original issue trading cards seem
ENTERTAINMENT AND SPORTS LAWYER 11 VOLUME 19, NUMBER 1 • SPRING 2001 to fall under the categories listed in § 102(a)(5): pictor- Topps Chewing Gum, Inc.48 In Ha e l a n , there was a ial, graphic, and sculptural works. A trading card dispute over whether Haelan4 9 interfered with seems much like a circus poster, which the Supreme Topps’s contract for exclusive rights to produce its Court held to be copyrightable in Bleinstein v. baseball cards. Of more importance for this article’s 35 Donaldson Lithographing Co. discussion, the court recognized that “a man has a In Bl e i n s t e i n , the poster featured a combination of right in the publicity value of his photograph.”50 Th i s words and realistic drawings of circus performers. use of the player’s photograph is the major concern There was no question that the artist engaged in an with respect to appropriation of one’s likeness in exercise of intellect in carefully choosing and coordi- baseball cards. nating his words, images, design, and color. This was The common law cause of action for invasion of original expression. The Court rejected the argument privacy by misappropriation requires establishment of that the poster’s commercial purpose should keep it (1) a knowing use (2) appropriation of the name or from being protected under copyright laws. The Court likeness to defendant’s advantage, commercially or held that original expression constitutes copyrightable otherwise (3) lack of consent and (4) resulting injury.51 subject matter, regardless of its good or bad artistic The first and third elements are nearly identical to the value and its commercial or noncommercial purpose. statutory cause of action discussed above. The use ele- Trading Cards and Copyr i g h t s ment of the statutory element is harder to prove. Therefore, if the higher “knowing” standard is met, Trading cards do not seem to fall within the exclud- the common law cause of action is proven as well. ed categories set forth in § 102(b). These include an The underlying idea is to determine if it is economi- “idea, procedure, process, system, method of opera- cally viable to reprint trading cards without the con- tion, concept, principle or discovery.”36 Trading cards sent of the celebrity. We will assume that the consent that were produced and printed before 1976, which element is absent for analytical purposes. The injury obviously includes all pre-WWII cards, fall under the element seems relatively easy to prove: if all the previ- Copyright Act of 1909.37 The 1909 Act differentiated ous elements are met and there is no defense, the between federal and state law.38 Protection from copy- right infringement flowed from both state common statutory cause of action will show an injury that aris- (widely, although inaccurately, called “common law es from using images without compensating the copyright”) and statutory law.39 The common law pro- celebrity. Compensation has been common practice 52 tection began with creation of the work and continued since the inception of trading cards. until its publication.40 Statutory protection was the only The most difficult issue to litigate is whether use of protection available once the work was published.41 the player’s image is to the advantage of the reprinter. The Copyright Act of 197642 eliminated this com- It seems rather farfetched to believe that republishers mon law protection and replaced it with statutory pro- would be reprinting cards without the promise of tection. Under the 1909 Act, proper notice was essen- some gain. This element allows for recovery even tial to securing copyright protection,4 3 which lasted when the use is not for a commercial reason.53 initially for twenty-eight years with the possibility of The common law cause of action expires upon one twenty-eight year extension.44 Renewal was made d e a t h .5 4 The sole remedy for dead persons under automatic under the Copyright Renewal Act of 1992.45 California law for misappropriation lies in the statuto- Under the 1909 Act, any copyright that expired with- ry cause of action. Given that most of these sets are out renewal, or if renewed after expiration of the more than fifty-six years old, and most ball players renewal period, entered the public domain. Works were between the ages of twenty to forty in their hey- published without the required copyright notice also day, it is likely that most are deceased. Therefore, the entered the public domain.4 6 Any trading card pub- statutory cause of action would be the sole remedy lished more than fifty-six years ago is in the public available to the heirs of celebrities. domain. This would include virtually all pre-WWII trading cards because the statistics and other generic Statutory Cause of Act i o n terms like city names are not copyrightable. California Civil Code section 3344 codifies a per- son’s right to recover based upon the use of a “name, Action for Invasion of Privac y photograph, or likeness” for a commercial purpose The first form of invasion of privacy to be recog- without prior consent.55 The plaintiff must establish nized by the courts was the appropriation of one’s (1) a knowing use, (2) for purposes of advertising, and likeness or name for another’s commercial advan- (3) a direct connection between the use and the com- ta g e . 47 The most frequently cited case recognizing this mercial purpose.56 The statute provides for recovery distinct cause of action is Haelan Laboratories v. of the greater of $750 or actual damages, and any prof-
ENTERTAINMENT AND SPORTS LAWYER 12 VOLUME 19, NUMBER 1 • SPRING 2001 it attributable to the unauthorized use and not dead. Section 990 protects “deceased personality’s accounted for in computing damages. The injured name, voice, signature, photograph, or likeness” in party can also recover punitive damages and attorneys’ much the same way as section 3344 does for living fees and costs.57 personalities. The damages and remedies are identical. The “knowing use” element can be easily met. It is It further recognizes the rights expressed under this hard to imagine any good argument that reprinting a statute as “property rights.” These rights under sec- pre-World War II baseball card unknowingly captured tion 990 are freely transferable and vest after death as the player’s image. Courts have long recognized the specified in the statute.6 7 This section allows for use of a person’s photograph without consent for action based on a limited duration of no more than commercial purposes as a basis for liability.58 Almost all fifty years after the death of the deceased personality. sports cards have a picture of the sport celebrity on It defines a “deceased personality” as “any natural per- the front,59 and there is no dispute as to the identity of son whose name, voice, signature, photograph, or the celebrity.6 0 There is an interesting side note: likeness has commercial value at the time of his or her because members of a definable group cannot recover death, whether or not during the lifetime of that nat- based upon this section,61 any team pictures would not ural person” he or she exploited the commercial be actionable under this statutory provision.62 value of celebrity status. Any person claiming to be a The second and more difficult element to prove successor-in-interest to the rights of a deceased per- requires the misappropriation for the purposes of sonality under this section or a licensee must register advertising. On the surface it seems as though these cards would not be for the purposes of advertising. The plaintiffs in such cases could argue that the reprints can be regarded as advertising because the The plaintiff must original cards were packaged in tobacco and gum establish (1) a knowing use, (2) for products as advertising pieces.63 Courts are not likely to accept this argument. These cards are not being purposes of advertising, and (3) a reproduced to further the tobacco companies’ image, direct connection between the but rather to sell a piece of nostalgia. Further, they would be reproduced by someone who has no vested use and the commercial purpose. interest in promoting the tobacco companies. The sole production motive would be to sell them at a profit. Many of these tobacco brands no longer exist, so there with the California secretary of state and pay a nomi- would be little benefit in promoting their products, nal fee. By making it possible to find out if someone’s names, or brands. On a practical note, although there personality is protected, this section provides a good may be no misappropriation cause of action available method to reduce the possibility of unintentional to the players, it might be wise to use players whose in f r i n g e m e n t . right of publicity has expired in any advertisements64 and to use actual reprints of the cards instead of other Possible Defen s e s photographs of the players.65 Several possible defenses are available, including Finally, the use is not actionable merely because the public interest and copyright preemption. material contained paid advertising. The use must be The defendant in the statutory and common law “so directly connected with the commercial sponsor- cause of action may claim that reprinting a vintage ship or with the paid advertising as to constitute a use trading card is a matter of public interest. In Mo n t a n a for which consent is required.”66 This element should v. San Jose Mercury News,6 8 the court allowed the be relatively easy for the plaintiff to prove. The fact newspaper defendant to reprint old news articles, that it is necessary to get a celebrity’s consent to place together with an artist’s new rendition of football star his or her image on trading cards is a strong argument Joe Montana, in a souvenir edition. The newspaper that treats the card as a type of commercial sponsor- and a poster were sold for $5 each. The court recog- ship for which consent is normally required. Further, nized that these matters are not restricted to current many players were originally paid for use of t h e i r events but reproductions of past events as well.6 9 images, thus giving credence to the idea that consent Thus, it could be argued that the reprinted trading is required. cards are much like the poster: they involve the pub- California Civil Code section 990 may be more lic actions of sports celebrities and are therefore of applicable to the right of publicity. Some sets were public interest. Admittedly, this argument will likely produced as early as the 1880s, so many, if not all, lose because of the M o n t a n a case’s countervailing players and managers from these pre-WWII sets are interest, i.e., freedom of the press. There are no First
ENTERTAINMENT AND SPORTS LAWYER 13 VOLUME 19, NUMBER 1 • SPRING 2001 Amendment issues involved with the reprinting of pre- recovery, this idea appears very economically viable. WWII baseball cards. This answer makes sense. The purpose of copyright State statutes are subject to preemption under the laws is to encourage creativity while maintaining an Supremacy Clause of the U.S. Constitution when they adequate balance in the public’s interest in free flow of co n fl ict with a valid federal statute or prevent the full information and ideas. The creators of these trading purposes and objectives of Congress from being ful- cards are no longer using the images to their benefit. fill e d . 70 The Copyright Act preempts a claim when it Thus, encouraging creativity and marketing of these is: fixed in a tangible medium and falls within the sub- cards in a new way coincides with the underlying poli- ject matter or scope of copyright protection. There cy of copyright law and benefits the American legal, are only a few cases that analyze whether the federal business, and economic landscape. copyright protection preemption trumps the California misappropriation remedies. Phillip W. Gillet, Jr. ([email protected]) is a tax associate at The most recent one is Wendt v. Host Inter- a small tax firm in San Diego, president of a sport card and national, Inc,71 in which the Ninth Circuit held that memorabilia company, chief financial officer of a trucking robots based on actors’ likenesses violated the statuto- company, and an adjunct professor at San Diego City Col- ry right to publicity and was not preempted by federal lege. Before law school, he operated a three-store chain of copyright law. The most on-point case seems to be baseball card shops. Fleet v. CBS, Inc.72 In Fl e e t , the court held that because the disputed performance rights claimed under the En d n o t e s state right of privacy were equivalent to the copyright 1. Bob Costas, Eulogy for Mickey Mantle, at ht t p : / / m e m - protection, the rights were preempted. The issue be r s . a o l . c o m / m i n d y c p a / e u l o g y . h t m . before the court was a very narrow one: whether an 2. See Fleer Corp. v. Topps Chewing Gum, Inc., 658 F.2d 139, 141 (3d Cir. 1981) (recognizing the importance of base- actor may bring an action for misappropriation of his ball cards on childhood). or her name, image, likeness or identity under 3. Fleer Corp., 658 F. 2d at 141. California Civil Code section 3344 when the alleged 4. Id . exploitation only occurred through the distribution of 5. BLA C K ’S LAW DIC T I O N A R Y 1500 (7th ed. 1999). a movie that included the actor’s performance. In 6. On the pre-WWII cards, most of the reverse sides con- Fl e e t , CBS was the holder of the copyright. Although tain only advertising for cigarette companies. The fronts con- tain the player’s name and his team’s city, e.g., Honus production of an exact reprint of a vintage baseball Wagner—Pittsburgh. These words are not subject to trade- card would likely create the same type of copyright mark or copyright laws. action, the reprinter would not be the copyright hold- 7. Uncited material in this section is based on the author’s er. Thus, the reprinting would involve a case of firs t personal knowledge. He learned the industry operating as a impression: whether use of material that is in the pub- sports card and memorabilia dealer for over eleven years and lic domain would preempt the misappropriation cause collecting for nearly twenty years. The author was one of the of action. Such an interpretation appears to be at cross- early supporters of unbiased third-party grading services for authorized dealers, such as Professional Sports Authenticator purposes with Congress’s intent to allow copyrighted (PSA). Se e ht t p : / / w w w . p s a c a r d . c o m . materials to go into the public domain, even if it was 8. See Ralph Barrier Jr., Players’ Cards, ROA N O K E TIM E S & necessary to pay for a celebrity’s image. Therefore, it WOR L D NEW S , Apr. 14, 2001, at 1, available at WL 5363051 follows that the celebrity’s right to profit would expire (quoting a lawyer and collector as saying that cards are “big because the use of the photo is merely “works for business” and that children “are not in it anymore”); see also hi r e , ” 73 as the actors in Fl e e t . It seems contrary to allow Gregory Lewis & Dwight Chapin, The Collectors: Topps Has Expanded, and Also Become PR Conscious, S.F. EXA M ., Ma y something to enter the public domain yet frustrate the 14, 1994, available at WL 4273725 (asserting that Topps purpose of the copyright law by allowing a misappro- printing presses are running around the clock); Alan priation cause of action.74 Breznick, The Topps Gum in Baseball Cards, Profits , CRA I N S N.Y. BU S., Apr. 3, 1989, at 3, available at WL 2600218 Co n c l u s i o n (claiming that baseball cards were the biggest fad since Pac- Ma n ) . The reprinting of vintage trading cards appears to 9. Paul Dottino, Top Pick a Symbol of the Greedy 90s, be legally viable. Most of the companies that originally REC O R D , NOR T H E R N NEW JER S E Y , June 26, 1993, at B02, av a i l - produced the cards are either out of business or have able at WL 7914832. been taken over by larger companies, and the intellec- 10. Dale Hofman, Fans Alone Feel Pinch of A-Rod’s New tual property rights of the trading cards have been lost. De a l , MIL W A U K E E J. & SEN T I N E L , De c . 14, 2000, at C1, av a i l - Most of the players no longer have legal protection for able at WL 26101410. 11. For instance, new trading card sales reached $800 mil- their celebrity status or do not enforce it. Given the lion by 1990, which has shrunk today to $450 million. Id . unlikely chance of enforcement, the small number of 12. A somewhat derogatory term likely coined by full-time enforceable rights and the even smaller likelihood of card store proprietors based upon the price slashing tactics
ENTERTAINMENT AND SPORTS LAWYER 14 VOLUME 19, NUMBER 1 • SPRING 2001 practiced by many show dealers. Card Past, WAL L ST. J., Dec. 10, 1993, at B6, available at WL - 13. An event where dealers display merchandise in small WS J 67 1 9 6 1 (citing a sluggish trading card market as the rea- booths for sale to the public. son Topps broke with tradition and created a television 14. S e e Lisa Sanders, Topps Fights for Bottom Line: advertising campaign). Trading Card Slide Gums Up Works; Sticking to the Old, 30. Card Collector’s Company. CR A I N’S N.Y. BU S., Jan. 19, 1998, at 4, available at W L 31. A trade magazine, published by Krause Publications, 8016375 (quoting a dealer that has turned to Beanie Babies printed every week during the 1980s and now published bi- to keep his company profitable). weekly. It is the oldest hobby publication still being pro- 15. An accurate count is impossible because many dealers duced; its December 22, 1999, issue marked its 1000th issue. buy from distributors with unreported cash payments. Many 32. Another long-time trade publication recently pur- also pay in cash for their show booths to avoid getting resale chased by Krause Publications. licenses or collecting sales tax. 33. In the mid-1980s, Topps reproduced its 1952 set; dur- 16. See Nick Rousso, Trading Cards: A Decade of Ups and ing the 1990s, the company reproduced its 1953 and 1954 Downs, SE A T T L E PO S T- IN T E L L I G E N C E R, Mar. 14, 2000, at B4 sets in a new series called “Archives.” Because of a licensing available at WL 5290711 (characterizing the 1990s as a disagreement with Upper Deck, Topps did not include Ted decade of ups and downs for the trading card industry). Williams in its reprint of the 1954 set. The missing Ted 17. Digital Collectibles: Topps Plan to Hawk New Sports Williams card was issued by Upper Deck during the next sea- Cards on the Net, WAL L ST. J., June 29, 2000, at B1, av a i l a b l e son. See Paul Dottino, Williams, Mantle Added to Card Set, at WL-WSJ 3034859; see also Tim Wilson, Topps Put Web THE REC O R D , NOR T H E R N NEW JER S E Y , Aug. 13, 1994, at S02, Spin on Baseball Cards, INT E R N E T WK., Apr. 9, 2001, at 49 , available at WL 7765959. available at WL 8007498. 34. 17 U.S.C. § 102(a). 18. Only Topps maintains the right to market baseball 35. Bleinstein v. Donaldson Lithographing Co., 188 U.S. cards along with bubble gum because of their exclusive 239 (1903). license with players. See Fleer Corp. v. Topps Chewing 36. 17 U.S.C. § 102; Baker v. Seldon, 101 U.S. 99 (1879) Gum, Inc., 658 F.2d 139 (3d Cir. 1981). Bazooka brand base- (holding that there can be no copyright protection in ideas); ball cards still insert gum along with its cards. The manufac- Morrissey v. Proctor & Gamble Co., 379 F. 2d 675 (1st Cir. turers eliminated gum because the gum stained the last card 1967) (holding there can be no copyright protection when of the pack. the subject matter of a work is so narrow and straightfor- 19. Topps continues producing trading cards today. The ward that only a few ways of expression exist). company revived the Bowman brand name in 1989 and still 37. 17 U.S.C. § 1 et seq. (repealed 1976). produces a number of Bowman sets. See Fleer, 658 F.2d at 38. Maljack Prod., Inc. v. UAV Corp., 964 F. Supp. 1416 13 9 . (C.D. Cal. 1997) (citing 1 M. NIM M E R & D. NIM M E R , NIM M E R ON 20 . See id. COP Y R I G H T § 2.02 (1996)). 21. Beckett Publications, still owned and operated by Dr. 39. 17 U.S.C. § 2 (repealed 1976). James Beckett, produce many monthly price guides that 40. Id . include prices for all sports cards. Beckett produces price 41. Id . guides for everything from autographed memorabilia to 42. 17 U.S.C. § 101 et seq. (the 1976 Act). Beanie Babies and old Sports Illustrated bo o k s . 43. Maljack Prod., 964 F. Supp. at 1416 (citing 17 U.S.C. § 22 . See generally Fleer Corp., 658 F.2d at 139 (discussion 101 (repealed 1976)). of facts and legal analysis). 44. 17 U.S.C. § 10 (repealed 1976). 23. John Rippel, Market Value: Collectors Enjoy Return 45. The 1976 Act extended the renewal term for works on Investment, ORA N G E CTY . REG ., July 2, 1989, at C12, av a i l - under the 1909 Act to a period of forty-seven years if their able at WL 6214615 (quoting a Wall Street Journal ar t i c l e initial term expired in 1978 or later. This does not affect pre- that called baseball cards “the best investment of the 1980s”). WWII trading cards, all of which were either in their renewal 24. See id. period or in the public domain by 1978. 25. Based on gross sales, Topps is the world’s largest trad- 46. Se e Stewart v. Abend, 495 U.S. 207, 233 (1990). ing card manufacturer. Se e PET E WIL L I A M S , CAR D SHA R K S : HOW 47. S e e Gordon, Right of Property in Name, Likeness, UP P E R DE C K TU R N E D A CH I L D’S HO B B Y I N T O A HI G H- ST A K E S, Personality and History, 55 NW. U. L. REV . 553 (1961); se e BIL L I O N -D OL L A R BUS I N E S S (1996). Cf. Digital Collectibles, su p r a also International News Service v. Associated Press, 248 U.S. note 17 (asserting that Topps had 37 percent of the trading 215 (1918) (recognizing the appropriation cause of action card market compared to Upper Deck’s 35 percent). under federal common law). 26. An insert card is a scarce, randomly inserted card that 48. 202 F.2d 866 (2d Cir. 1953). often is printed on premium stock with state-of-the-art print- 49. Haelan produced Bowman trading cards, Topps’s chief ing techniques. It often has a very high secondary market competitor at the time. value. 50. Ha e l e n , 202 F.2d at 868. 27. Another term for “insert card.” 51. Montana v. San Jose Mercury News, Inc., 40 Cal. Rptr. 28. For the purposes of this article, the vintage card market 2d 639 (Cal Ct. App. 1995). includes everything produced before 1980. 52. The famous 1919 T-206 card of Honus Wagner that 29. See Topps Co.: Third Quarter Net Fell 59% on Slump sold for $451,000 in 1991 and $631,000 in 1996 is so rare in Trading Cards, WAL L ST. J., Dec. 15, 1993, at B4, av a i l a b l e because a contract dispute over either compensation or a t WL-WSJ 671527; see also Deidre A. Depke (ed.), T o p Wagner’s distaste for cigarettes (depending on which story Cardmaker Topps Takes a Tumble, BUS . WK., Feb. 8, 1993, you believe) caused his card to be pulled from the produc- at 34, available at WL 2154202 (discussing too many trading tion run. Less than one hundred cards exist today. products aimed at a shrinking audience); Kevin Goldman, 53. Mo n t a n a , 40 Cal. Rptr. 2d at 790. Rapid Fire Topps TV Ad Breaks with Nostalgic Trading- 54. Lugosi v. Universal Pictures, 603 P.2d 425 (Cal. Ct.
ENTERTAINMENT AND SPORTS LAWYER 15 VOLUME 19, NUMBER 1 • SPRING 2001 App. 1979); see also Guglielmi v. Spelling-Goldberg Prod., 603 P.2d 454 (1979). COACH I N G CON T R AC T S 55. CAL . CIV . COD E § 3344(a). (continued from page 9) 56. Newcombe v. Adolf Coors Co., 157 F.2d 686 (9th Cir. 1998) (applying California law). Pr omoting Goodwill 57. Ne w c o m b e , 157 F.2d at 686. Because your priority is to ensure your client’s best 58. Eastwood v. Superior Ct., 198 Cal. Rtpr. 342, 347 (Cal. interests, it is important to keep the negotiations cor- Ct. App. 1983); RES T A T E M E N T (S EC O N D ) OF TOR T S § 652C. dial. As a litigator, I find that immediately taking an 59. These photographs for most pre-World War II cards are either black and white or hand tinted. adversarial position often puts both parties on the 60. To be actionable, the photograph must show the sub- defensive, making it harder to build consensus or gain ject as “readily identifiable . . . [so] one who views the photo- concessions. Taking a nonadversarial tack when negoti- graph with the naked eye can reasonably [identify] . . . the ating a sports contract is often the best way to be an person.” CAL . CIV . COD E § 3344(b)(1). advocate for your client. Working to identify creative 61. CAL . CIV . COD E § 3344(b)( 3 ) . 62. Section 33 4 4 ( b)( 2 ) sp e c i fi cally recognizes a baseball solutions, rather than simply pushing back on every team as being “[a] definable group.” CA L. CI V. CO D E § offer, will also promote goodwill between the coach 33 4 4 ( b)( 2 ) . and the university. Unlike many standard litigation set- 63. The reverse side of many early cards feature tobacco tings in which the parties will settle a dispute and walk ads and nothing else. away, your client and the university are beginning a 64. This would either eliminate litigation or allow for a potentially long-term relationship. Setting the appropri- quick dismissal. 65. Using the actual cards would give less credence to the ate tone in negotiations will make your client’s transi- idea that the players were representing the company, and tion to her new position more successful. that the cards were the focus of the advertisement. 66. CAL . CIV . COD E § 3344(e); see also Newcombe v. Adolf Co n c l u s i o n Coors Co., 157 F.2d 686 (9th Cir. 1998). Although some sports attorneys may favor working 67. CAL . CIV . COD E § 990(d)(1) sets forth the rather compli- with better-known coaches of men’s programs who can cated transfer of these rights upon death. 68. Montana v. San Jose Mercury News, Inc., 40 Cal. Rptr. command multimillion dollar contracts, the potential 2d 639 (Cal Ct. App. 1995). for women’s sports and coaches in women’s programs 69. M o n t a n a, 40 Cal. Rptr 2d at 642 (citing Dora v. has yet to be fully realized. Moreover, many coaches of Frontline Video, Inc., 18 Cal. Rptr. 2d 790, 792 (Cal. Ct. App. women’s programs are just starting to realize the power )); Carlisle v. Fawcett Pub., Inc., 20 Cal Rptr. 405, 414 (Cal. and clout they have when negotiating with universities. Ct. App. 1962); Eastwood v. Superior Ct., 198 Cal. Rtpr. 342, 347 (Cal. Ct. App. 1983). As such, sports attorneys may find themselves in the 70. U.S. CON S T . art. 6, cl. 2. pleasant position of not only helping to shape a talented 71. Wendt v. Host Int’l, Inc., 125 F. 2d 806 (9th Cir. 1997). coach’s career, but also enabling a particular university 72. 58 Cal. Rptr. 2d 645, 648 (Dist. 2 1996). to deliver an award-winning season. 73. Id . 74. For a narrow reading of Fl e e t , see Hoffman v. Capital Robert W. Ferguson ([email protected]) is an associ- Cities/ABC, Inc., 33 F. Supp. 2d 867 (C.D. Cal. 1998) (stating ate in the litigation department of Preston Gates & Ellis LLP that “Fl e e t stands merely for the proposition that an actor in Seattle. cannot prevent the use of the actor’s copyrightable pe r f o r - mance by the holder of that copyright”). En d n o t e s 1. 20 U.S.C. § 1681 (2001). Title IX reads as follows: “No person in the United States shall, on the basis of sex, be excluded from participation in, be denied the benefits of, or Looking for be subjected to discrimination under any education program or activity receiving Federal financial assistance . . .” Ba c k Issues? 2. The website of the Women’s Sports Foundation at
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