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Upper Deck Sues Former Partner Konami Over Hologram

By Ryan Gile

On February 26, 2009, The Upper Deck Company (?Upper Deck?) filed a trademark infringement lawsuit against Konami Marketing, Inc. and Konami Digital Entertainment, Inc. (?Konami?) in the U.S. District Court for the District of Nevada. See The Upper Deck Company v. Konami Marketing, Inc. et al, Case No. 09-cv-00374 (D. Nev.). A copy of the complaint is available here.

Upper Deck, a Nevada corporation, sells various sports trading cards and trading card games. One of Upper Deck?s trading card games is based on the popular Japanese cartoon (?manga?) and anime franchise Yu-Gi-Oh!, owned by Kabushiki Kaisha Shueisha and purportedly licensed for use in the United States by Konami. (Upper Deck?s own webpage on its Yu-Gi-Oh! trading cards even contains a link to Konami?s website in the upper left). Apparently, up until last December, Upper Deck and Konami had an agreement whereby Upper Deck was the exclusive North American distributor of Yu-Gi-Oh! Trading Card Games.

According to the complaint, Upper Deck has used a small square hologram (pictured above) since at least February 2002 to identify certain of its trading card, including Yu-Gi-Oh! trading cards ? the logo appears in the bottom right-hand corner of trading cards. Upper Deck claims that the hologram not only serves as a source identifier (and apparently makes the cards more collectible), but also represents its specific, proprietary counterfeit-protection method to distinguish authentic trading cards from counterfeits.

Of course, Upper Deck never bothered to actually register the square hologram as a trademark with the United States Patent and Trademark Office until January 2009. Upper Deck has two applications pending ? one for the above square symbol and one for a round symbol. (While Upper Deck has registered many of its hologram shapes in the past, all but one have been canceled ? the one current registration being a hologram version of the above shape of the Upper Deck logo ? see below). Upper Decks also filed trademark applications for its ?SQUARE? with the State of Nevada (here and here), both of which were issued on February 20, 2009. [Ed. ?proving once again that you can get anything registered as a trademark at the state level, including a ?square?].

Konami apparently terminated the aforementioned distribution agreement with Upper Deck on December 11, 2008. Nonetheless, Konami allegedly is now selling Yu-Gi-Oh! trading cards that contain Upper Deck?s hologram mark (or a confusingly similar type of hologram) without Upper Deck?s consent. Upper Deck argues that Konami?s selling of Yu-Gi-Oh! trading cards with its hologram is likely to cause consumer confusion that Konami?s trading cards are sponsored by, endorsed by, or related to Upper Deck and will cause consumers to erroneously believe that they are purchasing Upper Deck products.

Upper Deck?s causes of action are false designation of origin under 15 U.S.C. §1125(a); trademark infringement under Nevada law (NRS §600.420); deceptive trade practices under Nevada law (NRS §598.0915); and common law trademark infringement and unfair competition.

Vegas?Esq. Comments:
Upper Deck has an uphill battle in trying to show that consumers really identify this hologram as it appears on the Upper Deck cards as a source identifier for Upper Deck?s cards and not recognized more for its functional purposes (i.e., identifying a genuine Yu-Gi-Oh! trading card). While Upper Deck claims that the square hologram is a protectable mark that consumers would recognize and associate with Upper Deck, with respect at least to the Yu-Gi-Oh! trading cards, the hologram clearly shows the words ?Yu-Gi-Oh!? (and not Upper Deck). Should Upper Deck be allowed to prevent Konami (or any other company) from using a hologram on trading cards in order to promote its cards as authentic (in a world where counterfeits are rampant)?

Full post as published by Las Vegas Trademark Attorney on February 26, 2009 (boomark / email).