Baseball Cards and Prior Art |

Baseball Cards and Prior Art


Get the newsletter

Join the 85,000 open source advocates who receive our giveaway alerts and article roundups.

Patent decisions are usually pretty dry stuff, but In Media Technologies Licensing, LLC v. The Upper Deck Co. is a patent lawsuit about sports trading cards. This is what a patent claim for a trading card looks like:

What is claimed is:

1. A memorabilia card comprising a substrate in the form of a card and having an image surface,
the image surface including a background image and a foreground image, and wherein the foregoing image is of a famous figure,
a piece of a memorabilia item being adhered to the card adjacent to where an image of the actual item normally would appear, and
the card including a certificate attesting to the authenticity of the item.

In plain language, it's a trading card with a piece of sports memorabilia, like a piece of a jersey, placed on it in a specific location.  This is a picture of one of the defendant's trading cards fitting the description:

Jeter Memorabilia card

The defendant wanted to invalidate the patent.  We usually think of "prior art" as earlier patents or technical papers.  But "prior art" can encompass any way that the claimed invention is shown or taught, not just patents or printed matter.  In the case of the baseball cards no one was digging through old journals in the library, instead it looks like surfing eBay was more in order.  This is the prior art that the defendant had:

  • a trading card with a picture of Marilyn Monroe and a diamond attached to the card
  • a piece of a sheet purportedly slept on by one of the Beatles attached to a copy of a letter on Whittier Hotel stationery declaring its authenticity
  • a piece of fabric purportedly belonging to a Capuchin Friar named Stephen Eckert attached to paper stock including a picture of the friar
  • a greeting card fashioned to look like a novelty item that ostensibly included a piece of jeans material belonging to James Dean

Based only on these items, the court found that the patent was invalid as "obvious." The Marilyn Monroe card had everything claimed in the patent except it was a complete diamond, not a "piece," but the other examples of prior art showed the possibility of using pieces of memorabilia. The stationary from the Whittier Hotel with the Beatles sheet wasn't a "card," but the Marilyn Monroe card demonstrated the concept of a trading card.  The James Dean card wasn't "authentic" memorabilia, but the other examples demonstrated that the memorabilia could be combined with a statement of authenticity.  There was also expert testimony that someone in the trading card industry would have applied the concepts in other card industries, like these, to trading cards.

There is one curiosity in the decision.  Prior art has to teach every element of a claim, but here the court didn't talk about "adjacent to where an image of the actual item normally would appear."  Maybe that could be seen clearly in the prior art examples so wasn't worth mentioning, or the parties didn't raise it so the court didn't have to talk about it either.  Who knows, but at the end of the day the appeals court agreed with the trial court that two trading card patents - which had already survived a reexamination in the patent office - were invalid.

Court of Appeals for the Federal Circuit decision here.


About the author

Pam Chestek - Pam, formerly Manager, Senior Intellectual Property Counsel for Red Hat, is now the principal of Chestek Legal in Raleigh, North Carolina. She works with creative communities, giving practical legal advice on branding, marketing, and protecting and sharing content. Pam has authored several scholarly articles, has a legal blog at...