IP Law Daily, TRADEMARK—S.D. Cal.: Trading card company’s dilution claim against online print marketplace dismissed; infringement and related claims survive, (Mar 11, 2026)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

The trading card company failed to show that its hologram trademark had achieved the nationwide fame required for dilution protection; factual disputes allowed the remaining claims to proceed.

A federal district court in California granted in part and denied in part cross-motions for summary judgment in a trademark dispute between a sports memorabilia manufacturer and an online print-on-demand marketplace. The court granted summary judgment to the online marketplace on the trading card company’s trademark dilution claim and on certain statute-of-limitations and Communications Decency Act defenses, finding that the hologram trademark at issue was not sufficiently famous to qualify for dilution protection and that some state law claims were time-barred or pre-empted. At the same time, the court denied summary judgment on the trading card company’s claims for trademark infringement, false endorsement, false advertising, right of publicity, and unfair competition, concluding that factual disputes remained for trial. The court likewise denied portions of the trading card company’s motion for summary judgment on the defendant’s affirmative defenses (The Upper Deck Co. v. Pixels.com, LLC, No. 3:24-cv-00923-BAS-DEB (S.D. Cal. Mar. 6, 2026)).

Background. The plaintiff, The Upper Deck Company, is a California-based manufacturer of sports memorabilia and trading cards that holds exclusive licensing agreements with well-known professional athletes. Through those agreements, it produces trading cards and related merchandise featuring athletes’ names, images, and likenesses. The defendant, Pixels.com, LLC, operates an online marketplace that sells print-on-demand décor, photographs, wall art, and related products through websites including Pixels.com, DesignerPrints.com, and FineArtAmerica.com. The platform allows independent users to upload images and offer prints and other products for sale to consumers throughout the United States.

The dispute involved several intellectual property rights asserted by the trading card company. Central among them was the Upper Deck Hologram Mark, a holographic logo used on the company’s sports memorabilia products to signify authenticity. The hologram mark is registered with the United States Patent and Trademark Office under U.S. Registration No. 2,710,652. The company also asserted rights arising from its exclusive licensing arrangement with basketball legend Michael Jordan through Jordan’s company, Jump 23 Inc., which allegedly granted the sports memorabilia maker exclusive rights to produce memorabilia incorporating Jordan’s name, image, and likeness.

According to the complaint, the online marketplace permitted third-party users to upload images depicting Jordan and to sell physical prints of those images on the platform’s websites without authorization from Jordan, Jump 23, or the sports memorabilia company. The trading card manufacturer alleged that these listings infringed its trademarks, falsely suggested endorsement by Jordan, and violated state law rights of publicity and unfair competition. The marketplace operator moved for summary judgment on all claims, arguing that the evidence failed to establish trademark dilution, infringement, or liability under state law. The sports memorabilia company filed its own motion seeking summary judgment on several of the defendant’s affirmative defenses.

Dilution. The court first addressed the trademark dilution claim brought under 15 U.S.C. § 1125(c). To succeed on a dilution claim, the court explained, the trademark owner must demonstrate that the mark is both distinctive and “famous” among the general consuming public. Relying on Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008), the court noted that fame requires widespread recognition by the general public rather than niche recognition within a particular market.

Applying that standard, the court concluded that the trading card company had not presented sufficient evidence to establish that its hologram mark achieved the level of nationwide fame required for dilution protection. Although the company demonstrated that it had used the mark for decades and had generated significant sales and advertising expenditures, the court held that those facts alone did not establish widespread public recognition. Citing Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999), the court emphasized that substantial sales and advertising do not necessarily prove that a mark is famous among the general consuming public. Because the record lacked evidence showing that consumers broadly associated the hologram design with the sports memorabilia company, the court granted summary judgment for the marketplace operator on the dilution claim.

Infringement. The court next considered the Lanham Act trademark infringement claim under 15 U.S.C. § 1114, which alleged that the defendant’s sale of products containing the hologram mark created a likelihood of confusion among consumers. The marketplace operator argued that no evidence supported a likelihood of confusion because third-party users uploaded the allegedly infringing images and were not marketed as official products of the sports memorabilia company.

The court declined to grant summary judgment on that claim, finding that genuine disputes of material fact remained. In evaluating the likelihood of confusion, the court applied the multifactor test articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). The court concluded that evidence relating to the similarity of the marks, the proximity of the goods, the channels of trade, and the defendant’s conduct in facilitating sales of physical prints raised factual questions that could not be resolved at the summary judgment stage.

False advertising. The court similarly rejected the marketplace operator’s request for summary judgment on the sports memorabilia company’s claims for false endorsement and false advertising under 15 U.S.C. § 1125(a). The defendant contended that the plaintiff lacked standing to bring those claims and had failed to show that consumers were likely to believe that Jordan endorsed the products offered through the platform. The court found that factual disputes concerning consumer perception and the nature of the alleged representations prevented resolution of those claims on summary judgment.

Publicity rights. Turning to the right-of-publicity claims under California law, the court addressed the defendant’s argument that the sports memorabilia company lacked standing to assert publicity rights belonging to Michael Jordan. The court concluded that factual disputes remained concerning the scope of the licensing agreement between the sports memorabilia company and Jordan’s company. Because that agreement allegedly granted the plaintiff exclusive rights to exploit Jordan’s likeness in certain contexts, the court held that the record did not permit summary judgment on the standing issue.

The court also examined the defendant’s reliance on the Communications Decency Act, 47 U.S.C. § 230, which provides immunity to online service providers for certain content supplied by third parties. The marketplace operator argued that the statute barred the plaintiff’s state-law claims because the allegedly infringing images were uploaded by platform users.

The court agreed in part, concluding that Section 230 protected the defendant from liability insofar as the claims sought to hold the company responsible for displaying third-party content on its website. However, the court determined that the statute did not necessarily shield the defendant from claims based on its involvement in the manufacture, sale, or distribution of physical prints containing the allegedly infringing images. Citing decisions such as Atari Interactive, Inc. v. Redbubble, Inc., 2019 WL 3804462 (N.D. Cal. Aug. 13, 2019) and Parisi v. Sinclair, 774 F. Supp. 2d 310 (D.D.C. 2011), the court explained that Section 230 immunity does not extend to conduct involving the production and fulfillment of physical products.

Statute of limitations. Finally, the court addressed the marketplace operator's statute-of-limitations arguments. The defendant contended that certain federal and state claims were time-barred. The court agreed that the sports memorabilia company’s California right-of-publicity claims were subject to a two-year limitations period, thereby limiting the scope of potential liability. Other claims, however, remained timely and could proceed.

Disposition. In conclusion, the court granted the marketplace operator’s motion for summary judgment on the trademark dilution claim, on certain statute-of-limitations defenses, and on aspects of its Section 230 defense. At the same time, it denied summary judgment on the sports memorabilia company’s claims for trademark infringement, false endorsement, false advertising, right of publicity, and unfair competition. The court also denied portions of the plaintiff’s motion challenging several affirmative defenses. As a result, multiple Lanham Act and state law claims remain pending for further proceedings.

The Case is No. 3:24-cv-00923-BAS-DEB.

Judge: Bashant, C.

Attorneys: Alex M. Tomasevic (Nicholas and Tomasevic LLP) for The Upper Deck Co. Bruce Benjamin Paul (McBrayer) for Pixels.com, LLC d/b/a Fine Art America.

Companies: The Upper Deck Co.; Pixels.com, LLC d/b/a Fine Art America

Cases: Trademark CaliforniaNews