the continuing merger of TM and the right of publicity: court can't tell the defenses apart

Upper Deck Co. v. Pixels.com LLC, No. 3:24-cv-00923-BAS-DEB, 2026 WL 776227 (S.D. Cal. March 19, 2026)

Eric Goldman’s discussion. Upper Deck makes sports memorabilia (including sports player trading cards), and has exclusive licensing agreements with various athletes, including famous basketball player Michael Jordan, to use their names, images, and likenesses. Pixels is an online company, selling print-on-demand décor, photographs, wall art, prints, and other similar products. Pixel allows people to upload images and to sell physical prints of those images on its sites. Those included framed prints of Upper Deck’s trading cards featuring Jordan, and other prints displaying Jordan’s likeness. Upper Deck sued for false affiliation/endorsement, false advertising, and unfair competition; trademark dilution; trademark infringement; and right of publicity claims. The court mostly allowed the claims to proceed, with some subtractions.

Those subtractions included the dilution claim: Upper Deck’s registered hologram mark was not sufficiently famous among the general consuming public. However, trademark infringement claims based on the use of (non-hologram) reproductions of the hologram mark survived, despite Pixels’ argument that the one product containing the Upper Deck Hologram Mark listed on its website was never actually sold. Also, a copy of the 1986-87 Fleer Michael Jordan Rookie Card was sold at an auction for $840,000, while the framed print of that card offered for sale on Pixels’ website was priced at $70.

The same result occurred for Lanham Act false advertising and false affiliation claims based on Pixels’ advertisement and sale of products displaying Jordan’s trademarks on its website.

False advertising: The court found that Upper Deck identified a “false statement of fact” by Pixels in a “commercial advertisement about its own or another’s product,” via Pixels’ advertising of products containing Jordan’s trademarks on its website. The court analogized to the use of a kosher certification mark, which doesn’t seem to be analogous in materiality terms. Also, “the fact that some of the images are accompanied by the names of the persons uploading the images on Pixels website does not undermine the misleading nature of Pixels’ use of Jordan’s trademarks in advertising its products.” No further explanation.  

False association: “To establish proximate cause for false association claims, it is sufficient to demonstrate misuse of the relevant mark is likely to cause consumer confusion.” No materiality or harm requirement.

Upper Deck, as licensee for Jordan’s publicity rights, was also able to bring its publicity rights claims, including a publicity rights violation as a predicate violation for UCL claims (if there was no adequate remedy at law).

There were statute of limitations issues. The analogous limitations period for Lanham Act violations in California is four years; two years for the common law right of publicity; and four years for the statutory right of publicity, statutory unfair competition, and common law unfair competition. The specific images that fall within those time frames could be addressed by motions in limine.

I often tell my students that courts interpret the federal and state dilution laws as closely together as they can (with the partial exception of fame) because no one wants to do two dilution analyses, no matter whether the laws are written differently. I predicted that this would also become true of post-JDI Rogers/right of publicity defenses and here I am proven right: Apparently unable to recognize that, in theory, Rogers is the Ninth Circuit test for First Amendment limits on trademark and transformativeness is the Ninth Circuit test for First Amendment limits on the right of publicity, the court here rejects them both because Pixels is supposedly making trademark use of Upper Deck’s marks (that is, the basis recognized by JDI, but until now not part of transformativeness). And it does so because … Upper Deck’s trademarks, including Michael Jordan’s likeness, appear in the images and are thus serving as source indicators. “The pictures and photographs of Jordan displayed in Pixels’ products at issue in this action are source-identifying insofar as they contain Jordan’s Marks.” Bad reasoning all around. Pixels could still argue expressive use “insofar as it is relevant to the likelihood of confusion analysis at trial.” But ROP violations don’t require confusion—so I guess Pixels just loses?

CDA 230: Pixels is a “publisher or speaker” for advertising and curating content on its websites, but not for selling and distributing physical products. “Pixels does not create the illicit images of products uploaded and displayed on its site, and Pixels’ website search engine and content filtering tools do not contribute to the creation of those products.” This gets rid of display-only ROP and other state law violations (because the Ninth Circuit says state-law ROP claims aren’t exempted IP claims), but keeps the rest (e.g., claims based on Pixels’ contracting with vendors to manufacture and ship products, facilitating product returns, and offering a money-back guarantee).