The Chicago Daily Law Bulletin Published Timothy Liam EPSTEIN'S Article Entitled, "Cubs find going tough on field, also in copyright fight."

It has been nearly two years since the Cubs won the 2016 World Series, but the team was just recently named as a defendant in a case alleging that the marketing of a 2016 World Series ivy leaf commemorative constitutes copyright infringement and unjust enrichment.

The plaintiff, Daniel Fox, a lifelong Cubs fan now living in Michigan, entered into a licensing agreement with the Cubs in 1984 when he was an advertising executive living in Chicago. Fox contracted with the Cubs to create a commemorative to mark the team’s near-run to its first World Series since 1945, the 1984 National League East Championship.

Each commemorative souvenir was 5-by-7 inches and held a single ivy leaf from Wrigley Field’s outfield wall, encased in a Lucite block. Above the leaf read the title “The Year The Ivy Smiled, The 1984 Chicago Cubs” and below the leaf was the inscription “1984 National League Eastern Division Champions” and the Cubs’ official logo.

As part of the licensing agreement, the Cubs signed off on Fox as the “originator and owner of the promotional idea of inserting Wrigley Field ivy in Lucite as a commemorative.”

Fox himself collected the ivy leaves one at a time after the team lost to the San Diego Padres in the National League Championship Series and sold roughly 700 of the souvenirs for between $50 and $75. Rather than receive commission from sales, the Cubs took their share in merchandise, distributing the commemoratives to the players.

In the past few years, the Cubs have had their fair share of success in defending the team’s copyrights and trademarks, including suing vendors outside Wrigley Field for trademark violations in 2016, protecting its “W” trademark from startup WalletHub in 2015 and removing the unofficial bar-fighting “Billy Cub” mascot from the Wrigleyville neighborhood in 2014. However, this time the similarities between the 2016 World Series ivy leaf commemorative and the 1984 souvenir may be too strikingly similar for the court to deny.

Fox claims he was “aghast” when he saw the Cubs roll out an ivy leaf commemorative in the spring of 2017 that was “stunningly” similar to the one he had created and sold in 1984. Both commemoratives contain single ivy leaves, with an inscription of the Cubs’ season above the leaf and a Cubs logo below the leaf. Though the 2016 version is not encased in a Lucite block, it is encased in a clear, acrylic material.

Strengthening Fox’s argument is the fact that the Cubs have shown periodic interest in new batches of the 1984 commemorative for the past few decades.

However, in 2001 team executives asked Fox to help them market a giveaway of an ivy leaf encased in acrylic plastic without offering him any compensation. After letters and threats of litigation were exchanged, the promotion was canceled.

Still, in 2015, Fox again approached the team about resurrecting the ivy leaf commemorative. A team marketing executive replied thanking him for “sharing background and the idea,” but declined.

Despite this, after winning the 2016 World Series, the Cubs marketed 2,016 of the authenticated items for approximately $200 each.

Fox’s lawsuit seeks an injunction blocking the team from reproducing, displaying or selling the ivy leaf commemorative, plus actual and punitive damages to be decided at trial.

To successfully establish copyright infringement, Fox will have to prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. Muhammad-Ali v. Final Call Inc., 832 F.3d 755 (7th Cir. 2016).

To prove the first element, Fox’s complaint alleges that the 1984 commemorative was an original work of authorship and as such, he owns a copyright which grants him the exclusive rights to reproduce, display and sell copies of his design.

There are two methods of proving copying in a copyright infringement action: (1) that the defendant had the opportunity to copy the original, and (2) that the two works are substantially similar, thus permitting an inference that the defendant actually did copy the original. Id.

In the complaint, Fox alleges that the Cubs had access to his design in 1984 when it was created, in 2001 when they considered producing a variation and in 2015 when Fox requested that they reproduce the commemorative.

He further alleges that the original elements of the 1984 commemorative are present in the 2016 commemorative, since both have ivy leaves, the team’s season, the team’s logo and are encased in a see-through clear material.

It seems likely that the ivy leaf design was Fox’s original work, especially since the contract with the Cubs deemed him the “originator” and it is clear that the Cubs had an opportunity to copy the original since it was presented to them on multiple occasions over the years.

However, Fox will have to get past the differences in the 1984 and 2016 commemoratives. The souvenirs differ in the exact wording used, the 2016 version uses an unofficial logo, while the 1984 design contains additional wording below the leaf. Finally, Lucite is not used in the 2016 design.

Assuming that the similarities between the 2016 World Series ivy leaf commemorative and the 1984 souvenir may be too strikingly similar for the court to deny, the burden will be on the Cubs to disprove one of the above elements or to prove that they had permission to reproduce the commemorative

The team has yet to respond. Chicago Cubs spokesman Julian Green told the Tribune that the team does not comment on pending lawsuits and the answer to Fox’s complaint is not due until Oct. 19.

Regardless of the lawsuit, Fox is still a fan of the Cubs. “I love the guys on the field no less now than I did in 1984,” Fox told the Tribune. “It wasn’t a baseball player who decided to steal an idea and go forward with it. That was somebody who wears a suit.”

Team Members: