Zynga Oregon Trail Answer

8/3/2019 Zynga Oregon Trail Answer

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4. Answering Paragraph 4 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 4, and on that

basis denies each and every such allegation.

5. Answering Paragraph 5 of the Complaint, Zynga admits that The Learning

Company approached Zynga in 2010 to inquire whether Zynga would be interested in assisting

The Learning Company in developing a version of Plaintiffs The Oregon Trail game on

Facebook. Zynga further admits that after preliminary discussions, the parties decided not to

work together. Except as admitted herein, Zynga denies each and every allegation contained in

Paragraph 5.6. Answering Paragraph 6 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 6, and on that

basis denies each and every such allegation.


information as to third-party press releases and denies each and every one of the remaining

allegations contained in Paragraph 7.

8. Answering Paragraph 8 of the Complaint, Zynga admits that the referenced article

appears at the cited link. Zynga further admits that the YouTube link contains footage of Mark

Pincus, Zyngas CEO. Zynga denies each and every one of the remaining allegations contained

in Paragraph 8.

9. Answering Paragraph 9 of the Complaint, Zynga avers that the purported

allegations in Paragraph 9 are conclusions of law or fact to which no responsive pleading is

required. To the extent a response to Paragraph 9 is required, Zynga denies each and every one

of the allegations contained in Paragraph 9.

Case 1:11-cv-10894-MLW Document 48 Filed 06/16/11 Page 2 of 21


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PARTIES


information sufficient to form a belief as to the allegations contained in Paragraph 10, and on

that basis denies each and every such allegation.




12. Answering Paragraph 12 of the Complaint, Zynga is without knowledge or information sufficient to form a belief as to the allegations contained in Paragraph 12, and on


13. Answering Paragraph 13 of the Complaint, Zynga admits that it is a Delaware

corporation with its principal place of business (as corrected) at 444 De Haro Street, Suite 125,

San Francisco, California 94107.

JURISDICTION AND VENUE



required. To the extent a response to Paragraph 14 is required, Zynga admits that Plaintiffs

purport to assert claims under the Lanham Act, 15 U.S.C. 1051 et seq., and further admits that

this Court has subject matter jurisdiction over claims arising under federal statutes. Except as

expressly admitted herein, Zynga denies each and every allegation contained in Paragraph 14.





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required. To the extent a response to Paragraph 15 is required, Zynga admits that it is subject to

personal jurisdiction in this District and denies the remainder of the allegations.

FACTS

The Learning Company and its OREGON TRAIL Brand Game





information sufficient to form a belief as to the allegations contained in Paragraph 17, and onthat basis denies each and every such allegation.















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that basis denies each and every such allegation.25. Answering Paragraph 25 of the Complaint, Zynga is without knowledge or



26. Answering Paragraph 26 of the Complaint, Zynga admits that the quoted text

appears at the cited link. Zynga is without knowledge or information sufficient to form a belief

as to the remaining allegations contained in Paragraph 26, and on that basis denies each and

every such allegation.









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30. Answering Paragraph 30 of the Complaint, Zynga admits that in the Spring of

2010, The Learning Company approached Zynga to inquire about collaborating on the

development of the Oregon Trail game for the Facebook platform and that certain introductory

information was supplied by The Learning Company in connection with that inquiry. Zynga

further admits that the parties decided not to collaborate with each other after brief discussions.

Except as expressly admitted herein, Zynga denies each and every allegation contained inParagraph 30.















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37. Answering Paragraph 37 of the Complaint, Zynga admits that HMHCC owns a

federal registration for THE OREGON TRAIL Mark, U.S. Regis. No. 1,771,617, for computer

game programs and instruction manuals therefore sold as a unit. Zynga avers that the remainingallegations in Paragraph 37 are conclusions of law or fact to which no responsive pleading is

required. To the extent a response to Paragraph 37 is required, except as expressly admitted

herein, Zynga denies each and every allegation contained in Paragraph 37.







Zynga and its Business

40. Answering Paragraph 40 of the Complaint, Zynga admits the allegations

contained in Paragraph 40.

41. Answering Paragraph 41 of the Complaint, Zynga admits that it has more than

1,300 employees and that it raised more than $200 million in private funding to support its



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business. Zynga further admits that some of its games allow participants to make small real-

world payments for game-world goods that advance the game or allow players to overcome

obstacles. Except as expressly admitted herein, Zynga denies each and every allegation


42. Answering Paragraph 42 of the Complaint, Zynga admits that the quoted phrase

appears at the cited link. Zynga denies each and every one of the remaining allegations


43. Answering Paragraph 43 of the Complaint, Zynga admits that the quoted phrase

appears at the cited link. Zynga denies each and every one of the remaining allegationscontained in Paragraph 43.

Zyngas Knowledge of THE OREGON TRAIL Brand

44. Answering Paragraph 44 of the Complaint, Zynga admits that it received from

The Learning Company information about Plaintiffs Oregon Trail game. Except as expressly

admitted herein, Zynga denies each and every allegation contained in Paragraph 44.

45. Answering Paragraph 45 of the Complaint, Zynga admits that Zynga launched a

game called FrontierVille in 2010. Zynga further admits that Brian Reynolds, Zyngas Head

Game Designer, has participated in interviews to promote FrontierVille, and the article cited in

Paragraph 45 includes the quoted line. Except as expressly admitted herein, Zynga denies each

and every allegation contained in Paragraph 45.

46. Answering Paragraph 46 of the Complaint, Zynga admits that The Learning

Company and Zynga had brief discussions and that certain introductory information was

supplied by The Learning Company in connection with that inquiry. Zynga denies each and

every one of the allegations contained in Paragraph 46.



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required. To the extent a response to Paragraph 47 is required, Zynga denies each and every

allegation contained in Paragraph 47.

Zyngas Adoption of the Identical Name for the Identical Goods

48. Answering Paragraph 48 of the Complaint, Zynga admits that trailers for

FrontierVille formerly appeared at the links cited. Zynga denies each and every one of the

remaining allegations contained in Paragraph 48.

49. Answering Paragraph 49 of the Complaint, Zynga denies each and every one of the allegations contained in Paragraph 49.

50. Answering Paragraph 50 of the Complaint, Zynga admits that the screenshots

included in Paragraph 50 formerly appeared in a trailer created by Zynga. Zynga avers that the

remaining allegations in Paragraph 50 are conclusions of law or fact to which no responsive

pleading is required. To the extent a response to Paragraph 50 is required, except as expressly

admitted herein, Zynga denies each and every one of the remaining allegations contained in

Paragraph 50.

51. Answering Paragraph 51 of the Complaint, Zynga admits that its games are

available via the Internet and Facebook. Zynga denies each and every one of the remaining

allegations contained in Paragraph 51.







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55. Answering Paragraph 55 of the Complaint, Zynga avers that the purportedallegations in Paragraph 55 are conclusions of law or fact to which no responsive pleading is



56. Answering Paragraph 56 of the Complaint, Zynga admits that HMHCC has never

granted Zynga a license to use THE OREGON TRAIL Mark but denies that Zynga was required

to obtain a license to use the term Oregon Trail in its FrontierVille game.


allegations in Paragraph 57 are conclusions of law or fact, or a prayer for relief, to which no

responsive pleading is required. To the extent a response to Paragraph 57 is required, Zynga

denies each and every one of the allegations contained in Paragraph 57.

ANSWER TO PURPORTED FIRST CAUSE OF ACTION(Trademark Infringement 15 U.S.C. 1114)

58. Answering Paragraph 58 of the Complaint, Zynga refers to and incorporates its

answers to Paragraphs 1 through 57 as though fully set forth herein.



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59. Answering Paragraph 59 of the Complaint, Zynga admits that HMHCC is the

owner of a federal trademark registration for THE OREGON TRAIL Mark, U.S. Regis. No.

1,771,617. Zynga is without knowledge or information sufficient to form a belief as to any of

the remaining allegations contained in Paragraph 59, and on that basis denies each and every

such allegation.




61. Answering Paragraph 61 of the Complaint, Zynga avers that the purportedallegations in Paragraph 61 are conclusions of law or fact to which no responsive pleading is



62. Answering Paragraph 62 of the Complaint, Zynga denies each and every one of

the allegations contained in Paragraph 62.








of the allegations contained in Paragraph 64, and further denies that Plaintiffs have been

damaged in any amount at all.



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denies each and every one of the allegations contained in Paragraph 66, and further denies that

Plaintiffs have been damaged in any amount at all. ANSWER TO PURPORTED SECOND CAUSE OF ACTION

(False Designation of Origin 15 U.S.C. 1125(a))
















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denies each and every one of the allegations contained in Paragraph 82, and further denies that

The Learning Company has been damaged in any amount at all.

ANSWER TO PURPORTED FOURTH CAUSE OF ACTION(Unfair Competition Mass. Gen Laws ch. 93A





required. To the extent a response to Paragraph 84 is required, Zynga denies each and every

allegation contained in Paragraph 84.














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of the allegations contained in Paragraph 87, and further denies that The Learning Company has

been damaged in any amount at all.

AFFIRMATIVE DEFENSES

Zynga asserts the following affirmative defenses and reserves the right to assert

additional defenses if and when appropriate, including without limitation based on information

disclosed in discovery. In asserting these defenses, Zynga does not assume the burden of proof

for any issue with respect to which the relevant law places the burden of proof on Plaintiffs.

First Affirmative Defense(Failure to State a Claim)

The Complaint and each and every cause of action asserted therein fails to state a claim

upon which relief can be granted.

Second Affirmative Defense(No Actual Controversy)

The claims against Zynga, and each of them, are barred because there is no actual

controversy between the parties.

Third Affirmative Defense(Generic Trademark)

Assuming without conceding that Plaintiffs own trademark rights in THE OREGON

TRAIL, Plaintiffs claims against Zynga, and each of them, are barred because Plaintiffs

trademark has become generic.

Fourth Affirmative Defense(No Senior Rights)

Assuming without conceding that Plaintiffs alleged THE OREGON TRAIL mark has

attained secondary meaning, Plaintiffs claims against Zynga, and each of them, are barred



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because Zynga began using the term Oregon Trail on Facebook before Plaintiffs attained

secondary meaning in THE OREGON TRAIL on Facebook.

Fifth Affirmative Defense

(No Infringement)

Assuming without conceding that Plaintiffs own trademark rights in THE OREGON

TRAIL, Plaintiffs claims against Zynga, and each of them, are barred because Zynga has not

infringed Plaintiffs rights.

Sixth Affirmative Defense(Fair Use)

Plaintiffs claims against Zynga, and each of them, are barred by the doctrine of fair use.Seventh Affirmative Defense

(Laches)

Plaintiffs claims against Zynga, and each of them, are barred by the doctrine of laches.

Eighth Affirmative Defense(Estoppel)

Plaintiffs claims against Zynga, and each of them, are barred by the doctrine of estoppel.

Ninth Affirmative Defense(No Use in Commerce)

Plaintiffs claims against Zynga, and each of the, are barred because Zynga has not made

any use in commerce of the alleged mark.

Tenth Affirmative Defense(First Amendment)

Plaintiffs claims against Zynga, and each of the, are barred based on the First

Amendment.

Eleventh Affirmative Defense

(Lawful Conduct)



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Plaintiffs claims against Zynga, and each of them, are barred because Zynga at all times

acted in compliance with the law.

Twelfth Affirmative Defense

(No Willfulness)

Assuming without conceding that Zynga does not have the right to use THE OREGON

TRAIL, Plaintiffs are not entitled to any monetary relief because Zyngas adoption and use of

the term Oregon Trail was innocent and not undertaken with knowledge of, or intent to

infringe, any rights of Plaintiffs or any other party.

Thirteenth Affirmative Defense

(Mootness)

Plaintiffs claims against Zynga, and each of them, are barred because they are moot.

COUNTERCLAIMS

Zynga alleges the following counterclaims against Plaintiffs:

THE PARTIES

1. Zynga is a Delaware corporation with its headquarters located at 444 De Haro

Street, Suite 125, San Francisco, California 94107.

2. On information and belief, The Learning Company is an unincorporated division

of Houghton Mifflin Harcourt Publishing Company.

3. On information and belief, Houghton Mifflin Harcourt Publishing Company

(Houghton Mifflin Harcourt) is a Massachusetts corporation with its principal place of

business at 222 Berkeley Street, Boston, Massachusetts 02116.

4. On information and belief, HMH Consumer Company Ltd. (HMHCC) is an

Ireland company with its principal place of business at 70 Sir John Rogersons Quay, Dublin,



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Ireland 2. HMH Consumer Company Ltd. is an affiliate of Houghton Mifflin Harcourt

Publishing Company.

JURISDICTION AND VENUE

5. This Court has subject matter jurisdiction over these claims pursuant to 28 U.S.C.

1331, 1338(a) and (b), and supplemental jurisdiction under 28 U.S.C. 1367.

6 Upon information and belief, venue is proper in this Court pursuant to 28 U.S.C.

1391(b) and (c) because this is the judicial district where (i) a substantial part of the events or

omissions giving rise to the claim occurred; and (ii) where Plaintiffs are subject to personal

jurisdiction.FIRST COUNTERCLAIM

(Declaratory Judgment of Non-Infringement)

7. Zynga repeats and incorporates by reference paragraphs 1 through 6 of its

Counterclaims as if fully set forth herein.

8. Plaintiffs have expressly charged Zynga with infringement of the trademark THE

OREGON TRAIL (the Mark) by filing their Complaint against Zynga.

9. Zynga has not infringed the Mark within its FrontierVille game or any marketing

or advertising for that game.

10. Zyngas references to the Oregon Trail within its FrontierVille game or within

any marketing or advertising for that game were a descriptive and fair use.

11. An actual controversy, within the meaning of 28 U.S.C. 1331, 1338, 2201, and

2202, exists between Plaintiffs and Zynga regarding the non-infringement of the Mark.

12. Zynga is entitled to judgment declaring that Zynga has not infringed Plaintiffs

Mark based on any use or appearance of the phrase Oregon Trail within its FrontierVille game

or any marketing or advertising for that game.



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PRAYER FOR RELIEF

WHEREFORE, Zynga respectfully prays for the following relief:

A. Judgment against Plaintiffs on, and dismissal with prejudice of, the claims in

Plaintiffs Complaint against Zynga;

B. Judgment declaring that Zynga has not infringed Plaintiffs trademark THE OREGON

TRAIL;

C. Judgment awarding Zynga its costs and attorneys fees; and

D. For such other relief as the Court deems just and proper.

ROPES & GRAY LLP

Dated: June 16, 2011 By: /s/ Dalila Argaez Wendlandt______ Dalila Argaez Wendlandt (BBO #639280)Randall W. Bodner (BBO#549160)Alexandra J. Roberts (BBO# 672533)ROPES & GRAY LLPPrudential Tower 800 Boylston StreetBoston, Massachusetts 02199-3600(617) [email protected]@[email protected]

Of Counsel:Dennis L. Wilson (pro hac vice pending)David K. Caplan (BBO # 672220)KEATS MCFARLAND & WILSON, LLP9720 Wilshire Blvd., PH SuiteBeverly Hills, CA 90212Telephone: (310) [email protected]@kmwlaw.com

Attorneys for Defendant ZYNGA INC.



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CERTIFICATE OF SERVICE

I hereby certify that this document filed through the ECF system will be sent

electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)

on June 16, 2011.

Dated: June 16, 2011 By: /s/ Dalila Argaez Wendlandt______ Dalila Argaez Wendlandt (BBO #639280)Randall W. Bodner (BBO#549160)Alexandra J. Roberts (BBO# 672533)ROPES & GRAY LLPPrudential Tower

800 Boylston StreetBoston, Massachusetts 02199-3600(617) [email protected]@[email protected]

Attorneys for Defendant ZYNGA INC.


Zynga Oregon Trail Answer

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