Fdocuments - in - Zynga Oregon Trail Answer

8/3/2019 Zynga Oregon Trail Answer
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Case 1:11-cv-10894-MLW DocumentZynga
48 Oregon Trail Answer
Filed 06/16/11 Page 2 of 21
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 Plaintiff’s “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.
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, Zynga’s 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.
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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.

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
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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 in
Paragraph 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 remaining
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 allegations
Zynga’s 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, Zynga’s 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.
Zynga’s 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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Case 1:11-cv-10894-MLW Document Zynga
Filed 06/16/11 Page 10 of 21
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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Filed 06/16/11 Page 11 of 21
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.
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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Filed 06/16/11 Page 12 of 21
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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Filed 06/16/11 Page 16 of 21
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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Filed 06/16/11 Page 17 of 21
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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Filed 06/16/11 Page 18 of 21
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 Zynga’s 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 Rogerson’s Quay, Dublin,
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Filed 06/16/11 Page 19 of 21
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. Zynga’s 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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Filed 06/16/11 Page 20 of 21
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 LLP
Prudential Tower
800 Boylston Street
Boston, Massachusetts 02199-3600
(617) 951-7000
dalila.wendlandt@ropesgray.com
randall.bodner@ropesgray.com
alexandra.roberts@ropesgray.com
Of Counsel:
Dennis L. Wilson (pro hac vice pending)
David K. Caplan (BBO # 672220)
KEATS MCFARLAND & WILSON, LLP
9720 Wilshire Blvd., PH Suite
Beverly Hills, CA 90212
Telephone: (310) 248-3830
dwilson@kmwlaw.com
dcaplan@kmwlaw.com
Attorneys for Defendant ZYNGA INC.
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Filed 06/16/11 Page 21 of 21
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 LLP
Prudential Tower
800 Boylston
Boston, Street 02199-3600
Massachusetts
(617) 951-7000
dalila.wendlandt@ropesgray.com
randall.bodner@ropesgray.com
alexandra.roberts@ropesgray.com
Attorneys for Defendant ZYNGA INC.
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8/3/2019 Zynga Oregon Trail Answer

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

basis denies each and every such allegation.

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

basis denies each and every such allegation.

7. Answering Paragraph 7 of the Complaint, Zynga is without knowledge or

allegations contained in Paragraph 7.

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

of the allegations contained in Paragraph 9.

10. Answering Paragraph 10 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

11. Answering Paragraph 11 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

12. Answering Paragraph 12 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

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

San Francisco, California 94107.

JURISDICTION AND VENUE

allegations in Paragraph 14 are conclusions of law or fact to which no responsive pleading is

allegations in Paragraph 15 are conclusions of law or fact to which no responsive pleading is

The Learning Company and its OREGON TRAIL Brand Game

16. Answering Paragraph 16 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

17. Answering Paragraph 17 of the Complaint, Zynga is without knowledge or

18. Answering Paragraph 18 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

19. Answering Paragraph 19 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

20. Answering Paragraph 20 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

21. Answering Paragraph 21 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

22. Answering Paragraph 22 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

23. Answering Paragraph 23 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

24. Answering Paragraph 24 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

that basis denies each and every such allegation.

every such allegation.

27. Answering Paragraph 27 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

28. Answering Paragraph 28 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

29. Answering Paragraph 29 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

31. Answering Paragraph 31 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

32. Answering Paragraph 32 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

33. Answering Paragraph 33 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

34. Answering Paragraph 34 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

35. Answering Paragraph 35 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

36. Answering Paragraph 36 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

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

38. Answering Paragraph 38 of the Complaint, Zynga is without knowledge or

that basis denies each and every such allegation.

39. Answering Paragraph 39 of the Complaint, Zynga is without knowledge or