Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA198578
`ESTTA Tracking number:
`03/14/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91175392
`Plaintiff
`The MKR Group, Inc.
`Jonathan D. Reichman, Esq.
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`UNITED STATES
`JReichman@kenyon.com
`Motion to Suspend for Civil Action
`Jonathan D. Reichman
`jreichman@kenyon.com, TMDOCKETNY@kenyon.com, mrupp@kenyon.com
`/Jonathan D. Reichman/
`03/14/2008
`MotiontoSuspend DEAD RISING.pdf ( 4 pages )(102153 bytes )
`Complaint Capcom.pdf ( 126 pages )(18989105 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA198578
`ESTTA Tracking number:
`03/14/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91175392
`Plaintiff
`The MKR Group, Inc.
`Jonathan D. Reichman, Esq.
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`UNITED STATES
`JReichman@kenyon.com
`Motion to Suspend for Civil Action
`Jonathan D. Reichman
`jreichman@kenyon.com, TMDOCKETNY@kenyon.com, mrupp@kenyon.com
`/Jonathan D. Reichman/
`03/14/2008
`MotiontoSuspend DEAD RISING.pdf ( 4 pages )(102153 bytes )
`Complaint Capcom.pdf ( 126 pages )(18989105 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_______________________________________________________________X
`
`THE MKR GROUP, INC.,
`
`Opposer,
`
`Opposition No. 91 175392
`
`V.
`
`'
`
`CAPCOM CO., LTD.,
`
`_______________________________________________________________X
`
`Applicant.
`
`OPPOSER’S MOTION TO SUSPEND
`
`Pursuant to Trademark Rule 2.117(a), Opposer THE MKR GROUP, INC. (“Opposer”)
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`hereby moves for suspension of this opposition proceeding, pending the outcome of a civil action
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`filed by Opposer in the United States District Court for the Southern District of New York. This
`
`action is entitled The MKR Group, Inc. v. Capcom Co., Ltd., 08-cv—0856 (DLC) (complaint filed
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`February 25, 2008) (the “New York Action” or “Complaint”)1.
`
`Under Rule 2.1 17(a), the Board may suspend proceedings “whenever it shall come to the
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`[Board’s] attention that .
`
`.
`
`. parties to a pending case are engaged in a civil action .
`
`.
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`. which may
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`have a bearing on the case.” 37 C.F.R. §2.117(a). The Board generally suspends under such
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`circumstances not only to conserve its own time and resources, but also because “the federal court’s
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`determination is binding on the Board, where the Board’s is not binding on the court.” Gary
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`Krugman, Trademark Trial and Appeal Board §3:35 at 122 (2006 ed.).
`
`See also TBMP
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`Applicant has filed an action in the United States District Court for the Northem District of California against
`1
`Opposer seeking declaratory relief with respect to the substance of the claims asserted by Opposer in the New York
`Action. Applicant’s action is entitled Capcom Co., Ltd. v. The MKR Group, Inc., 3:08-cv-00904-JSW (complaint filed
`February 12, 2008).
`
`
`
`§5l0.02(a) (“Ordinarily, the Board will suspend proceedings in the case before it if the final
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`determination of the other proceeding will have a bearing on the issues before the Board.’’).
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`Applicant herein is one of the defendants in the New York Action, which involves issues of
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`law and fact that will not only have a bearing on this opposition, but will likely be dispositive of it.
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`A true and correct of copy of the Complaint is attached hereto as Exhibit “A”; see Complaint at
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`1l49 (“...P1aintiff [Opposer] hereby requests that the Court deny registration to Capcom U.S.A.,
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`Inc.’s [App1icant’s] Application Serial No. 78/633,771 for “DEAD RISING,” pursuant to § 37 of
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`the Trademark Act (15 U.S.C. § l1l9”)).
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`As Opposer’s Notice of Opposition in this proceeding and its Complaint in the New York
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`Action make clear, the New York Action raises issues of law and fact the determination of which
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`will have a bearing on this opposition. For example, in this opposition proceeding, Opposer asserts,
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`inter alia, that Applicant’s purported mark DEAD RISING is likely to cause confusion and dilution,
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`in violation of Sections 2(d) and 43(c) of the Lanham Act, with Opposer’s “DAWN OF THE
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`DEAD” Trademarks. See Opposition W 13-20. Opposer makes similar claims against Applicant
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`and its purported mark DEAD RISING in its Complaint. See Complaint ‘|l 11, W 42-49.
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`Since the New York Action raises issues the determination of which will not only have a
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`bearing on this proceeding, but may well be dispositive of it, Opposer respectfully requests that all
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`proceedings,
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`including discovery, be suspended pending final determination of the New York
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`Action. TBMP §510.02(a). Should resumption of the proceedings prove necessary, Opposer
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`requests that the Board set new discovery and trial deadlines upon such resumption.
`
`l483012vl
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`2
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`
`
`Dated: March 14, 2008
`
`KENYON & KENYON LLP
`
`
`By:
` nathan D. Reichman
`
`Mimi K. Rupp
`One Broadway
`New York, New York 10004
`Phone: (212) 425-7200
`Fax: (212) 425-5288
`
`Attorneys for Opposer
`
`1483012v1
`
`3
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of this Motion to Suspend was served by first
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`class mail to counsel for Applicant:
`
`Richard L. Kirkpatrick
`Pillsbury Winthrop Shaw Pittman LLP
`50 Fremont Street
`
`San Francisco, Califomia 94105-2228
`
`on this 14th day of March, 2008.
`
`Mimi K. Rupp
`
`
`
`EXHIBIT A
`
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`—————————————————————————————————————————————————————————————
`THE MKR GROUP, INC.,
`
`:
`
`
`
`I
`
`..‘
`
`tv 0 1 8 5 6
`V
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`Plaintiff,
`
`'
`
`- against-
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`CAPCOM CO., LTD., CAPCOM U.S.A., INC.,
`and CAPCOM ENTERTAINMENT, INC.,
`
`Defendants
`.............................................................--x
`
`
`
`Plaintiff The MKR Group, Inc. (hereinafter referred to as “Plaintiff”), by its attorneys
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`Kenyon & Kenyon LLP, as and for its Complaint against defendants Capcom Co., Ltd., Capcom
`U.S.A., Inc., and Capcom Entertainment, Inc., alleges as follows, upon knowledge with respect
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`to itself and its own acts, and upon information and belief as to all other matters:
`
`INTRODUCTION
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`1.
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`This an action at law and in equity to remedy acts of,
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`inter alia, copyright
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`infringement, trademark infringement, false designation of origin and misrepresentation, false
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`
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`advertising, dilution, unfair competition, misappropriation and deceptive trade practices.
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`2.
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`Plaintiff is a New York corporation with its principal place of business at 1133
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`Avenue of the Americas, New York, New York 10036.
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`3.
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`Defendant Capcom Co. Ltd. is a corporation organized under the laws of Japan,
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`with its principal place of business at 3-1-3 Uchihiranomachi, Chuo—ku, Osaka, Japan.
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`Defendant Capcom U.S.A., Inc. is a California corporation with its principal place of business at
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`800 Concar Drive, Suite 300, San Mateo, California 94402. Defendant Capcom Entertainment,"
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`NY0l 1480147 vl
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`
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`Inc. is a California corporation with its principal place of business at 800 Concar Drive, Suite
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`300, San Mateo, California 94402. Upon information and belief, Defendant Capcom U.S.A.,
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`Inc.
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`is a wholly owned subsidiary of defendant Capcom Co. Ltd. Defendant Capcom
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`Entertainment, Inc. is, in turn, a wholly owned subsidiary of Capcom U.S.A., Inc. Defendants
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`Capcom Co. Ltd.., Capcom U.S.A., Inc., and Capcom Entertainment, Inc. are collectively
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`referred to herein as “Capcom”.
`
`JURISDICTION AND VENUE
`
`4.
`This action arises under the Copyright Act of 1976, 17 U.S.C. § 101 et seq. This
` action also arises under the Lanham Act of 1946 (as amended), 15 U.S.C. § 1051 et seq., and
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`under related state statutory and common laws. Subject matter jurisdiction over this action is
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`conferred upon this Court by 15 U.S.C. §112l and 28 U.S.C. §§ 1331, 1338 and 1367.
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`Additionally, because this action concerns an amount in controversy that exceeds $75,000,
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`exclusive of costs and interest, and is between citizens of different states, subject matter
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`jurisdiction is also proper pursuant
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`to 28 U.S.C. §1332.
`
`This Court has supplemental
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`jurisdiction over all state law claims under 28 U.S.C. § 1367(a), and under principles of pendent
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` jurisdiction.
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`5.
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`Venue is proper pursuant to 28 U.S.C. § l391(b) and (c) because Defendants are
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`doing and transacting business in this Judicial District; have substantial contacts with this
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`Judicial District; and Defendants have advertised in this Judicial District and have caused many
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`of the tortious acts complained of herein in this Judicial District.
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`GENERAL ALLEGATIONS
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`6.
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`Plaintiff is an independent motion picture and television producer and, through
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`authorized licensees, a seller of ancillary merchandise. Plaintiffs president and principal
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`shareholder is Richard P. Rubinstein, who is the individual producer of the original 1979 film
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`“GEORGE A. ROMERO’S DAWN OF THE DEAD” and the senior credited producer of the 2004
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`remake, as described more fully below. Mr. Rubinstein and George A. Romero, the acclaimed
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`writer and director of “GEORGE A. ROMERO’S DAWN OF THE DEAD”, are the significant
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`participants in the profits which Plaintiff and its predecessors-in-interest have earned from the
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`exploitation of these films beginning almost 30 years ago. Plaintiff (including its predecessors-
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`in—interest, affiliates and licensees) has been producing financially and critically successful
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`feature films and television programs in the horror, fantasy and science fiction genres for over 25 -
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`years, including “GEORGE A. RoMERo’s DAWN OF THE DEAD” (1979), “STEPHEN K1NG’s PET
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`SEMATARY” (1989), “STEPHEN K1NG’s THE STAND” (1994), “FRANK HERBERT’S DUNE” (2000),
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`and a remake of “DAWN OF THE DEAD” (2004), which was distributed by Universal Studios.
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`7.
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`Among Plaintiffs most successful franchises is its “DAWN OF THE DEAD” Motion
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`Pictures. Plaintiffs DAWN OF THE DEAD Motion Pictures are extremely famous, and have been
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`financially successful as both theatrical releases and DVDs. The first of Plaintiff’s “DAWN OF
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`THE DEAD” Motion Pictures was released in 1979. Plaintiffs 1979 film (the “l979 Film”) has
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`been continuously exploited in the marketplace for more than 28 years, and continues to earn
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`significant revenue, as evidenced by the more than one million DVD units which have been
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`shipped in the last three years alone, and by the October 4, 2007 Blu-ray DVD release by Starz
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`Media. Considering that the 1979 Fi1m’s budget was approximately 650,000 dollars, the 1979
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`Film is one of the most profitable horror films of all time.
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`8.
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`In addition to the continuing and current outstanding commercial success of the
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`1979 Film, it has garnered unparalleled critical acclaim. Roger Ebert, the renowned film critic
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`for The Chicago Sun-Times, noted that “‘Dawn of the Dead’” is one of the best horror films ever
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`made. . .,” giving the 1979 Film a full four star rating. A true and correct copy of Roger Ebert’s
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`May 4, 1979 review of DAWN OF THE DEAD is attached hereto as Exhibit “A.” In 2005, the DVD
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`release of the 1979 Film won the Academy of Science Fiction, Fantasy & Horror Fihns’
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`prestigious “Saturn Award” for “Best DVD Classic Film Release.” (By comparison, E.T.: THE
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`ExTRA—TERRESTRIAL won this category in 2002.)
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`9.
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`The 2004 remake of DAWN OF THE DEAD (the “2004 Remake”) was co-produced
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`and released by Universal Pictures under a one picture license from Plaintiff. Both the 1979
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`Film and the 2004 Remake were produced by Richard P. Rubinstein, a principal of Plaintiff. The ’
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`2004 Remake was the most popular film in the U.S. on its opening weekend, grossing nearly 27
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`million dollars in U.S. box office receipts. To date, the 2004 Remake has grossed over 100
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`million in worldwide box office. Film critics have also praised the 2004 Remake. For example,
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`The Los Angeles Times stated, “Good zombie fun, the remake of George A. Romero’s ‘Dawn of
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`the Dead’ is the best proof in ages that cannibalizing old material sometimes works fiendishly
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`well.” A true and correct copy of the March 19, 2004 review is attached hereto as Exhibit “B.”
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`10.
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`Plaintiffs DAWN OF THE DEAD Motion Pictures have spawned an extensive
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`merchandise licensing program via Plaintiffs licensing agent, New Line Cinema, a division of
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`Time Warner, Inc. Through over 10 licensees, Plaintiff is selling such items as action figures, t-
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`shirts, wallets, belts, wristbands, Halloween costumes, Halloween masks, posters, calendars,
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`playing cards, postcards, button pins, patches and stickers.
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`Illustrations of Plaintiffs
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`merchandise are attached hereto as Exhibit “C.”
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`11.
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`Plaintiff is the exclusive owner of the trademarks and service marks for “DAWN
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`OF THE DEAD”, “GEORGE A. ROMERO’S DAWN OF THE DEAD”, and the “Zombie
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`Hea ” Design (collectively, the “DAWN OF THE DEAD Trademarks”) for use in connection
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`with a wide variety of products and services, including without limitation computer games. A
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`list of these trademarks, including corresponding registrations and applications in the United
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`States Patent and Trademark Office (the “PTO”), and true and correct copies of the registration
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`certificates are set forth in Exhibit “D” attached hereto.
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`12.
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`Plaintiff’s DAWN OF THE DEAD Motion Pictures exploit the metaphor of flesh-
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`
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`eating zombies who take over a shopping mall as a device to showcase the insidious perils of
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`consumerism and suburbia. They expose how materialism has turned suburbanites into mindless
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`zombies who have fallen prey to the siren call of the shopping mall. American popular culture is
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`replete with films and television series that gleefully expose the dysfunctionality of suburbia and
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`“mall culture”, including “FAST TIMES AT RIDGEMONT HIGH” (1982); “LA. STORY” (1991);
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`“CLUELESS” (1995); “WELCOME TO THE DOLLHOUSE” (1995); “AMERICAN BEAUTY” (1999);
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`“ELECTION” (1999); “THE SAFETY or OBJECTS” (2001); “Weeds” (2005-present); and “The
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`
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`Oflice” (2005-present). However, only Plaintiff expressed this phenomenon through the brilliant
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`conceit of zombies at the mall. By juxtaposing shockingly profane and gory zombies with the
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`hopelessly mundane and antiseptic shopping mall, Plaintiff s unique take allows the viewer to
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`bear witness to the sinister undertow of “mall culture”.
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`13.
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`Plaintiffs unique commentary on suburban mall culture is so well known that it is
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`regularly discussed by commentators around the world. Indeed, almost thirty years after release
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`of the 1979 Film, journalists have written:
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`“George Romero’s ‘Dawn of the Dead’ is ostensibly a story about a group of people
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`struggling to survive in a world taken over by flesh—eating zombies. But it is also a
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`commentary on the lurid appeal of shopping malls.. . .” The Economist, December 22,
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`2007.
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`0
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`“The American economy may very well come to resemble scenes from
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`the two Dawn ofthe Dead movies. And that’s the good news. Asia
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`Times Online, January 3, 2008.
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`True and correct copies of the above-referenced articles are attached hereto as Exhibit “E.”
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`14.
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`On or about August 8, 2006, Capcom released the “Dead Rising” Game (the
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`“Game”) without the consent of Plaintiff. The Game is essentially a computer game version of
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`Plaintiffs DAWN OF THE DEAD Motion Pictures. Both the 1979 Film and the Game explore this
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`conceit using eerily similar tone, mood and settings. Both works are dark comedies. In both, the
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`recreational activities of the zombies and absurdly grotesque “kill scenes” provide unexpected
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`comedic relief. As noted above, both works are much more than a garden variety “slasher” film
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`or “shoot ‘em up” game, respectively. Both works provide thoughtful social commentary on the
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`
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`“mall culture” zeitgeist, in addition to serving up a sizable portion of sensationalistic violence.
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`The violence and special effects in both works are very similar, and the gore, which is often
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`absurd, ensures that both works are perceived as social commentaries. Some of the most glaring
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`similarities between 1979 Film and the Game are:
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`0 Both works are set in a bi-level “mega” shopping mall in a rural area. The shopping
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`mall is the center of these communities.
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`0 The central conflict of both works is a major battle between the zombies and the
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`would-be survivors for possession of the mall.
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`0
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`In both works, the survivors are desperately trying to keep the zombies from invading
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`the mall, which is a sanctuary containing all the supplies one might need to survive.
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`0 Both works feature much of the action on a mall rooftop (complete with helicopter
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`landing pad), in a helicopter, in an open atrium plaza with fountains, in an elevator, in
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`an abandoned service corridor, and in utilitarian “safe” rooms, one of which has
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`controls to the mall’s infrastructure while the others are ersatz bedrooms.
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`0
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`In both works, the protagonists try to figure out the mystery of the zombies, i.e.,
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`“what are they?”
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`0
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`In both works, the survivors scavenge the mall for food and weapons, using any
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`found object as a weapon to kill the zombies. Both works allow viewers to explore
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`0
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`0
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`their fantasy of looting an abandoned mall.
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`In both works, the map of the mall is an essential tool to survival.
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`In both works, in addition to the zombies, the protagonists must fend off murderous
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`psychopaths. These are the murderous and psychotic “Motorcycle Raiders” in the
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`1979 Film, and the “Bosses” in the Game. The Game also features the yellow-coated,
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`green~faced “Cultists” who are an analogue to the orange-robed, green~faced “Hare
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`Krishna” zombie in the 1979 Film.
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`0
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`In both works,
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`the shared plot
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`is largely a pretext for displaying incredible,
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`exaggeratedly violent special effects such as zombies having their heads blown off,
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`and blood splattering kills with corresponding fountains and pools of blood
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`throughout the mall. The special effects work that created by Tom Savini for the
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`1979 Film was regarded as groundbreaking; the Game brazenly copies Mr. Savini’s
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`signature special effects.
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`In both works, killing zombies is so baroquely gruesome
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`that it becomes comedic.
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`0 Both works feature the unique physical comedy of watching zombies play sports, i.e.,
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`in the 1979 Film, the zombies ice skate, or more accurately, ice shuffle, and the Game
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`features “zombie bowling.” Both works successfully juxtapose sensationalistic
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`violence with the mundane, inviting viewers to enjoy zombies being killed at a
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`suburban mall from the comfort of their sofa.
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`0
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`In both works,
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`the zombies constantly crave human flesh and lumber around
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`
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`aimlessly if there are no survivors to eat. Once a zombie hones in on a survivor, other
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`zombies quickly swarm in on this hapless victim.
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`0
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`In both works, the leading male characters are hard—boiled, tough, cynical journalists.
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`Both works feature a critique of sensationalistic journalism. For example, the Game’s
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`male protagonist, Frank West, who is a freelance photographer, is literally awarded
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`points for taking photographs that capture graphic violence.
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`0 At times, the works have similar dialogue. For example, in the Game, a survivor,
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`
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`dressed oddly in a shirt that Elvis may have owned, tells Frank West that “This [the
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`zombie infested mall] is hell”. This line is a direct reference to the most memorable
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`line from the 1979 Film that a survivor speaks to Stephen, the traffic reporter: “When
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`there’s no more room in hell, the dead will walk the earth.” This line has been the
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`tagline for the 1979 Film since its initial release. The copyright rights to this line (in
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`favor of one of Plaintiffs predecessors-in-interest) have been expressly recognized in
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`federal court. See, Dawn Associates v. Links, 203 U.S.P.Q. 831, 835 (N.D. Ill. 1978).
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`0 Both works are set in motion by a helicopter that takes the lead characters to the mall
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`which is under siege by crazed flesh-eating zombies.
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`In addition, in both works, the
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`- helicopter is the survivors’ means of escape from the zombie-infested mall.
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`0
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`In both works, the main characters hide out in “safe rooms”, tentatively explore the
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`mall’s plazas, and visit gun shops to amass an arsenal to defend themselves from
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`zombies who threaten to storm the mall.
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`0
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`In both works, zombies are punched, decapitated, and mowed down by vehicles.
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`Most do not appear to die until they receive fatal blows to the head or their brains are
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`
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`separated from the rest of their bodies.
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`o The Game directly quotes iconic scenes from the 1979 Film such as a panoramic shot
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`of the mall parking lot teeming with zombies. Many scenes are shot from the
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`perspective of a hovering helicopter, capturing images of troops deployed on the
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`ground to keep at bay the zombies who are strolling the countryside.
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`In both works,
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`Muzak-style music playing in the mall provides comedic relief.
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`0
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`In the Films, a signature zombie wears a distinctive plaid flannel shirt. A zombie in a
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`
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`plaid shirt has become a trademark of the DAWN OF THE DEAD Motion Pictures, and
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`Plaintiff (acting through a licensee) sells a “PLAID BOY” Halloween costume
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`consisting of a blood stained, distressed plaid shirt and a zombie mask.
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`In the Game,
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`a zombie wearing a plaid shirt is prominently featured.
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`The foregoing list is non-exhaustive, and does not attempt to set forth all similarities between the
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`two works. Moreover, many of the above-described elements of the 1979 Film are repeated in
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`the 2004 Remake.
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`15.
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`The works’ similarities are exacerbated by Capcom’s placement of a “disclaimer”
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`on the packaging for the Game, which states:
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`“THIS GAME WAS NOT DEVELOPED,
`APPROVED OR LICENSED BY THE OWNERS
`
`OR CREATORS OF GEORGE A. ROMERO’S
`DAWN OF THE DEAD”
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`This “disclaimer” — which was not requested by Plaintiff —- actually highlights the connection
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`between Plaintiffs DAWN OF THE DEAD Motion Pictures and the Game.
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`In addition,
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`Capcom displays a colorable imitation of Plaintiff’ s famous ZOMBIE HEAD trademark on the
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`packaging for the Game. A true and correct copy of the Game’s packaging is attached hereto as
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`
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`Exhibit “F.”
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`16.
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`Capcom’s wholesale adoption of Plaintiffs works is so brazen that the creator of
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`the Game, Keiji Inafune, wore a “Dawn of the Dead” t—shirt in a recent interview.
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`In another
`
`interview, Mr. Inafune admitted that he wanted to “create a different type of zombie game
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`[one with] a sort of comical element
`
`like in the George Romero movies.” Mr. Inafime
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`remarked, “[W]e also wanted to add
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`what zombies are to us is a symbol of mankind’s greed,
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`of their desire to eat, of their hunger. And that’s what they’re supposed to be in this game: a
`
`
`
`symbol.”
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`True and correct copies of Mr.
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`Inafune’s interviews with Gamespy.com and
`
`TeamXbox.com are attached hereto as Exhibit “G.”
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`17.
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`Numerous game industry critics, commentators and reporters have recognized the
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`high degree of similarity between Plaintiffs DAWN OF THE DEAD Motion Pictures and the Game.
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`For example:
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`0
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`“The video game’s setup is a complete theft of the 1978 George A. Romero classic
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`‘Dawn of the Dead,’
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`right down to the Muzak being piped through the mall
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`speakers.” San Francisco Chronicle, August 15, 2006.
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`NY01 1480147 V1
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`-10.
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`0
`
`“Dead Rising is best described as an interactive version of George A. Romero’s
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`horror flick, Dawn of the Dead, in which a flesh-eating mob of zombies attempts to
`
`break into a shopping mall to attack the people inside.” USA Today, August 17,
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`2006.
`
`0
`
`“It’s a gorgeous and fully interactive game world ripped straight out of George
`
`Romero’s Dawn of the Dead. Just like in that movie, the characters in Dead Rising
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`choose
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`to take
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`refuge
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`in the best place
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`to
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`find food and weapons.”
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`Computerandvideogames.com, March 23, 2006.
`
`
`
`0
`
`“Taking a page directly from George Romero’s classic gorefest Dawn of the Dead,
`
`the majority of Dead Risz'ng’s action takes place inside a large mall that’s been
`
`
`
`overrun by the undead.” Gamespy.com, January 6, 2006.
`
`0
`
`“You won’t have to look at more than a few frames of Dead Rising to realize its
`
`similarities to Romero’s Dawn ofthe Dead.” Teamxbox.com, May 12, 2006.
`
`0
`
`“Lately however, zombie movies have gone from cheesy to cheesier, taking a back
`
`seat to other horrifying tales until a few years ago when George A. Romero’s original
`
`Dawn ofthe Dead was remade for present times. It was both satirical and horrifying,
`
`taking a place in a world where zombies had overrun the rest of civilization, less a
`
`few survivors who took to the once safe haven of a shopping mall. Replace the title
`
`of Dawn of the Dead with Dead Rising and you’ve basically got the premise for
`
`Capcom’s first voyage on the Xbox 360.” Teamxbox. com, July 12, 2006.
`
`0
`
`“[D]awn of the Dea ”] . . .took a satirical look at everything from the consumer culture
`
`permeating American society to racism to the skewed way the media covers
`
`disasters. . . .I was a bit surprised, then, that Capcom would so obviously lift the setting
`
`NYOI 1480147 vl
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`-11.
`
`
`
`for their latest zombiefest, called Dead Rising, from George Romero’s masterpiece.
`
`Didn’t they know that fans would cry foul?” Gamespy.com, July 6, 2006.
`
`0
`
`“[T]his is a game you should play for how well it appreciates, honors, and finally
`
`does justice to its subject material. The front of the box carries this disclaimer: ‘This
`
`game was not developed, approved, or licensed by the owners or creators of George
`
`A. Romero’s Dawn of the Dead’. Yeah, whatever, Capcom lawyers. We’ve been
`
`waiting a long while for a developer to live up to the potential of Romero’s vision.
`
`And as we said at the top of this review: It’s about time!” Yahoo! Games, August 10,
`
`
`
`2006.
`
`0
`
`“Like Clive Barker's Jericho, it was also refused classification by the USK. With it's
`
`[sic] unremitting gore, it's [sic] got an almost slapstick violence that harks back to ’
`
`moments in Evil Dead and of course Dawn of the Dead. If there was a video nasty for
`
`the Xbox 360 then Dead Rising, with its casually horrific disembowlings [sic],
`
`cannibalism and voyeurism, is it.” Xboxentv, January 31, 2008.
`
`
`
`True and correct copies of articles discussing the similarities between Plaintiffs DAWN OF THE
`
`DEAD Motion Pictures and the Game are attached hereto as Exhibit “H.”
`
`18.
`
`The Game has been incredibly popular, selling over 500,000 units within just
`
`fifteen days of its August 8, 2006 official release date in the U.S. On September 11, 2006,
`
`Gamespotcom reported that Capcom spent at least $6 million on television advertisements. A
`
`true and correct copy of the Gamespot article is attached hereto as Exhibit “I.” On January 10,
`
`2007, Capcom armounced in a press release that it had sold over a million units of the Game by
`
`the end of December 2006. A true and correct copy of the January 10, 2007 press release is
`
`attached hereto as Exhibit “J.” Moreover, Joystz'q.com has reported a rumor that Capcom plans
`
`NYOI 1480147 V1
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`-12-
`
`
`
`
`
`
`
`to develop and market sequels to the Game. A true and correct copy of the February 5, 2008
`
`article is attached hereto as Exhibit “K.” Upon information and belief, Capcom has announced
`
`that it will develop a feature film based on the Game.
`
`19.
`
`Due to the Garne’s resounding success, it has been a major driver of Capcom’s
`
`superior financial perfonnance in its past fiscal year from an overall corporate perspective.
`
`Further, the technology developed in the Game’s production, including the “MT Framework”
`
`game engine, has, through its use in the Game, been a “hit” with the gaming community, and as a
`
`result, has been utilized by Capcom in other blockbuster titles. The Game’s meteoric success
`
`also has contributed to making Xbox 360 one of the most popular consoles. According to Game
`
`Daily (January 17, 2008 edition), atmual sales of the Xbox 360 console topped 4.62 million units
`
`in 2007. A true and correct copy of the above—referenced article is attached hereto as
`
`Exhibit “L.”
`
`PARTIES’ DEALINGS
`
`20.
`
`In or about April 2004, a representative of Capcom contacted Plaintiff to request a
`
`license to use elements from Plaintiffs DAWN OF THE DEAD Motion Pictures in the Game.
`
`However, Capcom failed to follow through on this request, and no license was ever negotiated or
`
`granted.
`
`21.
`
`In or about March 2006, Plaintiff discovered that Capcom was proceeding with
`
`the Game, and Plaintiff immediately placed Capcom on notice of its objection by a letter dated
`
`March 17, 2006 from Plaintiffs agent, New Line Cinema. A true and correct copy of this letter
`
`is attached as Exhibit “M.”
`
`22.
`
`Later in 2006, Plaintiff discovered that Capcom U.S.A., Inc. had applied to
`
`register “DEAD RISING” as a trademark in the PTO under Application Serial No. 78/633,771.
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`NYOI 1480147 vl
`
`-13-
`
`
`
`On January 29, 2007, Plaintiff filed a Notice of Opposition (No. 91175392) against this
`
`application before the Trademark Trial and Appeal Board of the PTO.
`
`This opposition
`
`proceeding is currently pending.
`
`23.
`
`Following their initial communications regarding this matter, the parties engaged
`
`in settlement discussions, but these discussions have been unsuccessful. Moreover, in an effort
`
`to forestall Plaintiff from taking legal action to protect its rights, Capcom strung Plaintiff along
`
`by professing a desire to settle, while at the same time failing to respond to Plaintiff’s good faith
`
`settlement proposals. Most recently, in November 2007, Capcom requested a suspension of the
`
`deadline for answering Plaintiffs aforementioned Notice of Opposition, on the ground that
`
`
`
`settlement discussions were ongoing. When Plaintiff pointed out to Capcom that Capcom had
`
`yet to respond to Plaintiffs settlement proposal of September 4, 2007, Capcom represented that a
`
`response would promptly follow. Based on this express representation, Plaintiff consented to the
`
`suspension. However, Capcom used the additional time not to respond to Plaintiffs proposal,
`
`but to instead prepare and file its Answer to the Notice of Opposition. Capcom’s actions -
`
`namely, procuring an extension of time under false pretenses — are reflective of its blatant
`
`
`
`disregard for Plaintiffs rights throughout the history of this matter.
`
`24.
`
`By engaging in the aforesaid acts and conduct, Defendants, and each of them,
`
`have caused and will continue to cause grave and irreparable injury to Plaintiffs intellectual
`
`property. Given the enormous popularity of the Game, the damage to Plaintiff is staggering.
`
`COUNT I
`
`COPYRIGHT INFRINGEMENT
`
`25.
`
`This count is to remedy acts of copyright infringement, and arises under 17
`
`U.S.C. § 101 et seq.
`
`NYOI l480l47 vl
`
`-14-
`
`
`
`26.
`
`Plaintiff repeats and realleges each and every allegation contained in paragraphs 1
`
`through 24 of this Complaint as though fully set forth herein.
`
`27.
`
`The expression contained in the 1979 Film is wholly original, and is
`
`copyrightable subject matter under the copyright laws of the United States.
`
`28.
`
`As of January 30, 1979, a Certificate of Registration was issued by the Register of
`
`Copyrights for the 1979 Film, and bears registration number PAOO000335 19. A true and correct
`
`copy of a print-out from the U.S. Copyright Office’s database setting forth the particulars of this
`
`registration is attached hereto as Exhibit “N”.
`
`29.
`
`Plaintiff is the sole owner of all right, title and interest in and to the copyright in
`
`the 1979 Film and the expression it contains. Plaintiff has complied in all respects with the .
`
`provisions of the Copyright Act of 1976.
`
`30.
`
`The 2004 Remake is an authorized derivative work based on the 1979 Film, and
`
`was co-produced and distributed under license from Plaintiff. Those elements from the 2004
`
`Remake which were copied from the 1979 Film are owned by Plaintiff.
`
`31.
`
`The expression contained in the 2004 Remake is wholly original, and is
`
`copyrightable subject matter under the copyright laws of the United States.
`
`32.
`
`As of April 21, 2004, a Certificate of Registration was issued by the Register of
`
`Copyrights for the 2004 Remake, and bears registration number PAOOOl2l2817. A true and
`correct copy of a print-out from the U.S. Copyright Off1ce’s database setting forth the particulars
`
`of this registration is attached hereto as Exhibit “O.” Plaintiff has complied in all respects with
`
`the provisions of the Copyright Act of 1976.
`
`
`
`
`
`NY01 1480147 v1
`
`
`
`33.
`
`Capcom has knowingly and willfully copied the DAWN OF THE DEAD Motion
`
`Pictures in the creation, distribution and marketing of the Game. Capcom had direct access to
`
`the DAWN OF THE DEAD Motion Pictures by virtue of their widespread and long-term distribution
`
`and exhibition. Indeed, the 1979 Fihn is uniformly considered the seminal zombie film, and, as
`
`noted supra, the creator of the Game even mentioned in an interview that he based the Game on
`
`the 1979 Film.
`
`34.
`
`Defendants have infringed Plaintiffs copyright rights in the DAWN OF THE
`
`DEAD Motion Pictures. Defendants knew or should have known that the DAWN OF THE
`
`
`
`DEAD Motion Pictures are protected by copyright. Each of the Defendants continues to infringe
`
`on Plaintiffs rights in and to its copyrighted works by producing, marketing and distributing the
`
`Game, and otherwise exploiting rights that belong exclusively to Plaintiff‘.
`
`35.
`
`The natural, probable and foreseeable
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