TTAB C
`
`I hereby certify that this Motion To Suspend Proceedings is being dep0SlI6(l Wiui
`Date of Deposit March 18, 2008.
`the United States Postal Service addressed to United States Patent and Trademark Office, Trademark Trial and
`Appeal Board, P.O. Box 1451, Alexandria, VA 22313-1451.
`Z-»/.4
`
`/9;
`-
`‘\§,M I I, -» 3
`.
`
`
`Betty]. Bry nt
`”
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`) )
`
`) Opposition No. 91175392
`)
`) SN 78/633771
`)
`)
`
`) )
`
`)
`
`The MKR Gmup’ 1"“
`
`vs.
`
`.
`Capcom Co., Ltd,
`
`0
`
`pposer
`
`Applicant.
`
`United States Pam and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Hlllllllllll!ll|Hl!|IllllllllllllllIllllllllllll
`ll3'24l2w3
`1 ~ "grep--aYI<D4,‘.-v.4 5:2 wcrzct *”
`
`MOTION TO SUSPEND PROCEEDINGS
`
`Pursuant to the Rules of Practice of the United States Patent and Trademark Office, 37
`
`CFR 2.117(a), and TBMP Section 510.02(a), Applicant requests suspension of Opposition
`
`91175392, pending the outcomes of Civil Action No. CV 08 0904 (Capcom Co., Ltd. and
`
`Capcom Entertainment, Inc. v. The MKR Group, Inc. 1, pending in United States District Court in
`
`the Northern District of California (hereinafter “Capcom Civil Action”) and Civil Action No. 08
`
`CV 01856 (The MKR Group, Inc. v. Capcom Co., Ltd., Capcom U.S.A., Inc. and Capcom
`
`
`Entertaimnent Inc.), pending in United States District Court in the Southern District of New
`
`York (hereinafter, “MKR Civil Action”).
`
`

`
`The Capcom and MKR Civil Actions involve issues in common with those of Opposition
`
`No. 91175392 and thus will have a direct bearing on the issues before the Board in the
`
`opposition proceeding. Accordingly, Board proceedings should be suspended.
`
`BACKGROUND FACTS
`
`On January 29, 2007, Opposer filed in the U.S. Patent and Trademark Office an
`
`Opposition against Applicant’s application for DEAD RISING (SN 78/633771). A central issue
`
`in the Opposition is whether there is a likelihood of confusion as between Applicant’s DEAD
`
`RISING mark and the GEORGE A. ROMERO’S DAWN OF THE DEAD and DAWN OF THE
`
`DEAD marks claimed by Opposer.
`
`On February 12, 2008, Applicant, along with Capcom Entertainment, Inc., filed against
`
`Opposer a Complaint For Declaratory Judgment in the United States District Court for the
`
`Northern District of California (Exhibit A). In sum, the Capcom Civil Action seeks judgment
`
`that Applicant’s use of the DEAD RISING mark is not in violation of any rights Opposer may
`
`have under federal, state or common law and that its trademark DEAD RISING is not
`
`confusingly similar to or in conflict with the GEORGE A. ROMERO’S DAWN OF THE DEAD
`
`and DAWN OF THE DEAD trademarks claimed by Opposer.
`
`On February 25, 2008, Opposer filed against Applicant, and Capcom U.S.A., Inc. and
`
`Capcom Entertainment, Inc, a Complaint in the United States District Court for the Southern
`
`District of New York (Exhibit B). The MKR Civil Action alleges, among other things, that
`
`Applicant’s use of its DEAD RISING mark constitutes trademark infiingement, false designation
`
`of origin, false description and representation, unfair competition, false advertising in commerce
`
`and dilution, under the federal Lanham Act and analogous state law and common law, in
`
`violation of Opposer’s alleged rights in the GEORGE A. ROMERO’S DAWN OF THE DEAD
`
`and DAWN OF THE DEAD trademarks.
`
`In Opposition 91175392, Opposer seeks refusal of Applicant’s application for DEAD
`
`RISING, based on Opposer’s alleged rights in the GEORGE A. ROMERO’S DAWN OF THE
`
`DISCUSSION
`
`

`
`DEAD and DAWN OF THE DEAD trademarks. At issue in the opposition proceeding is
`
`Applicant’s rights in the DEAD RISING mark and Opposer’s rights in the GEORGE A.
`
`ROMERO’S DAWN OF THE DEAD and DAWN OF THE DEAD trademarks. These issues
`
`overlap directly with the central issues involved in the Capcom and MKR Civil Actions. The
`
`final determination of the issues in the Capcom and MKR Civil Actions will clearly have a
`
`“bearing,” quite possibly dispositive, on the issues before the Board in Opposition No. 91175392.
`
`TBMP §510.02(a).
`
`Accordingly, Applicant respectfully requests that Opposition No. 91175392 be suspended,
`
`pending the outcome of the Capcom and MKR Civil Actions between the parties.
`
`Respectfiilly Submitted,
`
`CAPCOM CO., LTD.
`
`/ /
`By; ’
`
`
`
`C. GUSTAFSON
`
`LAU
`
`RICHARD L. KIRKPATRICK
`
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`
`Calendar / Docketing Department
`P.O. Box 7880
`
`San Francisco, CA 94120-7880
`Attorneys for Applicant
`
`Date: March 18 2008
`
`

`
`Opposition No. 91175392
`
`PROOF OF SERVICE BY MAIL
`
`1, Betty J. Bryant, the undersigned, hereby declare as follows:
`
`1.
`
`I am over the age of 18 years and am not a party to the within cause.
`
`I am
`
`employed by Pillsbury Winthrop Shaw Pittman LLP in the City of San Francisco, California.
`
`2.
`
`My business address is 50 Fremont Street, San Francisco, CA 94105-2228. My
`
`mailing address is 50 Fremont Street, P. O. Box 7880, San Francisco, CA 94120-7880.
`
`3.
`
`I am familiar with Pillsbury Winthrop Shaw Pittman LLP's practice for collection
`
`and processing of correspondence for mailing with the United States Postal Service; in the
`
`ordinary course of business, correspondence placed in interoffice mail is deposited with the
`
`United States Postal Service with first class postage thereon fully prepaid on the same day it is
`
`placed for collection and mailing.
`
`4.
`
`On March 18, 2008, at 50 Fremont Street, San Francisco, California, I served a
`
`true copy of the attached documents titled exactly MOTION TO SUSPEND PROCEEDINGS
`
`by placing them in an addressed, sealed envelope clearly labeled to identify the person being
`
`served at the address shown below and placed in interoffice mail for collection and deposit in the
`
`United States Postal Service on March 18, 2008 following ordinary business practices:
`
`Jonathan D. Reichman, Esq. Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`I declare under penalty of perjury that the foregoing is true and correct. Executed this
`
`18th day of March, 2008, at San Francisco, California.
`
`
`
`PROOF OF SERVICE 91 l75392.doc
`
`

`
`EXHIBIT A
`
`

`
`RODGER R. COLE (CSB NO. 178865)
`rcole@fenwick.com
`FENWICK & WEST LLP
`Silicon Valley Center
`801 California Street
`
`
`
`Mountain View, CA 94041
`Telephone:
`(650) 988-8500
`Facsimile:
`(650) 938-5200
`
`.
`
`/-,:;-,,,‘.'-S-3‘
`
`-
`
`4'
`
`-
`
`JENNIFER L. KELLY (CSB NO. 193416)
`jkelly@fenwick.com
`MARY E. MILIONIS (CSB NO. 238827)
`rmnilionis@fenwick.com
`FENWICK & WEST LLP
`555 California Street - 12th Floor
`
`San Francisco, CA 94104
`Telephone:
`(415) 875-2300
`Facsimile:
`(415) 281-1350
`
`Attorneys for Plaintiffs
`Capcom Co., Ltd. and Capcom Entertainment, Inc.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF_ CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`Jmw
`
`CAPCOM CO., LTD. AND CAPCOM
`ENTERTAINMENT, INC.,
`
`;N@£8
`
`0904
`
`COMPLAINT FOR DECLARATORY
`
`Plaintiffs,
`
`RELIEF
`
`V.
`
`THE MKR GROUP, INC.,
`
`Defendant.
`
`
`
`N \
`
`lO\U1-#03
`
`FENWICK6:WESTLLPAWORNEYSA1’LAWMOUNTAINVIEW
`
`
`
`COMPLAINT FOR DECL. RELIEF
`
`CASE NO.
`
`

`
`FENWICK6:WESTLLPArronuavsInLAWMOUNTAIN
`VIEW
`
`1
`
`Plaintiffs Capcom Co., Ltd. and Capcom Entertainment, Inc. (collectively, “Plaintiffs” or
`
`“Capcom”) for their Complaint allege as follows:
`
`THE NATURE OF THE ACTION
`
`1.
`
`This is an action for declaratory judgment and attorneys’ fees. By this action,
`
`Capcom seeks to eliminate any doubt that its “Dead Rising” video game, released within North
`
`America in August 2006, does not infringe on any copyright, trademark, or other intellectual
`
`property rights in and to the “George A. Romero’s Dawn of the Dead” motion pictures allegedly
`
`owned by defendant The
`
`Group, Inc. (“MKR”).
`
`2.
`
`Specifically, Capcom seeks a declaration from this Court that Dead Rising does
`
`not infiinge on any copyrights owned by MKR because any similarities between Dead Rising and
`
`George A. Romero’s Dawn of the Dead are based on the wholly unprotectible idea of humans
`
`battling zombies in a shopping mall, and that this unprotectible idea will necessarily yield
`
`similarities of ideas, materials in the public domain, facts, scenes a’faire and other trivial and
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`random similarities that cannot give rise to a copyright claim. Capcom further seeks a declaration
`
`that its distribution, marketing and promotion of Dead Rising is not likely to confuse consumers
`
`as to the source or origin of the game or to dilute any alleged distinctiveness of any trademarks
`
`held by MKR relating to George A. Romero’s Dawn of the Dead, particularly in light of
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`Capcom’s use of a prominent disclaimer on all Dead Rising product packaging that expressly
`
`disavows any connection between Dead Rising and George A. Romero’s Dawn of the Dead.
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`Capcom seeks declaratory judgment on these bases (and the additional bases described herein) so
`
`that there will be no controversy clouding the right of Capcom or its distributors to continue
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`distributing Dead Rising or ancillary products.
`
`JURISDICTION AND VENUE
`
`3.
`
`This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201, the
`
`Copyright Act, 17 U.S.C. § 101 et seq., and the Lanharn Act, 15 U.S.C. § 1051 et seq. This Court
`
`has subject matter jurisdiction over the claims asserted herein under 15 U.S.C. § 1121 and 28
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`U.S.C. §§ 1331 and 1338(a).
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`4. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391 in that a
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`COMPLAINT FOR DECL. RELIEF
`
`CASE NO.
`
`

`
`FENWICK&WESTLLI’
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`ArranuzvsA1’LAWMOUNTAIN
`VIEW
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`substantial part of the events giving rise to the claims herein occurred in this judicial district, and
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`that IVIKR is subject to personal jurisdiction in this district by virtue of its transacting, doing and
`
`soliciting business in this district.
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`INTRADISTRICT ASSIGNMENT
`
`5.
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`For purposes of Civil Local Rule 3-2(d), this action arises in San Mateo County,
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`where plaintiff Capcom Entertainment, Inc. is located and where a substantial part of the actions,
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`statements, and threats described below were directed.
`
`PARTIES
`
`6.
`
`Plaintiff Capcom Co., Ltd. (“Capcom Japan”) is a company organized and existing
`
`under the laws of the country of Japan, with its principal place of business in Osaka, Japan.
`
`7.
`
`Plaintiff Capcom Entertainment, Inc. (“CEI”) is a wholly owned subsidiary of
`
`Capcom U.S.A., Inc., which is, in turn, a wholly—owned subsidiary of Capcom Japan. CEI is a
`
`company organized and existing under the laws of the State of California, licensed to do business
`
`in California, with its principal place of business in San Mateo, California. Inter alia, CEI assists
`
`in the distribution of Capcom video game titles in the North American market, including Dead
`
`Rising.
`
`8.
`
`Capcom is informed and believes, and on that basis alleges, that MKR is a New
`
`York corporation with its principal place of business in New York, New York.
`
`9.
`
`Capcom is informed and believes, and on that basis alleges, that MKR has engaged
`
`in continuous and systematic business in California and within this judicial district, by, inter alia,
`
`producing motion picture and television shows, distributing or authorizing the distribution of such
`
`motion picture and television shows, and selling or authorizing the sale of ancillary merchandise
`
`in this judicial district.
`
`GENERAL ALLEGATIONS
`
`Capcom And Its Dead Rising Video Game
`
`10.
`
`Capcom is a leading worldwide developer, publisher and distributor of video game
`
`software for leading game consoles and handheld systems, including the Microsoft Xbox 360"‘
`
`and PLAYSTATION®3 consoles. Over the years, Capcom has created some of the biggest and
`
`COMPLAINT FOR DECL. RELIEF
`
`2
`
`CASE NO.
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`longest running franchises in video game history, including Resident Evil, Street Fighter, and
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`Mega Man. Capcom’s award-winning video games have sold millions of units around the world,
`
`including within the United States and the Northern District of California.
`
`1 1.
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`There are many genres of video games, including shoot ‘em up, beat ‘em up,
`
`fighting, and survival horror. Each has its own distinct characteristics. The survival horror genre,
`
`which is most commonly associated with Capcom’s wildly successful Resident Evil franchise
`
`(which featured flesh-eating zombies), is defined by both theme and garneplay style. The theme
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`is typically dark, violent and supernatural, like a horror movie, and the games use exploration as
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`routes of progression through the game. The player’s goal is generally to “survive” long enough
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`to escape from an isolated or abandoned town or structure that is overrun by zombies or monsters.
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`There is often a “safe haven” where characters can rest, eat, regain strength or “health” and
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`temporarily remain safe from attack. The player typically must hunt for food and/or weapons
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`(which are often makeshifi, rather than the typical gun or knife). Unlike the fighting genre, which
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`generally involves one-on-one combat with a single enemy, the player in a survival horror game
`
`must typically contend with numerous enemies at once. Thus, most survivor games are single
`
`player only.
`
`12.
`
`On August 8, 2006, following several years of development in Japan, Capcom
`
`released within North America a single player survival horror video game called “Dead Rising,”
`
`designed exclusively for the Xbox 360” platform. As a promotional tool, a few days before its
`
`release, on August 4, 2006, Microsoft Corporation (“Microsoft”) offered a free playable demo of
`
`the game on its Xbox Live Marketplace.
`
`13.
`
`Dead Rising, marketed with the tag line “Chop Til You Drop,” follows the
`
`adventures of Frank West, an ambitious freelance photojournalist intent on capturing on film the
`
`story of a lifetime: why the fictional town of Willamette, Colorado has been quarantined by the
`
`National Guard. In pursuit of a juicy lead, Frank makes his way to Willamette only to find that it
`
`has become overrun with zombies. He surveys the city via helicopter, then directs the pilot to
`
`drop him off at the local shopping mall, which has a helipad and is located in the center of the
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`city. After the pilot drops Frank off, he tells Frank he’ll be back to pick him up in three days and
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`COMPLAINT FOR DECL. RELIEF
`
`3
`
`CASE NO.
`
`
`
`

`
`FENWICK5:WESTLLP
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`AVTORNEYSA1LAWMOUNTAIN
`VIEW
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`then takes off. Frank then enters the mall, finding survivors trying to barricade the mall entrance
`
`to keep zombies out. As the zombies break through (which occurs very early in the game), a
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`Homeland Security officer shouts at everyone to hurry to the mall’s security room (the “safe
`
`haven”) for safety, but Frank is the only one who makes it. The game player, playing the role of
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`Frank, then engages in an action-packed, nonstop battle against hordes of zombies and other
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`survivors driven to madness by the zombie infestation (known as “Psychopaths”). The player
`
`also faces a wide variety of choices as to other courses of action, including helping other
`
`survivors make it to safety, locating weapons and supplies, and searching for the truth behind the
`
`horrendous epidemic———all while trying to fight off the zombies and Psychopaths and stay alive
`
`getting food and drink. Throughout this adventure, the player uses Frank’s photojoumalistic
`
`skills to capture the insanity on film:
`
`the better the photograph, the more points the player is
`
`awarded. The player’s ultimate goal is to survive for 3 days (6 hours in real time). The variety of
`
`stores in the mall offers an endless supply of survival resources for Frank, including vehicles,
`
`food, clothing, and makeshifi weapons that can be used to kill zombies and Psychopaths.
`
`14.
`
`Dead Rising was an instant success, earning both rave reviews and multiple
`
`awards. According to Metac1itic.com, a website that compiles reviews of video games by
`
`respected critics, Dead Rising received a score of 85 out of 100 (based on 82 reviews). The
`
`reviews praised Dead Rising for its setting in a mall, which provides for endless exploration and
`
`creative ways to kill enemies.
`
`In its “Best of 2006,” Gamespot awarded Dead Rising “Best
`
`Action Adventure Game of 2006," “Best Sound Effects” and “Best Use of Xbox 360
`
`Achievement Points,” and commented that Dead Rising “[is] zombie action for people who want
`
`zombie action, and it’s simply a great piece of entertainment.”
`
`15.
`
`In addition to Dead Rising, there are literally dozens of other Video games
`
`featuring a protagonist battling hordes of the flesh—eating zombies typically associated with horror
`
`films. This includes, among many others, Resident Evil (player fights zombies in an ominous
`
`mansion), The Evil Dead (player fights zombies in an isolated cabin), Beast Busters (player fights
`
`zombies who have taken over a city), CarnEvi1 (player fights zombies in an amusement park), and
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`Zombi (players fight zombies in a shopping mall).
`
`COMPLAINT FOR DECL. RELIEF
`
`4
`
`CASE NO.
`
`#-
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`16.
`
`On May 20, 2005, Capcom Japan filed an application to register its “DEAD
`
`RISING” trademark with the United States Patent and Trademark Office (Application Serial No.
`
`78/633,771), for use with computer game software, video game machines, and related products.
`
`The Dawn of the Dead Motion Pictures
`
`17.
`
`“George A. Romero’s Dawn of the Dead” is a zombie horror film released in or
`
`about 1979 (the “l979 Film”), the second in a series of zombie horror films directed by George
`
`A. Romero that included Night of the Living Dead, Day of the Dead and Land of the Dead.
`
`Dawn of the Dead involved subtexts of racism, consumerism, and materialism. The 1979 Film
`
`depicts the country struck by a plague, in which the dead are reanimated as flesh-eating zombies.
`
`After much chaos and a scene involving a SWAT team raid on an apartment building in which
`
`numerous minorities are slaughtered, the film’s four main characters take refuge in a shopping
`
`mall. Once there, the characters plunder the stores, indulging their every material desire
`
`(showcasing American consumerism and materialism at its finest) and attempt to keep the
`
`zombies out of the mall. When the zombies finally do gain entrance (toward the end of the
`
`movie), a battle ensues during which two of the four main characters are bitten by zombies, and
`
`the film concludes with the two remaining survivors escaping to the roof and flying away in a
`
`partially-fueled helicopter.
`
`18.
`
`In 2004, Universal Pictures released a re-make of the 1979 Film (the “2004
`
`Remake”). While the 2004 Remake includes scenes depicting a handful of survivors battling
`
`zombies in a shopping mall, it departs in many significant respects from the 1979 Film, and
`
`appears to be only loosely based on the 1979 Film.
`
`19.
`
`MKR claims to be the exclusive owner of the copyright in the 1979 Film. MKR
`
`also claims that the 2004 Remake is an authorized derivative work based on the 1979 Film which
`
`was co-produced and distributed under license from MKR. MKR further claims to own those
`
`elements from the 2004 Remake which were copied from the 1979 Film.
`
`20.
`
`MKR also claims to be the exclusive owner of the trademarks and service marks
`
`for “DAWN OF THE DEAD,” “GEORGE A. ROMERO’S DAWN OF THE DEAD,” and the
`
`“Zombie Head” design for use in connection with a variety of products and services, including
`
`COMPLAINT FOR DECL. RELIEF
`
`5
`
`CASE NO.
`
`

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`FENWICK&WESTLLPArromzvsA1LxwMOUNTAIN
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`computer games. However, MKR has not obtained any federal trademark registrations (nor, upon
`
`information and belief, has it ever applied to register) the “DAWN OF THE DEAD” mark except
`in connection with the prefix “GEORGE A. ROMERO’S.” Rather, MKR has obtained federal
`2
`
`trademark registrations only for the word mark “GEORGE A. ROMERO’S DAWN OF THE
`DEAD” and a design depicting a partial zombie head. The marks described herein, ofwhich
`
`MKR claims to be the exclusive owner, will hereinafter be referred to as the “lVH{R Marks.”
`
`The Controversy Between The Parties
`
`21.
`
`In March 2006, several months before Dead Rising was released, Capcom received
`
`a letter dated March 17, 2006 from New Line Cinema, which purported to be the licensing agent
`
`for MKR, concerning the upcoming release of Dead Rising. In that letter, New Line Cinema
`
`stated its position that Dead Rising infringed MKR’s copyright, trademark, and other intellectual
`
`property rights in and to the motion picture “George A. Romero’s Dawn of the Dead.” The letter
`
`did not specify whether MKR was claiming infringement ofjust the 1979 Film, or the 2004
`
`Remake as well. New Line Cinema sent Capcom a fiirther letter dated June 9, 2006, reiterating
`
`its position and stating that it had retained outside counsel to prepare a complaint against Capcom
`
`that would include a claim for damages as well as a request for injunctive relief preventing
`
`release of the game, which would be filed if the parties could not resolve their dispute.
`
`22.
`
`The parties and their outside counsel thereafter engaged in discussions in an
`
`attempt to resolve the matter without litigation. During these discussions, Capcom repeatedly
`
`advised New Line Cinema and MKR of its belief that Dead Rising did not infiinge on any alleged
`
`copyright, trademark, or other intellectual property rights belonging to MKR related to the 1979
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`Film or the 2004 Remake because the game and the movies involved vastly different storylines,
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`sharing only the very general, unprotectible idea of zombies in a shopping mall.
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`23.
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`The parties had not resolved their dispute by the time Dead Rising was released in
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`August 2006. MKR, however, had made no attempt to preliminarily enjoin its distribution, nor
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`did it otherwise commence litigation against Capcom. Nonetheless faced with the prospect of
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`eventual litigation, Capcom opted to include a prominent disclaimer on its product packaging that
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`COMPLAINT FOR DECL. RELIEF
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`6
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`CASE NO.
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`FENWICK6:WESTLLPArtosmsvsATLAWMOUNTAIN
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`reads as follows:
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`THIS GAME WAS NOT DEVELOPED, APPROVED OR
`LICENSED BY THE OWNERS OR CREATORS OF GEORGE
`A. ROME_RO’S DAWN OF THE DEADTM
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`A true and correct copy of images depicting the product packaging for Dead Rising is attached
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`hereto as Exhibit A. This disclaimer has appeared on the product packaging at all times since the
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`product was first released.
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`24.
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`Over the next year and a half, the parties engaged in only very sporadic
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`discussions concerning MKR’s claims. On September 4, 2007, MKR copied both Microsoft and
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`Best Buy Co., Inc. (“Best Buy”) (a major distributor of Capcom games, including Dead Rising)
`on a communication to Capcom, clearly signaling its intention to drag these companies into
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`litigation against Capcom if Capcom did not accede to its demands.
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`25.
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`Meanwhile, on or about January 29, 2007, MKR filed a Notice of Opposition (No.
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`91175392) to Capcom .lapan’s application to federally register its “DEAD RISING” trademark,
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`opposing the registration on the basis that consumers are likely to be confused that products sold
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`in connection with the Dead Rising mark originate from or are authorized by MKR, that any
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`defects in such products would be attributed to MKR, and that registration of the DEAD RISING
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`mark would dilute the distinctive quality of the MKR Marks. Capcom Japan filed its Answer to
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`MKR’s Notice of Opposition on or about December 21, 2007.
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`26.
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`On February 6, 2008, MKR’s outside counsel sent a letter and a copy of a draft
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`complaint to counsel for Capcom, Microsoft, and Best Buy. In the letter, MKR states its intention
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`to file the complaint, which asserts claims for copyright and trademark infringement and related
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`claims against Capcom, Microsoft and Best Buy based on marketing and distribution of the Dead
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`Rising game, “unless [the parties] can reach a written agreement on terms acceptable to MKR
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`within three weeks of this notice.” The letter further states that if resolution is not reached within
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`that time frame, the principal of MKR, Richard Rubinstein, will no longer tum down requests to
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`be interviewed concerning the parties’ dispute.
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`27.
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`The explicit threat of litigation described above has created in Capcom a
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`reasonable apprehension of imminent suit by MKR for copyright and trademark infiingement
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`COMPLAINT FOR DECL. RELIEF
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`7
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`CASE NO.
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`FENWICK6:WESTLLP
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`relating to the Dead Rising game.
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`FIRST CLAIM FOR RELIEF
`(Declaratory Judgment — No Copyright Infringement: 17 U.S.C. § 501)
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`28.
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`Capcom incorporates by reference all the allegations of paragraphs 1 through 27,
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`inclusive.
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`29.
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`Because of MKR’s actions and threats described herein, Capcom has a reasonable
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`and strong apprehension that it and/or related third parties will soon be faced with a copyright
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`infringement suit brought by MKR. Accordingly, an actual controversy has arisen and exists
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`between Capcom and MKR within the meaning of 28 U.S.C. § 2201.
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`30.
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`Capcom contends that Dead Rising was independently created and that any
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`similarities between the 1979 Film, the 2004 Remake, and Dead Rising are based on the
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`unprotectible theme of zombies in a shopping mall, and that this unprotectible theme will
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`necessarily yield similarities of ideas, materials in the public domain, facts, scenes dfaire and
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`other trivial and random similarities.
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`3].
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`Capcom contends that it has not infringed, and is not now infiinging, any
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`copyright relating to the 1979 Film or the 2004 Remake.
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`32.
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`Capcom contends that any of its actions with regard to the 1979 Film and the 2004
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`Remake constitute fair use pursuant to 17 U.S.C. § 107.
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`33.
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`Capcom seeks a declaration that Dead Rising does not infringe any copyright
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`relating to the 1979 Film or the 2004 Remake so that there will be no controversy clouding
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`Capcom’s right to continue distributing the Dead Rising game or ancillary products.
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`(Declaratory Judgment — N0 Trademark Infringement: 15 U.S.C. §1114)
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`SECOND CLAIM FOR RELIEF
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`-
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`34.
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`Capcom incorporates by reference all the allegations of paragraphs 1 through 27,
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`inclusive.
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`35.
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`Because of MKR’s actions and threats described herein, Capcom has a reasonable
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`and strong apprehension that it and/or related third parties will soon be faced with a trademark
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`infiingement suit brought by MKR. Accordingly, an actual controversy has arisen and exists
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`COMPLAINT FOR DECL. RELIEF
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`8
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`CASE NO.
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`between Capcom and MKR within the meaning of 28 U.S.C. § 2201.
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`36.
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`Capcom contends that no appreciable portion of the relevant public has come to
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`associate the MKR Marks with MKR and that those marks do not serve in the minds of the public
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`to identify the source of MKR’s goods and services; and that accordingly MKR has no valid or
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`enforceable trademark in the MKR Marks.
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`37.
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`Capcom contends that its Dead Rising game (including the marketing of same) is
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`not likely to cause confusion, mistake or deception among consumers as to the source or origin of
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`the game, particularly in light of Capcom’s use of a prominent disclaimer expressly disavowing
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`any connection between Dead Rising and George A. Romero’s Dawn of the Dead.
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`38.
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`Capcom seeks a declaration that Dead Rising does not infringe any of the MKR
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`Marks so that there will be no controversy clouding Capcom’s right to continue distributing the
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`Dead Rising game or ancillary products.
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`THIRD CLAIM FOR RELIEF
`(Declaratory Judgment — No False Designation of Origin: 17 U.S.C. §1l25)
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`39.
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`Capcom incorporates by reference all the allegations of paragraphs 1 through 27,
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`inclusive.
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`40.
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`Because of MKR’s actions and threats described herein, Capcom has a reasonable
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`and strong apprehension that it and/or related third parties will soon be faced with a claim for
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`false designation of origin under Section 43(a) of the Lanharn Act brought by MKR.
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`Accordingly, an actual controversy has arisen and exists between Capcom and MKR within the
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`meaning of28 U.S.C. § 2201.
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`41.
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`Capcom contends that its use of the DEAD RISING mark and distribution and
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`marketing of the Dead Rising game does not constitute a false designation of origin, and is not
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`likely to confuse or deceive consumers as to the source, on’gin, sponsorship, affiliation, and/or
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`quality of its and/or MKR’s goods or services, particularly in light of Capcom’s use of a
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`prominent disclaimer expressly disavowing any connection between Dead Rising and George A.
`
`Romero’s Dawn of the Dead.
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`
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`42. Capcom seeks a declaration that its use of the DEAD RISING mark and its
`
`COMPLAINT FOR DECL. RELIEF
`
`9
`
`CASE NO.
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`FENWICK5:WESTLLI’
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`ATTORNEYSATLAWMOUNTAINVIEW
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`FENWICK5:WESTLLI’
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`ATTORNEYSATLAW
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`MouunmVIEW
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`l\.)
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`L»)
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`distribution and marketing of the Dead Rising game does not constitute a false designation of
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`origin under Section 43(a) of the Lanham Act so that there will be no controversy clouding
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`Capcom’s right to continue distributing the Dead Rising game or ancillary products.
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`(Declaratory Judgment -— No False Advertising/Unfair Competition: 17 U.S.C. § 1125)
`
`FOURTH CLAIM FOR RELIEF
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`43.
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`Capcom incorporates by reference all the allegations of paragraphs 1 through 27,
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`inclusive.
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`44.
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`Because of MKR’s actions and threats described herein, Capcom has a reasonable
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`and strong apprehension that it and/or related third parties will soon be faced with a claim for
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`false advertising and unfair competition under Section 43(a) of the Lanharn Act brought by MKR.
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`Accordingly, an actual controversy has arisen and exists between Capcom and MKR within the
`
`meaning of28 U.S.C. § 2201.
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`45.
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`Capcom contends that its marketing and promotion of the Dead Rising game does
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`not constitute false advertising or unfair competition, and is not likely to confuse or deceive
`
`consumers as to the source, origin, sponsorship, affiliation, and/or quality of its and/or MKR’s
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`goods or services, particularly in light of Capcom’s use of a prominent disclaimer expressly
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`disavowing any connection between Dead Rising and George A. Romero’s Dawn of the Dead.
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`46.
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`Capcom seeks a declaration that its use of the DEAD RISING mark and its
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`distribution and marketing of the Dead Rising game does not constitute false advertising or unfair
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`competition under Section 43 (a) of the Lanham Act so that there will be no controversy clouding
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`Capcom’s right to continue distributing the Dead Rising game or ancillary products.
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`(Declaratory Judgment —— No Trademark Dilution: 17 U.S.C. § l125(c))
`
`FIFTH CLAHVI FOR RELIEF
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`47.
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`Capcom incorporates by reference all the allegations of paragraphs 1 through 27,
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`inclusive.
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`48.
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`Because of MKR’s actions and threats described herein, Capcom has a reasonable
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`and strong apprehension that it and/or related third parties will soon be faced with a trademark
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`dilution suit brought by MKR. Accordingly, an actual controversy has arisen and exists between
`
`COMPLAINT FOR DECL. RELIEF
`
`10
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`CASE NO.
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`

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`FENWICK6:WESTLLPArrormzvsA1LAW
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`MOUNTAINVIEW
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`Capcom and MKR within the meaning of 28 U.S.C. § 2201.
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`49.
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`Capcom contends that the MKR Marks are not famous marks within the meaning
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`of Section 43 (c) of the Lanham Act.
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`50.
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`Capcom contends that its Dead Rising game (‘including the marketing of same)
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`does not, and is not likely to, dilute any alleged distinctive quality of the MKR Marks.
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`51.
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`Capcom seeks a declaration that Dead Rising does not dilute any alleged
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`distinctive quality of the MKR Marks so that there will be no controversy clouding Capcom’s
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`right to continue distributing the Dead Rising game or ancillary products.
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`(Declaratory Judgment — No Common Law Trademark Infringement)
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`SIXTH CLAIM FOR RELIEF
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`52.
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`Capcom incorporates by reference all the allegations of paragraphs 1 through 27,
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`inclusive.
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`53.
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`Because of MKR’s actions and threats described herein, Capcom has a reasonable
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`and strong apprehension that it and/or related third parties will soon be faced with a claim for
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`common law trademark infringement brought by MKR. Accordingly, an actual controversy has
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`arisen and exists between Capcom and MKR within the meaning of 28 U.S.C.