ESTTA Tracking number:
`
`ESTTA1383638
`
`Filing date:
`
`09/13/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92081334
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Microsoft Corporation
`
`JOHN L. KRIEGER
`DICKINSON WRIGHT PLLC
`3883 HOWARD HUGHES PARKWAY, SUITE 800
`LAS VEGAS, NV 89169
`UNITED STATES
`Primary email: trademarkslv@dickinsonwright.com
`Secondary email(s): jkrieger@dickinsonwright.com, cvil-
`lanueva@dickinsonwright.com
`702-550-4400
`
`Opposition/Response to Motion
`
`John L. Krieger
`
`jkrieger@dickinsonwright.com, amoretto@dickinsonwright.com
`
`/John L. Krieger/
`
`09/13/2024
`
`PUBLIC - 2024-09-13 Microsoft Response to Edge Games Motion Challengi ng
`Designation_Redacted.pdf(352941 bytes )
`PUBLIC - Exhibit 1 - 2024-04-24 Complete Executed Declaration of Vine eta
`Gajwani EA including Exhibits 4854-1942-4975 v.1_Redacted.pdf(3880398
`bytes )
`PUBLIC - Exhibit 2 - 2024-09-10 Complete Executed Declaration of Robe rt
`Klieger.pdf(548545 bytes )
`PUBLIC - Exhibit 3 - 2024-09-11 Complete Executed Supplemental Declar ation
`of Vineeta Gajwani EA including exhibits_Redacted.pdf(2579033 bytes )
`Exhibit 4 - Judgment of Justice.pdf(230409 bytes )
`Exhibit 5 - Addendum to Decision.pdf(807036 bytes )
`Exhibit 6 - Robert Phillips Declaration.pdf(635547 bytes )
`Exhibit 7 - 53 TTABVUE.pdf(142023 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`EDGE GAMES, INC.
`
`
`
`
`
`MICROSOFT CORPORATION,
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Petitioner,
`
`Respondent.
`
`
`Cancellation No. 92081334
`
`Registration No. 5,766,386
`
`Mark: BLEEDING EDGE
`
`
`
`
`RESPONDENT’S OPPOSITION TO PETITIONER’S
`MOTION CHALLENGING THE DESIGNATION OF EXHIBIT TO RESPONDENT’S
`MOTION FOR LEAVE TO AMEND
`
`Respondent Microsoft Corporation (“Microsoft”), by and through counsel, hereby
`
`
`
`responds to the Motion Challenging the Designation of Exhibit to Respondent’s Motion for Leave
`
`to Amend (the “Motion”) filed by Petitioner Edge Games, Inc. (“Edge Games”) and maintains the
`
`is not confidential and must be made part of the public record.
`
`Edge Games’ Motion is based, at best, on Mr. Langdell’s failing memory, and at worst, on
`
`
`
`knowing misrepresentations to the Board.
`
`
`
`1
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
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`valuable information from public access and other proceedings before the Board, which cannot be
`
` Edge Games’ argument is pure fiction and designed to shield
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`condoned.
`
`I.
`
`ALL FILINGS WITH THE BOARD SHOULD BE PUBLIC
`
`Board proceedings are intended and designed to be open to public view and transparent to
`
`the public. TBMP § 412.01(c); 37 C.F.R.§ 2.27(c & d). See also Noble House Home Furnishings,
`
`LLC v. Floorco Enterprises, LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016) (filings in Board
`
`proceedings are intended to be made publicly available); Couch/Braunsdorf Affinity, Inc. v. 12
`
`Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014) (contents of Board proceedings must be
`
`publicly available; proceedings are meant to be transparent to the public). When a party improperly
`
`designates materials as being “confidential” or “attorneys’ eyes only” it “thwarts the intention of
`
`allowing the public the right to inspect judicial records and documents and is ‘an improper casual
`
`approach’ to a party’s good faith requirement to designate only material that is truly confidential
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`as ‘confidential.’” TBMP § 412.01(c).
`
`Moreover, a “trade secret” designation may only be used in extremely limited
`
`circumstances involving commercially sensitive information. The Standard Protective Order
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`expressly defines the scope of a “trade secret” as only encompassing sensitive or competitive
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`technical or business information. (See Stand. Protect. Order § 1.) Here, Edge Games
`
`
`
`that discloses sensitive or competitive
`
`technical or business information that would fall within the definition of a “trade secret.” See Ionji,
`
`LLC v. Triple 7 Commodities, Inc., 2023 WL 2301737, at *2 (S.D. Ind. Mar. 1, 2023) (finding
`
`
`
`2
`
`

`

`exhibits to a settlement agreement must be unsealed because plaintiff failed to explain “why such
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`information is sufficiently sensitive or possibly constitute trade secret information such that they
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`must be shielded from public view”); Holland v. Williams, 2018 WL 8222442, at *4 (D. Colo.
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`Aug. 10, 2018) (denying a motion to restrict public access to settlement agreements because the
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`movant failed to explain what trade secrets are at stake and the agreements have no bearing on its
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`trade secrets).
`
`
`
`
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`Further, a settlement agreement only remains confidential if there is a provision and mutual
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`agreement between the parties to keep it as such. See Goodeagle v. United States, 145 Fed. Cl.
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`646, 652 (2019) (holding that even though settlement negotiations were confidential the settlement
`
`agreement itself was not confidential as it did not include a confidentiality provision).
`
`
`
`
`
`
`
`Edge Games’ attempt to shield the
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` from public view is an
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`unwarranted overreach designed to improperly restrict information from public access that was
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`intentionally designed to be public. Moreover, Edge Games has already acquiesced to the
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`agreement being public in another Board proceeding. Edge Games’ Motion is borne out of a
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`misplaced desire to engage in conduct it agreed to cease doing several years ago with the hope that
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`no one would know any differently. The Board simply cannot condone such activity and must
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`ensure the
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` is on the public record, as it was intended to be.
`
`II.
`
` IS NOT CONFIDENTIAL AND
`THE
`WAS INTENDED TO BE A PUBLIC DOCUMENT
`
`
`
`The copy of the
`
` attached to Microsoft’s motion for leave to
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`amend and proposed counterclaim is a copy of the final executed version of the
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`
`
`
`
`3
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`

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` Microsoft obtained
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` directly from Electronic Arts (“EA”),
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`specifically from Ms. Vineeta Gajwani, EA’s Managing Counsel for IP, Marketing & Approvals,
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`who was the in-house counsel at the time of the
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` was drafted and signed,
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`and who directly oversaw EA’s intellectual property litigation. (See Declaration of Vineeta
`
`Gajwani (“Gajwani Decl.”), attached hereto as Exhibit 1.) As a party to the agreement,
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` had the
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`authority and ability to provide a copy to Microsoft and had no obligation to obtain Edge Games’
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`prior permission or consent.
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`Indeed, the history surrounding the
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` contradicts the alleged facts
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`set out in Edge Games’ Motion
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` As detailed in the declarations of
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`Ms. Gajwani and Mr. Robert Klieger, who was outside counsel to EA at the time, Edge Games
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`filed its lawsuit against EA on June 15, 2010, in the United States District Court Northern District
`
`of California, Case No. 3:10-cv-02614-WHA (the “Litigation”), for trademark infringement, false
`
`designation of origin, unfair competition, and unjust enrichment. Edge Games filed a motion for
`
`preliminary injunction, which EA opposed. On October 1, 2010, the court denied Edge Games’
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`motion finding it had no likelihood of succeeding on its claims. (Gajwani Decl. at Ex. B.)
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`Specifically, the court found that “the record contains numerous items of evidence that plaintiff
`
`willfully committed fraud against the USPTO in obtaining and/or maintaining registrations for
`
`many of the asserted “EDGE” marks, possibly warranting criminal penalties if the
`
`misrepresentation prove true” and that “EA has put forth substantial evidence calling into severe
`
`question many of the representations made by Dr. Langdell in his declaration submitted to the
`
`Court. Indeed,
`
`the declaration provided by EA from
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`two of plaintiff’s supposed
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`‘licensees’…revealed that many of Dr. Langdell’s assertions in his declaration were materially
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`misleading or downright false.” (Id. at Ex. B at 17-18.)
`
`
`
`4
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`

`

`Shortly thereafter, on or around October 6, 2010, Edge Games, EA,andall related parties
`
`tthe (tgs:ET (sjDel. 9
`
`Declaration of Robert Klieger (“Klieger Decl.”’), § 3, attached hereto as Exhibit 2.) Pursuant to the
`
`PO as well as the court’s order, all of Edge Games’ claims were resolved
`in favor of EA and agninst EdgeGoes,
`NS (30205 Dec. 511)
`
`N°:and Mi. Kegs
`both of whom were counsel for EA at the timePe
`
`EEGajwani Decl. § 14; Klieger Decl. ff 4-5.) Both Ms. Gajwani
`and Me. KigeriE
`
`Po (See Supplemental Declaration of Vineeta Gajywani (“Suppl. Gajwani
`Decl.”), § 6, attached hereto as Exhibit 3; Klieger Decl. § 4.) Moreover,Po
`
`BESuppl. Gajwani Decl. § 6; Klieger Decl. § 4.) Edge Games and Mr. Langdell agreed to
`
`a G
`
`ajwani Deel. 47; Klieger Det{5
`
`Pe (See Suppl. Gajwani Decl. § 7; Klieger Decl. § 5.)
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` (Id.)
`
` is belied
`
`
`
` (Suppl. Gajwani Decl. ¶
`
`(Suppl. Gajwani Decl. ¶ 9; Klieger Decl. ¶ 6.) In fact,
`
` (Klieger Decl. ¶ 6.)
`
`Furthermore, the notion the
`
`by the fact that it was the subject of news reporting. As stated above,
`
`6; Klieger Decl. ¶ 4.) In an article published the day after the
`
` was signed,
`
`EA was quoted as saying, “[w]e’re pleased that we’ve reached a settlement and can put this behind
`
`use. This settlement goes a long way in protecting the rights of independent developers.” (Suppl.
`
`Gajwani Decl. at Ex. D.)
`
`
`
`
`
`
`
`
`
`
`
`C 08–3382 PJH, 2010 WL 3787113, at *2 (N.D. Cal. Sept. 24, 2010) (self-serving declaration and
`
` Olson v. Dias, Case No.
`
`
`
`6
`
`

`

`“[a] conclusory self-serving declaration, without more,” is insufficient to show an absence of
`
`facts). Moreover, Mr. Langdell’s veracity has been repeatedly called into question by legal
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`tribunals who found he has no problem making material misrepresentations in sworn declarations
`
`and manufacturing evidence. (Gajwani Decl. at Ex. B at 17-18; Judgment of Justice Proudman,
`
`Royal Courts of Justice, ¶¶ 54-56, attached hereto as Exhibit 4; Addendum to Decision Delivered
`
`on 28 May 2014, ¶¶ 11-15, attached hereto as Exhibit 5.) In fact, the
`
`
`
`was the product of a failed attempt by Edge Games and Mr. Langdell to try to convince a federal
`
`court Edge Games had any rights in the term “EDGE” (see Gajwani Decl. at Ex. B at 17-18; Suppl.
`
`Gajwani Decl. ¶ 5: Klieger Decl. ¶¶ 2-3), that, in part, failed due to his lack of credibility. Here,
`
`the case is no different. Mr. Langdell is manufacturing a history that never occurred in order to
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`keep the
`
` from the public record because
`
`
`
`As such, assigning any “confidential” or “attorneys’ eyes only” designation to the
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` and any discussion of it, would be unwarranted and improper.
`
`III.
`
`EDGE GAMES ACQUIESCED TO PUBLIC ACCESS OF THE
`
`
`
`
`
`
`
`
`
`
`
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`It is axiomatic that once a document has been released on the public record, it cannot later
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`become protected by a “confidential” designation. See Glaxo Inc. v. Novopharm Ltd., 931 F. Supp.
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`1280, 1301 (E.D.N.C.1996), aff’d, 110 F.3d 1562, 1572 (Fed.Cir.1997) (“It is a ‘well-established
`
`principle of American jurisprudence that the release of information in open trial is a publication of
`
`that information and, if no effort is made to limit its disclosure, operates as a waiver of any rights
`
`a party had to restrict its further use.’ ”); Est. of Warner by Norton v. Wellpath, 2021 WL 2042446,
`
`at *4 (S.D. Ind. May 20, 2021) (holding that there was no violation of the protective order where
`
`
`
`7
`
`

`

`plaintiff filed videos publicly since the defendants had already made the videospart of the public
`
`record in a filing a year prior and had not made any arguments that these videos contain trade
`
`secrets, are protected by statute, or contain confidential information that outweighs the public's
`
`interest in these videos in their own filing). Here, thePO was publicly
`
`disclosed in a 2011 Board proceeding. Edge Games made no objectionat that time and, therefore,
`
`acquiesced to the EA Settlement Agreement being on the public record.
`
`Edge Games’representationtha
`I (12.1132.0E, 212) As part of
`Board proceeding involving EA and Edge Games where EA sought to have the terms of the a
`ee. Future Publishing Ltd. (a separate defendant in the proceeding)
`filed the Declaration of Robert N. Phillips, in which thePo wasattached
`
`in a public filing. (See EA Digital Illusions, et al. v. Edge Games, Inc., et al., Cancellation No.
`
`92051465, at 49 TTABVUE at Ex. 1 (Phillips Decl. dated Aug. 23, 2011), a true and correct copy
`
`of whichis attached hereto as Exhibit 6.) A comparison of the agreementfiled in that matter by
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`Future Publishing on August 23, 2011,ee
`Po reveals they are the same document. Of particular note, in response to Future
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`Publishing’s filing, Edge Games and Mr. Langdell did not move to have the agreement marked as
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`“Confidential- Attorneys Eyes Only”or even “Confidential.” Rather, Edge Gamesfiled a response
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`dated September 29, 2011, where it cited to thePO and even provided
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`analysis as to how the Board should interpret the terms thereof. (See id. at 53 TTABVUE (Edge
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`GamesReply), Jf 3, 13, 15, 17, & 21, a true and correct copy ofwhichis attached hereto as Exhibit
`
`7.) Given that heiii had been signed less than a year before Edge Games’
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`September 29, 2011 filing, Edge Games and Mr. Langdell would have raised confidentiality
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`

`

`concerns if Edge Games truly, in fact, b
`
`
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` which it never did.
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`Consequently, the
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` is public and cannot be deemed to be
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`confidential now; to do so would thwart public policy and violate established law. See In re Bard
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`IVC Filters Prod. Liab. Litig., No. MDL 15-02641-PHX DGC, 2019 WL 186644, at *1 (D. Ariz.
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`Jan. 14, 2019) (finding evidence “to be part of the public record and no longer confidential or
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`subject to being sealed” where a party made no motion to seal the evidence at public trial).
`
`
`
`IV. CONCLUSION
`
`Edge Games and Mr. Langdell cannot be allowed to rewrite history to hide their fraudulent
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`actions and misstatements behind a veneer of confidentiality. The ruse they have concocted to
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`prevent the
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` from seeing the light of day again is built on nothing more
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`than fabricated misrepresentations.
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`/ / /
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`/ / /
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`/ / /
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`/ / /
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`/ / /
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`/ / /
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`/ / /
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`/ / /
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`/ / /
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`/ / /
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`
`9
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`

`

`Microsoft therefore requests the Board deny Edge Games’ Motion and allow the
`
`
`
` it be made public, including, but not limited
`
`to, placing Microsoft’s motion for leave to amend, proposed counterclaim, and supporting exhibit
`
`back on the public record.1
`
`Dated: September 13, 2024.
`
`
`
`
`
`Respectfully submitted,
`
`DICKINSON WRIGHT PLLC
`
`
`
`
`
`
`/John L. Krieger/
`John L. Krieger, Esq.
`jkrieger@dickinsonwright.com
`Cindy Villanueva, Esq.
`cvillanueva@dickinsonwright.com
`3883 Howard Hughes Parkway, Suite 800
`Las Vegas, Nevada 89169
`(702) 550-4400 (phone)
`Attorneys for Microsoft Corporation
`
`
`1 Microsoft also requests that the Interlocutory Attorney share the declarations attached to this
`Response with other Interlocutory Attorneys handling other TTAB cases involving Edge Games
`in order to preserve office resources given that Edge Games has made, and will likely make, similar
`unfounded arguments regarding confidentiality.
`
`
`
`10
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`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of RESPONDENT’S OPPOSITION TO
`
`
`
`PETITIONER’S MOTION CHALLENGING THE DESIGNATION OF EXHIBIT TO
`
`RESPONDENT’S MOTION FOR LEAVE TO AMEND is being filed electronically with the
`
`United States Patent and Trademark Office Trademark Trial and Appeal Board and being served
`
`this 13 day of September 2024 via email and U.S. mail as follows:
`
`Tim Langdell
`EDGE Games, Inc.
`35 North Lake Avenue, Suite 710
`Pasadena, CA 91101
`Email: edgegames@gmail.com; uspto@edgegames.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Ashley B. Moretto
`An Employee of Dickinson Wright PLLC
`
`
`
`
`
`
`11
`
`

`

`EGDE GAMES, INC. +. MICROSOFT CORPORATION
`Cancellation No.
`9200) 334
`
`EXHIBIT 1
`
`EGDE GAMES. INC. y, MICROSOFT CORPORATION
`Cancellahon No. 92081334
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EDGE GAMES, INC.
`
`Petitioner,
`
`¥.
`
`Cancellation No. 92081334
`
`Registration No. 5,766,386
`
`Mark: BLEEDING EDGE
`
`MICROSOFT CORPORATION,
`
`Respondent.
`
` WANT
`
`I, Vineeta Gaywani, declare under penalty of perjury under the laws of the United States
`
`that the following 18 true ard! correct:
`
`I,
`
`My name is Vineeta Ciajwani, and | am over 18 years old.
`
`| am the Managing
`
`Counsel, IP, Marketing & Approvals at Electronic Arts Ine. (“EA”).
`
`2.
`
`As part of my duties as the Managing Counsel for [P, Marketing & Approvals at
`
`EA,
`
`| continue to consult with EA’s litigation team on intellectual property aspects related to
`
`trademark and copynght cases in which EA is involved. Although, at the time of the lawsuit
`
`described below, I directly oversaw EA’s intellectual property litigation.
`
`3,
`
`lam personally aware of and familiar with EA's record keeping procedures and |
`
`am one of the custodians of records for EA, including its tracking of licensing agreements and its
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`records for prior intellectual property litigation.
`
`4,
`
`l have knowledge of information contained in this declaration based on my position
`
`with EA and/or upon ny access to pertinent busmess records that EA has maintarmed in the
`
`ordinary course of husiness.
`
`a;
`
`Edge Games, Inc. (“Edge Games”) filed a lawsuit against EA on June 15, 2010), in
`
`the United Siates District Court Northen Distnict of California, Case No. 3: 10-cv-02614-WHA
`
`

`

`(“Litigation”), for
`
`trademark mitingement, false designation of onain, unfair competition, and
`
`nnpast emnchment.
`
`6
`
`Edge Games filed its First Amended Complamt on July 2, 2010. and then filed a
`
`Motion for Preliminary Injunction on August 20, 2010
`
`7
`
`EA filedits Answer to the First Amended Complaint on August 29, 2010, coupled
`
`with a Counterclaim brought by EA and Counterclaimant EA Digital Ihistons CE AB (“DICE”)
`
`agaist Edge Ganies and Counterdefendant The Edge Interactive Media.
`
`Inc.
`
`(“EITM”).
`
`5
`Edge Games filed its Counter-Counterclanms against DICE on September 23, 2010
`
`9 Edge Games, FIM, EA, and Wes===—(i—‘“—s‘“‘“‘iés*”Y
`
`10.
`
`The Court entered an Order Denying Edoe Games’ Motion for Prelumimnary
`
`Injunction on October 1, 2010 (“Order”). A te and cormect copy of the Order ts attached as
`
`Extubit B
`
`Te
`ee Language confine this
`was icluded in the Proposed Siphtiniii__
`12.
`tnadtion,
`
`this was included in the Proposed Stipulationiii
`
`ee
`ee
`| Exhibit A, Section 2.3.
`Id,
`‘The parties agreed hathe
`(ee
`
`

`

`5.
`
`BA therefore provided Microsoft Corpomtion wih a copy of the ,__|
`
`
`
`Li
`
`
`
`] if
`
`
`
`
`lk
`
`
`
`
`Executed on thus
`
`day of April 2024.
`
`
`
`Vineela Gara
`
`

`

`EXHIBIT A
`(CONFIDENTIAL)
`
`

`

`EXHIBIT B
`
`

`

`Case 3:10-cv-02614-WHA Document 67 Filed 10/01/10 Page 1 of 23
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`EDGE GAMES, INC., a California
`comporation,
`
`No. C 10-02614 WHA
`
`Plaintiff,
`
`¥.
`
`ELECTRONIC ARTS, INC., a Delaware
`corporation,
`
`Defendant.
`
`ORDER DENYING MOTION FOR
`PRELIMINARY INJUNCTION
`
`INTRODUCTION
`
`In this trademark infringement action involving video-gaming giant Electronic Arts, Inc.
`
`and its “revolutionary” first-person, action-adventure video game “Mirror's Edge,” plaintiff Edge
`
`Games, Inc, — a so-called “small video-gaming company” based in Pasadena — moves to
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`preliminarily enjoin defendant Electronic Arts from using the “MIRROR'S EDGE” mark while
`
`this dispute unfolds in court. Because plaintiff has failed to establish that it is likely to succeed on
`
`the merits, that it is likely to suffer irreparable harm in the absence of preliminary relief, that the
`
`balance of equities tips in its favor, or that an injunction 1s in the public interest, the motion fora
`
`preliminary injunction is DENIED.
`
`
`
`
`
`PortheNorthenDistrictofCalifornia
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`

`

`Case 3:10-cv-02614-WHA Document 67 Filed 10/01/10 Page 2 of 23
`
`1.
`
`PLAINTIFF EGE GAMES, INC.
`
`STATEMENT
`
`Edge Games, Inc. is “one of the oldest surviving video game development and publishing
`
`businesses” on the planet — at least, that’s what its founder, chief executive officer, and sole
`
`shareholder, Dr. Tim Langdell, would have a jury believe (Langdell Decl. 9] 1-3). According to
`
`Dr. Langdell’s declaration, he began using the “EDGE” mark in connection with video-game
`
`marketing and sales back in 1984 through a London-based video-game company called Softek
`
`(id. at) 2). Softek 1s supposedly a predecessor-in-interest to Edge Games. After Dr. Langdell
`
`moved to Los Angeles in 1990, he reincorporated Softek as Edge Interactive Media (another
`
`supposed predecessor-in-interest to Edge Games). He then incorporated Edge Games — the
`
`alleged trademark holder herein — in 2005 (id. at | 3).
`
`Plaintiff Edge Games and its predecessors supposedly developed, distributed, and sold
`
`several dozen video games from the mid-1990s through 2010 bearing the asserted marks(id. at 9
`
`17). Examples of recent video-game products purportedly marketed by Edge Games and bearing
`
`one or more of the asserted marks include “Bobby Bearing,” “Raffles,” “Mythora,” “Pengu,”
`
`“Battlepods,” and “Racers” (fd. at§ 14, Exhs. K-T). Between 2003 and 2009, Edge Games
`
`purportedly sold over 11,000 units of Raffles, Mythora, and Racers, which are “packaged PC
`
`video game” products, as well as over 45,000 units of Bobby Bearing, Pengu, and BattlePods,
`
`which are games that can be played on certain mobile phones (fd. at Wf 15-16).
`
`In addition to PC
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`and mobile-phone video games, Dr. Langdell also claims that Edge Games develops, publishes,
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`and/or licenses games for major gaming consoles such as the Sony PlayStation 3, and that various
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`releases are currently being developed for gaming consoles and platforms including Microsoft's
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`Xbox 360, the Nintendo Wii, and the Apple iPhone and iPad (id. at 15).
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`According to Dr. Langdell, these “upcoming” releases from Edge Games will supposedly
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`be sold through the same retailers that the accused products were (and are still being) sold, such
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`as Amazon.com, Best Buy, and Target (fa. at 9 20).
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`In sum, based upon Dr, Langdell’s
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`declaration, Edge Games is a legitimate “small video-gaming company”that is active in the
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`video-gaming industry.
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`Z.
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`DEFENDANT ELECTRONIC ARTS, INC.
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`Electronic Arts — or EA for short — is a leading “interactive entertainment” company
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`that develops, publishes, and distributes video games and related software for modern gaming
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`consoles including Microsoft's Xbox 360, the Sony PlayStation 3, and the Nintendo Wii, as well
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`as for PCs, Macs, and various mobile-gaming devices. Since its formation in 1982, EA has
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`grown to become an international, publicly traded corporation with more than ten video-game
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`development studios spanning the globe.
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`In 2009 alone, EA had sales exceeding one million
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`units for at least 31 of its active video-game franchises (Hershberger Decl. 4 2).
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`“Mirror's Edge” is one of EA*s modestly successful video-game franchises. Developed
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`by EA Digital Illusions CE AB (or “EA DICE” for short) in Stockholm, Sweden — one of EAs
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`ten video-game development studios — the “Mirror's Edge” franchise stands at the heart of the
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`instant trademark dispute (fa, at 4] 3).
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`3.
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`THE “MIRROR’S EDGE” FRANCHISE
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`In July 2007, EA announced in “Edge Magazine” — a leading print and online video-
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`creating a “revolutionary new take on the first-person action adventure game” entitled “Mirror's
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`Edge” (id. at 4), The announcement was a cover story in the magazine, and it was accompanied
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`by a press release issued by EA on July 11, 2007, officially announcing the development of the
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`“Mirror's Edge” video game (/d. at Exh. A: Binns Decl, 93, Exh. F). According to EA’s senior
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`marketing director, Lincoln Hershberger, “Mirror's Edge” was widely known and discussed
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`throughout the gaming industry and became one of the most anticipated video-game releases of
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`2008 (Hershberger Deel. 9 5). Tens of millions of dollars were invested by EA in the game's
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`development, which spanned three years and involved a team of over 60 individuals(fd. at} 8).
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`The gameitself is set in a city of gleaming skyscrapers with reflective surfaces and empty
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`streets, whose population has been marginalized by a totalitarian regime. Players interact with
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`and explore this world through the eyes of a character named “Faith,” who is a messenger(or, as
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`the game describes her, a “runner™) tasked with covertly delivering information, messages, and
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`other items within the city while evading government surveillance. The network of rooftops and
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`game magazine published by Future Publishing—that its EA DICE development studio was
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`aerial skyways that Faith and other “runners” utilize to make these deliveries and evade the
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`government is dubbed the “Mirror’s Edge”(1a, at 6).
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`Prior to its official release, “Mirror's Edge” was demonstrated and publicized at numerous
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`industry events, including the Game Developers Conference in February 2008 and the Electronic
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`Entertainment Expo (or “E3") in July 2008. E3 is widely regarded as the most important expo in
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`the video-game industry (id. at 99). Also in July 2008, “Mirror’s Edge” was showcased at
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`Comic-Con, the largest comic-book convention in the world, where a limited-run comic-book
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`adaptation of “Mirror's Edge” was announced. The s1x-issue “Mirror's Edge” comic “mini-
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`senes’ was published in 2008 and 2009 by a division of DC Comics (id. at) 10).
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`In total, BA
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`invested over $9 million to market “Mirror's Edge” in North America (fa, at { 11).
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`In November 2008, “Mirror's Edge” was released for the Sony PlayStation 3 and
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`Microsoft's Xbox 360. A PC version followed in January 2009 (id. at] 13). These games were
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`sold through retail channels including mass merchandisers (e.g., Walmart, Target), electronics
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`sellers (e.@., Best Buy), video-game resellers (e.¢., GameStop), club stores (e.¢., Costco), and
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`online retailers (e.¢., Amazon.com) (id. at] 14). Since its initial release, over two million units of
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`“Mirror's Edge” have been sold worldwide, including over 750,000 units in North America alone
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`(id. at) 17). While EA is no longer manufacturing or distributing copies of “Mirror's Edge” for
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`the Sony PlayStation 3, the Microsoft's Xbox 360, or the PC for third-party retailers, the PC
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`version of the game remains available for download on EA‘s online store (fa. at] 18).
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`Due to its modest success, additional products were developed for the “Minror’s Edge”
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`franchise.
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`In February 2009, EA released “additional downloadable context” for the game, which
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`was sold as “Mirror's Edge Pure Time Trials Map Pack”(ia. at) 15). Additionally, a separate
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`and “substantially scaled down”side-scrolling version of the game was announced in December
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`2009 and developed from scratch for the Apple iPad, iPhone, and iPod Touch (Correa Decl. 19
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`2-6). This side-scrolling version of the game — published in 2010 — was entitled “Mirror's
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`Edge 2D.” It is currently available for purchase through Apple's App Store, where over 37,000
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`units have already been downloaded for the Apple iPad (ia. at 4) 4—6; Hershberger Decl. 4 15).
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`Finally, a Mac version of the original “Mirror's Edge” video game is currently under
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`development and is slated for release later this year (Hershberger Decl. 4 13).
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`4.
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`THE ASSERTED AND ACCUSED MARKS
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`As should be obvious by this point, this trademark battle centers on EA‘s use of the word
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`“Edge”in the “Mirror’s Edge”franchise. The logo for “Mirror’s Edge” and examples of how
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`“Mirror's Edge” appeared in advertising and product packaging are reproduced below (ia. at 7
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`11-13, Exhs. D-E; Shafer Decl. 9] 2, Exhs. A—H):
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`MIRROR'S
`SiS"
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`a os
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`FortheNorthenGistricofCalifone
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`eeeeeioeae =
`Sere
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`As shown,the logos for both EA and EA DICE were prominently displayed on the game's
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`packaging and advertising. In the reproductions above, the logos for EA and EA DICE are most
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`clearly seen on the bottomright of the Xbox 360 cover art. The logos for EA and EA DICE were
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`also placed on the advertisement(to the left of “There’s No Looking Back”). While difficult to
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`see in the reproduction above, the logos are clearly visible on the normal sized version.
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`The “MIRROR*S EDGE” mark is owned by EA DICE. The application was filed in
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`September 2009 and — overa letter of protest filed by Edge Games — the United States Patent
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`and Trademark Office approved the registration of the “MIRROR’S EDGE” mark on June 22,
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`2010, for computer and video game software, comic books, and online video games (Schatz Decl.
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`9 21, Exh. 5).
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`Tuming next to the asserted marks in this action, Edge Games is the purported owner of
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`six federally registered trademarks that it supposedly “uses and selectively licenses” to other
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`companies. These marks are: (1) “EDGE,” (2) “THE EDGE,” (3) “GAMER’S EDGE,”(4)
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`“EDGE OF EXTINCTION,” (5) “CUTTING EDGE,”and (6) “EDGEGAMERS.” Edge Games
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`also claims common-law trademark rights over the “EDGE”logo (Langdell Deel. at % 4-12,
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`Exh. T). Each mark will be deseribed briefly below.
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`A.
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`“EDGE”
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`Edge Games purportedly owns two valid USPTO registrations for the mark “EDGE” as
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`used in connection with printed matter and publications relating to video games and comic books.
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`According to Dr, Langdell, the “EDGE” mark was in continuous use since 1985, and — for at
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`least one of the two registrations — is incontestable. Edge Games also asserts ownership over the
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`common-law mark “EDGE” for use in connection with video-game software and related goods
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`and services, with continuous use supposedly extending back to 1984 (fd. at) 6, Exhs. A-C).
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`B.
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`*THE EDGE”
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`Plaintiff also supposedly owns a valid registration for the mark “THE EDGE,”issued by
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`the USPTO in 2009 for use in connection with video-game software, video-game controllers, and
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`video-game magazines, with continuous use allegedly extending back to 1995 (fd. at | 7, Exh. D).
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`c.
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`“GAMER’S EDGE”
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`Another registered mark purportedly owned by Edge Games is “GAMER'S EDGE,”
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`issued by the USPTO in 2008 for use in connection with video-game software and various video-
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`game accessories, with continuous use supposedly extending back to 1986 (id. at 9 8, Exh. E).
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`Again, Dr. Langdell asserts that the plaintiff owns a valid registration over this mark.
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`D.
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`“EDGE OF EXTINCTION”
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`Ownership of the “EDGE OF EXTINCTION”mark is also claimed by Edge Games. This
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`mark was onginally registered by a non-party and issued by the USPTO in 2003 for use in
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`connection with computer-game software, with continuous use purportedly extending back to
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`2000. The mark was later assigned to Edge Games by the original registrant. According to Dr.
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`Langdell, the “EDGE OF EXTINCTION” mark is incontestable (id. at 9 9, Exh. F, G)
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`E.
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`“EDGEGAMERS*
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`Edge Games also asserts ownership over the supposedly valid registered mark
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`“EDGEGAMERS,”issued by the USPTO in 2008 for use in connection with an online computer-
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`gaming club, with continuous use extending back to 2006 (id. at 9 11, Exh. J).
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`F.
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`“CUTTING EDGE”
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`The last registered mark purportedly owned by Edge Games — “CUTTING EDGE” — is
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`mot related to video games. This mark was issued by the PTO in 1999 for use in connection with
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`comic books. The mark has supposedly been in continuous use extending back to 1995 and has
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`become incontestable (rd, at 9 10, Exh, H, 1).
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`G.
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`The “EDGE” Logo
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`Finally, Edge Games claims ownership over a common-law mark, reproduced below, that
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`it asserts has been used continually as a trademark and service mark in connection with its video-
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`game software and related websites since 2001 (ia. at) 12):
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`EDGE
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`5.
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`PLAUSTIFF’S LICENSING PRACTICES
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`According to Dr. Langdell’s declaration, plaintiff's licensing practices have been prolific,
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`extending the reach of its asserted marks well beyond video-game software to gaming-related
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`print publications and websites, comic books, video-game hardware, and computers (iad. at J 21).
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`Licensed products supposedly include “Cross Edge,” a video game for the Sony PlayStation 3
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`published by NIS America, and Edge Maga