Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 1 of 39 1 BROWNE GEORGE ROSS LLP Keith J. Wesley (State Bar No. 229276) kwesley@bgrfirm.com 2 2121 Avenue of the Stars, Suite 2800 3 Los Angeles, California 90067 Telephone: (310) 274-7100 4 Facsimile: (310) 275-5697 5 K.C. Maxwell (State Bar No. 214701) kmaxwell@bgrfirm.com 6 101 California Street, Suite 1225 San Francisco, California 94111 7 Telephone: (415) 391-7100 Facsimile: (415) 391-7198 8 Attorneys for Plaintiff Atari Interactive, 9 Inc. 10 11 UNITED STATES DISTRICT COURT 12 NORTHERN DISTRICT OF CALIFORNIA, SAN FRANCISCO DIVISION 13 14 ATARI INTERACTIVE, INC., Case No. 15 COMPLAINT FOR: Plaintiff, 16 vs. 22 (1) TRADEMARK INFRINGEMENT UNDER 15 U.S.C. § 1114; (2) COPYRIGHT INFRINGEMENT UNDER 17 U.S.C. §§ 101 et seq.; (3) FALSE DESIGNATION OF ORIGIN UNDER 15 U.S.C. § 1125(a); (4) DILUTION UNDER 15 U.S.C. § 1125(c); (5) UNFAIR COMPETITION UNDER CAL. BUS. & PROF. CODE § 17200; AND (6) COMMON LAW UNFAIR COMPETITION 23 DEMAND FOR JURY TRIAL 17 NESTLÉ, SA; NESTLÉ UK LTD; and NESTLÉ USA, INC., 18 Defendants. 19 20 21 24 25 26 27 28 836555.1 COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 2 of 39 1 PRELIMINARY STATEMENT 2 1. Atari brings this action to remedy Nestlé’s blatant invasion and 3 misappropriation of its intellectual property rights related to the iconic Breakout 4 video game. 5 2. In 1975, two little known but up-and-coming developers – Steve Jobs 6 and Steve Wosniak – created Breakout for Atari, which was then looking to follow7 up on its groundbreaking hit game, Pong.1 The new simple, addictive game was 8 also a hit, and helped propel Atari to its long-held spot on top of the video game 9 industry. 10 3. Forty years later Nestlé decided that it would, without Atari’s 11 authorization, leverage Breakout and the special place it holds among nostalgic 12 Baby Boomers, Generation X, and even today’s Millennial and post-Millennial 13 “gamers” in order to maximize the reach of worldwide, multi-platform 14 advertisements for Nestlé KIT KAT bars. 15 4. To be clear, this is not a case where a good faith dispute could exist 16 between the rights holder and alleged infringer. Instead, Nestlé simply took the 17 classic Breakout screen, replaced its bricks with KIT KAT bars, and invited 18 customers to “Breakout”and buy more candy bars. 19 5. Adding insult to injury, Nestlé’s “Breakout” campaign was 20 comprehensive, and the infringement continues to this very moment. KIT KAT ads 21 centered on the exploitation and misuse of the Breakout name, and the Breakout 22 look, feel, sound, and imagery remain on Twitter, under Nestlé’s Twitter handle, 23 and on Facebook, on Nestlé’s Facebook page, for all the world to see. Nestlé’s 24 The late Mr. Jobs subsequently explained that the $5,000 he was paid for Breakout served as seed money for his nascent company, Apple. Mr. Wozniak has 25 said that the process of engineering Breakout led to several innovations later 26 employed in the landmark Apple II personal computer. Unless otherwise indicated, all emphasis is added and internal citations 27 omitted. Citations to website addresses in this Complaint were last viewed on August 14, 2017. 28 1 836555.1 -1COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 3 of 39 1 video advertisement for KIT KAT – brazenly entitled “Breakout” – is available to 2 every world citizen with an internet connection on Vimeo at 3 https://vimeo.com/204352144. Accordingly, any potential Atari licensee will have 4 to consider both Atari’s past and continuing involuntary association with Nestlé 5 when determining whether to license Breakout, or hundreds of other Atari games 6 (e.g. Asteroids, etc.). Given the multi-billion dollar advertising markets for food 7 alone, or even candy, confectionaries, or chocolate more narrowly, Atari’s licensing 8 opportunities have been eliminated, or dramatically degraded, across a wide range 9 of products and sectors. 10 6. As had to have been obvious to a global behemoth whose business 11 depends on the sophisticated, comprehensive marketing of a wide swath of 12 consumer goods, Nestlé’s heist of Atari’s intellectual property rights in Breakout 13 violates several provisions of law. The use of the term “Breakout” – one word – in 14 this context is the plainest invasion and infringement of Atari’s trademark rights. 15 The use of the look, feel, sound, and operation of Breakout game screens is the 16 plainest invasion and infringement of Atari’s trade dress and copyrights. 17 Accordingly, Nestlé’s continuing, unauthorized use of Atari’s intellectual property 18 should be enjoined, and the damage it has caused and continues to cause should be 19 remedied by the Court. 20 NATURE OF THIS ACTION 21 7. This is an action in law and equity for trademark infringement, dilution, 22 false designation of origin, copyright infringement, and unfair competition under the 23 Lanham Act, 15 U.S.C. §§ 1051 et seq.; the United States Copyright Act, 17 U.S.C. 24 § 101 et seq.; the California Unfair Competition Law (“UCL”) Cal. Bus. & Prof. 25 Code § 17200; and the common law. 26 THE PARTIES 27 8. Plaintiff Atari Interactive, Inc. (“Atari” or “Plaintiff”) is a Delaware 28 Corporation with a business address of 475 Park Avenue South, New York, New 836555.1 -2COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 4 of 39 1 York 10016. Atari is a pioneer in the video game industry, with titles including the 2 seminal and instantly recognizable Pong, Breakout, Asteroids, and others. Atari 3 remains a multi-platform, global interactive entertainment company, having adapted 4 many of its classic games for online platforms like Facebook, as well as for 5 smartphones and tablets. It also develops and distributes interactive entertainment 6 for video game consoles from Microsoft and Sony. As a licensor, Atari extends its 7 brand and franchises into other media, merchandising, and publishing categories. 8 Atari is the owner, by assignment, of all right, title, and interest in Atari intellectual 9 property (“Atari IP”), including the trademarks and copyrights relating to Breakout. 10 Atari trades publicly on the Euronext Paris stock exchange. 11 9. Defendant Nestlé SA is a Swiss corporation having an address and 12 principal place of business of Avenue Nestlé 55, Vevey, Switzerland. 13 10. Defendant Nestlé UK Ltd is a subsidiary of Nestlé and is a company 14 organized under the laws of the United Kingdom having a business address of 1 City 15 Place, Gatwick, England. 16 11. Defendant Nestlé USA, Inc. is a subsidiary of Nestlé SA and is a 17 California corporation with a business address of 800 North Brand Boulevard, 18 Glendale, California. This Complaint refers to the three Nestlé entities, collectively 19 and individually, as “Nestlé” or “Defendants.” 20 12. Nestlé, its products, and its advertisements are ubiquitous; it is among 21 the largest and best known food companies in the world. It is an international 22 conglomerate that sells everything from baby food (Gerber) to snacks (Chips Ahoy!, 23 Toll House cookies, PowerBar) to petcare products (Fancy Feast, Purina) to mineral 24 water (Arrowhead, Ozarka). It owns dozens of top-name brands, many with annual 25 sales of over one billion U.S dollars. Nestlé is particularly well-known for its 26 chocolate and confectionary offerings, which include Nestlé Crunch, Baby Ruth, 27 100 Grand Bar, Butterfinger, Raisinets, Smarties, and Wonka brand products. 28 Nestlé’s jingles, too, are famous, from “Nestlé makes the very best” (Nestlé Quik), 836555.1 -3COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 5 of 39 1 to “Nobody better lay a finger on my Butterfinger” (Butterfinger). Nestlé’s logos 2 and associated “characters” – like the Gerber baby and Keebler Elves – are similarly 3 recognized and memorable. Nestlé is, accordingly, a savvy, ultra-experienced 4 marketer with a long history of licensing intellectual property and protecting its 5 own. At all relevant times Nestlé has been responsible for marketing KIT KAT and 6 is responsible for the infringing advertisements at issue. 7 JURISDICTION AND VENUE 8 13. This Court has subject matter jurisdiction over this action pursuant to 9 15 U.S.C. § 1121, and 28 U.S.C. §§ 1331 and 1338 because the action arises under 10 the Federal Copyright and Lanham Acts, 17 U.S.C. § 101, et seq., and 15. U.S.C. § 11 1051, et seq. This Court also has supplemental jurisdiction pursuant to 28 U.S.C. § 12 1367 and 28 U.S.C. § 1338(b). 13 14. Venue in this county is proper under 28 U.S.C. § 1391 because 14 Defendants are subject to personal jurisdiction in this district and Atari has suffered 15 injury in this district. 16 15. This Court has personal jurisdiction over Defendants because (a) 17 Defendants have committed tortious acts in this district, and Plaintiff’s claims arise 18 out of such acts; (b) Defendants regularly conduct business in this district; and (c) 19 Defendants have otherwise made or established contacts in this district sufficient to 20 permit the exercise of personal jurisdiction. 21 NESTLÉ’S UNAUTHORIZED, BLATANT MISAPPROPRIATION AND 22 MISUSE OF ATARI’S TRADEMARK AND COPYRIGHTED PROPERTY A. 23 24 16. Atari’s Iconic Game, Breakout Breakout was conceptualized by Atari founder Nolan Bushnell, along 25 with Steve Bristow, after the home version of Atari’s Pong became a breakaway 26 sensation in 1975. Atari sought to capitalize on Pong’s popularity and expand its 27 user base by developing a similarly popular game that could be played by one 28 person. One challenge Atari faced was the price of logic chips, with typical games 836555.1 -4COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 6 of 39 1 needing 100-175 chips apiece, multiplied by tens of thousands of units. Bushnell 2 challenged his engineers to reduce the number of chips, offering a bonus for each 3 chip removed in a prototype, in hopes to get below 75. 4 17. One young engineer, Steve Jobs, claimed he could hit that mark in four 5 days. In reality, Mr. Jobs enlisted his friend, Steve Wosniak, then an engineer at 6 Hewlett Packard, to do the legwork in exchange for half of the bonus. Mr. Wozniak 7 spent around 72 hours minimizing Breakout’s circuitry, delivering an initial 8 prototype with just 20-30 circuits, and a final prototype with just 44 chips.2 Mr. 9 Jobs was paid $5,000 for the work. 10 18. Breakout cemented Atari’s place atop the gaming industry, becoming a 11 huge hit. Its success has spawned multiple reinventions of the game – e.g. Super 12 Breakout and Breakout 2000 – which, together with the original Breakout, remain 13 available across countless platforms including Video Pinball, PC, Apple, 14 PlayStation, Xbox 360, mobile, and multiple Atari consoles. Atari’s iPhone version 15 of Breakout has been downloaded more than 2 million times since its 2008 release 16 via the iTunes store.3 17 19. Breakout is a widely acknowledged classic of its genre, “arguably 18 second only to Pong” in its influence on gaming.4 The game’s appeal and resonance 19 continue to this day. In recent years, in honor of the 37th anniversary of the game’s 20 release, and with the prior written authorization of Atari, Google released a secret 21 2 Mr. Wozniak’s design was said to be so compact and ingenious that it could 22 not be replicated on a mass production level, so the final Breakout board shipped with 100 chips. See Damien McFerran, Atari’s Breakout is 40 today - all gamers 23 need to know how it came to be, (Apr. 13, 2016), http://www.digitalspy.com/gaming/feature/a790432/atari-breakout-40-today-all24 gamers-need-to-know-how-it-came-to-be. Later, after Mr. Jobs and Mr. Wozniak formed Apple with funds earned developing Breakout, Mr. Wozniak incorporated 25 his Breakout innovations into the engineering of Apple’s first great personal computer, the Apple II. Id. 26 3 Atari, Interactive, Breakout: Boost, Apple iTunes (Jan. 14, 2016), https://itunes.apple.com/us/app/breakout-boost/id476059948?mt=8. 27 4 See McFerran, supra note 2. 28 836555.1 -5COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 7 of 39 1 “Easter Egg” version of the game via its Google Image search feature.5 B. 2 3 20. Atari’s Intellectual Property Program As an icon of early Silicon Valley ingenuity; a touchstone, especially, 4 of the 1970’s and 1980’s; a brand with worldwide recognition in its own name, and 5 in its games; and an entity that continues as a global entertainment developer and 6 licensor, Atari maintains a robust, valuable, and highly desirable portfolio of 7 intellectual property. 8 21. The Atari group is comprised of Atari Interactive, Atari, Inc., and other 9 Atari-related entities. Atari owns the Atari IP that includes the trademarks and 10 copyrights relating to Breakout. 11 22. Breakout is one of the key elements of the licensing program. In 12 addition to being created by towering legends of the tech world, its name, visuals, 13 and game play are recognizable, familiar, and famous worldwide. Breakout 14 achieved instant, widespread popularity as the best-selling video game in 1978.6 15 That fame and goodwill has persisted for decades. Breakout routinely ranks on 16 published lists of the best video games of all time.7 17 23. Breakout’s name recognition, familiarity, fame, and value in Atari’s 18 robust IP licensing portfolio has attracted potential licensors. Atari has generated 19 substantial revenue in licensing Breakout and has very valuable ongoing licensing 20 agreements with major corporations. 21 5 See Breakout (video game), Wikipedia (May 30, 2017, 4:27 PM), 22 https://en.wikipedia.org/wiki/Breakout_(video_game); Danny Goodwin, Google Images Easter Egg: Search ‘Atari Breakout’ to Play Image Breakout Game (May 23 14, 2013), https://searchenginewatch.com/sew/news/2267999/google-images-easteregg-search-atari-breakout-to-play-image-breakout-game. 24 6 Hanuman Welch, The Best Selling Video Game Of Every Year Since 1977 Complex (Apr. 23, 2013), http://uk.complex.com/pop-culture/2013/04/the-best25 video-games-to-come-out-every-year-since-the-atari-2600/breakout. 26 7 See, e.g., Chris Bonanno, The Complete List of the 50 Greatest Video Games Ever,” Florida Today (last updated Sept. 23, 2016, 12:19 AM), 27 http://www.floridatoday.com/story/tech/gaming/2016/09/21/complete-list-50greatest-video-games-ever/90809786/. 28 836555.1 -6COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 8 of 39 1 C. 2 3 24. Atari’s IP Rights In Breakout The BREAKOUT mark has been in use continuously since 1975, first 4 on arcade games and then later on home game consoles and computers. Atari owns 5 a collection of BREAKOUT trademarks registered with the United States Patent and 6 Trademark Office (“USPTO”): 7 8 9 Registration Registration No. Date Mark BREAKOUT 2553961 March 26, 2002 SUPER 1241326 BREAKOUT June 7, 1983 BREAKOUT 4168075 BOOST July 3, 2012 10 11 12 13 14 15 16 25. 17 Status Goods/Services Incontestable Computer game programs and video game cartridges Incontestable Non-coin-operated electronic amusement game equipment Registered Downloadable electronic games via the Internet All of the aforementioned registrations are valid and subsisting, and the 18 registrations for BREAKOUT and SUPER BREAKOUT have become incontestable 19 pursuant to 15 U.S.C. § 1065. Copies of the certificates of registration are attached 20 as Exhibit A. 26. 21 Atari also owns all right, title, and interest in several copyrights related 22 to the Breakout game, each of which is registered with the United States Copyright 23 Office: 24 25 Registration No. Registration Date 26 PA0000175216 June 9, 1983 Publication Date Nov. 9, 1978 27 28 836555.1 -7COMPLAINT Description Breakout, Computer File: 12 videogames, 1 instruction booklet, 1 sticker; New Matter: new sounds in Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 9 of 39 1 2 3 PA0000610716 Feb. 6, 1987 May 15, 1976 TX0000058926 June 29, 1978 June 26, 1978 VA0000015994 Oct. 27, 1978 Jan. 2, 1978 VAu000008876 April 4, 1979 not listed 4 5 6 7 8 9 10 11 12 13 14 TX0000452507 April 14, 1980 March 10, 1980 PA0000175215 June 9, 1983 Jan. 8, 1982 15 16 17 18 19 PA0000662697 Oct. 7, 1988 June 15, 1978 TX0000180834 Jan. 22, 1979 Sept. 9, 1978 20 21 22 23 24 audiovisual work & new artwork & text on package & instructions. Breakout, Computer File: Videogame. Breakout, Text: Game Program Instructions. Breakout, Visual Material: Video computer system game program, printed carton. Super Breakout, Visual Material: Fabrication, schematic diagram, depiction of circuits and wiring. The Original Super Breakout, Visual Material. Super Breakout, Computer File: 9 videogames, 1 instruction booklet, 1 sticker; New Matter: new sounds in audiovisual work & new artwork & text on package & instructions. Super Breakout, Computer File: Videogame; New Matter: sounds and images in audiovisual work. Super Breakout, Text: operation, maintenance and service manual, complete with illustrated parts catalog. 25 D. 26 27. 27 Nestlé’s Unauthorized “Breakout” Campaign In 2016, Nestlé unveiled a new ad campaign for its ubiquitous KIT 28 KAT chocolate bars. The ads varied in style and platform, but all contained a 836555.1 -8COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 10 of 39 1 common thread: each blatantly pilfered Atari’s mark and/or the look, feel, sound, 2 and imagery of Breakout. 3 28. In at least one video advertisement, Nestlé’s ad begins with four actors 4 – two young, two middle-aged, in keeping with Breakout’s multi-generational 5 appeal – sitting on a couch playing a video game. The game is revealed to be 6 Breakout, with the nominal and insignificant difference between the classic version 7 and Nestlé’s unauthorized version being that the long, rectangular bricks players 8 “break” in the former are replaced with long, rectangular bricks made of KIT KAT 9 chocolate bars in the latter. 10 29. Nestlé’s video advertisement is entitled “Breakout.”8 11 30. On information and belief, the video advertisement originally appeared 12 in the UK on internet and television, and was later uploaded to the YouTube website 13 (presumably by Defendants), obtaining a worldwide audience (inclusive of the 14 United States), in order to maximize the impact of Nestlé’s “Breakout” campaign. 15 YouTube alone has approximately 1 billion active users each month.9 A screen shot 16 of that advertisement is attached as Exhibit B. 17 31. The video advertisement continues to be readily available to any viewer 18 with an internet connection.10 19 32. Nestlé’s “Breakout” video advertisements depict imagery of the 20 Breakout game which is covered and protected by Atari’s valid registered 21 copyrights. 22 33. The game simulation depicted in Nestlé’s video advertisement is 23 substantially similar to the Breakout graphics covered by Atari’s valid registered 24 8 PRODUCER: Dale Healy – ‘Kit Kat: Breakout’ (Commercial – TVC), 2AM 25 Films (Feb. 16, 2017, 8:06 AM), https://vimeo.com/204352144. Reuters, YouTube Stats: Site Has 1 Billion Active Users Each Month, 26 9 Huffington Post (March 21, 2013), 27 http://www.huffingtonpost.com/2013/03/21/youtube-stats_n_2922543.html. 10 See Dale Healy, supra note 9. 28 836555.1 -9COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 11 of 39 1 copyrights. 2 34. Nestlé placed a second infringing advertisement on Facebook, one of 3 the world’s largest and most significant advertising platforms.11 That advertisement 4 also copies Breakout’s imagery and gameplay, with the nominal and insignificant 5 difference, again, of Breakout bricks being replaced by Nestlé’s KIT KAT bars. 6 Beneath the image, KIT KAT’s Facebook page invites users to “Get your game on 7 Breakout Breakers!” A screenshot of the ad is attached as Exhibit C. 8 35. The Facebook advertisement remains available to all Facebook users.12 9 36. Nestlé’s “Breakout” advertisements placed on Facebook violate Atari’s 10 duly-registered, incontestable trademark in the term “Breakout.” 11 37. Nestlé’s “Breakout Breakers” Facebook ad depicts imagery of the 12 Breakout game which is covered and protected by Atari’s valid registered 13 copyrights. 14 38. The game simulation depicted in the “Breakout Breaker” Facebook 15 advertisement is substantially similar to the Breakout graphics covered by Atari’s 16 valid registered copyrights. 17 39. Nestlé placed additional infringing advertisements on the Twitter 18 platform. Twitter has approximately 328 million active monthly users.13 Nestlé’s 19 Twitter handle has, as of the date of this filing, approximately 190,000 followers. 20 The KIT KAT U.S. Twitter handle has 362,000 followers. Nestlé’s Twitter ad 21 11 See, e.g., Kathleen Chaykowski, Sheryl Sandberg: Facebook’s 4 Million 22 Advertisers Are ‘Proof’ Of The Power Of Mobile, Forbes (Sept. 27, 2016, 1:34 PM), https://www.forbes.com/sites/kathleenchaykowski/2016/09/27/sheryl-sandberg23 facebooks-4-million-advertisers-are-proof-of-the-power-of-mobile/#a2f3d5c1f17b; Mathew Ingram, How Google and Facebook Have Taken Over the Digital Ad 24 Industry, Fortune (Jan. 4, 2017), http://fortune.com/2017/01/04/google-facebook-adindustry/. 25 12 KitKat, Facebook (Mar. 4, 2016), https://www.facebook.com/KitKatSA/videos/1073282116069651/. 26 13 Daniel Sparks, How Many Users Does Twitter Have?, The Motley Fool, (Apr. 27 27, 2017, 11:06 PM), https://www.fool.com/investing/2017/04/27/how-many-usersdoes-twitter-have.aspx. 28 836555.1 -10COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 12 of 39 1 explicitly uses the BREAKOUT mark in conjunction with the infringing video 2 posted there. The video posted to Twitter, like the other offending videos, features 3 Atari’s Breakout, with KIT KAT chocolate bars replacing Breakout’s bricks. The 4 tagline of one of Nestlé’s Twitter advertisements asks: “Is it time to break out of the 5 Breakout?!” Another repeats the tagline used on Facebook: “Get your game on 6 Breakout Breakers!” In an attempt to capture a wider audience, Nestlé also posted a 7 similar Twitter ad in Spanish, using the tagline “Es hora de romper el Breakout (?)”. 8 Screenshots of the Twitter advertisements are attached as Exhibit D. 9 40. At least some of the infringing advertisements remain available to all 10 Twitter users. 11 41. The use of the term “Breakout” – capitalized and all one word – 12 amplifies the connection to Breakout, deepening KIT KAT’s (false) association with 13 Atari and reinforcing the connection created by the infringing video portion of the 14 advertisement. 15 42. Nestlé’s “Breakout” advertisements placed on Twitter violate Atari’s 16 duly-registered, incontestable trademark in the term “Breakout,” i.e. the 17 BREAKOUT mark. 18 43. Nestlé’s “Breakout” advertisements placed on Twitter depict imagery 19 of the Breakout game which is covered and protected by Atari’s valid registered 20 copyrights. 21 44. Nestlé’s game simulation depicted in its video advertisement is 22 substantially similar to the Breakout graphics covered by Atari’s valid registered 23 copyrights. 24 E. Atari Has Been Damaged, And Continues To Be Damaged, By Nestlé’s 25 Unauthorized “Breakout” Advertising Campaign 26 45. Atari’s IP licensing activities are responsible for a significant portion of 27 its annual revenues. Revenues from its best-known games make up a significant 28 portion of those revenues. 836555.1 -11COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 13 of 39 1 46. Without the benefit of its licensing revenues, profits of Atari would be 2 significantly lower. 3 47. As an initial, straightforward matter, Nestlé has denied Atari the 4 licensing fees it would have charged Nestlé for use of Atari’s intellectual property in 5 the widely distributed KIT KAT “Breakout” campaign, had Atari agreed to such 6 use. 7 48. In addition, on information and belief, a significant factor in a 8 licensee’s decision to license is whether the subject property has been licensed to 9 marketers in the advertiser’s market. For example, if a licensor licenses 10 trademarked or copyrighted property to Coca-Cola, it is extraordinarily unlikely that 11 it can license the same property to Pepsi, whether because of contract, custom, or 12 common sense. 13 49. On information and belief, this factor – the inability to license property 14 to licensees in the same market – extends to adjacent markets. For example, if a 15 licensor licenses trademarked or copyrighted property to Coca-Cola, it is 16 extraordinarily unlikely that it can license the same property to a manufacturer of 17 bottled water, whether because of contract, custom, or common sense. 18 50. Whether considered as the market for candy, chocolate, 19 confectionaries, foodstuffs, or some similar market or sub-market, KIT KAT bars 20 are sold in an enormous market featuring billions of dollars of annual advertising 21 dollars. 22 51. In one fell swoop, Nestlé has unilaterally eliminated Atari from these 23 markets. For example, the Hershey Company spends over $500 million annually 24 advertising its products.14 Mars Inc. spends over $700 million annually advertising 25 26 See Advertising Expenditure of the Hershey Company Worldwide from 2008 to 2016 (in million U.S. dollars), Statista (2017) 27 https://www.statista.com/statistics/294536/hershey-company-advertisingexpenditure. 28 14 836555.1 -12COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 14 of 39 1 its products.15 The broader markets for candy, chocolate, confectionaries, and 2 foodstuffs are, obviously, many times those amounts. Atari almost assuredly cannot 3 license to Hershey, Mars, or Nestlé’s myriad other competitors, and it has likely 4 been eliminated as a potential licensor by scores of additional companies. 5 52. On information and belief, the dynamic described in this section applies 6 beyond the potential licensees of Breakout. That is, Atari can almost assuredly not 7 license Asteroids, Centipede, or more than 200 other games to Hershey, Mars, or 8 Nestlé’s other competitors, and it has likely been eliminated as potential licensor by 9 scores of additional companies for all of its offerings. 10 53. To the extent Atari’s IP offerings have not been eliminated by Nestlé in 11 markets related to or adjacent to KIT KAT bars, Atari’s bargaining position has 12 been significantly reduced, which will likely result in diminished revenues from 13 licensees willing to license Atari IP notwithstanding its involuntary association with 14 KIT KAT and Nestlé. 15 54. Accordingly, Nestlé’s “Breakout” campaign has diluted the value of 16 Atari’s trademarks and degraded the value of its copyrights, on a going-forward 17 basis. 18 55. On information and belief, Nestlé’s “Breakout” campaign has also 19 engendered consumer confusion. One natural takeaway of Nestlé’s “Breakout” 20 campaign is that Atari endorses KIT KAT bars. Many consumers, presumably, do 21 not care for KIT KAT bars, and Nestlé has unilaterally associated Atari with 22 products that many in Atari’s target demographics may find unlikable, overly 23 “corporate,” unhealthy, boring, tired, or otherwise. 24 56. More broadly, simple Google searches indicate that Nestlé has been 25 26 15 See Mars Inc.’s Advertising Spending in the United States from 2009 to 2015 27 (in million U.S. dollars), Statista (2017), https://www.statista.com/statistics/463074/mars-ad-spend-usa/. 28 836555.1 -13COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 15 of 39 1 associated with numerous scandals over the years.16 Those scandals include 2 allegations that Nestlé falsely advertised to impoverished nations that its baby 3 formula was as good, or nearly as good, as breast milk, leading to reams of bad 4 press and a consumer boycott.17 Nestlé’s chocolate business, it has been alleged, has 5 been associated with slave and child labor.18 Nestlé has also been associated with 6 pollution and environmental degradation; the demanding of repayment of debt from 7 Ethiopia while it was experiencing famine; the striking of a multi-million deal with 8 Zimbabwe’s tyrannical dictator, Robert Mugabe, and a massive price fixing 9 scandal.19 10 57. Nestlé has also been associated with consumer endangerment and 11 illness. The U.S. Food and Drug Administration, in 2009, warned consumers to 12 avoid eating any varieties of prepackaged Nestlé Toll House refrigerated cookie 13 dough due to risk of contamination with E. coli, leading to a massive recall.20 14 number of Nestlé’s other offerings have been recalled for similar reasons.21 Most 15 relevant for present purposes, earlier this year, Nestlé recalled a batch of KIT KAT 16 Original Milk Chocolate Bites Pouch Bags.22 17 See, e.g., Mihai Andrei, Why Nestle Is One Of The Most Hated Companies In The World, ZME Science (May 19, 2017, 8:53 PM), 19 http://www.zmescience.com/science/nestle-company-pollution-children. 17 Id. 20 18 Id. 21 19 Id. 22 20 Updated on Recalled Nestlé Toll House Cookie Dough, U.S. Food And Drug Administration (July 15, 2009), 23 https://www.fda.gov/ForConsumers/ConsumerUpdates/ucm168012.htm. 24 21 Nestlé USA Announces Voluntary Recall of a Limited Number of DiGiorno Pizzas, Lean Cuisine and Stouffer’s Products Due to the Potential Presence of 25 Foreign Material, Nestlé USA (Mar 10, 2016), http://www.nestleusa.com/media/pressreleases/nestle-digiorno-stouffers-lean26 cuisine-voluntary-recall (Nestlé press release noting recall of DiGornio, Lean Cuisine, and Stouffers products). 27 22 KitKat Bites recall and peanut/nut allergy warning, Nestlé USA (Apr 14, 2017), http://www.nestle.co.uk/media/pressreleases/kitkat-bites-recall-and-nut28 18 16 836555.1 -14COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 16 of 39 1 58. That Nestlé may take issue with any of the scandalous, improper, or 2 unfortunate conduct or events with which it has been associated does not matter at 3 all. The point is that Nestlé has been associated with such conduct or events, and 4 that information – true, false, overstated, or otherwise – is readily available to all of 5 Atari’s potential licensees or customers. Atari had a right to decide for itself 6 whether or not to associate itself with Nestlé, warts and all, and to determine 7 whether the licensing fee justified such an association. Nestlé stole that decision8 making process from Atari and paid Atari nothing in exchange. 9 59. Accordingly, Atari has been damaged by the false designation of origin 10 implicit in Nestlé’s “Breakout” campaign, and it continues to be damaged by that 11 false association. F. 12 13 60. Nestlé Has No Excuse23 As set forth above, the infringing conduct in this case is so plain and 14 blatant that Nestlé cannot claim to be an “innocent” infringer. Nestlé is a corporate 15 giant, an experienced marketer, an owner of a massive portfolio of IP itself, a 16 frequent litigant, and a deep pocket with access to scores of in-house and outside 17 counsel. Nestlé knew exactly what it was doing. 18 61. Nestlé’s conduct was willful, obviously designed to leverage the 19 decades of goodwill Atari and Breakout have garnered across multiple generations. 20 Its ads were specifically designed to piggyback on the scope of the public’s 21 familiarity with Atari and Breakout, given that millions of consumers, from the 22 youngest gamers to aging Baby Boomers, have been exposed to the game. The 23 infringement was not hidden, fleeting, or innocuous – Breakout is the central player, 24 and binding thread, across all of the infringing ads. 25 allergy-warning. 23 Atari does not bear the burden of disproving Nestlé’s potential defenses. It includes the discussion here because it supports Atari’s prayer for treble damages, 27 and in hopes that Nestlé will not waste the Court’s, Atari’s, and its own time and 28 resources in raising them. 26 836555.1 -15COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 17 of 39 1 62. The infringing conduct is not, by any stretch, “fair use” of Atari’s IP. 2 Nestlé’s appropriation of Atari’s IP was commercial. It did not use Atari’s IP for 3 purposes of criticism, commentary, or education. Nestlé made creative (if only 4 somewhat creative) use, not factual or utilitarian use, of Atari’s IP. Nestlé made 5 significant, not fleeting, use of Atari’s IP. Indeed, as is obvious from the name of 6 the campaign – “Breakout” – Atari’s IP was at the heart of Nestlé’s ads. Nestlé did 7 not meaningfully “transform” Atari’s IP – Atari’s IP was used to depict or invoke 8 Breakout, notwithstanding the slight tweak it made to the game, and the look, sound, 9 imagery, and terminology deployed in the ads could only have been deployed to 10 invoke the original. Finally, Nestlé has not created a “parody” of Breakout, as it 11 offers no critique or commentary on the Breakout game itself. 12 63. Atari is not estopped from making these claims. Atari discovered 13 Nestlé’s acts of infringement in or around October of 2016, and promptly demanded 14 that Nestlé cease its infringement by letter dated October 28, 2016. Nestlé’s UK 15 counsel responded by letter of November 25, 2016, disclaiming any wrongful acts 16 by Nestlé and asserting that UK law applied to this dispute.24 Atari retained U.S. 17 counsel to respond to Nestlé’s UK counsel. By letter dated December 15, 2016, 18 Atari’s US counsel responded to Nestlé’s UK counsel and explained why U.S. law 19 applied. From October 2016 through at least February 2017, Defendants continued 20 their infringing acts but ultimately claimed to have removed the infringing 21 advertisements from Twitter, YouTube, and elsewhere. As shown above, that 22 representation was untrue, as Nestlé’s ads remain posted under Nestlé’s name in a 23 variety of fora. 24 64. Finally, Atari has not “abandoned” its rights in Breakout. To the 25 26 This argument is frivolous given, among other things, the ads’ reach into the United States, the protection afforded to Atari’s IP by federal law, and the absence 27 of any contract between Nestlé and Atari containing a choice of law provision naming UK law as governing. 28 24 836555.1 -16COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 18 of 39 1 contrary, it continues to maintain its trademark and copyrights, and it actively 2 licensed them before Nestlé’s infringement. Breakout is also available for download 3 from the iTunes store. 4 FIRST CAUSE OF ACTION 5 (Federal Trademark Infringement Under 15 U.S.C. § 1114) 6 (Against All Defendants) 7 65. Plaintiff re-alleges and incorporates herein by reference paragraphs 1 8 through 64 of this Complaint as if fully set forth here. 9 66. The BREAKOUT trademark is distinctive, strong, valid, and 10 incontestable, and is owned by Atari. 11 67. Nestlé’s use of the BREAKOUT trademark was in connection with an 12 advertisement which also infringes the copyright in Atari’s copyrighted 13 BREAKOUT game. Atari has demanded that Defendants refrain from the use of the 14 BREAKOUT trademark, but Defendants have continued to use, without Atari’s 15 authorization, the BREAKOUT trademark. 16 68. Nestlé’s unauthorized use of the BREAKOUT mark has diluted, and 17 degraded, Atari’s trademark in BREAKOUT and the value thereof. 18 69. Nestlé’s use of the BREAKOUT trademark has created, and continues 19 to create, consumer confusion, mistake, or deception as to the source or sponsorship 20 of Nestlé’s products and/or is likely to lead the consuming public to believe that 21 Atari has authorized, approved, or somehow sponsored Nestlé’s marketing 22 campaign. 23 70. Nestlé’s conduct, as alleged above, constitutes trademark infringement 24 in violation of the Federal Lanham Act, 15 U.S.C. § 1114(1). 25 71. Atari has been, and will continue to be, damaged and irreparably 26 harmed by Nestlé’s actions, which will continue unless Defendants are enjoined by 27 this Court. Although Nestlé claims to have removed the infringing advertisement 28 from Twitter, Nestlé has denied liability and therefore is free to re-post the 836555.1 -17COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 19 of 39 1 advertisement absent an injunction. The ads remain on Facebook, and they are 2 available elsewhere on the internet. Atari has no adequate remedy at law in that the 3 amount of damage to Plaintiff’s business and reputation and the diminution of the 4 goodwill of BREAKOUT trademark is difficult to ascertain with specificity. Atari 5 is therefore entitled to injunctive relief pursuant to 15 U.S.C. § 1116. 6 72. Atari is entitled to recover damages and/or Nestlé’s profits in an 7 amount to be determined at trial. 8 73. Nestlé’s actions were undertaken willfully and with the intention of 9 causing confusion, mistake, and deception, making this an exceptional case entitling 10 Plaintiff to recover treble damages, reasonably attorneys’ fees, and costs pursuant to 11 15 U.S.C. § 1117, as well as prejudgment interest. 12 SECOND CAUSE OF ACTION 13 (Copyright Infringement Under The Copyright Act, 17 U.S.C. §§ 01 et seq.) 14 (Against All Defendants) 15 74. Plaintiff re-alleges and incorporates herein by reference paragraphs 1 16 through 73 of this Complaint as if fully set forth here. 17 75. Atari owns copyright interests in the BREAKOUT video game, which 18 is an original copyrighted work under the laws of the United States. 19 76. Atari has the exclusive right to prepare derivative works based upon the 20 copyrighted work, the BREAKOUT game, pursuant to 17 U.S.C. § 106 (2). 21 77. Nestlé’s unauthorized use, modification, reproduction, display, and 22 distribution of elements of the BREAKOUT game in its advertisements constitutes a 23 violation of the United States Copyright Act, 17 U.S.C. §§ 106(1), (2), and (3), and 24 Defendants were acting as infringers within the meaning of 17 U.S.C. § 501(a). 25 78. Defendants willfully, intentionally, and purposefully infringed Atari’s 26 copyrights in the BREAKOUT game through the conduct described above. 27 79. As a direct and proximate result of said infringement by Defendants, 28 Plaintiff is entitled to actual or statutory damages in an amount to be proven at trial. 836555.1 -18COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 20 of 39 1 80. Plaintiff is also entitled to Nestlé’s profits attributable to the 2 infringement, pursuant to 17 U.S.C. § 504(b), including an accounting of and a 3 constructive trust with respect to such profits. 4 81. Plaintiff is further entitled to its attorneys’ fees and full costs pursuant 5 to 17 U.S.C. § 505 and otherwise according to law. 6 82. As a direct and proximate result of the foregoing acts and conduct, 7 Plaintiff has sustained and will continue to sustain substantial, immediate, and 8 irreparable injury, for which there is no adequate remedy at law. 9 THIRD CAUSE OF ACTION 10 (False Designation of Origin Under 15 U.S.C. § 1125(a)) 11 (Against all Defendants) 12 83. Plaintiff re-alleges and incorporates herein by reference paragraph 1 13 through 82 of this Complaint as if fully set forth here. 14 84. Nestlé uses the term “Breakout” in its commercial advertisements and 15 tweaks the imagery of the Breakout gameplay in an insignificant and insubstantial 16 way. Atari has licensed to Nestlé neither the right to include the BREAKOUT 17 mark, nor the right to include the copyrighted Breakout gameplay, in Nestlé’s ad 18 campaign. Nestlé never sought Atari’s permission to use its IP and Atari never 19 granted such permission. 20 85. Nestlé’s use of the term “Breakout” and the overall look and feel of the 21 Breakout game as an emphasis of its ad campaign constitutes a false designation of 22 origin that is likely to cause confusion, or to deceive as to the sponsorship or 23 approval of the KIT KAT ad campaign by Atari. 24 86. Nestlé’s conduct, as alleged above, constitutes false designation of 25 origin in violation of the Federal Lanham Act, 15 U.S.C. § 1125(a). 26 87. Atari is entitled to recover damages and/or Nestlé’s profits in an 27 amount to be determined at trial. 28 88. 836555.1 Nestlé’s wrongful activities have caused Atari irreparable injury. -19COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 21 of 39 1 Plaintiff has sustained and will sustain substantial, immediate, and irreparable 2 injury, for which there is no adequate remedy at law. 3 FOURTH CAUSE OF ACTION 4 (Dilution by Blurring Under 15 U.S.C. § 1125(c)) 5 (Against All Defendants) 6 89. Plaintiff re-alleges and incorporates herein by reference paragraphs 1 7 through 88 of this Complaint as if fully set forth here. 8 90. The BREAKOUT mark is widely recognized by the general consuming 9 public of the United States and is owned by Atari. 10 91. Nestlé’s commercial advertisement depicted a game simulation that is 11 very similar to and virtually indistinguishable from the distinctive Breakout graphics 12 covered by Atari’s valid registered copyrights. 13 92. Nestlé has used and continues to use Atari’s famous Breakout imagery 14 and the term “Breakout.” Through these activities, Nestlé intended to create an 15 association with Atari’s famous BREAKOUT mark. There is, however, no actual 16 association between Nestlé’s “Breakout” ad campaign and the Atari Breakout game 17 or the BREAKOUT mark. 18 93. Atari is entitled to recover damages and/or Nestlé’s profits in an 19 amount to be determined at trial. 20 94. Atari is entitled to an order from this Court preliminarily and 21 permanently enjoining Nestlé from using the BREAKOUT mark in furthering its 22 KIT KAT ad campaign. 23 95. Because Nestlé has willfully intended to cause dilution of the 24 BREAKOUT mark, Atari is further entitled to recover its costs of suit and 25 reasonable attorney’s fees, pursuant to 15 U.S.C. § 1117 and 1125(c)(2). 26 27 28 836555.1 -20COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 22 of 39 1 FIFTH CAUSE OF ACTION 2 (Unfair Competition Under Cal. Bus. & Prof. Code § 17200) 3 (Against All Defendants) 4 96. Plaintiff re-alleges and incorporates herein by reference paragraphs 1 5 through 95 of this Complaint as if fully set forth here. 6 97. Nestlé has, without permission, license, or consent, used Atari’s 7 BREAKOUT mark and Breakout gameplay imagery in its KIT KAT ad campaign. 8 Such action is likely to cause confusion amongst consumers in California as to 9 Atari’s sponsorship, approval, or endorsement of Nestlé’s KIT KAT ad campaign. 10 98. Such blatant misappropriation of Atari’s IP is unlawful and/or unfair 11 under the California Unfair Competition Law (“UCL”) Cal. Bus. & Prof. Code § 12 17200. 13 99. Nestlé’s wrongful activities have caused Atari irreparable harm. 14 Unless the abovementioned conduct is enjoined by this Court, Nestlé is free to 15 continue expanding its unlawful activities and to cause further injury to Atari. This 16 injury includes a reduction to the distinctiveness of Atari’s BREAKOUT mark and 17 reputation that cannot be remedied through damages. 18 100. Atari has no adequate remedy at law. 19 SIXTH CAUSE OF ACTION 20 (Common Law Unfair Competition) 21 (Against All Defendants) 22 101. Plaintiff re-alleges and incorporates herein by reference paragraphs 1 23 through 100 of this Complaint as if fully set forth here. 24 102. The BREAKOUT trademark and trade dress is valid, legally 25 protectable and has acquired significant secondary meaning over the last 42 years. 26 103. Atari’s use of the BREAKOUT mark and trade dress predates any use 27 by Nestlé. 28 104. Nestlé’s unauthorized use of the BREAKOUT trademark and trade 836555.1 -21COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 23 of 39 1 dress in advertisements for its KIT KAT products is likely to cause confusion, 2 mistake, or deception as to the source or origin of the products and/or is likely to 3 lead the consuming public to believe that Atari has licensed, authorized, approved, 4 or somehow sponsored Nestlé’s products. 5 105. Atari has been, and will continue to be, damaged and irreparably 6 harmed by the actions of Nestlé unless Nestlé is enjoined by this Court. 7 106. Atari has no adequate remedy at law. 8 107. Atari is entitled to recover damages and/or Nestlé’s profits in an 9 amount to be determined at trial. 10 108. Atari is informed and believes, and thereon alleges, that Defendants 11 committed the foregoing acts with the intention of depriving Plaintiff of its legal 12 rights, with oppression, fraud, and/or malice, and in conscious disregard of 13 Plaintiff’s rights. Plaintiff is, therefore, entitled to an award of exemplary and 14 punitive damages, according to proof. 15 PRAYER FOR RELIEF 16 WHEREFORE, Plaintiff prays for the relief and judgment, as follows: 17 1. That Plaintiff be granted permanent injunctive relief; 18 2. That Defendants and all of their respective officers, agents, servants, 19 representatives, employees, attorneys, parent and subsidiary corporations, assigns 20 and successors in interest, and all other persons acting in concert with them be 21 permanently enjoined from using the BREAKOUT trademark and Breakout trade 22 dress and/or copyrights, or any mark or design confusingly similar thereto, in 23 connection with the marketing, promotion, advertising, sale, or distribution of any of 24 Nestlé’s products; 25 3. That Defendants file, within ten (10) days from entry of an injunction, a 26 declaration with this Court signed under penalty of perjury certifying the manner in 27 which Defendants have complied with the terms on the injunction; 28 4. 836555.1 That Defendants be adjudged to have violated 15 U.S.C. § 1114 by -22COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 24 of 39 1 infringing Plaintiff’s BREAKOUT trademark; 2 5. That Atari recover actual damages, Defendants’ profits, and/or 3 statutory damages in an amount to be proven at trial; 4 6. That Atari be awarded three times Nestlé’s profits attributable to the 5 infringement and three times all of Atari’s damages, including lost licensing profits, 6 loss of goodwill, and lost opportunities suffered as a result of Defendants willful, 7 intentional, and deliberate acts in violation of the Lanham Act, as well as Plaintiff’s 8 costs, attorneys’ fees, and expenses in this suit under the Lanham Act and Copyright 9 Act; 10 7. That Atari recover punitive damages; 11 8. That Atari be granted pre-judgment and post-judgment interest; 12 9. That Atari be granted costs associated with the prosecution of this 13 action; and 14 10. That Atari be granted such further relief as the Court may deem just 15 and equitable. 16 DATED: August 17, 2017 17 BROWNE GEORGE ROSS LLP Keith J. Wesley K.C. Maxwell 18 19 By: s/ Keith J. Wesley Keith J. Wesley Attorneys for Plaintiff Atari Interactive, Inc. 20 21 22 23 24 25 26 27 28 836555.1 -23COMPLAINT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 25 of 39 1 DEMAND FOR JURY TRIAL 2 Pursuant to Rule 38(b)(1) of the Federal Rules of Civil Procedure, Plaintiff 3 hereby demands trial by jury in this action of all issues so triable. 4 5 DATED: August 17, 2017 6 BROWNE GEORGE ROSS LLP Keith J. Wesley K.C. Maxwell 7 8 By: s/ Keith J. Wesley Keith J. Wesley Attorneys for Plaintiff Atari Interactive, Inc. 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 836555.1 -24COMPLAINT Case Document 1 Filed 08/17/17 Page 26 of 39 EXHIBIT A Case Document 1 Filed 08/17/17 Page 27 of 39 EXHIBIT A CERTIFICATES OF U.S. TRADEMARK REGISTRATIONS FOR BREAKOUT, SUPER BREAKOUT AND BREAKOUT BOOST (THREE (3) DOCUMENTS ATTACHED) Case Document 1 Filed 08/17/17 Page 28 of 39 ?mt; itatm of Mutter! Qtates 33mm mm mrahmtark @ftt?te BREAKOUT BOOST Reg. No. 4,168,075 Registered July 3, 2012 Int. CL: 9 TRADEMARK PRINCIPAL REGISTER Dimmer United Sums Patent and Trademark ATARI INTERACTIVE, INC. (DELAWARE CORPORATION) 417 FIFTH AVENUE NEW YORK, NY 10016 OR: DOWNLOADA BLE ELECTRONIC GAMES VIA THE INTERNET AND WIRELESS ELECTRONIC, VIDEO AND MULTIMEDIA GAME SOFTWARE FOR USE ON PERSONAL COMPUTERS AND ELECTRONIC GAME PLAYING DOWNLOA D- ABLE RECORDED COMPUTER GAME SOFTWARE GAME SOFTWAREFOR COMPUTERS, DOWNLOADA BLE VIDEO GAME SOFTWARE, IN CLASS 9 (US. CLS. 21, 23, 26, 36 AND 38). FIRST USE IN COMMERCE 12-15-2011. THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR- TICULAR FONT, STYLE, SIZE, 0R COLOR. OWNER OF US. REG. NOS. 1,241,326, 3,364,305. SERL NO. 85-498,845, FILED 12-19-2011. DEIRDRE ROBERTSON, EXAMINTNG ATTORNEY Case Document 1 Filed 08/17/17 Page 29 of 39 REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS. Requirements in the First Ten Years" What and When to File: Fast Filing Deadline: You must ?le a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date. See 15 U.S.C. ??1058, 11411:. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period, calculated from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a federal court. Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and lOth years after the registration date-* See 15 U.S.C. ?1059. Requirements in Successive Ten-Year Periods" What and When to File: You must ?le a Declaration of Use (or Excusable Nonuse) and anApplieation for Renewal between every 9th and lDth?year period, calculated from the registration date.* Grace Period Filings" The above documents will be accepted as timely if ?led within six months after the deadlines listed above with the payment of an additional fee. The United States Patent and Trademark Of?ce (USPTO) will NOT send you any future notice or reminder of these ?ling requirements. MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an extension of protection to the United States under the Madrid Protocol must timely ?le the Declarations of Use (or Excusable Normse) referenced above directly with the USPTO. The time periods for ?ling are based on the US, registration date (not the international registration date). The deadlines and grace periods for the Declarations of Use (or Excnsable Nonuse) are identical to those for nationally issued registrations. See 15 U.S.C. 1058, 1 l4 lit. However, owners of international registrations do not ?le renewal applications at the Instead, the holder must ?le a renewal of the underlying intematiorml registration at the International Bureau of the World Intellectual Property Organization, under Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the date of the international registration. See 15 U.S.C. ?1 141 j. For more information and renewal forms for the intemational registration, see NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the USPTO website for further information. With the exception of renewal applications for registered extensions of protection, you can ?le the registration maintenance documents referenced above online at Page: 2 I RN 4,168,075 Case Document 1 Filed 08/17/17 Page 30 Of 39 Int. CL: 9? Prior US. 05Reg. NO. 2,553,961 United States Patent and Trademark Of?ce Registered Mar. 20, 2002 TRADEMARK PRINCIPAL BREAKOUT ATARI INTERACTIVE, INC- (DELAWARE OOR- FIRST USE 9-23-2000; IN COMMERCE 9-23-2000. PORATION) 1027 NEWPORT AVENUE R1 0%62 OWNER OF U-S- REG- No. 1,241,326- FOR: COMPUTER GAME PROGRAMS AND VI- SN 76061330: FILED 62-2000- BBC GAME CARTRIDGES, IN CLASS 9 01.3. 21, 23, 26, 36 AND 33). RUSS HERMAN, EXAMINING ATTORNEY Case Document 1 Filed 08/17/17 Page 31 of 39 Int. CL: 28 Prior U.S. CL: 22 Reg. No. 1,241,326 Umted States Patent and Trademark Of?ce Registered Jun. 7,1933 TRADEMARK Principal Register SUPER BREAKOUT Atari. Inc. (Delaware corporation) For: ELECTRONIC 1265 Borregas Ave. AMUSEMENT GAME. EQUIPMENT, in cuss Sunnyvale, Calif. 94086 28 {11.3. CI. 22). First use Dec. 7, 1979; in commerce Dec. 14, 1979. Owner of US. Reg. Nos. 1,134,005 and 1,202,554. Ser. No. 363,481, flied May 7, 1982. W. A. CONN, Examining Attorney Case Document 1 Filed 08/17/17 Page 32 of 39 EXHIBIT Case Document 1 Filed 08/17/17 Page 33 of 39 EXHIBIT SCREEN CAPTURES OF KITKAT ON LINE ADVERTISEMENT AND ORIGNAL BREAKOUT GAME PLAY KITKATH 1: mew Is it time t0 break out the Breakout)? #mybreak Case Document 1 Filed 08/17/17 Page 34 of 39 EXHIBIT SCREEN CAPTURES 0F KITKAT ONLINE ADVERTISEMENT AND ORIGINAL BREAKOUT GAMEPLAY - KITKAT I .b Fatima: Is it time to break out the Breakout? #mybreak . .. . . um I523 Is 39 Ii main-.9 l' Case Document 1 Filed 08/17/17 Page 35 of 39 EXHIBIT SCREEN CAPTURES OF KITKAT ONLINE ADVERTISEMENT AND ORIGINAL BREAKOUT GAMEPLAY (com'n Case Document 1 Filed 08/17/17 Page 36 of 39 EXHIBIT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 37 of 39 EX HIBIT C S CR EEN CA P T U R EO FKIT KA T O N L IN EFA CEBO O K A DVER T IS EM EN T Case Document 1 Filed 08/17/17 Page 38 of 39 EXHIBIT Case 3:17-cv-04803-SK Document 1 Filed 08/17/17 Page 39 of 39 EXHIBIT D SCREEN CAPTURE OF KITKAT ONLINE TWITTER ADVERTISEMENT https://twitter.com/search?q=es%20hora%20de%20romper%20el%20breakout&src=typd