Hasbro, Inc. v. MGA Entertainment, Inc

Filing 1

Hasbro, Inc. v. MGA Entertainment, Inc

Doc. 1

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF WODE ISLAND
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X

HASBRO, INC., Plaintiff,
- against -

: :

COMPLAINT
Jury Trial Demanded

MGA ENTERTAINMENT, TNC.,

Plaintiff Hasbro, Inc.("Hasbro"),through its undersigned counsel, for its
complaint against Defendant MGA Entertainment, Inc. ("MGAt')alleges as follows:

Introduction
1.

This is an action for injunctive relief and damages against a blatant

trademark infringement. Hasbro owns a trademark for MEMORY as the name of a venerable card matching game first sold in 1 966. MGA has recently begun to sell a similar matching game

advertised prominently as "MEMORYMATCH-UP" is being promoting as a h e that
dimensional version of the "Classic Memory Matching Game." Hasbro has accordingly brought

this action for trademark infringement and unfair competition in vioIation of the Lanharn Act and
for common law trademark infiingement and unfair competition.
Parties and Jurisdiction
2.

Plaintiff Hasbro is a corporation duly organized and existing under the

laws of the State of Rhode Island, with its principal place of business in Pawtucket, Rhode

Island. Hasbro is a worldwide leader in the design, manufacture, and marketing of toys, games,

Dockets.Justia.com

puzzles, and infant care products. Both internationally and domestically, Hasbro's brands
provide children and families with the highest q d i t y and most recognizable toys and games in the world. Hasbro's Milton Bradley brand is especially well known for its high quality board games, including its MEMORY card games.

3.

Upon information and belief, defendant MGA is a corporation duly

organized and existing under the laws of the State of California, with its principal place of
business in Van Nuys, California. MGA manufactures, markets, and sells games and toys,

including the MEMORY MATCH-UP GAME at issue.
4.

This Court has subject matterjurisdiction over this action pursuant to 28

U.S.C. § 133 1 (action arising under the laws of the United States); 5 1332(a) (diversity of
citizenship), 3 1338(a) (action arising under an Act of Congress relating to trademarks);
$ 1338(b) (civil action asserting claim of unfair competition joined with substantial and related

claim under trademark laws); and 1367(a) (supplemental jurisdiction over claims relating to
those for which the court has original jurisdiction); as well as 15 U.S.C. 4 1 121 (actions arising

under the Lanham Act). The matter in controversy exceeds the sum or value of $75,000,

exclusive of interest and costs, and is between citizens of different States.
5.

MGA advertises and sells the products at issue throughout the United

States, including in Rhode Island. MGA does business in the Rhode Island, and the claim
alleged arises out of injury caused to Hasbro in Rhode Island. HasbrotsMEMORY Card Games and Trademark
6.

Since its acquisition of Milton Bradley Company in 1 984, Hasbro has

become one of the largest and best-known distributors of games in the United States. Milton
Bradley Company began to sell a card matching game under the name and tmdernark MEMORY

in 1966. The origrnaI game developed into a line of matching card games that has been
continuously sold by Hasbro or its predecessor, Milton Bradley Company,since 1966.
7.

On August 29, 1967, Hasbro's predecessor, Milton Bradley Company,

obtained Registration No. 834,282 for MEMORY on the Principal Register of the United States
Patent and Trademark Office. A copy of Registration No. 834,282, which became incontestable
as of September 8, 1 972, is attached hereto as Exhibit 1. A copy of Registration No. 2,894,970,

registered as of October 19,2004, is attached as Exhibit 2. A sample of current packaging for
the MEMORY game, both the original game and an example of a themed game, is attached as

Exhibit 3.
8.

Hasbro's line of MEMORY card games consists of matching card games

in which the players place a number of cards face down and then take turns revealing pairs of
cards at a time. If a player reveals a pair of cards that do not have the same design o r
distinguishing characteristic,that player m s place the cards face down in their original position ut

and that player'sturn is over. If, however, a player reveals a pair of cards that do have the same
design or distinguishing characteristic,that.playertakes the matching pair out of play, keeps

them, and then continues by selecting another pair of face down cards. The process is repeated
until all of the cards are taken out of play by the players. The winner is the player who has taken

the most matching pairs of cards out of play.
9. In addition to the original MEMORY card game, Hasbro's line of

MEMORY card games includes themed versions of its MEMORY card game. Examples of
themed MEMORY card games marketed and sold by Hasbro in the past include the MEMORY
Game, BARNEY Edition; the MEMORY Game, ARTHUR Edition; the MEMORY Game, BOB

THE BUILDER Edition; the MEMORY Game, FINDING NEMO Edition; and the MEMORY
Game, THE BACKYARDIGANS Edition.
10.

H s r has expended substantial resources in advertising and promoting abo

its line of MEMORY card games over the past decades. By virtue of that promotion and the

long, continuous, and exclusive use made of the MEMORY mark by Hasbro and Milton Bradley

Company in connection with the line of MEMORY card games and related products, the

MEMORY name and mark have become well known and associated in the minds of consumers
w t a single source. ih
MGAts Use of the MEMORY MATCH-UP Trademark for a Similar Game
11.

MGA is currentfy marketing, distributing,and selling the MEMORY

MATCH-UPgame throughout the United States. A copy of the front and back of one of the
MEMORY MATCH-UP game packaging is annexed hereto as Exhibit 4.
12.

The MEMORY MATCH-UPname is prominently displayed on the

game's packaging and is written in the same script and color as Hasbro's MEMORY mark. The
TM

notation appears immediately after "MEMORYMATCH-UP,"which shows that MGA is

asserting trademark rights in that name. This use of Hasbro's MEMORY mark and the TM
notation encourage consumers to believe that there is an association between MGA's MEMORY

MATCH-UPgame and Hasbro's original MEMORY game. Moreover, the presence of the
famous Spider-Man name in connection with the MGA product adds to the likelihood of

consumer confusion as to whether the product is a licensed theme version of Hasbro's game
because Hasbro has a license fiom Marvel to use Marvel names and characters, including Spider-

Mm, on games.
13.
MGA promotes the MEMORY MATCH-UP game on its web-site as "All

the fun of the Classic Memory Matching Game, but in 3-D,"which is a clear reference to and

attempt to trade off associations with Hasbro's original MEMORY game. This encourages

consumers to associate MGA's MEMORY MATCH-UPgame with Hasbro's original MEMORY

game.
FIRST CLAIM FOR RELIEF (TRADEMARK INFIUNGEMENT)
14.

Hasbro repeats and realleges paragraphs 1 through 13 as if Mly set forth

herein.
15.

MGA has no license or authority fiom Hasbro to use the MEMORY name

and mark.
16.

By reason of the foregoing, MGA is using a copy or colorable imitation of

Hasbro's registered MEMORY mark in connection with the sale, offering for sale, distribution, and advertising of goods in commerce in a manner likely to cause confbion, mistake, or
deception.
17. 1125(a).

By reason of the foregoing, MGA has violated 15 U.S.C. $8 1 11411) and

18.

Hasbro notified MGA of the infringement of its m r .soon&r ak

it became

aware of the infringement. Even after receiving this actual notice, MGA has chosen to continue
to market, distribute, and sell its idkingkg products with disregard for the effect such marketing,

distribution, and selling is having on Hasbro and its rights i the MEMORY trademark. n
19.

Upon information and belief, MGA's violation of Hasbro's rights has been

deliberate and willfid. 20.

The unlawful acts of MGA alleged herein have caused Hasbro irreparable

h a m to its business and reputation and have also caused damages in an amount to be determined by the trier of fact. In addition, MGA has unjustly profited fiom those unlawful acts.

SECOND CLAIM FOR RELIEF ICOMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION)
21.

Hasbro repeats and realleges paragraph 1 through 13 and paragraphs 15,

18, 19, and 20 as if fully set forth herein.

22.

MGA's use of the MEMORY mark for its MEMORY MATCH-UP game

constitutes infringement of Hasbro's common law MEMORY trademark and unfair competition

under the common law of Rhode Island and other States.
WHEREFORE, Hasbro respectfully requests that this Court enter judgment

against MGA as follows:
A.
That, pursuant to Rule 65 of the Federal Rules of Civil Procedure and 15 U.S.C.

§ 1116, MGA, its oficers, agents, servants, employees, attorneys, and all other persons in active

concert or participation with any of them be temporarily restrained and preliminarily and
permanently enjoined f o using the word MEMORY in connection with a game, including but rm
not limited to any use as all or part of the trademark or name for a game.

B.

That MGA be ordered pursuant to Rule 65 of the Federal Rules of Civil Procedure

and 15 U. S .C. 1118, to recall from all retailers and distributors and to deliver up for
impounding dl products or materials bearing the word MEMORY as all or part of a name or mark.
C.

That, pursuant to I5 U.S.C.§ 1 116(a), MGA be required to file with the Court

and sene on Hasbro within thirty (30) days after entry of the injunction a report in writing under

oath setting forth in detail the manner and form in which MGA has complied with the injunction.

13.

That, pursuant to 15 U.S.C. 17, Hasbro be awarded up to three times MGA's $11

profits or Hasbro's damages, in an amount to be determined at trial, together with prejudgment interest.

E.
F.

That Hasbro be awarded its damages pursuant to the common law.

That this be declared to be an "exceptional case" under 8 35(a) of the Lanham

Act, 15 U.S.C. 5 1117, and awarding Hasbro its reasonable attorneys fees and futl costs.
G.

That Hasbro be awarded any other remedy to which it may be entitled pursuant to

the Lanham Act and Rhode Island statutory and common law.

H.

For such other and further relief as the Court deems just and proper.
Hasbro demands trial by jury of all issues so triable.

Dated: May 26,2004

Respectfidly submitted, HASBRO, INC. By its attorneys,

ADLER POLLOCK i~SHEEHANP.C. 2300 Financial Plaza Providence, RJ 02903
(40 1) 274-7200 Attorneys for Plaintiff Hasbro, Inc.

Of Counsel
Kim J. Landsman Michael D.SantfAmbrogio PATTERSON,BELKNAP, WEBB & TYLER LLP 1133 Avenue of the Americas New York, New York 10036-6710 [phone]