Gameologist Grp., LLC v. Scientific Games Int'l, Inc.

• Decision Date: 25 October 2011
• Docket Number: No. 09 Civ. 6261 (JGK).,09 Civ. 6261 (JGK).
• Citation: 838 F.Supp.2d 141
• Parties: The GAMEOLOGIST GROUP, LLC, Plaintiff, v. SCIENTIFIC GAMES INTERNATIONAL, INC., and Scientific Games Corporation, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

838 F.Supp.2d 141

The GAMEOLOGIST GROUP, LLC, Plaintiff,

v.SCIENTIFIC GAMES INTERNATIONAL, INC., and Scientific Games Corporation, Inc., Defendants.

No. 09 Civ. 6261 (JGK).

United States District Court, S.D. New York.

Oct. 25, 2011.

John Balestriere, Geisa Balla, Balestriere PLLC, New York, NY, for Plaintiff.

James Anthony Lovensheimer, Joshua R. Slavitt, Pepper Hamilton, LLP, Philadelphia, PA, Peter Samuel Sloane, Cameron Sean Reuber, Yuval Hod Marcus, Leason Ellis LLP, White Plains, NY, Suzanne D. Brodock, Pepper Hamilton, LLP, New York, NY, for Defendants.

OPINION AND ORDER

JOHN G. KOELTL, District Judge:

This is a case about “bling”—“BLING BLING 2002,” “Spring Bling,” “Bling Me the Money,” and “It's a Bling Thing”—to name a few variations. The plaintiff has a trademark registration for “BLING BLING 2002” for “entertainment in the nature of online three dice casino games” and for “casino games and equipment therefor, namely board games.” The plaintiff alleges that the defendants have infringed its trademark rights and otherwise violated its rights under federal and state law because the defendants have marketed lottery tickets to state lottery commissions and the lottery tickets incorporate various uses of the term “bling.” The plaintiff's claims take “bling” too far.

The plaintiff, the Gameologist Group, LLC (“Gameologist” or “the plaintiff”), brings this action against Scientific Games International, Inc. and Scientific Games Corporation, Inc. (“Scientific” or “the defendants”). The plaintiff alleges claims of trademark infringement, false designation of origin and unfair competition, and false advertising under the Lanham Act, 15 U.S.C. § 1051 et seq. The plaintiff also alleges claims under New York common law for unfair competition, passing off, breach of contract, unjust enrichment, and quantum meruit.

The defendants now move pursuant to Rule 56 of the Federal Rules of Civil Procedure for summary judgment dismissing all causes of action in this suit.

I.

The standard for granting summary judgment is well established. “The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322–23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Gallo v. Prudential Residential Servs., Ltd. P'ship, 22 F.3d 1219, 1223 (2d Cir.1994). “[T]he trial court's task at the summary judgment motion stage of the litigation is carefully limited to discerning whether there are any genuine issues of material fact to be tried, not to deciding them. Its duty, in short, is confined at this point to issue-finding; it does not extend to issue-resolution.” Gallo, 22 F.3d at 1224. The moving party bears the initial burden of “informing the district court of the basis for its motion” and identifying the matter that “it believes demonstrate[s] the absence of a genuine issue of material fact.” Celotex, 477 U.S. at 323, 106 S.Ct. 2548. The substantive law governing the case will identify those facts that are material and “[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Behringer v. Lavelle Sch. for the Blind, No. 08 Civ. 4899, 2010 WL 5158644, at *1 (S.D.N.Y. Dec. 17, 2010).

In determining whether summary judgment is appropriate, a court must resolve all ambiguities and draw all reasonable inferences against the moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962)); see also Gallo, 22 F.3d at 1223. Summary judgment is improper if there is any evidence in the record from any source from which a reasonable inference could be drawn in favor of the nonmoving party. See Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir.1994). If the moving party meets its burden, the nonmoving party must produce evidence in the record and “may not rely simply on conclusory statements or on contentions that the affidavits supporting the motion are not credible ....” Ying Jing Gan v. City of N.Y., 996 F.2d 522, 532 (2d Cir.1993); see also Scotto v. Almenas, 143 F.3d 105, 114–15 (2d Cir.1998) (collecting cases); Behringer, 2010 WL 5158644, at *1.

II.

The following facts are undisputed unless otherwise noted.

A.

In 1998, Jeffrey McGill (“McGill”), a slot machine technician from Atlantic City, New Jersey, developed a concept for a casino table game, which he decided to name “Bling Bling.” (Defs.' 56.1 Stmt. ¶¶ 3–4; Pl.'s Am. Resp. to Defs.' 56.1 Stmt. (“Pl.'s 56.1 Stmt.”) ¶¶ 3–4.) McGill testified that he chose the name because “it was [a] new song out and it was at the top of the charts and everybody was going crazy. And I knew. If a casino game was named Bling Bling, forget about it.” (Decl. of John Balestriere in Opp'n to Defs.' Mot. for Summ. J. (“Balestriere Decl.”) Ex. G; Decl. of Peter S. Sloane, Esq. in Supp. of Defs.' Mot. for Summ. J. (“Sloane Decl.”) Ex. 1 (“McGill Dep.”) 28.) “Bling” is a term popularized in the hip-hop music community and is frequently used in advertisements and pop culture. (Defs.' 56.1 Stmt. ¶ 6; Pl.'s 56.1 Stmt. ¶ 6; Sloane Decl. Ex. 3.)

B.

On January 7, 2003, McGill filed an intent-to-use (“ITU”) application with the U.S. Patent and Trademark Office (“USPTO”) which sought to register the mark “BLING BLING 2002” for entertainment services in Class 41 (“the first ITU”). (Defs.' 56.1 Stmt. ¶ 9; Pl.'s 56.1 Stmt. ¶ 9; Sloane Decl. Ex. 5; Balestriere Decl. Ex. C.) On January 12, 2005, McGill executed a Statement of Use for this ITU stating that the mark was used in commerce for online three-dice casino games no later than December 22, 2004. (Defs.' 56.1 Stmt. ¶ 20; Pl.'s 56.1 Stmt. ¶ 20; Sloane Decl. Ex. 5; Balestriere Decl. Ex. C.) On May 17, 2005, the USPTO issued U.S. Registration No. 2,953,204 for the mark “BLING BLING 2002” for “entertainment in the nature of online three dice casino games” (the “2005 registration”). (Defs.' 56.1 Stmt. ¶ 27; Pl.'s 56.1 Stmt. ¶ 27; Sloane Decl. Ex. 14; Balestriere Decl. Ex. D.)

On October 9, 2003, McGill filed a second ITU application with the USPTO to register the mark “BLING BLING 2002” for goods in Class 9 and Class 28 (“the second ITU”). (Defs.' 56.1 Stmt. ¶ 12; Pl.'s 56.1 Stmt. ¶ 12; Sloane Decl. Ex. 7; Balestriere Decl. Ex. A.) In Class 9, the application sought to register the mark for gaming equipment such as slot machines and computerized video games. (Defs.' 56.1 Stmt. ¶ 12; Pl.'s 56.1 Stmt. ¶ 12.) In Class 28, the application sought to register the mark for “casino games and equipment therefor,” specifying products such as board games and lottery cards. (Defs.' 56.1 Stmt. ¶ 12; Pl.'s 56.1 Stmt. ¶ 12.) On July 22, 2010, Gameologist filed a request with the USPTO to divide this ITU, specifying that “casino games and equipment therefor, namely, board games” were now in use and requesting to divide out into the child application all goods in Class 9 and the remaining goods in Class 28. (Defs.' 56.1 Stmt. ¶ 60; Pl.'s 56.1 Stmt. ¶ 60; Sloane Decl. Ex. 7.) On September 28, 2010, the USPTO issued U.S. Registration No. 3,855,103 for the mark “BLING BLING 2002” as applied to “casino games and equipment therefor, namely, board games” (the “2010 registration”). (Defs.' 56.1 Stmt. ¶ 61; Pl.'s 56.1 Stmt. ¶ 61; Sloane Decl. Ex. 26; Balestriere Decl. Ex. B.) No registration has issued for the plaintiff's mark as applies to the remaining goods listed in the application for the second ITU, including lottery cards. (Defs.' 56.1 Stmt. ¶ 62; Pl.'s 56.1 Stmt. ¶ 62.) The plaintiff has not yet filed a Statement of Use with respect to these remaining goods and has requested several extensions of the deadline for doing so. (Defs.' 56.1 Stmt. ¶ 62; Pl.'s 56.1 Stmt. ¶ 62; Sloane Decl. Ex. 7.)

C.

On August 28, 2003, McGill, along with six other individuals, including Joseph Cassarino (“Cassarino”), formed The Gameologist Group, LLC. (Defs.' 56.1 Stmt. ¶ 10; Pl.'s 56.1 Stmt. ¶ 10.) Gameologist sought to develop McGill's “Bling Bling” concept and several other gaming concepts. (Defs.' 56.1 Stmt. ¶ 11; Pl.'s 56.1 Stmt. ¶ 11.) On November 1, 2004, McGill resigned as Managing Member of Gameologist and divested himself of his entire ownership interest in the company. (Defs.' 56.1 Stmt. ¶¶ 13–14; Pl.'s 56.1 Stmt. ¶¶ 13–14.) Upon McGill's resignation, Joseph Cassarino became Gameologist's new Managing Member. (Defs.' 56.1 Stmt. ¶ 16; Pl.'s 56.1 Stmt. ¶ 16.)

On March 26, 2005, McGill assigned both ITUs for the mark “BLING BLING 2002” to Gameologist. (Defs.' 56.1 Stmt. ¶ 24; Pl.'s 56.1 Stmt. ¶ 24; Sloane Decl. Exs. 10, 11.) The assignments were recorded with the USPTO four days later. (Defs.' 56.1 Stmt. ¶ 26; Pl.'s 56.1 Stmt. ¶ 26; Sloane Decl. Exs. 12, 13.) The defendants contend that McGill had no underlying business or associated good will to assign in connection with the mark and, in 2010, they filed petitions with the USPTO to cancel both registrations for the “BLING BLING 2002” mark on the grounds of fraud and abandonment through an improper assignment in gross. (Defs.' 56.1 Stmt. ¶¶ 25, 63–64; Sloane Decl. Exs. 27, 28.)

D.

In 2002, McGill and Cassarino began attempts to license the “BLING BLING 2002” mark to various industries, including the lottery ticket industry. (Defs.' 56.1 Stmt. ¶¶ 37–38; Pl.'s 56.1 Stmt. ¶¶ 37–38.) In October 2002, McGill and Cassarino began discussions with Oberthur Gaming Technologies Corporation (“Oberthur”) about licensing the mark in connection with lottery tickets, but Oberthur ultimately declined to enter into a license agreement. (Defs.' 56.1 Stmt. ¶¶ 39–40; Pl.'s 56.1 Stmt. ¶¶ 39–40.)

In October 2003, Gameologist met with representatives of MDI...