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UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS THE LEARNING COMPANY, a division of HOUGHTON MIFFLIN HARCOURT PUBLISHING COMPANY, and HMH CONSUMER COMPANY LTD. Plaintiffs, v. ZYNGA INC. Defendant. ) ) ) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 11-10894-MLW

ANSWER TO COMPLAINT, AFFIRMATIVE DEFENSES AND COUNTERLCLAIMS OF DEFENDANT ZYNGA INC. Defendant Zynga Inc. (Zynga) answers the Complaint of plaintiffs The Learning Company, A Division of Houghton Mifflin Harcourt Publishing Company, and HMH Consumer Company Ltd. (Plaintiffs). 1. Answering Paragraph 1 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in the second sentence, and on that basis denies each and every such allegation. Zynga denies each and every one of the remaining allegations contained in Paragraph 1. 2. Answering Paragraph 2 of the Complaint, Zynga denies each and every one of the

allegations contained in Paragraph 2. 3. Answering Paragraph 3 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 3, and on that basis denies each and every such allegation.

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4.

Answering Paragraph 4 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 4, and on that basis denies each and every such allegation. 5. Answering Paragraph 5 of the Complaint, Zynga admits that The Learning

Company approached Zynga in 2010 to inquire whether Zynga would be interested in assisting The Learning Company in developing a version of Plaintiffs The Oregon Trail game on Facebook. Zynga further admits that after preliminary discussions, the parties decided not to work together. Except as admitted herein, Zynga denies each and every allegation contained in Paragraph 5. 6. Answering Paragraph 6 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 6, and on that basis denies each and every such allegation. 7. Answering Paragraph 7 of the Complaint, Zynga is without knowledge or

information as to third-party press releases and denies each and every one of the remaining allegations contained in Paragraph 7. 8. Answering Paragraph 8 of the Complaint, Zynga admits that the referenced article

appears at the cited link. Zynga further admits that the YouTube link contains footage of Mark Pincus, Zyngas CEO. Zynga denies each and every one of the remaining allegations contained in Paragraph 8. 9. Answering Paragraph 9 of the Complaint, Zynga avers that the purported

allegations in Paragraph 9 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 9 is required, Zynga denies each and every one of the allegations contained in Paragraph 9.

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PARTIES 10. Answering Paragraph 10 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 10, and on that basis denies each and every such allegation. 11. Answering Paragraph 11 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 11, and on that basis denies each and every such allegation. 12. Answering Paragraph 12 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 12, and on that basis denies each and every such allegation. 13. Answering Paragraph 13 of the Complaint, Zynga admits that it is a Delaware

corporation with its principal place of business (as corrected) at 444 De Haro Street, Suite 125, San Francisco, California 94107. JURISDICTION AND VENUE 14. Answering Paragraph 14 of the Complaint, Zynga avers that the purported

allegations in Paragraph 14 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 14 is required, Zynga admits that Plaintiffs purport to assert claims under the Lanham Act, 15 U.S.C. 1051 et seq., and further admits that this Court has subject matter jurisdiction over claims arising under federal statutes. Except as expressly admitted herein, Zynga denies each and every allegation contained in Paragraph 14. 15. Answering Paragraph 15 of the Complaint, Zynga avers that the purported

allegations in Paragraph 15 are conclusions of law or fact to which no responsive pleading is

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required. To the extent a response to Paragraph 15 is required, Zynga admits that it is subject to personal jurisdiction in this District and denies the remainder of the allegations. FACTS The Learning Company and its OREGON TRAIL Brand Game 16. Answering Paragraph 16 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 16, and on that basis denies each and every such allegation. 17. Answering Paragraph 17 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 17, and on that basis denies each and every such allegation. 18. Answering Paragraph 18 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 18, and on that basis denies each and every such allegation. 19. Answering Paragraph 19 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 19, and on that basis denies each and every such allegation. 20. Answering Paragraph 20 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 20, and on that basis denies each and every such allegation. 21. Answering Paragraph 21 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 21, and on that basis denies each and every such allegation.

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22.

Answering Paragraph 22 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 22, and on that basis denies each and every such allegation. 23. Answering Paragraph 23 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 23, and on that basis denies each and every such allegation. 24. Answering Paragraph 24 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 24, and on that basis denies each and every such allegation. 25. Answering Paragraph 25 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 25, and on that basis denies each and every such allegation. 26. Answering Paragraph 26 of the Complaint, Zynga admits that the quoted text

appears at the cited link. Zynga is without knowledge or information sufficient to form a belief as to the remaining allegations contained in Paragraph 26, and on that basis denies each and every such allegation. 27. Answering Paragraph 27 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 27, and on that basis denies each and every such allegation. 28. Answering Paragraph 28 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 28, and on that basis denies each and every such allegation.

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29.

Answering Paragraph 29 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 29, and on that basis denies each and every such allegation. 30. Answering Paragraph 30 of the Complaint, Zynga admits that in the Spring of

2010, The Learning Company approached Zynga to inquire about collaborating on the development of the Oregon Trail game for the Facebook platform and that certain introductory information was supplied by The Learning Company in connection with that inquiry. Zynga further admits that the parties decided not to collaborate with each other after brief discussions. Except as expressly admitted herein, Zynga denies each and every allegation contained in Paragraph 30. 31. Answering Paragraph 31 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 31, and on that basis denies each and every such allegation. 32. Answering Paragraph 32 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 32, and on that basis denies each and every such allegation. 33. Answering Paragraph 33 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 33, and on that basis denies each and every such allegation. 34. Answering Paragraph 34 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 34, and on that basis denies each and every such allegation.

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35.

Answering Paragraph 35 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 35, and on that basis denies each and every such allegation. 36. Answering Paragraph 36 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 36, and on that basis denies each and every such allegation. 37. Answering Paragraph 37 of the Complaint, Zynga admits that HMHCC owns a

federal registration for THE OREGON TRAIL Mark, U.S. Regis. No. 1,771,617, for computer game programs and instruction manuals therefore sold as a unit. Zynga avers that the remaining allegations in Paragraph 37 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 37 is required, except as expressly admitted herein, Zynga denies each and every allegation contained in Paragraph 37. 38. Answering Paragraph 38 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 38, and on that basis denies each and every such allegation. 39. Answering Paragraph 39 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 39, and on that basis denies each and every such allegation. Zynga and its Business 40. Answering Paragraph 40 of the Complaint, Zynga admits the allegations

contained in Paragraph 40. 41. Answering Paragraph 41 of the Complaint, Zynga admits that it has more than

1,300 employees and that it raised more than $200 million in private funding to support its

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business. Zynga further admits that some of its games allow participants to make small realworld payments for game-world goods that advance the game or allow players to overcome obstacles. Except as expressly admitted herein, Zynga denies each and every allegation contained in Paragraph 41. 42. Answering Paragraph 42 of the Complaint, Zynga admits that the quoted phrase

appears at the cited link. Zynga denies each and every one of the remaining allegations contained in Paragraph 42. 43. Answering Paragraph 43 of the Complaint, Zynga admits that the quoted phrase

appears at the cited link. Zynga denies each and every one of the remaining allegations contained in Paragraph 43. Zyngas Knowledge of THE OREGON TRAIL Brand 44. Answering Paragraph 44 of the Complaint, Zynga admits that it received from

The Learning Company information about Plaintiffs Oregon Trail game. Except as expressly admitted herein, Zynga denies each and every allegation contained in Paragraph 44. 45. Answering Paragraph 45 of the Complaint, Zynga admits that Zynga launched a

game called FrontierVille in 2010. Zynga further admits that Brian Reynolds, Zyngas Head Game Designer, has participated in interviews to promote FrontierVille, and the article cited in Paragraph 45 includes the quoted line. Except as expressly admitted herein, Zynga denies each and every allegation contained in Paragraph 45. 46. Answering Paragraph 46 of the Complaint, Zynga admits that The Learning

Company and Zynga had brief discussions and that certain introductory information was supplied by The Learning Company in connection with that inquiry. Zynga denies each and every one of the allegations contained in Paragraph 46.

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47.

Answering Paragraph 47 of the Complaint, Zynga avers that the purported

allegations in Paragraph 47 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 47 is required, Zynga denies each and every allegation contained in Paragraph 47. Zyngas Adoption of the Identical Name for the Identical Goods 48. Answering Paragraph 48 of the Complaint, Zynga admits that trailers for

FrontierVille formerly appeared at the links cited. Zynga denies each and every one of the remaining allegations contained in Paragraph 48. 49. Answering Paragraph 49 of the Complaint, Zynga denies each and every one of

the allegations contained in Paragraph 49. 50. Answering Paragraph 50 of the Complaint, Zynga admits that the screenshots

included in Paragraph 50 formerly appeared in a trailer created by Zynga. Zynga avers that the remaining allegations in Paragraph 50 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 50 is required, except as expressly admitted herein, Zynga denies each and every one of the remaining allegations contained in Paragraph 50. 51. Answering Paragraph 51 of the Complaint, Zynga admits that its games are

available via the Internet and Facebook. Zynga denies each and every one of the remaining allegations contained in Paragraph 51. 52. Answering Paragraph 52 of the Complaint, Zynga avers that the purported

allegations in Paragraph 52 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 52 is required, Zynga denies each and every one of the allegations contained in Paragraph 52.

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53.

Answering Paragraph 53 of the Complaint, Zynga avers that the purported

allegations in Paragraph 53 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 53 is required, Zynga denies each and every one of the allegations contained in Paragraph 53. 54. Answering Paragraph 54 of the Complaint, Zynga avers that the purported

allegations in Paragraph 54 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 54 is required, Zynga denies each and every one of the allegations contained in Paragraph 54. 55. Answering Paragraph 55 of the Complaint, Zynga avers that the purported

allegations in Paragraph 55 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 55 is required, Zynga denies each and every one of the allegations contained in Paragraph 55. 56. Answering Paragraph 56 of the Complaint, Zynga admits that HMHCC has never

granted Zynga a license to use THE OREGON TRAIL Mark but denies that Zynga was required to obtain a license to use the term Oregon Trail in its FrontierVille game. 57. Answering Paragraph 57 of the Complaint, Zynga avers that the purported

allegations in Paragraph 57 are conclusions of law or fact, or a prayer for relief, to which no responsive pleading is required. To the extent a response to Paragraph 57 is required, Zynga denies each and every one of the allegations contained in Paragraph 57. ANSWER TO PURPORTED FIRST CAUSE OF ACTION (Trademark Infringement 15 U.S.C. 1114) 58. Answering Paragraph 58 of the Complaint, Zynga refers to and incorporates its

answers to Paragraphs 1 through 57 as though fully set forth herein.

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59.

Answering Paragraph 59 of the Complaint, Zynga admits that HMHCC is the

owner of a federal trademark registration for THE OREGON TRAIL Mark, U.S. Regis. No. 1,771,617. Zynga is without knowledge or information sufficient to form a belief as to any of the remaining allegations contained in Paragraph 59, and on that basis denies each and every such allegation. 60. Answering Paragraph 60 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 60, and on that basis denies each and every such allegation. 61. Answering Paragraph 61 of the Complaint, Zynga avers that the purported

allegations in Paragraph 61 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 61 is required, Zynga denies each and every one of the allegations contained in Paragraph 61. 62. Answering Paragraph 62 of the Complaint, Zynga denies each and every one of

the allegations contained in Paragraph 62. 63. Answering Paragraph 63 of the Complaint, Zynga avers that the purported

allegations in Paragraph 63 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 63 is required, Zynga denies each and every one of the allegations contained in Paragraph 63. 64. Answering Paragraph 64 of the Complaint, Zynga avers that the purported

allegations in Paragraph 64 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 64 is required, Zynga denies each and every one of the allegations contained in Paragraph 64, and further denies that Plaintiffs have been damaged in any amount at all.

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65.

Answering Paragraph 65 of the Complaint, Zynga avers that the purported

allegations in Paragraph 65 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 65 is required, Zynga denies each and every one of the allegations contained in Paragraph 65. 66. Answering Paragraph 66 of the Complaint, Zynga avers that the purported

allegations in Paragraph 66 are conclusions of law or fact, or a prayer for relief, to which no responsive pleading is required. To the extent a response to Paragraph 66 is required, Zynga denies each and every one of the allegations contained in Paragraph 66, and further denies that Plaintiffs have been damaged in any amount at all. ANSWER TO PURPORTED SECOND CAUSE OF ACTION (False Designation of Origin 15 U.S.C. 1125(a)) 67. Answering Paragraph 67 of the Complaint, Zynga refers to and incorporates its

answers to Paragraphs 1 through 66 as though fully set forth herein. 68. Answering Paragraph 68 of the Complaint, Zynga is without knowledge or

information sufficient to form a belief as to the allegations contained in Paragraph 68, and on that basis denies each and every such allegation. 69. Answering Paragraph 69 of the Complaint, Zynga avers that the purported

allegations in Paragraph 69 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 69 is required, Zynga denies each and every one of the allegations contained in Paragraph 69. 70. Answering Paragraph 70 of the Complaint, Zynga avers that the purported

allegations in Paragraph 70 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 70 is required, Zynga denies each and every one of the allegations contained in Paragraph 70. 12

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71.

Answering Paragraph 71 of the Complaint, Zynga avers that the purported

allegations in Paragraph 71 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 71 is required, Zynga denies each and every one of the allegations contained in Paragraph 71. 72. Answering Paragraph 72 of the Complaint, Zynga denies each and every one of

the allegations contained in Paragraph 72. 73. Answering Paragraph 73 of the Complaint, Zynga avers that the purported

allegations in Paragraph 73 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 73 is required, Zynga denies each and every one of the allegations contained in Paragraph 73. 74. Answering Paragraph 74 of the Complaint, Zynga avers that the purported

allegations in Paragraph 74 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 74 is required, Zynga denies each and every one of the allegations contained in Paragraph 74. 75. Answering Paragraph 75 of the Complaint, Zynga avers that the purported

allegations in Paragraph 75 are conclusions of law or fact, or a prayer for relief, to which no responsive pleading is required. To the extent a response to Paragraph 75 is required, Zynga denies each and every one of the allegations contained in Paragraph 75, and further denies that Plaintiffs have been damaged in any amount at all. ANSWER TO PURPORTED THIRD CAUSE OF ACTION (State Statutory Trademark Dilution under Mass. Gen Laws ch. 110H, 13; Del. Code Ann. tit. 6, 3313; La. Rev. Stat. Ann 51:223.1; Me. Rev. Stat. Ann tit. 10, 1530; Mo. Ann. Stat. 417.061; N.H. Rev. Stat. Ann. 350-A:12; N.Y. Gen Bus. Law 360-1; R.I. Gen. Laws 6-2-12; Ga. Code Ann. 10-1-451(b); and Tex. Bus. & Com. Code Ann. 16.29) 76. Answering Paragraph 76 of the Complaint, Zynga refers to and incorporates its 13

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answers to Paragraphs 1 through 75 as though fully set forth herein. 77. Answering Paragraph 77 of the Complaint, Zynga avers that the purported

allegations in Paragraph 77 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 77 is required, Zynga denies each and every one of the allegations contained in Paragraph 77. 78. Answering Paragraph 78 of the Complaint, Zynga avers that the purported

allegations in Paragraph 78 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 78 is required, Zynga denies each and every one of the allegations contained in Paragraph 78. 79. Answering Paragraph 79 of the Complaint, Zynga avers that the purported

allegations in Paragraph 79 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 79 is required, Zynga denies each and every one of the allegations contained in Paragraph 79. 80. Answering Paragraph 80 of the Complaint, Zynga avers that the purported

allegations in Paragraph 80 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 80 is required, Zynga denies each and every one of the allegations contained in Paragraph 80. 81. Answering Paragraph 81 of the Complaint, Zynga avers that the purported

allegations in Paragraph 81 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 81 is required, Zynga denies each and every one of the allegations contained in Paragraph 81, and further denies that Plaintiffs have been damaged in any amount at all.

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82.

Answering Paragraph 82 of the Complaint, Zynga avers that the purported

allegations in Paragraph 82 are conclusions of law or fact, or a prayer for relief, to which no responsive pleading is required. To the extent a response to Paragraph 82 is required, Zynga denies each and every one of the allegations contained in Paragraph 82, and further denies that The Learning Company has been damaged in any amount at all. ANSWER TO PURPORTED FOURTH CAUSE OF ACTION (Unfair Competition Mass. Gen Laws ch. 93A 83. Answering Paragraph 83 of the Complaint, Zynga refers to and incorporates its

answers to Paragraphs 1 through 82 as though fully set forth herein. 84. Answering Paragraph 84 of the Complaint, Zynga avers that the purported

allegations in Paragraph 84 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 84 is required, Zynga denies each and every allegation contained in Paragraph 84. 85. Answering Paragraph 85 of the Complaint, Zynga avers that the purported

allegations in Paragraph 85 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 85 is required, Zynga denies each and every one of the allegations contained in Paragraph 85. 86. Answering Paragraph 86 of the Complaint, Zynga avers that the purported

allegations in Paragraph 86 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 86 is required, Zynga denies each and every one of the allegations contained in Paragraph 86. 87. Answering Paragraph 87 of the Complaint, Zynga avers that the purported

allegations in Paragraph 87 are conclusions of law or fact to which no responsive pleading is required. To the extent a response to Paragraph 87 is required, Zynga denies each and every one 15

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of the allegations contained in Paragraph 87, and further denies that The Learning Company has been damaged in any amount at all. AFFIRMATIVE DEFENSES Zynga asserts the following affirmative defenses and reserves the right to assert additional defenses if and when appropriate, including without limitation based on information disclosed in discovery. In asserting these defenses, Zynga does not assume the burden of proof for any issue with respect to which the relevant law places the burden of proof on Plaintiffs.

First Affirmative Defense (Failure to State a Claim) The Complaint and each and every cause of action asserted therein fails to state a claim upon which relief can be granted. Second Affirmative Defense (No Actual Controversy) The claims against Zynga, and each of them, are barred because there is no actual controversy between the parties. Third Affirmative Defense (Generic Trademark) Assuming without conceding that Plaintiffs own trademark rights in THE OREGON TRAIL, Plaintiffs claims against Zynga, and each of them, are barred because Plaintiffs trademark has become generic. Fourth Affirmative Defense (No Senior Rights) Assuming without conceding that Plaintiffs alleged THE OREGON TRAIL mark has attained secondary meaning, Plaintiffs claims against Zynga, and each of them, are barred 16

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because Zynga began using the term Oregon Trail on Facebook before Plaintiffs attained secondary meaning in THE OREGON TRAIL on Facebook. Fifth Affirmative Defense (No Infringement) Assuming without conceding that Plaintiffs own trademark rights in THE OREGON TRAIL, Plaintiffs claims against Zynga, and each of them, are barred because Zynga has not infringed Plaintiffs rights. Sixth Affirmative Defense (Fair Use) Plaintiffs claims against Zynga, and each of them, are barred by the doctrine of fair use. Seventh Affirmative Defense (Laches) Plaintiffs claims against Zynga, and each of them, are barred by the doctrine of laches. Eighth Affirmative Defense (Estoppel) Plaintiffs claims against Zynga, and each of them, are barred by the doctrine of estoppel. Ninth Affirmative Defense (No Use in Commerce) Plaintiffs claims against Zynga, and each of the, are barred because Zynga has not made any use in commerce of the alleged mark. Tenth Affirmative Defense (First Amendment) Plaintiffs claims against Zynga, and each of the, are barred based on the First Amendment. Eleventh Affirmative Defense (Lawful Conduct)

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Plaintiffs claims against Zynga, and each of them, are barred because Zynga at all times acted in compliance with the law. Twelfth Affirmative Defense (No Willfulness) Assuming without conceding that Zynga does not have the right to use THE OREGON TRAIL, Plaintiffs are not entitled to any monetary relief because Zyngas adoption and use of the term Oregon Trail was innocent and not undertaken with knowledge of, or intent to infringe, any rights of Plaintiffs or any other party. Thirteenth Affirmative Defense (Mootness) Plaintiffs claims against Zynga, and each of them, are barred because they are moot.

COUNTERCLAIMS Zynga alleges the following counterclaims against Plaintiffs: THE PARTIES 1. Zynga is a Delaware corporation with its headquarters located at 444 De Haro

Street, Suite 125, San Francisco, California 94107. 2. On information and belief, The Learning Company is an unincorporated division

of Houghton Mifflin Harcourt Publishing Company. 3. On information and belief, Houghton Mifflin Harcourt Publishing Company

(Houghton Mifflin Harcourt) is a Massachusetts corporation with its principal place of business at 222 Berkeley Street, Boston, Massachusetts 02116. 4. On information and belief, HMH Consumer Company Ltd. (HMHCC) is an

Ireland company with its principal place of business at 70 Sir John Rogersons Quay, Dublin,

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Ireland 2. HMH Consumer Company Ltd. is an affiliate of Houghton Mifflin Harcourt Publishing Company. JURISDICTION AND VENUE 5. This Court has subject matter jurisdiction over these claims pursuant to 28 U.S.C.

1331, 1338(a) and (b), and supplemental jurisdiction under 28 U.S.C. 1367. 6 Upon information and belief, venue is proper in this Court pursuant to 28 U.S.C.

1391(b) and (c) because this is the judicial district where (i) a substantial part of the events or omissions giving rise to the claim occurred; and (ii) where Plaintiffs are subject to personal jurisdiction. FIRST COUNTERCLAIM (Declaratory Judgment of Non-Infringement) 7. Zynga repeats and incorporates by reference paragraphs 1 through 6 of its

Counterclaims as if fully set forth herein. 8. Plaintiffs have expressly charged Zynga with infringement of the trademark THE

OREGON TRAIL (the Mark) by filing their Complaint against Zynga. 9. Zynga has not infringed the Mark within its FrontierVille game or any marketing

or advertising for that game. 10. Zyngas references to the Oregon Trail within its FrontierVille game or within

any marketing or advertising for that game were a descriptive and fair use. 11. An actual controversy, within the meaning of 28 U.S.C. 1331, 1338, 2201, and

2202, exists between Plaintiffs and Zynga regarding the non-infringement of the Mark. 12. Zynga is entitled to judgment declaring that Zynga has not infringed Plaintiffs

Mark based on any use or appearance of the phrase Oregon Trail within its FrontierVille game or any marketing or advertising for that game. 19

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PRAYER FOR RELIEF WHEREFORE, Zynga respectfully prays for the following relief: A. Judgment against Plaintiffs on, and dismissal with prejudice of, the claims in Plaintiffs Complaint against Zynga; B. Judgment declaring that Zynga has not infringed Plaintiffs trademark THE OREGON TRAIL; C. Judgment awarding Zynga its costs and attorneys fees; and D. For such other relief as the Court deems just and proper.

ROPES & GRAY LLP Dated: June 16, 2011 By: /s/ Dalila Argaez Wendlandt______ Dalila Argaez Wendlandt (BBO #639280) Randall W. Bodner (BBO#549160) Alexandra J. Roberts (BBO# 672533) ROPES & GRAY LLP Prudential Tower 800 Boylston Street Boston, Massachusetts 02199-3600 (617) 951-7000 dalila.wendlandt@ropesgray.com randall.bodner@ropesgray.com alexandra.roberts@ropesgray.com Of Counsel: Dennis L. Wilson (pro hac vice pending) David K. Caplan (BBO # 672220) KEATS MCFARLAND & WILSON, LLP 9720 Wilshire Blvd., PH Suite Beverly Hills, CA 90212 Telephone: (310) 248-3830 dwilson@kmwlaw.com dcaplan@kmwlaw.com Attorneys for Defendant ZYNGA INC.

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Case 1:11-cv-10894-MLW Document 48

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CERTIFICATE OF SERVICE I hereby certify that this document filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF) on June 16, 2011.

Dated: June 16, 2011

By: /s/ Dalila Argaez Wendlandt______ Dalila Argaez Wendlandt (BBO #639280) Randall W. Bodner (BBO#549160) Alexandra J. Roberts (BBO# 672533) ROPES & GRAY LLP Prudential Tower 800 Boylston Street Boston, Massachusetts 02199-3600 (617) 951-7000 dalila.wendlandt@ropesgray.com randall.bodner@ropesgray.com alexandra.roberts@ropesgray.com Attorneys for Defendant ZYNGA INC.

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