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FASA CORP. v. PLAYMATES TOYS

January 22, 1996

FASA CORPORATION and VIRTUAL WORLD ENTERTAINMENT, Plaintiffs,
v.
PLAYMATES TOYS, INC., Defendant.



The opinion of the court was delivered by: CASTILLO

TABLE OF CONTENTS

 I. FINDINGS OF FACT - Phase Two Of Trial

 
A. Development of BATTLETECH Universe
 
B. Development of Virtual Reality
 
C. Sales Of The BATTLETECH Property
 
D. Recognition of BATTLETECH Among the Relevant Consumers
 
E. Originality and Distinctiveness of the BATTLETECH Property
 
F. Copyright Registrations

 II. CONCLUSIONS OF LAW - Phase Two

 
A. FASA Has Established Original Expressions Of Ideas That Are Protected By The Copyright Act
 
B. FASA Has Established That It Has Protectible Trade Dress Rights

 III. FINDINGS OF FACT - Phase Three of Trial

 
A. The Development Of The EXO-SQUAD Toy Line By Playmates
 
B. FASA's Efforts To License Its BATTLETECH Designs To Tyco
 
C. FASA's Alleged Confusion Evidence
 
D. Playmates' Survey Evidence Established A Lack of Any Trade Dress Confusion
 
E. Playmates' Heavy Attack E-Frame Prototype Is Not Substantially Similar To FASA's Mad Cat Design
 
F. Playmates' Marsala Light Attack E-Frame Toy Is Not Substantially Similar to FASA's Black Hawk Design
 
G. Playmates' Livanus Light Attack E-Frame Is Not Substantially Similar To FASA's Black Hawk Design
 
H. Playmates' Livanus Light Attack E-Frame Is Not Substantially Similar To FASA's Bushwacker Design
 
I. Playmates' General Shiva Light Attack E-Frame Is Not Substantially Similar To The King Crab Design
 
J. Playmates' Alec DeLeon E-Frame Is Not Substantially Similar To FASA's Koshi Design
 
K. Playmates' Alec DeLeon E-Frame Is Not Substantially Similar To FASA's Daishi Design
 
L. Playmates' Maggie Weston Repair Light Attack E-Frame Is Not Substantially Similar To FASA's Dasher Design
 
M. The Heavy Attack E-Frame Prototypes Of EXO-SQUAD Toys Were Independently Created
 
N. The Development Of EXO-SQUAD Toys Draws Inspiration From Third-Party Designs And Designs And Properties Other Than BATTLETECH
 
O. Specific, Non-Trivial Design Features Distinguish EXO-SQUAD From BATTLETECH

 IV. CONCLUSIONS OF LAW - Phase Three

 
A. FASA Failed To Establish By A Preponderance Of The Evidence That Its Protectible Copyright Interests Were Copied By Playmates
 
B. FASA Failed To Establish By A Preponderance Of The Evidence That There Is A Likelihood Of Confusion About The Source of EXO-SQUAD Toys
 
C. Playmates' Inclusion Of A Picture Of Its Planned Heavy Attack E-Frame In Its 1993 Toy Catalog Did Not Constitute Unfair Competition

 V. CONCLUSION

 Toys and games are usually welcome diversions to the serious problems that too often confront our daily lives. This case, however, involves a serious business dispute about games and toys. Plaintiffs FASA Corporation and Virtual World Entertainment (collectively "FASA") claim that defendant Playmates Toys, Inc. ("Playmates") violated FASA's copyright and trademark rights to a series of robot-like battlefield characters, which are used in a futuristic setting known as BATTLETECH, when Playmates introduced a series of futuristic robot-like toys known as EXO-SQUAD.

 In a previous opinion, this Court addressed Playmates' motion for summary judgment and outlined many of the legal standards that the Court has applied in this bench trial. See FASA Corp. v. Playmates Toys, Inc., 869 F. Supp. 1334 (N. D. Ill. 1994) ("FASA I"). FASA I granted Playmates' motion for summary judgment as to Count II (common law unfair competition), Counts VII and VIII (anti-dilution) and Count IX (tortious interference) and denied the motion as to Count I (Lanham Act unfair competition), Counts III and IV (copyright infringement) and Counts V and VI (trademark infringement). These latter counts proceeded to trial and are addressed in this opinion. Prior to the commencement of trial, this Court, after receiving input from the parties, imposed time limitations for the trial of this case and divided the trial into four phases: Phase I dealt with a waiver issue; Phase II focused on the validity and identification of FASA's alleged copyright and trade dress rights; Phase III focused on all infringement and liability issues; and Phase IV was to focus on damages. See FASA Corp. v. Playmates Toys, Inc., 892 F. Supp. 1061, 1070 (N.D. Ill. 1995). ("FASA II"). FASA II, which was issued at the conclusion of Phase I, rejected Playmates' affirmative defense of waiver, which could have been dispositive of all of FASA's claims.

 This opinion, which deals with Phases II and III of the trial, is the third opinion issued by the Court in this case ("FASA III"). In this opinion, the Court finds that FASA has established certain protectible copyright and trademark rights but has failed to prove any facts which establish liability on the part of Playmates. Therefore, Phase IV of the trial will not be necessary and judgment is hereby entered in favor of Playmates.

 Pursuant to Fed. R. Civ. P. 52, the Court hereby enters the following Findings of Fact and Conclusions of Law regarding Phases II and III of the trial. The Findings of Fact are based upon consideration of the parties' uncontested facts, all the admissible evidence, as well as this Court's assessment of the credibility of the trial witnesses. To the extent, if any, that the Findings of Fact as stated may be deemed Conclusions of Law, they should be considered Conclusions of Law. Similarly, to the extent that matters expressed as Conclusions of Law may be deemed Findings of Fact, they should be considered Findings of Fact.

 I. FINDINGS OF FACT - Phase Two Of Trial

 A. Development of BATTLETECH Universe

 1. FASA originally introduced BATTLETECH as a boxed board game entitled BATTLEDROIDS in 1984. The general idea of BATTLETECH involves a complex, war-strategy game involving a futuristic civil war where combatants are both humans and genetically bred humans and use large and medium scale robot-like tanks, as well as powered battlesuits, as their weapons.

 2. The game was developed by FASA's founders, Jordan Weisman and Ross Babcock, after they attended the 1984 Annual Trade Show of the Hobby Industries of America which was held in Anaheim, California between January 31, 1984 and February 5, 1984. (Weisman Tr. 261-275; Babcock Dep.). *fn1"

 3. While attending the trade show, Weisman and Babcock saw several Japanese robot model kits that were displayed for sale by Twentieth Century Imports ("TCI"). Weisman and Babcock discussed with TCI representatives the possibility of creating a board game using the model kits as game markers. (Weisman Tr. 268-70; Babcock Dep.). FASA obtained licenses from TCI to use several of the MECH designs.

 4. Thereafter, FASA began to develop a fictional universe for the BATTLEDROIDS game. The game was set in the 31st century where the Star League, a once-flourishing empire consisting of five separate cosmic houses, has been devastated by over two hundred years of bitter civil war. Each house, encompassing hundreds of different interstellar worlds, seeks to control the galaxy, known as the Inner Sphere. The battlefields on these worlds are dominated by BATTLEMECHs (also called "MECHs"), massive robot-like tanks of various shapes and designs. (Weisman Tr. 278-91, 358, 396-98; Babcock Dep.).

 5. FASA also developed rules for playing the game. BATTLEDROIDS was a new type of science-fiction game system that combined a traditional board game with a more contemporary role-playing game. Each player would control one or more MECH playing pieces on a terrain-specific game board consisting of six-sided grids. The player or gamemaster directed the movement, weaponry and targets of each MECH playing piece and recorded damage sustained to each MECH during battle in accordance with an elaborate set of rules. (PX 1; Weisman Tr. 272-76).

 6. In August of 1984, FASA created several copies of its prototype BATTLEDROIDS game and made initial sales to some FASA distributors. (PX 149; Weisman Tr. 268-74).

 7. By September of 1984, FASA had decided to proceed with full scale production of the BATTLEDROIDS game and placed a large order for model kits from TCI for game markers. FASA also requested that TCI obtain artwork of the models from the Japanese manufacturer for use in the BATTLEDROIDS game and supplemental products. (PX 138; DX 2; Weisman Tr. 288, 360-61; Lewis Tr. 743-45).

 8. In late November of 1984, the model kits arrived and were inserted into the BATTLEDROIDS game boxes. Thereafter, FASA began selling the BATTLEDROIDS game through its nationwide distribution network, which consisted of hobby shops, game shops, comic book shops and book stores. (PX 1, 144-45; Weisman Tr. 272-81).

 9. The name of the BATTLEDROIDS game was changed in 1985 pursuant to a settlement between FASA and LucasFilm, which had obtained a registration for the mark DROIDS. FASA was then negotiating with LucasFilm for a license for Star Wars products and determined that it was in FASA's best interest to work out an agreement with LucasFilm to sell off the remaining BATTLEDROID games and change the name. (PX 150; Weisman Tr. 273-74).

 10. When a second edition of the game was printed in the fall of 1985, BATTLEDROIDS became BATTLETECH. The rules of the game and the fictional setting of the game did not change, although the model kit markers were replaced by paper game markers bearing the same designs because the model kit markers were too large to function properly as game pieces. (PGX 2A; Weisman Tr. 275-80).

 11. FASA designed the BATTLETECH universe as a dynamic and constantly evolving fictional environment and carefully planned a controlled schedule of complementary products to promote sales. (Weisman Tr. 275-89). The BATTLETECH game allowed a player to experience a unique interaction between the MECHs and their individual designs. (Weisman Tr. 378).

 12. During the fall of 1985, FASA created and introduced its first two BATTLETECH game supplements: The Black Widow (a scenario pack) and The Fox's Teeth (a scenario pack). Scenario packs are books that describe several different battles. The player is told how the battle started, what forces were used and how to orient his game maps and playing pieces to recreate the scene. The object is to see if the player can change the outcome of the original battle. Scenario packs are designed to appeal to the general reader of science fiction as well as the game player. These two products featured fictional text created by FASA along with FASA's renditions of the MECH designs licensed from TCI. (PX 89; PX 94; PGX 2B; PGX 2C; Weisman Tr. 286-87).

 13. In late 1985 and early 1986, FASA decided to continue the expansion of the BATTLETECH universe by creating its own original BATTLEMECH designs with a look that was intended to distinguish BATTLETECH from the Japanese models that were used in the original game. (Weisman Tr. 285).

 14. The appearance of the Japanese designs to which FASA had access, were typical of the Japanese giant robot genre at the time and may be described as humanoid, reflecting human forms clothed in metal body armor in superhero-like poses. The weapons and other accessories appear to be attached to the surface of the units, rather than built into the units as integral parts. (Loose Tr. 435-36).

 15. FASA hired Duane Loose, an independent artist under contract to FASA, to design MECHs for a source book called Technical Readout 3025, a product that FASA planned to release in 1986. (PX 36). A source book provides background information about the universe so that players can become more deeply involved in the fictional premise of the game. Technical Readout 3025 was designed to become a catalogue containing illustrations, statistics and history for the new MECH designs FASA was creating for use in the BATTLETECH game. The name of the book identifies it as a resource for robotic vehicles in the BATTLETECH universe in the year 3025. (PX 3C; 118-19; Weisman Tr. 284-88; Loose Tr. 418-28).

 16. Duane Loose created original MECH designs for Technical Readout 3025 based upon MECH names and statistics furnished to him by FASA. The MECHs designed by Loose include: Assassin, Atlas, Awesome, Banshee, Blackjack, Catapult, Centurion, Charger, Clint, Commando, Cyclops, Dervish, Dragon, Enforcer, Firestarter, Grasshopper, Hatchetman, Hermes II, Jagermech, Javelin, Jenner, Orion, Panther, Quickdraw, Trebuchet, UrbanMech, Valkyrie, Victor, Vindicator, Vulcan, Whitworth and Zeus. (PX 96, 117; PGX 3C; Weisman Tr. 287-90; Loose Tr. 427-519).

 17. Loose assigned to FASA all of his right, title and interest in the designs he created for FASA. (PX 118; Loose Tr. 459-60).

 18. The MECH designs created by Loose differed significantly from the Japanese designs by being primarily based on technology and machines rather than humanoid designs. The designs were intended to carry out FASA's vision of MECHs as vertical tanks that appeared realistic enough to survive the futuristic battlefield. (Loose Tr. 435-40).

 19. The armor of Loose's MECH designs does not appear in uninterrupted expanses, but is made from small segments or panels of plating bolted together. The weapons and other accessories of these designs typically appear as integral to the MECH, rather than as an appendage, so they would not seem likely to be broken off in battle. Loose's designs include occasional diagonal venting or stripes, a checkerboard effect on missile openings, and conical ends to angular weapons. (Loose Tr. 437-55).

 20. Loose's designs featured a prominent cockpit "with personality" based on visual language that would allow the public to identify the specific MECH by face. (Loose Tr. 442-43, 450). Loose specifically designed MECHs for FASA based on a two to three page written description provided by the writers of the FASA fiction. The descriptions that Loose used as a map in creating the designs generally covered the speed, armor, armament, history, name, and manufacturer of the MECH. Loose was given pictures and models of all the licensed designs to use as the basis for his drawings. (Loose Tr. 434:9-21, 528:2-23).

 21. The original Japanese designs licensed by FASA are still sold in the BATTLETECH universe along with other FASA designs. (Weisman Tr. 365:16, 375:25, 377:9-17, 388:3-389:24, 407:22-408:9, 414:17-425:15). The Japanese designs look different from Loose's designs. Loose changed some of these humanoid-type designs by adding more realistic machine features. (Loose Tr. 438:12-439:14, 489:15-23). Mr. Loose repeatedly reworked the licensed designs. (Loose Tr. 451:19-453:6, 460:17-461:8, 462:13-21, 469:14-20, 495:5-16, 496:8-19, 497:14-21, 498:17, 501:6-11, 503:20-504:3, 507:2-19, 508:14-509:2, 512:22-513:3, 517:1-6, 520:21-521:5, 552:16-23).

 22. FASA continues to publish Mr. Loose's drawings of the licensed designs as an integral part of the BATTLETECH universe: they appear in most FASA publications. (Loose Tr. 520:2-17).

 23. Those BATTLETECH designs created by FASA's successor designer, Mr. Knutson, also tried to get away from a human form look. (Knutson Declaration ("Decl.") *fn2" ; Tr. 635:1-637:8). Mr. Knutson wanted to put his own "stamp" on the BATTLETECH designs he created. (Knutson Decl.; Knutson Tr. 641-42).

 24. During 1986, FASA created and introduced nine new BATTLETECH products. (PGX 3, 94). In April of 1986, BATTLETECH Map Set # 1 was released. (PGX 3A). The first BATTLETECH novel, Decision At Thunder Rift was introduced in July of 1986. (PGX 3B). In August of 1986, FASA released BATTLETECH Technical Readout 3025 (PGX 3c), followed by BATTLETECH Blueprints (PGX 3H) and two new boxed games, AEROTECH (PGX 3G) and CITYTECH (PGX 3F). FASA also introduced MECHWARRIOR, The Role-Playing Game (PGX 3D) in August of 1986, a graphic novel called The Spider and The Wolf (PGX 3I) in September of 1986 and another scenario pack called Cranston Snord's Irregulars (PGX 3K) in November of 1986. Each product contained original text and/or artwork and sometimes incorporated text or art from previous BATTLETECH products, including, on occasion, FASA's interpretation of several of the designs licensed from TCI. Each product contained a proper copyright notice. (Weisman Tr. 276-320).

 25. The BATTLETECH Technical Readout 3025 received the 1986 H.G. Wells Award for Best Role-Playing Game Supplement. The H.G. Wells Awards are nominated by members of the Academy of Adventure Gaming Arts and Design and voted on by the general gaming public. They are presented each year at the ORIGINS game convention. (PX 417; Weisman Tr. 286, 292-93; Schick Decl.).

 26. By the end of 1986, BATTLETECH had established itself as one of the best selling science fiction games on the market with retail sales exceeding $ 1 million. (PX 73A, 80-84; Weisman Tr. 289-96; Stevers Decl.).

 27. FASA expanded the BATTLETECH universe in 1987 with the creation and release of 14 new products (PGX 4; PX 94), including:

 
Grey Death Legion, a scenario book, in Jan., 1987 (PGX 4A)
 
The Sword and The Dagger, a novel, in Feb., 1987 (PGX 4B)
 
Mercenary's Handbook, a sourcebook, in Feb., 1987 (PGX 4c)
 
BATTLEFORCE, a boxed game, in April, 1987 (PGX 4D)
 
BATTLETECH Reinforcements, a game accessory, in June, 1987 (PGX 4E)
 
BATTLETECH Map Set #2, a game accessory, in June, 1987 (PGX 4F)
 
House Steiner, a source book, in July, 1987 (PGX 4G)
 
Mercenary's Star, a novel, in Aug., 1987 (PGX 4H)
 
The Succession Wars, a boxed game, in Aug. 1987 (PGX 4I)
 
Technical Readout 3026, a source book, in Aug. 1987 (PGX 4K)
 
BATTLETECH Manual, a rulebook, in Aug. 1987 (PGX 4J)
 
Sorenson's Sabres, a scenario pack, in Nov. 1987 (PGX 4M)
 
Kurita: The Draconis Combine, a source book, in Nov. 1987 (PGX 4N)
 
The Galter Campaign, a scenario book, in Nov. 1987 (PGX 4L).

 Each product contained original text and/or artwork and sometimes incorporated text or art from previous BATTLETECH products, including FASA's interpretations of several of the designs licensed from TCI. Each product contained a proper copyright notice. (Weisman Tr. 295-310; Lewis Decl.).

 28. BATTLETECH won the 1987 Gamer's Choice Award for the Best Science Fiction/Strategy Game at the 1987 GenCon Convention, the oldest and largest game convention in the world. (Lewis Decl.).

 B. Development of Virtual Reality

 29. In 1987, the founders of FASA spun off a sister company called Environmental Simulation Project, Inc. ("ESP") (subsequently known as Virtual World Entertainment), which was dedicated to the design, creation, development and construction of the world's first multi-player, real time simulator allowing consumers to explore and interact with the BATTLETECH universe in a computer generated "Virtual Reality." (PX 409-13; Weisman Tr. 299-305).

 30. On June 17, 1987, FASA entered into an Agreement with Incredible Technologies, a computer development firm for the creation of hardware and software for ESP's BATTLETECH project. Under the terms of that Agreement, all tangible and intangible products of Incredible Technologies' development work, including graphic materials, automatically became the sole property of FASA (along with any patent or copyright rights) upon FASA's corresponding payment for such work. (PX 37, 47; Weisman Tr. 302-03) .

 31. As ESP began to develop the BATTLETECH Virtual Reality game, FASA continued to expand the BATTLETECH universe by creating new MECH designs and new BATTLETECH products. In 1988, FASA created two new MECHs for a sourcebook entitled House Liao. The Raven and the Cataphract were the original creations of FASA employee Todd Marsh. (PX 96; PGX 58; Lewis Decl.).

 32. In 1989, FASA created and introduced twelve new BATTLETECH products (PX 94, PGX 5):

 
The Price of Glory, a novel, in Jan. 1988 (PGX 5A)
 
House Liao, a source book, in Feb. 1988 (PGX 5B)
 
Dropships and Jumpships, a source book, in Feb. 1988 (PGX 5 c)
 
House Davion, a source book, in June 1988 (PGX 5D)
  
Warrior En Guard, a novel, in July, 1988 (PGX 5E)
  
Rolling Thunder, a scenario book, in July, 1988 (PGX 5F)
  
Warrior Riposte, a novel, in July, 1988 (PGX 5G)
  
Shrapnel, a short story collection, in Aug. 1988
  
The Periphery, a source book, in Sept., 1988 (PGX 5H)
  
The Kell Hounds, a scenario book, in Dec., 1988 (PGX 5I)
  
PlasTech Mechs, a game accessory, in Dec. 1988 (PGX 5J)
  
Cammo Specs, a game accessory, in Dec. 1988 (PGX 5K).

  Each product contained original text and/or artwork and sometimes incorporated text or art from previous BATTLETECH products, including, on occasion, FASA's interpretations of several of the designs licensed from TCI. Each product contained a proper copyright notice and complied with all statutory copyright formalities. (Weisman Tr. 319-25; Lewis Decl.).

  33. In 1989, FASA added 25 new MECHs to its growing collection of original MECH designs. Created by Dana Knutson, a FASA employee, the following MECHs were first featured in Wolf's Dragoons, a source book released in April of 1989 (PGX 6E): Falcon, Firefly, Flea, Hoplite, Hornet, Imp, Shogun and Wolfhound. Of these, the Flea and the Falcon were based on an original sketch created by Ral Partha, FASA's BATTLETECH miniatures licensee, which assigned all right, title and interest in the design to FASA. (PX 96; Knutson Decl.; Lewis Decl.).

  34. FASA employee Knutson also designed new MECHs for the source book entitled Technical Readout 2750 (PGX 6I). These MECHs included: Black Knight, Champion, Crab, Crockett, Exterminator, Flashman, Hermes, Highlander, Hussar, King Crab, (depicted in Appendix A), Kintaro, Lancelot, Mongoose, Sentinel, Thorn, Thug and Wyvern. (PX 96; Lewis Decl.; Knutson Decl.). Of these, the Black Knight, Crab, Highlander, King Crab, Lancelot, Mongoose, Thug and Wyvern were based on original sketches created by Ral Partha, FASA's BATTLETECH miniatures licensee, which assigned all right, title and interest in the designs to FASA. (PX 96; Knutson Decl.; Lewis Decl.).

  35. Many of the original designs created by Knutson are distinguished by the de-emphasis of the head, in contrast to the Japanese designs which frequently featured a head with antennae. Unless otherwise required by the writer, the Knutson designs incorporate a head lowered into the body or appear headless, with a torso that resembles a spaceship or a tank on legs. Knutson also attempted to carry on the technical realism of the look created by Duane Loose for FASA. (Knutson Decl.; Tr. 641-42).

  36. Knutson created MECHs for FASA based upon the written description provided by the writers of the BATTLETECH fiction, which included specifics about the size, fire power, and other attributes of the MECH. (Knutson Decl.).

  37. In 1989, FASA created and released 10 new BATTLETECH products (PX 94; PGX 6):

  
Wolves on the Border, a novel, in Jan., 1989 (PGX 6B)
  
The Star League, a source book, in Jan., 1989 (PGX 6A)
  
Warrior Coupe, a novel, in Jan., 1989 (PGX 6C)
  
The War Book - Part I, a source book, in Feb., 1989 (PGX 6D)
  
Wolf's Dragoons, a source book, in April, 1989 (PGX 6E)
  
BattleTech 20 Year Update, a source book, in June, 1989 (PGX 6F)
  
BATTLETROOPS, a boxed game, in Aug., 1989 (PGX 6H)
  
Technical Readout 2750, a source book, in Aug., 1989 (PGX 6I)
  
War Book II, a source book, in Sept., 1989 (PGX 6K).

  Each product contained original text and/or artwork and sometimes incorporated text or art from previous BATTLETECH products, including, on occasion, FASA's interpretations of several of the designs licensed from TCI. Each product contained a proper copyright notice. (Lewis Decl.).

  38. In 1989, FASA also laid the groundwork in the fiction of the BATTLETECH universe for the introduction of new MECHs created for the Virtual Reality game. The fictional premise involved the coming of the Clans, groups of strange, aggressive military forces from beyond the Periphery or outer edges of the known space. The Clans used an advanced eugenics program to breed a specialized group of elite warriors to pilot OMNIMECHs (Clan MECHs) and Aerospace fighters. The Clans also introduced a new type of combatant into the BATTLETECH universe known as an Elemental. These genetically bred human beings stood over eight feet tall and possessed superior strength and speed. Equipped with individual battle armor suits, known as Elemental suits, a small group of Elementals was capable of bringing down a single MECH. The Clans (and the Elementals) added a completely new dimension to the BATTLETECH universe by permitting new conflict and combat.

  39. Although FASA had planned to incorporate all of FASA's original MECH designs into the BATTLETECH Virtual Reality game, programmers encountered difficulty in reproducing the large number and variety of MECHs existing in the BATTLETECH universe. As a result, Incredible Technologies and FASA created the OMNIMECHs.

  40. The first of the OMNIMECHs was an original design known as the Mad Cat, which is depicted in Appendix B. The Mad Cat was designed to be lighter, faster, stronger and more flexible than other BATTLETECH MECHs. (Weisman Tr. 311-13). BATTLETECH fans received their first glimpse of the Mad Cat in a newsletter in the summer of 1988. (PX 155).

  41. The Mad Cat and other Clan OMNIMECHs were created by Tim Skelly, a software programmer employed by Incredible Technologies, under the direction of FASA founders Jordan Weisman and Ross Babcock. (Weisman Tr. 310-18; Babcock Dep.). Once developed on the computer, the Mad Cat image was translated by an artist, Steve Venters, an independent contractor of FASA, into a full scale design and incorporated, along with the three other OmniMech designs (Thor, Vulture, and Loki) developed for the Virtual Reality game, into the BATTLETECH game systems, supplements, novels and other products. (PX 806-09; Weisman Tr. 317-19; Venters Decl.; Lewis Decl.).

  42. Steve Venters' remaining OmniMech designs (Black Hawk, (depicted in Appendix c); Daishi, (depicted in Appendix D); Dasher (depicted in Appendix E); Dragonfly; Fenris; Gladiator; Koshi, (depicted in Appendix F); Man O'War; Masakari; Puma; Ryoken and Uller), were also original creations. Venters' goal in creating his designs was to make the MECHs symmetrical and based on basic shapes and combinations of basic shapes. His designs were intended to look as if the MECHs were actually built by machines. Further, his designs were realistic in the sense that they were not true science "fiction" but "science projection"--something that may actually develop in the future. (Venters Decl.).

  43. Steven Venters assigned to FASA all his right, title and interest in the designs he created for FASA. (Venters Decl.).

  44. The Mad Cat made its virtual reality debut in August of 1990 with the opening of The BATTLETECH Center Virtual Reality Entertainment Center at North Pier in Chicago, Illinois. (Weisman Tr. 330-36).

  46. The BATTLETECH Center not only utilized the characters, storylines, images, designs, descriptions and characteristics created and developed by FASA for BATTLETECH, it also added to that continually evolving universe. (Weisman Tr. 310-40; Lewis Decl.).

  47. Virtual World Entertainment offers the BATTLETECH game at the BATTLETECH Center and at Virtual World Centers pursuant to a license from FASA. (Weisman Tr. 332-39).

  48. The BATTLETECH virtual reality game is currently featured at Virtual World Centers located in San Francisco, San Diego, Houston, Las Vegas, Atlanta, Sydney, Australia, Tokyo and Yokohama, Japan. (Weisman Tr. 335).

  49. Since the opening of The BATTLETECH Center, Virtual World Entertainment estimates that its sales attributable to BATTLETECH exceed $ 5,000,000. (PX 402-08; Weisman Tr. 408).

  50. The image of the Mad Cat is featured prominently on signs both inside and outside The BATTLETECH Center and Virtual World Centers. The image of the Mad Cat is also used extensively in promotional literature (for FASA and these Centers), which receives wide distribution throughout the United States. In addition, the Mad Cat has been fully incorporated into the BATTLETECH game systems and appears numerous times in source books, supplements, rules manuals and technical readouts as well as on posters, pins and other BATTLETECH products. (PX 95; Weisman Tr. 336-37; Lewis Decl.).

  51. Since the opening of The BATTLETECH Center, BATTLETECH and the BATTLETECH virtual reality game have received extensive unsolicited media coverage. BATTLETECH has been featured in television coverage on national news and entertainment programs, and in articles in the New York Times, Wall Street Journal, Los Angeles Times, Chicago Tribune, Time Magazine, Sports Illustrated, Business Week and Entertainment Weekly, among hundreds of others. (PX 400-01; Weisman Tr. 321-28; Morris Decl.).

  52. As Virtual World Entertainment promoted BATTLETECH through its virtual reality game, FASA created and introduced 28 new BATTLEMECHs in 1990. Joel Biske, a FASA employee, created Axman, Caesar, Grand Dragon, Hatamoto-Chi and Wolf Trap. Dana Knutson, FASA'S Art Director, created Annihilator, Katana, Mercury and Nightsky. Jim Nelson, a FASA employee, created the Clan Elemental suit, Guillotine and Mauler. Steve Venters, an independent contractor hired by FASA, translated the computer images of the Mad Cat, Loki, Thor and Vulture, into full scale designs. The original designs from Biske, Knutson, Nelson and Venters were all first published in the BATTLETECH Technical Readout 3050 released in April of 1990. (PGX 7B; PX 96, 115, 122, 124, 128; Lewis Decl.; Biske Decl.; Knutson Decl.; Venters Decl.).

  53. The Clan Elemental suit (depicted in Appendix G) was created to look humanoid, unusual and distinct from anything else in the BATTLETECH universe. (Nelson Decl.). However, the Clan Elemental Suit borrows heavily from various prior powered body suits including specifically the Storm Trooper suit, which was first used in 1976 during the initiation of the Star War trilogy movies. (DX 501; Macek Tr. 1104-05; Rovin Decl.; Appendix G).

  54. In addition to Technical Readout 3050 (PGX 7B), FASA created and introduced eight new BATTLETECH products in 1990 (PGX 7; PX 94):

  
4th Succession War, a scenario book, in Jan., 1990 (PGX 6L)
  
Lethal Heritage, a novel, in Feb., 1990 (PGX 7A)
  
The Battle for Twycross, a scenario book, in June, 1990 (PGX 7C)
  
THE BATTLETECH Compendium, a rule book, in July, 1990 PGX 7E)
  
House and Clan Patches, an accessory, in July, 1990 (PGX 7D)
  
BATTLETECH Reinforcements 2, a game accessory in Sept., 1990 (PGX 7F)
  
Blood Legacy, a novel, in Nov., 1990 (PGX 7G)
  
More Tales of the Black Widow, a scenario book, in Nov. 1990 (PGX 7H).

  Each product contained original text and/or artwork and sometimes incorporated text or art from previous BATTLETECH product, including on occasion FASA's interpretations of several of the designs licensed from TCI. Each product contained a proper copyright notice.

  55. The BATTLETECH Compendium, a comprehensive rulebook released in 1990, received the 1990 ORIGINS Award for Best Miniature Rules. (Lewis Decl.).

  56. In 1991, FASA added another fourteen original MECH designs to the BATTLETECH universe, four of which were created by Kadakowa Shoten, FASA's Japanese licensee. In addition, Jeff Laubenstein, a FASA employee, created Cudgel, Daedaeus, Juggernaut, Longshot, Onslaught, Paladin, Mantis and Ronin. All of these MECHs were featured in a new BATTLETECH boxed game called SOLARIS VII (PGX 8M). Dana Knutson, FASA's Art Director, also created Excalibur and Spartan in 1991 for a scenario book entitled Rhonda's Irregulars (PGX 8N). (PX 96, 115; Lewis Decl.; Laubenstein Decl.; Knutson Decl.).

  57. In 1991, FASA created and published 18 new products for the BATTLETECH universe (PGX 8; PX 94):

  
BATTLETECH OmniMech Blueprints, an accessory, in Jan., 1991 (PGX 8A)
  
BATTLETECH Map Set #3, a game accessory, in Feb., 1991 (PGX 8B)
  
BATTLETECH Record Sheets: Vol. 1, a game accessory, in March, 1991 (PGX 8c)
  
House Marik, a source book, in April, 1991 (PGX 8D)
  
BATTLETECH Record Sheets: Vol. 2, a game accessory, in April, 1991 (PGX 8E)
  
BattleTech Map Set #4, a game accessory, in May, 1991 (PGX 8F)
  
BATTLETECH Record Sheets: Vol. 3, a game accessory, in July 1991 (PGX 8G)
  
Assault Record Sheets: Vol. 4, a game accessory, in Aug., 1991 (PGX 8H)
  
Mechwarrior - 2nd Edition, a rule book, in Aug., 1991 (PGX 8I)
  
Lost Destiny, a novel, in Sept., 1991 (PGX 8K)
  
Way of the Clans, a novel, in Sept., 1991 (PGX 8J)
  
Wolf Clan Sourcebook, a source book, in Oct., 1991 (PGX 10Q)
  
Blood Name, a novel, in Oct., 1991 (PGX 8L)
  
Solaris VII, a boxed game, in Nov., 1991 (PGX 8M)
  
Rhonda's Irregulars, a scenario book, in Nov., 1991 (PGX 8N)
  
BATTLETECH Reinforcement Record Sheets, a game accessory in Dec., 1991 (PGX 8P)
  
Falcon Guard, a novel, in Dec., 1991 (PGX 8Q)
  
Clan Troops, a game accessory, in Dec., 1991 (PGX 8R).

  Each product contained original text and/or artwork and sometimes incorporated text or art from previous BATTLETECH products, including, on occasion, FASA's interpretations of several of the designs licensed from TCI. Each product contained a proper copyright notice and complied with all statutory copyright formalities. (Lewis Decl.).

  59. In 1992, FASA created and released 12 new BATTLETECH products (PGX 9; PX 94):

  
Objective Raids, a source book, in Jan. 1992 (PGX 9B)
  
Unbound, a scenario book, in Jan. 1992 (PGX 9A)
  
Bloodright, a scenario book, in March, 1992 (PGX 9c)
  
Wolfpack, a novel, in April, 1992 (PGX 9D)
  
Technical Readout 3055, a source book, in May, 1992 (PGX 9E)
  
Mercenary's Handbook, a source book, in June, 1992 (PGX 9F)
  
Natural Selection, a novel, in June, 1992 (PGX 8s)
  
McCarron's Armored Cavalry, a scenario book, in July, 1992 (PGX 9G)
  
Jade Falcon, a source book, in July, 1992 (PGX 9H)
  
BATTLETECH Record Sheets: 3055, a game accessory, in Aug., 1992 (PGX 9I)
  
Comstar, a source book, in Oct., 1992 (PGX 9K)
  
Null Set, a scenario book, in Nov., 1992 (PGX 9J).

  Each product contained original text and/or artwork and sometimes incorporated text or art from previous BATTLETECH products, including, on occasion, FASA's interpretations of several of the designs licensed from TCI. Each product contained a proper copyright notice and complied with all statutory copyright formalities. (Lewis Decl.).

  60. In 1993, FASA added 6 new MECHs to the BATTLETECH universe. FASA employee Mike Nielson created Sasquatch, Werewolf, Cauldron-Born, Hankyu, Nobori-Nin and Copperhead. (Knutson Decl., Lewis Decl.).

  61. In 1993, FASA created and released 15 new BATTLETECH products (PGX 10; PX 94):

  
BattleMechs, a game accessory, in Feb. 1993 (PGX 10A)
  
Ideal War, a novel, in March, 1993 (PGX 10B)
  
BATTLETECH Intelligence Operation Handbook, a source book, in March, 1993 (PGX 10c)
  
Blood of Heroes, a novel, in May, 1993 (PGX 10D)
  
BATTLETECH ROC Poster, a poster, in July, 1993 (PGX 10E)
  
BattleMech Recognition Cards, a game accessory, in July, 1993 (PGX 10F)
  
Assumption of Risk, a novel, in July, 1993 (PGX 10G)
  
Day of Heroes, a scenario book, in July, ...

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