Atari Interactive, Inc. (“Atari”) has settled its case against Hyperkin, Inc. following the complete denial of Defendant Hyperkin, Inc.’s (“Hyperkin”) motion for summary judgment by Judge Christina Snyder of the Central District of California.
Atari filed its lawsuit against Hyperkin on January 25, 2019 alleging (1) false designation of origin, (2) common law unfair competition; and (3) trademark dilution relating to Hyperkin’s unlawful infringement of the Atari 2600 Video Console and Atari CX40 Joystick. Following discovery, Hyperkin filed its motion, which sought summary judgment on all claims on the grounds that the trade dress was abandoned, the joystick is not distinctive, and the design of the joystick is functional.
On July 27, 2020, Judge Snyder issued a lengthy written opinion rejecting each of Hyperkin’s arguments and summary judgment was denied.
Abandonment. Hyperkin argued that Atari had abandoned its trade dress when it ceased selling the Atari 2600 console and joystick in 1992. The Court rejected this argument and held that Atari was the senior user (and thus owner) of the trade dress, both because (a) Hyperkin previously admitted that Atari owns the trade dress, (b) Atari used the trade dress continuously and extensively for over a decade prior to Hyperkin. The Court, thus, held that a finder of fact could reasonably determine that Atari had resumed use of the trade dress, assuming arguendo that it had been abandoned.
Functionality. The Court also rejected Hyperkin’s argument that each of the individual elements of the joystick were functional and thus there could be no trade dress protection. The Court found that even assuming that individual elements are functional, the focus in a trade dress claim is “on the overall visual impression that the combination and arrangement of those elements create” and that whether the combination and configuration of the joystick somehow improves the joystick’s use as to render the “overall appearance” functional was a question for the fact finder.
Distinctiveness/Secondary Meaning. In rejecting Hyperkin’s argument that the joystick was neither distinctive nor had attained secondary meaning, the Court relied on Hyperkin’s own admission that it “decided to sell” its A77 joystick because “its customers began asking whether Hyperkin carried replacement joystick controllers for the old Atari 2600 systems” and “[p]eople who are into retro gaming” would recognize the 2600 joystick. Thus, even if consumers do not necessarily know that the source of the joystick is Atari Interactive or its predecessors, because they recognize the 2600 joystick, they attribute it to a particular source. The Court also found that based on the numerous references to “Atari Style” on Hyperkin’s packaging, a fact finder could reasonably find that Atari’s trade dress had attained secondary meaning.
The case is Atari Interactive, Inc. v. Hyperkin, Inc., case no. 19-cv-00608.
Atari Interactive, Inc. is represented by Ellis George attorneys Keith J. Wesley, Matthew Venezia and Milin Chun.
