NERO International Holding Co., Inc. et al. v. NEROtix Unlimited Inc. et al. (D. Mass. 21-cv-11302).

This lawsuit involves the ownership of two trademarks, “NERO” and “RAVENHOLT,” for use in live action role playing games, or “LARPs”.   NERO International runs a LARP gaming universe in which many of the games take place in a fictional Duchy known as Ravenholt.  Plaintiff Joseph Valenti alleges that he obtained the NERO and RAVENHOLT trademarks when he purchased NERO International Holding in 1998.  Plaintiffs allege that Defendants NEROtix and its owner Annemarie Tyler used these marks pursuant to a license agreement that ended in 2016, but that they continued using the marks following termination, while the Defendants assert that the Plaintiffs never owned rights to the marks, which Defendants assert were created through the contributions of many independent players/developers, who were not employed by the plaintiffs and never assigned their contributions to the plaintiffs.  Defendants further asserted that any rights held by Nero International were dissolved when Nero International was dissolved in 2002 (the dissolution was annulled in 2017), and that the Defendants had been fraudulently induced into the license by misrepresentations of Nero International with respect to its intellectual property rights.  Finally, Defendants counterclaimed that they had all rights to the RAVENHOLT mark and that Plaintiffs were infringing through the use of the mark.

Judge Saris granted the motion of a third party, William Bearden, to intervene as a defendant and counterclaim plaintiff.  Bearden purports to own the mark “NERO NEW ENGLAND ROLE PLAYING ORGANIZATION,” and obtained a registration on the mark in 2015.  The registration is presently subject to a cancellation proceeding filed by the plaintiffs at the PTO.  Judge Saris determined that Bearden had demonstrated standing, based on his assertions of ownership of his mark, infringement by the plaintiffs, and interference with his mark through the cancellation filing.  Bearden also claimed fraudulent misrepresentations that induced him to pay license fees to the plaintiffs.  She further found that the petition to intervene was timely, as it came about prior to the initial scheduling conference and only about ten weeks after the filing of the complaint.  Judge Saris noted that both Bearden and the defendants asserted that the plaintiffs did not own rights in the NERO and RAVENHOLT marks, and if Bearden was not permitted to intervene, a finding in the plaintiffs’ favor on that issue would be persuasive in any subsequent lawsuit involving Bearden.  Finally, Judge Saris found that Bearden’s goals in intervening, the protection of his rights in the NERO NEW ENGLAND ROLE PLAYING ORGANIZATION mark, might not be adequately represented, as that specific mark is not a part of the original case and no other party is interested in proving Bearden’s right to that mark.  Accordingly, Judge Saris determined that Bearden was entitled to intervene as a matter of right.