copyright infringement, alleging that Zynga’s Mafia Wars was a ripoff of his Facebook game Mob Wars. Zynga and Maestri reportedly settled the case for several million dollars.
Richman acknowledges that Digital Chocolate never registered “Mafia Wars” as an official company trademark with the U.S. Patent and Trademark Office. But that doesn’t necessarily undermine its case against Zynga: companies can gain common-law rights to trademarks simply by being the first to use them commercially. “Under common trademark law, you have other legal rights, which we have established by having the game out since 2004,” says Richman.
Digital Chocolate was founded in 2003 by William “Trip” Hawkins, who previously founded video game giant Electronic Arts and was long its CEO. (Hawkins is a member of Xconomy’s unpaid, informal group of advisors, called Xconomists.) The company is known for its line of multi-platform casual games for Facebook, the iPhone and other smartphones, game consoles, and desktop and laptop PCs.
Digital Chocolate’s complaint makes pretty good reading, at least compared to a lot of other legal documents; you can browse the key opening section of the complaint on the following page. The complaint contends, among other things, that Zynga’s use of the Mafia Wars title has injured it by engendering confusion among consumers. (There’s little doubt about this confusion: the Zynga version of Mafia Wars seems to have almost completely overshadowed the Digital Chocolate version in the marketplace. If you search for “Mafia Wars” on Wikipedia, for example, you are deposited on a page about the Zynga game.)
The company’s main worries, according to the complaint, are that consumers will think that Zynga’s version of Mafia Wars is endorsed by Digital Chocolate, or even worse, that they’ll think Digital Chocolate is infringing on Zynga’s purported trademark.
Digital Chocolate says in the complaint that it tried to resolve the Mafia Wars dispute by more peaceful means. In January 2009, according to the complaint, Digital Chocolate’s attorneys sent Zynga a cease-and-desist letter. In a written response in May 2009, Zynga’s attorneys said that “Zynga disclaims any trademark rights in the term ‘Mafia Wars’ in connection with its game.”
But that didn’t stop Zynga from later filing a trademark application for that very term in the United Kingdom and the United States, or from claiming—in its own trademark infringement suits against rival Playdom and a group in San Francisco selling virtual goods related to the Zynga game—that “Zynga is the senior user of the ‘Mafia Wars’ mark” and that “Zynga coined the trademark Mafia Wars,” in the words of legal actions cited in the Digital Chocolate complaint.
Digital Chocolate sums up its case this way: “Through duplicity and bad faith, Zynga has effectively hijacked the Mafia Wars mark from Digital Chocolate and is aggressively marketing its games under the Mafia Wars mark to Digital Chocolate’s substantial detriment.”
Hijacking may be a strong word—but Zynga is certainly known for mimicking rival companies’ games and eventually outcompeting them. In an illuminating piece in January, BusinessInsider highlighted the earlier games that may have inspired Zynga games such as Farmville (Slashkey’s FarmTown), FishVille (TallTree Games’ Fish World), Cafe World (Playfish’s Restaurant City), PetVille (Playfish’s Pet Society), and Word Twist (GameHouse’s TextTwist). “One way Zynga creates huge hits is by identifying popular games from other studios, creating a near replica, and then beating the original with a bigger marketing budget,” BusinessInsider’s Nick Saint wrote. “As with Microsoft, this strategy has made Zynga unpopular…But unpopularity—and even perpetual legal battling—may be problems Zynga is happy to put up with. As Microsoft has demonstrated, the strategy works.”
Barring an early settlement, the next step in the Digital Chocolate suit will be a case management conference, scheduled for November 2. Magistrate Judge Patricia Trumbull is presiding in the case.
Click to read the opening pages from Digital Chocolate’s complaint >>
