Legal Battles... in FarmVille? - Fordham Intellectual Property, Media & Entertainment Law Journal
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Legal Battles… in FarmVille?

Legal Battles… in FarmVille?

Over the last several years, social network gaming has taken the digital world by storm.  Hit games like FarmVille and Mafia Wars have entirely changed the landscape of the gaming industry, turning traditional one to four-player games into world-wide gaming phenomena with millions of live players interacting in a singular digital space.  However, making these digital worlds often means fighting out some battles in the real world–legal ones!

For the corporations who create these games, the battle is usually one about protecting their games from trademark infringement by competing game developers.  For example, Zynga, Inc., a San-Francisco based company famous for the hit social media game “FarmVille” previously sued Maryland-based Imagenesis Corp., for trademark infringement in connection with the latter’s new game called “MafiaVille.”  The lawsuit was filed with the United States District Court for the District of Maryland on February 19, 2013.

Boosted by the ever-growing popularity of social networking websites like Facebook and the ubiquity of modern-day smart phones and tablets, Zynga has become the leading developer of online social media games.  Its most iconic game, FarmVille, allows players to cultivate their own farm in the digital world.  Since its founding in 2007, Zynga has successfully developed, advertised and installed a number of different games, including FarmVille, CityVille, FishVille, FrontierVille, PetVille and YouVille (which the company has named collectively as the “Ville Family of Games”) as well as other similarly formatted games such as Mafia Wars.  The company claims that over 65 million people play its “Ville” games every month, all of which have been properly patented.

In December 2010, Zynga found out that competitor Imagenesis Corp. was intending to release “MafiaVille,” a game with a similar format and a name that sounded too much like a rip-off of two Zynga franchises – namely, FarmVille and Mafia Wars.  Zynga immediately contacted Imagenesis to assert that the continued use of the MafiaVille name would constitute an infringement of Zynga’s “Ville” trademarks.  Imagenesis refused to comply and instead filed suit with the Maryland federal court seeking a declaratory judgment providing that Imagenesis’ use of “MafiaVille” would not constitute a violation of Zynga’s trademark rights.  Although the case was ultimately dismissed and the sought-after declaration of non-infringement was never issued, Imagenesis nevertheless continued to use the controversial name and proceeded to file a trademark application for the MafiaVille name with the United States Patent and Trademark Office.

In filing its infringement claim, Zynga accused Imagenesis of “seek[ing] to use names that will confuse consumers, trade off of Zynga’s popularity, and exploit the goodwill Zynga has developed in the ‘VILLE Family of Marks.’”  The company claims that Imagenesis intentionally picked the name “MafiaVille” being fully aware of Zynga’s iconic game titles and their respective successes with online gamers.   In fact, Zynga alleged that Imagenesis actually played several of Zynga’s “Ville” games and Mafia Wars before filing its trademark application for the name “MafiaVille.”

Zynga specifically petitioned the court for declaratory relief announcing that the name “MafiaVille” infringes and dilutes its “Ville” trademarks as well as an injunction to prevent Imagenesis from using “MafiaVille” moving forward. All in all, the complaint charges six (6) causes of action, including federal trademark infringement, federal false designation of origin, federal dilution, as well as trademark infringement and unfair competition under Maryland state law.

In the United States, the federal law governing trademarks is the Lanham Act, which generally forbids the use of trademark owned by another party. To prevail on its federal trademark infringement claim, Zynga “must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant’s use of the mark to identify goods or services causes a likelihood of confusion.” See A&H Sportswear, Inc. v. Victoria Secret Stores, Inc. 237 F.3d 198 (3d Cir. 2000).  Owning valid trademarks to its Ville games, Zynga would likely have no difficulty meeting the first two prongs of this standard. Trademark infringement battles like this usually turn on whether the third prong can be satisfied – that is, whether Zynga will can show that “MafiaVille” was imitated after Zynga’s trademarked game titles, and that its commercial “use is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(a).  Under this standard, Zynga would likely prevail.  As discussed above, Zynga has risen as the leading purveyor of social media gaming and its Ville games have become famous among internet gamers.  A typical consumer could very well confuse competitor Imagenesis’ new “MafiaVille” game as related to the popular “Mafia Wars” and Ville family of games that Zynga has worked diligently to market as its distinct brand.  Thus, a Court would likely agree with Zynga on its claims against Imagenesis.

Imagenesis attorneys likely made similar predictions and on April 3, 2012, the parties submitted a settlement agreement for the Judge’s approval, ending this one out of many battles to come. While this case is now over, it serves as an example of the types of legal battles that competitors are constantly waging to protect their intellectual property.

Moving forward, novel innovations in online gaming will continue to animate the ongoing legal battles to protect intellectual property.  As such, trademark infringement cases like the one between Zynga and Imagenesis are likely to be staple occurrences in the gaming industry.  With all these legal battles, it is surprising that no one has created a game called Trademark Wars. Perhaps it is because it is the game already being played by the companies themselves!


Christopher De Los Reyes