Digital Chocolate lays out its Mafia Wars trademark case against Zynga

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Games.com -- The Blog has obtained a complete copy of the lawsuit that Trip Hawkins' Digital Chocolate served against Zynga earlier this week over the company's use of the Mafia Wars trademark. In it, Digital Chocolate methodically lays out its argument that, "through duplicity and bad faith, [Zynga] effectively hijacked the MAFIA WARS mark" that Digital Chocolate had a prior right to.

According to the court documents (the first 18 pages of which can be found here), Digital Chocolate's use of the name Mafia Wars began in June of 2004, when the company got the game in its acquisition of Finnish company Sumea Interactive. Sumea's Mafia Wars eventually spawned sequels under Digital Chocolate, including Scarlotti's Mafia Wars 2 in 2005 (here's an IGN preview from that game's release), Mafia Wars Yakuza Wars in 2005 and Mafia Wars New York in 2009 (astute observers may see similarities to Zynga's later Mafia Wars Bangkok and Mafia Wars New York in those titles). Though Digital Chocolate's Mafia Wars was never as big as Zynga's, the company claims that two million people worldwide downloaded games in the series (including "hundreds of thousands" in the U.S.)

Digital Chocolate lays out its Mafia Wars trademark case against Zynga
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While Zynga may have been unaware of Digital Chocolate's game when it launched its version of Mafia Wars in 2008, Digital Chocolate made sure to let them know about the conflict in a January 2009 letter, court documents state. In May of 2009, Digital Chocolate says they received a response to their letter in which Zynga, while claiming that their game didn't infringe on Digital Chocolate's, nonetheless "disclaims any trademark rights in the term 'Mafia Wars' in connection to the game."

But that state of affairs didn't last long, according to the court documents, as Zynga filed for a Mafia Wars trademark in the U.S. in July of 2009. The company later extended the trademark application to other countries and to use in a variety of branded products from memo pads to tank tops. These filings became especially ironic when Zynga filed a suit againt rival Playdom over the Mafia Wars name. At that time, Zynga stated their "belief no other person, firm, corporation or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely..."

In the lawsuit, Digital Chocolate is seeking that Zynga "disgorge any and all revenues and profits that Defendant has derived from its wrongful actions;" as well as "treble damages, resonable attorney's fees and expenses; and costs," rights to the Mafiwawars.com domain name and "corrective advertising for double the amount spent" by Zynga.

While Digital Chocolate's case seems strong (assuming the facts are as they've been laid out here -- Zynga has offered only a prepared statement in response to the allegations), there are a few potential legal sticking points that might prevent them from winning untold millions from Zynga. For one, Digital Chocolate seems to have never formally registered a trademark for Mafia Wars in the United States, weakening their prior claim on the name. For another, Digital Chocolate would have to prove that Zynga's use of the Mafia Wars name produced "market confusion" over which game was which. This means they have to show that some consumers assumed Zynga's mega-hit Facebook game has some relationship with Digital Chocolate's largely unheard-of downloadable title.

We'll provide updates on the legal wrangling as we get them.
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