The Wars over Mafia Wars: Dissecting Digital Chocolate’s Case Against Zynga

If we all lived inside a digital game, Digital Chocolate might be sending a guy over to Zynga right about now to break a few kneecaps.

Fortunately, we live in a world of law and order, so Digital Chocolate has merely filed a trademark infringement lawsuit against Zynga. At issue: the rights to the name Mafia Wars. San Francisco-based Zynga (which recently expanded to Boston) introduced a role-playing game under that title in 2008, and along with FarmVille, it’s become one of the social gaming juggernaut’s flagship titles. Mafia Wars players complete gangster-inspired missions and fight other players in order to advance within a fictional crime syndicate. The title has 28 million monthly active users on Facebook, and its viral success has helped boost Zynga’s valuation to somewhere north of $3 billion.

The only problem: San Mateo, CA-based Digital Chocolate has been making mobile games under the title Mafia Wars since 2004. The similarities between the games are more than skin deep. Players of the Digital Chocolate games—the most recent version of which, Mafia Wars New York, came out last year—complete gangster-inspired missions in order to advance within a fictional crime syndicate. Sound familiar?

Zynga's Mafia Wars for FacebookNow Digital Chocolate is moving to take down its larger rival. The company filed a trademark infringement complaint against Zynga yesterday in U.S. District Court for the Northern District of California in San Jose. The suit claims that Digital Chocolate has senior rights to the Mafia Wars trademark, and asks the court to force Zynga not only to stop using the trademark, but to hand over to Digital Chocolate all of its revenues from its version of the game, along with all Zynga materials using the Mafia Wars mark, from posters to T-shirts.

Digital Chocolate is also asking the court to invalidate Zynga’s own trademark registration application, and to force the company to “engage in corrective advertising in an amount double that which Zynga has spent promoting its products and services under the Mafia Wars mark.”

I spoke this morning with Digital Chocolate’s chief financial officer, Mark Richman. He says the suit is all about defending Digital Chocolate’s rights to its own creations.

“We have to establish that we are going to protect our trademarks,” Richman says. “We work hard to create original intellectual property, and we have to establish that we are going to protect that property. That is the primary goal here.”

Zynga hasn’t commented in detail about Digital Chocolate’s complaint. In response to Xconomy’s request for an interview, a Zynga spokeperson forwarded the company’s official, two-sentence response. “We are surprised and disappointed by Digital Chocolate’s lawsuit,” Zynga’s statement said. “The timing of the action appears to be opportunistic, and we plan to defend ourselves vigorously.”

It’s impossible to know exactly what Zynga means by “opportunistic.” But the runaway success of Zynga’s version of Mafia Wars has definitely earned the company a few detractors, as well as at least one other lawsuit. In 2009, developer David Maestri sued Zynga for … Next Page »

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Wade Roush is a freelance science and technology journalist and the producer and host of the podcast Soonish. Follow @soonishpodcast

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