Zynga, Digital Chocolate clash over Mafia Wars

Zynga has been running into a good bit of trouble due to its free online game Mafia Wars of late. Last week, San Francisco city attorney Dennis Herrera threatened to sue the casual game developer for a recent marketing campaign that saw dozens of stickers applied to public sidewalks in five separate locations. Now, Zynga has actually been sued over Mafia Wars, this time due to a trademark dispute with fellow casual game developer Digital Chocolate.

As relayed by Courthouse News, Digital Chocolate filed its suit with the District Court of Northern California on August 24. In the suit, the studio, which was set up by Electronic Arts cofounder and onetime CEO Trip Hawkins in 2003, notes that it has marketed and sold the action adventure game Mafia Wars for mobile phones since 2004, releasing three expansions through 2009. Further, the studio filed to trademark the term "Mafia Wars" in Europe, though not with the US Patent and Trademark Office.

The trouble began in September 2008, when Zynga began offering its own game named Mafia Wars, which is available for play through social networks such as Facebook and on the iPhone. According to the suit, due to Zynga's extensive marketing campaign that included a multimillion-dollar joint effort with 7-Eleven, its version of Mafia Wars is played by more than 1.1 million people a day.

Taking exception with Zynga's appropriation of the Mafia Wars name, Digital Chocolate sent the game maker a cease-and-desist letter in January 2009, claiming that it had senior rights to the name. In May 2009, the studio claims that it received a letter from Zynga acknowledging Digital Chocolate's senior rights and noting that it makes no claims to the Mafia Wars trademark.

Despite that claim, Digital Chocolate stated in its suit that Zynga went ahead and filed for rights to the Mafia Wars name, first in the United Kingdom and then again in a variety of other countries, including the US. The studio also began claiming senior rights to the Mafia Wars trademark, namely by sending its own cease-and-desist letter to recent Disney acquisition Playdom.

Digital Chocolate is seeking the court's recognition that it has established a common law claim on the Mafia Wars trademark due to its use of the term in its games since 2004. The studio is also asking the court to stop Zynga from using the Mafia Wars name, as well as prevent Zynga from being issued a trademark for the term in the US.

Other demands include Zynga turning over the rights to the MafiaWars.com domain name and engaging in a "corrective advertising campaign" to the tune of double what Zynga spent on its own game.