Words With More Than Friends?
Zynga, the producer of a variety of online and mobile games – including Words With Friends (which, let’s be honest, is a bit like Scrabble) and other games in the “With Friends” family – has filed suit against the developers of an adult relationship-oriented application with the charming name Bang With Friends (“BWF” from here on out.)
Words With Friends was created in 2009 by Newtoy, Inc., a game studio acquired by Zynga in 2010. The popularity of Words With Friends, along with a variety of other games, propelled Zynga to an initial public offering in December 2011. The IPO was a disaster that Zynga is still struggling to recover from, but that’s another story.
BWF was conceived in late 2012. The application is described as “a completely anonymous way to hook up with your Facebook friends.”
After some failed initial attempts to convince the BWF folks to cease and desist, Zynga filed suit in Federal Court on July 30, seeking redress for, among other claims, trademark infringement and dilution.
A claim of trademark infringement requires a showing of likelihood of confusion among consumers as to the source of the goods or services. Zynga asserts in its filing that there is just such likelihood that consumers will be confused as to the source of BWF – meaning, that people are likely to think that Zynga produced BWF itself.
What if Zynga is unable to demonstrate likelihood of confusion? That’s where the trademark dilution claim comes in. I’ve discussed trademark dilution before:
Trademark Dilution is a claim by a trademark owner that the use of the mark by the defendant would diminish the goodwill embodied in the trademark – even if the defendant is not using the mark in connection with similar goods or services. What does that all mean?
First of all, a claim of trademark dilution can only be asserted by the owner of a famous trademark. The mark must be nationally well known. Ford, Disney, Coca-Cola, and…Ben & Jerry’s, are the types of marks that would clearly qualify for protection under the Trademark Dilution Revision Act of 2006.
As I mentioned in that post, there are two forms of trademark dilution: Dilution by Blurring and Dilution by Tarnishment. Dilution by Blurring applies where the defendant’s use of the mark would diminish the uniqueness of the mark; whereas Dilution by Tarnishment can be asserted when the defendant’s use of the mark would negatively impact the reputation of the mark.
I think it’s safe to say that there is a strong case for Dilution by Tarnishment to be made in the BWF case. Zynga’s products are largely family-friendly games. BWF certainly doesn’t match that description.
Consider the issue this way: if BWF is allowed to continue using the “With Friends” construction, what other types of Not Safe For Work activities could become part of the “With Friends” family? It’s not hard to imagine a scenario wherein the goodwill Zynga enjoys in Words With Friends, Chess With Friends, and the like could be damaged – or tarnished, if you will – by a variety of similarly-named applications.
My fearless prediction is that this case will never go near a trial court, and that the BWF folks will quickly settle and quietly slink away. At best, they’ll end up with an interesting story to share with their “Friends.”
