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EA Files Suit Against Bank Robber John Dillinger's Estate
by Kris Graft [PC, Console/PC]
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September 2, 2009
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In a preemptive move, Electronic Arts filed suit against 20th century bank robber John Dillinger's estate, which threatened EA with litigation for using "Dillinger" in the names of weapons in Godfather video games.
In a suit filed August 27, originally found by GamePolitics, EA said that in 2006's Godfather game, there is a weapon called the "Dillinger Tommy Gun," while 2009's Godfather II game features a weapon dubbed the "Modern Dillinger."
But the Dillinger estate, Indiana-based Dillinger, LLC, claims to hold the "right of publicity" of the late John Herbert Dillinger, and trademarks for his name. The estate had yet to file suit against EA, but said "Dillinger" weapons in the game maker's titles infringe on the trademark.
EA said that it doesn't violate any right to publicity or infringe on Dillinger LLC's trademark, as the video games created by EA are works "protected by the First Amendment." EA is hoping that the court will agree and declare that the video games do not violate or infringe rights or trademarks.
Dillinger LLC's attorneys contacted EA in July, accusing the publisher of wrongdoing. EA said the estate threatened the publisher with litigation "unless it agreed to pay Dillinger millions of dollars..."
EA added in its complaint, "Following Dillinger's recent conduct, EA is faced with the choice of either abandoning its rights to develop, publish, and sell the works at issue or risk liability for damages."
John Dillinger was born in 1903, and became notorious as a bank robber, and for his escape from a high-security prison in Crown Point, Indiana, where he was incarcerated for the alleged murder of a police officer. Authorities shot and killed him in Chicago in 1934.
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Here's hoping EA's lawyers have lasers mounted on their heads... like in the movies.
I'm not sure that it makes sense to pay the Dillinger family "millions", but allowing a company to use any trademark for free doesn't make sense either. I'm not a lawyer, but I'm hoping for an out of course settlement that doesn't allow anyone to use a trademarked name on the basis of free speech.
If EA does win, I will be selling my "Michael Jackson Gloves" in WOW...
I talk all about this game dev stuff in my blog...
http://aboutmakinggames.blogspot.com/
Mac
The challenge here is that it appears the estate has been actively protecting their mark over the years. If this is the case, then they can make an argument in their favor that although dated, the mark still stands and should continue to be protected and afforded rights.
The mark is defined as IC 035. US 100 101 102. G & S: licensing to others, the right to use and/or exploit, the name, image and likeness of John Dillinger. FIRST USE: 20011210. FIRST USE IN COMMERCE: 20011210
Since the estate claims first use in 2001, it is up to EA to prove that a "Dillinger" gun existed as "prior art" before 2001. If they can, then EA needs to find prior art for their new "Modern Dillinger" gun. This modern version will be harder to locate (if they can find the regular Dillinger gun prior art in the first place).
I am not a lawyer but this could very well go to court. I love EA but it appears they are filing counter suit to call their bluff. Does the estate really want to get into an expensive legal battle? Do they have the coffers that EA has? EA knows very well they could not create a "Coca Cola" gun so the integrity of trademarks in general will surely prevail if this goes to trial. The question is, how much will it settle for? My guess is just barely enough to keep the estate happy until the next time they protect their mark.
The lesson here for game developers though is that you MUST do your research when naming your game. I have had to defend several trademarks we own on numerous occasions when companies say they are building a product with the same name -- a name we have invested and worked so hard to build and protect. There is no bad blood, it is business and we just had the name and product built before you did.
The legal side of this business is one that a lot of artists, developers, and indie game creators just do not pay attention to, but they must.
Especially now that the App Store for iPhone has exploded. It is imperative that you actively watch for games that infringe on your marks or if you create a game, get a mark. Trism is a great example of an indie who did his homework and ensured he protected his creation.
Apple does a good job of helping rights holders protect their marks but you need to be pro-active. As is the case with the Dillinger estate.
It will be interesting to see how this one plays out.
I bet there are many previous product uses of "Dillinger" in the context of John Dillinger/same era gangsters, eg. souvenir guns, hip-hop artists, t-shirts, etc. Has the estate sued these folks and won?
Here's a curve ball: what if the relatives of victims of Dillinger wanted the proceeds from his estate, similar to victim rights laws now?
I've dealt with the estate reps before on their game solicitations. They've claimed rights to other gangster too, which i was not able to verify. They could have easily asked for a fair license fee on the specific use, which is maybe worth $5K-$10K, flat fee. I really think this is an EA win, especially as it relates to setting precedent. As someone here mentioned, there are no real direct relatives of Dillinger. The current estate is just some sort of business IMO.
I think a more interesting issue is why gun companies allow for their marks to be used in tons of games, without claiming infringement, but they will not provide licenses for those uses. At the same time I haven't seen COLT or S&W legal cases bubble up in our game world. Hmmm. Go figure?
The key is really whether or not the estate has gone after others (and either won or licensed the mark for XYZ $$). If the answer is no, then agreed EA wins hands down. If the answer is yes, then they have every right to demand EA pay up.
Your point about using part of Coca Cola is a tricky one because both words (Coca and Cola) are generic words that are put together to form the mark. The Coca part is the key to them defending their mark (not the term Cola). So if I created Coca-Soft as a soft drink then they could sue me for infringement. If I created Coca-Butter then it is a different goods class and they have no right. Just as the estate could not lay claim to John they can easily make the case for Dillinger.
The other piece is the way the mark is defined as being likeness to the deceased person. "John Dillinger" EA's use of the term clearly links the gun to the gangster. There is no mistake about it. Unless EA can prove that Dillinger in no way references the deceased person, an argument of the full mark would probably not hold up because the generic term here is John and Dillinger in the main identifying part of the mark. There are 0 other famous gangsters named Dillinger (at least that I am aware of). The estate should have redacted the registration to make claim of just Dillinger in reference to the person as well. The point of distinction is very evident. I don't disagree that EA will win, but I think they will win for different reasons...mainly that the person(s) in control of the estate are not gonna shell out millions to take this to court. And that is exactly what it would cost and be drawn out for a long long time. EA doesn't want to sink those millions either so arbitration just before heading to court is how this will play out. Maybe EA will cough up $100k or so is my guess.
The estate is definitely being greedy, but usually you have to ask for millions and millions in order to just get that $100k settlement. Greedy? Absolutely. Do they have the right? Definitely, this is America. :-)
Regarding gun names, I am not aware of any non-licensing issues. I do know the P90 is a registered mark and was used in COD series but if the manufacturer doesn't care or tries to get a licensing fee, the gamemakers will just use something else or invent something new. That helps further their brand name across a new medium so they probably look at it as free advertising.
Problem is, Dillinger estate gets nothing out of EA using their mark and conversely EA would not have as cool a product if they changed the gun to Modern Frost because Frost has no connection to anything that means anything (well to the general consumer population I mean). :-) They are gonna meet in the middle is my guess. EA would not go on the offensive if they were not worried about it.
Mac
P.S. @Helder, thanks for the plug. :)
They appear to be spinning the argument away from the root complaint. That problem is that they named a weapon Dillinger and it appears to be infringing on the likeness of John Dillinger, whom the estate has had a trademark since 2001. I don't expect a dev team to look up every single thing they name, but if they named it the Angelina Jolie Gun or the Brad Pitt gun, EVEN if there is no trademark on their names, I guarantee you EA would have been hearing from lawyers for both of them.
I agree with your assessment a trial ruling in their favor (on the basis of their argument) would set a dangerous precedent. I stated that "the integrity of trademarks in general will surely prevail if this goes to trial." meaning that they cannot invalidate the entire trademark process by suddenly claiming they can start naming things whatever they want under 1st amendment because then you'd have the Microsoft Gun, the Apple Gun, the IBM Gun and that would also go against everything Capitalistic that America stands for.
My $$ says this doesn't go to trial and they settle out of court but in order to settle -- what has to happen next is that the estate will formally counter sue EA...IF they want to spend the cash. EA no doubt has the coffers to go toe to toe.
I would be interested to know if this estate licensed the likeness or they are suing over the recent Dillinger movie. If they got licensing fees or gave permission, then almost certainly EA loses the case. If they did nothing then EA can really invalidate the mark and lawsuit as frivolous.
Again, I am not a lawyer so I could be completely off base here but am VERY familiar with how this game works.
If it was called the Combs gun then sure it works just fine. But EA wouldn't call it the Combs gun because Combs means nothing to players. Dillinger infers gangster John Dillinger. The more I think about this case, the more I see the estate having a solid case. If they have actively and aggressively pursued other Dillinger likenesses since 2001 they have a very strong case. If this is the first "opportunity" they've been waiting for, they will lose and subtly be labeled a "troll".
You have to actively protect your mark. If you do not then it can be invalidated very easily by high powered lawyers.
Read up on Monster cable company. They sue the pants out of ANYONE that uses the mark MONSTER even if it is across other goods. Their main reason for this is because they actively defend the mark so as not to give anyone the ability to challenge them on the merits of protection. Their case is a little extreme but it is a good case study.
You have the right to request them to cease and desist using your mark. If they continue to profit from your right to the mark, then you have the right to sue. You even have the right to make them pay for your legal fees should they lose the case. Likewise, they have the right to sue you back and try to invalidate (ie they have been in business for 20 years) your mark and also make you pay their legal fees. But typically in the end, the parties usually settle out of court because going to trial is a huge PIA.
The one thing that irks me here is that EA claims they need to stop publication of this game. That is a BS argument because all they really need to do is simply rename the gun. There is a reason they want to use the name Dillinger and that reason is because it implies the gangster John Dillinger, clearly infringing on the mark of the estate's likeness.
EA is using a freedom of speech argument because that resonates with a jury. Once the estate counter sues the USPTO laws to govern the trial are explicitly laid out for jury members and they must adhere and only apply those rules to their collective decision.
The other piece of this as well is the location of the suit by EA. Is it a federal court? If so it can take place anywhere. East Texas anyone? If Bioware is in Austin, I bet the estate will push for an east Texas trial. A very complaint friendly area (big evil company vs poor little man trying to protect himself).
For the stakeholders, this probably becomes an issue of what it's worth in a speculative legal battle. What is the value to EA and the Dillinger estate? EA (and Paramount) have over 2M in unit sales, based on my NPD review of all platforms, including a conservative extrapolation estimate for R.O.W.
The game owners may have a higher threshhold of what they are willing to invest in protecting their interest in court. Unless Dillinger's half sister knows the oak tree where all the secret Benjamin$ are buried under, this probably goes away, quietly, and soon.
Btw- @Kevin, good to see you here. Any more legal insight?