Virginia Business Litigation Lawyer Blog

Boston-area illustrator Jayme Gordon has filed a copyright infringement lawsuit in federal court in Massachusetts, alleging that DreamWorks stole his idea. The intellectual property lawyers who filed the complaint against DreamWorks point out a number of striking similarities between DreamWorks' chubby, fighting panda and a panda drawn and copyrighted years ago by the plaintiff. The attorneys write that DreamWorks' "Kung Fu Panda" and "Secrets of the Furious Five," a short animated direct-to-video film, both "feature characters, character depictions, character personality traits, illustrations, expression, settings, story elements, plot and sequences of events that are unlawful copies and derivatives of the copyrightable elements embodied in Gordon's Kung Fu Panda Power Work."

To prove copyright infringement, it's not enough to merely show that two works are very similar. The plaintiff will need to show not only substantial similarity between the copyrighted work and the alleged infringing work, but that DreamWorks, the alleged infringer, had access to the plaintiff's copyrighted material. In this case, Mr. Gordon specifies exactly who at DreamWorks he believes had access to his panda illustrations at the time that Kung Fu Panda was being developed, and how they may have gotten into those executives' hands.

Kung Fu Panda, released in 2008, features an overweight, food-loving panda named Po (voiced by Jack Black) who is trained in the martial arts by a small red panda named Master Shifu (voiced by Dustin Hoffman). The film grossed more than $630 million worldwide, and a sequel is coming out in May. Mr. Gordon claims that he first came up with the idea of a rotund Kung-Fu-fighting giant panda named Kidd who loves to eat Chinese food and who learns the martial arts from a small red panda named Redd. His copyright attorneys write in the complaint that Gordon had a collaborator create sketches of these characters in the 1990s and that around the same time, he put the sketches on clothing that he sold in the Boston area. Gordon also alleges that he sent a portfolio of his work featuring these characters and others to several studios, including DreamWorks, but received a letter of rejection in 1999.

Gordon is seeking an unspecified amount of damages for copyright infringement as well as an author credit for all the "Kung Fu Panda" films. DreamWorks hasn't yet responded to the complaint and has declined comment. This will be an interesting case to follow.

Does use of the name "Blingville" by a small game developer from Harpers Ferry, West Virginia, infringe the trademark rights of Zynga, creator of FarmVille? Does Zynga have a monopoly on Facebook applications ending in "ville"? Blingville has filed a declaratory judgment action in the Northern District of West Virginia to find out.

Zynga's games have been extremely popular - and profitable - on Facebook in the last two years. The company says it has more than 295 million monthly active users on site for its six games -- CityVille, FarmVille, FishVille, FrontierVille, PetVille, and YoVille. Blingville is just getting started with commercializing its game. It says another company, Overtime Apps, registered the Blingville.com domain name in October 2004 and that in November 2010, it filed a trademark registration application for the use of the name. Then, according to Blingville, Overtime Apps assigned its rights in the trademark to Blingville.

When Zynga got wind of what Blingville was doing, it sent several cease-and-desist letters to Blingville, claiming trademark infringement and threatening to sue for alleged violations of the Lanham Act. "Use of the name," Zynga's deputy general counsel told an online magazine, "is an obvious attempt to capitalize on the fame and goodwill associated with Zynga's family of 'ville' games which includes FarmVille and CityVille. We are prepared to take all necessary steps to protect our intellectual property rights."

Not wanting to get sued in California, where Zynga is headquartered, Blingville took matters into its own hands and filed for declaratory relief in West Virginia, seeking a judicial declaration of non-infringement.

Assuming that the court first finds that the 2004 registration of the domain name didn't give Blingville full trademark rights to the use of the name for its social media game, the court will then need to look at the standards for trademark infringement under the Lanham Act. Zynga doesn't own the name "Blingville," but that doesn't end the inquiry. Under the Lanham Act, the central test for trademark infringement is whether there is a likelihood of confusion as to the source of the parties' respective products. Trademark infringement doesn't require actual confusion, though actual confusion is a relevant consideration.

Supporting Zynga's case are the arguments that Blingville is being prepared for distribution in the same Facebook channel as FarmVille and that the names of the games sound similar in that they are both two-syllable words ending in "ville." Favoring Blingville's position are the contentions that "bling" is in no way reminiscent of "farm," "city," "fish," or Zynga's other terms, and that the word "ville" should be seen as a generic term for a city or location, common to many languages, that cannot be trademarked.

Unless the case is settled, these matters will be left for a judge to sort out.