The Learning Company v. Zynga Inc.
United States District court for the District of Massachusetts
Case No. 11-cv-10894, Filed June 07, 2011

The Learning Company (TLC), creators of the popular computer game “Oregon Trail” filed a motion in Massachusetts federal court on Tuesday to stop Zynga Game Network Inc. from using the phrase “Oregon Trail” in its similar “FrontierVille” game. TLC has asked the court to 1) issue an order requiring Zynga to remove all references to “Oregon Trail” in its FrontierVille game, and 2) mandate that Zynga shall not use the phrase “Oregon Trail” within its FrontierVille game until a final resolution of the issue.

Zynga makes games designed to be played on Facebook. TLC’s game, “The Oregon Trail” is a popular educational game used in classrooms across the country that simulates the life and experiences of Pioneers heading west. According to TLC, Zynga’s new model FrontierVille game, called “FrontierVille’s Oregon Trail,” is a deliberate appropriation of the look and style of its own game. The initial trademark lawsuit filed on May 18, 2011, alleges that Zynga’s use of the “Oregon Trail” name is likely to confuse consumers into believing that TLC is affiliated with Zynga. “The Oregon Trail” was originally developed in 1971 and TLC’s suit reports that 65 million people have played the game since its release and 60% of elementary school teachers have reported using the game to teach about the pioneer period. TLC believes Zynga’s appropriation of “Oregon Trail” will cause irreparable harm to its goodwill.

After the filing of the initial suit Zynga indicated in court documents and in attorney correspondence that it would voluntarily remove all references to “Oregon Trail” from FrontierVille. However, it has not yet done so, and in a declaration filed last week Zynga’s general manager for FrontierVille asserted that the newest version of the game was based on American history, not TLC’s game. The latest motion for a court order mandating that Zynga remove all references and stop any use of “Oregon Trail” follows this declaration and much back and forth between attorneys for both parties.

In an exhibit filed with the court, attorneys for Zynga dispute the need for this injunction since Zynga is no longer “launching a new game, new feature, new element or new storyline bearing the name Oregon Trail or FrontierVille’s Oregon Trail.” Despite these assurances, TLC remains uncomfortable with Zynga’s continued use of the “Oregon Trail” mark “in connection with the
pre-launch marketing of its [Zynga’s] game extension, as well as in connection with the trail missions that are already offered.” TLC also believes that even if Zynga removes “Oregon Trail” from within FrontierVille “it might still make enough use of the mark to cause The Learning Company to be less than satisfied with the resolution.” TLC also makes mention that in light of their uncertainty regarding Zynga’s plans for the future of FrontierVille Oregon Trail, this injunction is the security they seek prior to negotiating any resolution.

While Oregon Trail may be a computer game, it was first a 2,000 mile long east-west wagon route connecting the Missouri River to valleys in Oregon and points in-between. On the one hand, TLC has invested considerable time, effort, and money into its game. On the other hand, Zynga is referencing history. This will be an interesting case to watch, to see if one rights holder can block someone else from using a historically significant reference.

Read more at Law360.

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