Unfair Cease and Desist From Attorneys Representing Zynga Inc.

Android Android Development
1

I just received a completely ridiculous cease and desist email from Zynga’s lawyers. Get this…Almost a year and a half ago, I released a multiplayer word game and I used the phrase “& friends” at the end to signify that it is a multiplayer game that you can play with your google plus friends through google play game services. Many other large and small time devs have done this exact same thing. They must have just recently trademarked the phrase “WITH FRIENDS” and they are threatening to sue me if I don’t change the name of my game within 7 days because “& Friends” is quote “confusingly similar to the ‘WITH FRIENDS’ Family of Trademarks owned by Zynga”. This is laughable and nothing more than corporate bullying. I can only assume that they have targeted me because my game is consistently ranked equally or higher than some of their word games. Has anyone else ever had to deal with anything like this, and aren’t they supposed to take that issue and DCMA requests up with the distributor Google Play anyway? Seriously, this seems completely crazy to me. Here’s some of the letter.

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We serve as intellectual property counsel to Zynga Inc. (“Zynga”). Among other things, Zynga publishes and owns intellectual property rights in the ‘WITH FRIENDS™ family of social games, which includes Words with Friends®, Hanging with Friends®, Chess with Friends®, Scramble With Friends®, Matching with Friends™, Gems with Friends™, Games with Friends®, Running With Friends™, as well as other ‘WITH FRIENDS games in various stages of development (collectively the “‘WITH FRIENDS Family of Trademarks”). Each of Zynga’s games with the ‘WITH FRIENDS Family of Trademarks is published and played by millions of users on various social networking portals, including Apple’s App Store, Facebook, and Android services.

Zynga has consistently used and promoted the ‘WITH FRIENDS Family of Trademarks together as a family and, as a result of Zynga’s extensive marketing efforts and commercial success, the ‘WITH FRIENDS Family of Trademarks is strongly identified by consumers with Zynga’s reputation for quality.

It has come to our attention that XXXX has developed and launched a mobile application called “XXXXXX & Friends,” which is available through the Google Play marketplace (https://play.google.com/store/apps/d...d=com.xxx.xxxx). XXXX’s use of the name “XXXXX & Friends” for its mobile application is confusingly similar to the ‘WITH FRIENDS Family of Trademarks owned by Zynga, and users are likely to believe, erroneously, that its application is published, sponsored, endorsed by, or associated with Zynga. XXXX’s use of “XXXXXX & Friends” also dilutes the distinctiveness of Zynga’s famous ‘WITH FRIENDS Family of Trademarks.

Zynga has invested substantial time and resources in developing and promoting the ‘WITH FRIENDS Family of Trademarks, and it vigorously protects its rights in its marks, both collectively and individually. Zynga demands that XXXXX immediately cease use of the name “XXXXX & Friends” in connection with its mobile application, and refrain from further exploitation of the goodwill that Zynga has developed with its ‘WITH FRIENDS Family of Trademarks.

We anticipate that XXXXX will accede to this demand, and ask that you confirm by September 15, 2014 that it has ceased use of the name “XXXXX & Friends” in connection with its mobile application. Nothing contained in this letter constitutes an express or implied waiver of any rights, remedies, or defenses of Zynga, all of which are expressly reserved.

2

I don’t have any experience with it but i think you just ignore it, they don’t trade mark “& FRIENDS” word.
Or you must think other dev see your high ranking and write a fake email?
I try to to search: https://play.google.com/store/search?q=%26%20Friends and see many big guy like GameLoft use this word, do you believe Zynga will sue all of them?

3

This is why I stick to making live wallpapers to avoid this bullshit, devs don’t compete or fight over space for live wallpapers and we appreciate each other’s work.

4

I guess we’re entering a new phase where the domination of big names continues to grow…
I can’t see much substance in their message, all things considered. Seems like more of a wishful threat on their part.

If you do nothing, please do keep us informed as to what happens and of course, good luck!

5

First you could make sure it is a genuine letter - by e-mailing zynga - send a copy to this e-mail that you are checking if they are a legitimate authority representing Zynga (and not some scammer).

Secondly you could change your title so it is not “Words and Friends” - but instead is “Words Friends” - while you could leave some translations as they were before - this should make your app still searchable (though I would suspect it may go down a bit in “and friends” searches). I wonder if they would check in all country app stores if your name complies (ideally they would have a tool that shows them all country-specific translations for your app title).

Third, you could offer to change your title - and then suggest to them that you are doing so - BUT in the first line of your Description you say you are NOT affiliated with “Words and Friends” from Zynga or whatever.

Fourth, you could say you are going to alleviate their problem of “confusion” on the part of users - by keeping the same title - BUT changing the first line of the Description or the “What’s New” short-description (whatever appears first on Google Play listing for your app) - so that it clarifies that you are NOT Zynga etc.

6

If this is genuine letter, their next step will probably be reporting you to Google (by DCMA or whatever other means they have) which will result in suspention of your app (and you will loose your current users since you would need to republish under new package name) - and you won’t be able to do anything about this. The best solution is probably to drop the “& friends”. It’s not fair, but we live in a very unfair world unfortunately. You can’t win with corporations and Google doesn’t care about small developers, while loves those big ones.

I would go with the adforandroidapps advice and change the name.

7

IMHO, it’s better to rename and even loose some downloads instead of getting app removed. Even 60 - 70% revenue is better than 0%. I’m sure Google will stand by their side and you probably don’t have enough money to go to court about it. Even if google will reinstatiate your app after couple of days / weeks, you probably will loose your position.

Anyway, it all sucks. On the other side you may consider yourself lucky, cause they sent you letter first. Some time ago, ppl were complaining that theirs app which contained flow in title were removed from US store. Without any warning.

8

I just changed it, it’s not going to affect my game in the slightest but it’s definitely going to bring fierce competition to the word game category for them in the very near future. It’s just childish that they are crying about having “friends” in the title when my game is nothing like theirs, and doesn’t even have “words” in the title. They are a multimillion dollar multinational corporation and they are having attorneys send cease and desist emails about the word “friends” when that’s not even what they trademarked… lol…it’s “confusingly similar”…not a big deal to me, but it’s a clear reminder of how cut-throat the app business has become.

9

if some indie dev sent that email spoofing as zynga then its a nice tactic for people who don’t care for other developers.

10

It appears to be a legit email, and I got an out of office response when I responded to it. It was from a law office in Atlanta, Georgia and it all checks out. That would be a pretty nasty way to sabotage someone though, let’s not do this to each other…lol…I’m just one guy trying to make games, a one man show. I do all development, graphics, marketing, everything myself. It’s sad that it’s even possible to be pushed around like this, but whatever. I have a completely unique concept 4-player simultaneous multiplayer word game that I’m finishing up right now done in libgdx that I’m sure they’ll love. About 2 more weeks of cleanup development and graphics, I’ll just make sure not to put “Friends” in the title…lol…That being said, what would be a standardized method of signifying that a game is multiplayer and can be played with your friends in the game title? If you play it with friends from facebook, or google plus, how do you market it if you can’t use the word “friends”? Id certainly hate for it to be “confusingly similar” to their “WITH FRIENDS” family of games…lol

11

I dont get where exactly is this office that sells english words to companies ??? Id like to buy the word “POP” and that would include the use in the entire Earth. Why do Google and Apple even allow this ? I mean its ok if you have names like “Nike” but why are these guys taking generic words off the table.

12

Google and Apple don’t have a choice. It’s USA - and European to some lesser extent - law that allows that.

13

You can use the word “multiplayer” like Revolt Multiplayer

14

Or the word “Online” usually means it’s a multiplayer game.

15

From what I understand, “WITH FRIENDS” is trademarked, not the word “FRIENDS”. Since you’re not using “WITH FRIENDS” but “& FRIENDS”, I don’t think they have a valid base against you. If they were to trademark only the word FRIENDS (and I don’t think they even can because it’s too common), that would be dangerous for your game.

I guess most of you have seen the comedy show “FRIENDS”. However, there is another movie called Friends with Benefits (and I guess there are more) and I doubt there were such emails exchanged between their lawyers.

16

If they trademarked “WITH FRIENDS”, based on their email it means you can’t use either “WITH” or “FRIENDS” in your game’s title, which is ridiculous.

17

I suspect that they knew that “& Friend” was sufficiently different from their trademark to be upheld. This is probably why they went for a cease & desist email instead of a dmca direct to Google. You probably took the prudent action though.