Millions at Stake as EA Sues Bank Robber’s Relative Over Godfather Game Machine Guns…

Notorious bank robber John Dillinger was gunned down by FBI agents in 1934, but his fame lives on. And that is causing some problems for game publisher Electronic Arts.

EA has filed suit in federal court in San Francisco, requesting that a U.S. District Court judge grant them the okay to use the name "Dillinger" in association with a pair of virtual machine guns depicted in its Godfather games. The "Dillinger Tommy Gun" appears in the original Godfather game, while the "Modern Dillinger" is featured in The Godfather II.

The publisher has taken the unusual step because the owner of Indiana-based Dillinger LLC, reportedly the grandson of the famous gangster’s half-sister, lays claim to all things Dillinger, including his name and likeness.

The lawsuit, filed by attorneys for the publisher last week, claims that Dillinger LLC tried to commit a bit of strongarm robbery on EA recently:

On July 22, 2009 Dillinger LLC, through its litigation counsel, contacted EA to accuse it of violating Dillinger’s right of publicity and infringing upon its trademarks. Dillinger threatened EA with litigation unless it agreed to pay Dillinger millions of dollars for the game elements…


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.

The EA case is not the first time Dillinger LLC has gotten legalistic over the use of the Dillinger monicker. The Arizona Star reports that in 2007 Dillinger LLC claimed its permission was needed for local hotel to run a "Dillinger Days" event. As the newspaper explains, an Indiana law has apparently emboldened Dillinger LLC:

The hotel is being sued under an Indiana law that protects a person’s personality for 100 years after his or her death. It works like a trademark, because a person who wants to profit from the use of the personality must obtain written permission. Arizona has no such law, and it’s not clear whether the Indiana law applies here.

DOCUMENT DUMP: Grab a copy of EA’s lawsuit here

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  1. 0
    JDKJ says:

    Dillinger’s Famous Sausage is reported to be in the possession of the Smithsonian, who store it a jar of formaldehyde. Not the trademark. The actual sausage.

  2. 0
    Kommisar says:

    It should probably be noted that Dillinger LLC has also applied for and/or owns trademarks for such names as "Bonnie and Clyde", "Baby Face Nelson", "Pretty Boy Floyd", "Ma Barker", and even "Lady in Red".  So they certainly seem to be in the "making a quick buck off generally public famous names" category from the looks of things.

    Also of note: There’s a trademark for "Dillinger’s Famous Sausage", applied for in 2008, the image of which depicts a guy with a Tommy gun smiling… and that hasn’t apparently had any action taken against it yet by Dillinger LLC…


    But in case anyone is wondering… yes, if you do not defend your trademark against any and all public uses of said trademark with any "reasonable notoriety", is grounds for dismissal of future infringement claims due to abandonment.  For instance, not sueing EA for the 2006 release of "The Godfather Video Game", but waiting until 2009 to sue for infringement in "The Godfather 2 Video Game" could actually be grounds for dismissal based on abandonment, depending on the timing of the lawsuit and the release of the first game…

  3. 0
    JDKJ says:

    If the claim of abandonment is being raised as a defense to infringement (which is the most likely scenario under which it would be raised) and the putative infringer establishes that they in fact were using the trademark but then does nothing to establish that the original holder knew or should have known of the infringement, aren’t they proving the opposing party’s claim of infringement while not really raising a valid defense to that claim? If the original holder is reasonably unaware of the infringement, how can they take action against it? If they’ve no basis in knowledge which would prompt them to protect their mark against infringement, then how can it be reasonably said that they’ve abandoned their mark?

  4. 0
    Neeneko says:

    It is also possible that it is like ‘prior art’… i.e. the company claiming that the trademark has been abandonded simply has to show the trademark being used by someone else and does not need to show that the original holder knew at all.

  5. 0
    DarkSaber says:

    I wouldn’t be at all surprised if the burden shifts depending on who has the most money.


    I LIKE the fence. I get 2 groups to laugh at then.

  6. 0
    JDKJ says:

    Isn’t the burden of proof on the party seeking to claim the trademark that the other party knew of the infringment or could have known of it with due diligence but took no action?

  7. 0
    JDKJ says:

    As if the holder of the "Louis Vuitton" trademark does nothing more than walk up and down Canal Street, looking for every nickel and dime storefront selling knock-off handbags, so they can take legal action against them for fear of losing the "Louis Vuitton" trademark. In fact, I’m told that they recently left the fashion industry altogether in order to dedicate 100% of their time and resources to prosecuting these countless trademark infringers.

  8. 0
    Neeneko says:

    Like many laws, it is peppered with soft concept like ‘reasonable’ and ‘due dilligance’ and garbage like that.  It usually comes down to convincing someone in authority (judge, arbiter, etc) that you reasonably knew or reasonably did not know based off the perceived popularity of the usage.  It is really annoying and ads signficant costs to doing buisness.

    Usually you admit evidence via the usage appearing in recognized trade journals or other sources like that.

    Patent law is even worse.  So much worse….

  9. 0
    DarkSaber says:


    This right here.

    Of course, we’ll have some dumb-ass nobody come past and say "Yes, actually" and act like the foremost authority on trademarks, forgetting that the rules bend in your favor considerably more the richer your company gets.


    I LIKE the fence. I get 2 groups to laugh at then.

  10. 0
    JDKJ says:

    And how would it ever be established in any but the most obvious of cases that the mark holder was ever aware of the infringement or failed to diligently make themselves aware of the infringement? Unless it is the highly unlikely situation where the infringer’s on record as having called up the holder and said, "Just to let you know, I’m infringing your trademark." As a practical matter, if the holder knows of the infringement but chooses not to take any action against the infringer, who’s to say that they were ever on notice of the infringement in the first place or failed to make themselves aware when they could have? Particularly where the infringement is of so little consequence that the holder would elect not to take legal action. That sort of infringement is unlikely to be pervasive or obvious. And loss of the mark doesn’t necessarily follow automatically from the failure to take action. At worst, there is a risk of loss. And all risks are subject to calculation as to the likelihood of their ever becoming an actual event. So, I weight the risk of loss against the cost of enforcement and, if cost outweighs risk, it ain’t entirely irrational for me to sit on my ass and do nothing.

    And maybe the system works "blah, blah, blah" in theory. But, as a practical matter, it’s indeed a cash cow for scummy lawyers and their half-assed clients. Rules aren’t ever written for the mere sake of having rules. Rather, they’re more like tools, intended to be used in effecting particular outcomes. A skillful craftsman wields his tools such that the outcome he most keenly desires is, if at all possible, effected.  

  11. 0
    ZenAndNow says:


    This right here.

    Of course, we’ll have some smart-ass wannabe lawyer come past and say "wow" again, but if you don’t defend your trademark all the time, then it’s not yours anymore.

    If you’re only after the money, you’re abusing the system. The system exists to protect your damn trademark, and the profits to be gained from said trademark, not to act as an earner for scummy lawyers and their half-assed clients.

  12. 0
    Neeneko says:

    Lawsuit, no.  But notification with potential legal action, yes.

    Even if someone only has 50 cents in their pocket, you HAVE to defend your trademark.  You have to tell them to stop, at which point they have the option of licensing (including doing so at no charge) or ignoring the complaint.  If they continue to ignore your complaint, you have either sue them or relinquish your trademark.

  13. 0
    Neeneko says:

    Believe it or not, they do actually review small features that do not make the big press to, and there is often an argument between legal and development over little things.

    Little things add up and are part of the ‘look and feel’ of the game.

  14. 0
    JDKJ says:

    Wow. That’s all I can manage to say in response. So lemme just say it again: wow.

    Edit: Now that I’ve regained my composure, let me borrow from hayabusa’s siggy and say: "de minimis non curat lex."

  15. 0
    ZenAndNow says:

    Yes, actually.

    If you only defend your trademark when there’s a buck to be made, then you’re abusing the system for your own benefit. Either you defend it all the time or not at all.

  16. 0
    Lou says:

    You are failing to notice that the movie probably took longer to produce than the game itself so I am sure this hoedown has been running amock for a while. I’m sure this has been an issue for quite some time (Since the first godfather I assume). Also keep in mind that they are using the dillinger name on the gun and there is nothing related to dillinger on the game.

    But here is something that bogles my mind in a way. Why are calling the Tommy gun a "Dillinger". Even if this is some sort of homage to this guy most gun owners know it as the Tommy gun or Thompson Submachine gun. What gives?

  17. 0
    JDKJ says:

    Who’s to say they named themselves after John Dillinger? And not Mary Dillinger? Or Earnest Dillinger? Or Dillweed Dillinger?

    The more salient point remains that every decision to sue or not to sue someone for infringement should intelligently involve the consideration of a host of factors including how much real damages you’ve suffered from their infringement, how much you can actually recoup in damages from them, the opposition they’ll likely mount in response to your suit and their ability to finance that opposition, the opportunity costs involved in bringing suit, etc., etc., etc. Just because I choose, for whatever reasons, to sue some infringers but not all infringers doesn’t necessarily make me a bad guy. It more likely makes me an astute businessman. 

  18. 0
    JDKJ says:

    You think that a lawsuit should be brought against everyone who infringes your rights regardless of the cost-benefit involved? I think that it don’t make much sense spending a dollar chasing after someone who ain’t got but fifty cents in their pockets. Even if you caught them, turned them upside down, and shook your fifty cents out of their pockets, you’d still be fifty cents in the hole for having done so.

  19. 0
    insanejedi says:

    That movie was released like 3 months after Godfather 2. And since EA is one of the more traditional companies, they generally bank on the 1st week release for the majority of their sales. And there was no marketing push to my knowledge after the fact Puublic Enemy was released. And if they really wanted to "relate" to that movie in some way, why did they change the setting of The Godfather 2 to something completly different? And if they were banking on this sort of "apeal" of John Dillinger, why didn’t they just go ahead and make a crime game based on him? It’s not like the Godfather license is any cheaper than some dude’s name. I just highly doubt that anyone is going to sit there, somehow stumble upon this information and go like "Dude I’m going to play Godfather 2 because there was a gun named after that guy Johnny Dep acted!" More than likely, the original Mafia game and Mafia 2 probebly has greater appeal with Dillinger because of the setting and mood.

  20. 0
    Inimical says:

    Why hasn’t this guy gone off on anyone else using the Dillinger name? A Google search for "Dillinger" brings up the Dillinger Escape Plan as number 2. It could easily be argued that they chose that name because of its popularity.

    He’s fishing for money. Regardless of whether EA intended to use his name solely for profit, he didn’t sue anyone else because they don’t have the kind of money that EA has. He’s just as bad as they are if that’s the case.

  21. 0
    insanejedi says:

    If it was such a big deal and it somehow did improve sales, why the hell did they not market it as a prime feature? Shoulden’t there be ads like "Pre-order from Gamestop now and get the Dillinger Machinegun!" I bet everyone outside of Godfather games had no clue this was in it. The Dev team probebly went around saying "hey woulden’t this be a cool idea?" And asked the legal department and they probebly forward what I gave you, saying that it falls under fair use. Your arguement makes no sense because they never bothered to inform everyone about the "dillinger" machinegun to my knowledge, and I’m assuming only the people that bought the game knew what the hell this was. In that case, they already bought the game, so at that point it doesn’t matter. If it was like "Pre-order from gamestop and get the Bonnie and Clyde BAR" that’s a different story.

  22. 0
    Lou says:

    If EA is not profing from using his name, why go to such extent? Why don’t they scrap the name and be done with it? In my opinion this is not about paying "homage" to John Dillinger, there is something else behind this. And with the movie "Public Enemy"(Awesome movie) released last July and the DVD release close by there is enough to raise suspicion about this move. I’m not condoning Dillinger LLC for whoring out his grandfather’s name but I think there is more than meets the eye here.

  23. 0
    Neeneko says:

    It might not have made it up to the board, but it is not uncommon for artists and developers to do stuff that someone from legal discovers was not a good idea because someone else ownes the rights to it.  Games are routinly checked for such violations at various points in the development process and they have to decide if the content offers enough value to justify the cost of lisencing or the risk of getting caught with unlisenced material.

    So yes, there is a group of people who sit down and decide such things.

    Though also keep in mind,  guessing what assets will get them profit is a classic marketing clusterexpletive that most marketers get wrong anyway.  There is a lot of group think in marketing that does not translate to actual sales if you really look into them.  Just look at TV/Movies/Games… how often do the marketers go ‘hey, if we sex this up, more teenage boys with buy it!’, and how consistantly the method fails.  But marketers and execcs are convinced it works so they do it over and over even though the numbers consistantly show it does not.

  24. 0
    DarkSaber says:

    Given that they’ve axed the Godfather series of games, I don’t think they’d be abandoning much development.


    I LIKE the fence. I get 2 groups to laugh at then.

  25. 0
    insanejedi says:

    What is up with all this anti-EA bullcrap? Do you seriously think EA Redwood Shores had a board meeting with executives and them saying "here’s a demographic of people who would purchase Godfather 2 if we put the Dillinger name on it. Put it on a machine gun and we won’t pay the people because we got super lawers. Then we can make extra $$ for profits!" No! Hell no. The developers probebly put that in as a funny reference or an homage to the people who know Dillinger. This was probebly not for the purpose of "profiting off" someone’s name. If EA was that robotic and that exact, you’d probebly see the best games ever from them  because they know so much about you and what you like.

    I’m not sure on the exacts of copyright infringment, but I believe that you can use whatever name/product as long as you can prove that the product is either not directly profiting off the copyright, or that you can prove that the product is more than that copyright. In the case of the Godfather I do not believe that the Dillinger name is essential to the entirety of the game.

  26. 0
    JDKJ says:

    According to EA, the fix is a bit more expensive that merely altering the game. As they tell it, they’d have to abandon the development, publication and sale of the game and, I’d imagine in so doing, take a multi-million dollar hit in the pocket. 

  27. 0
    Icehawk says:

    I dont understand EA’s problem. Its not like they have not used legalistic arm twisting in the past to get their way.  Either make a deal or alter the game, not a biggie. 

    Wonder if the reason they are making such a big deal out of this is that for once they cannot just bulldoze their way through.   Cant they deal with what they have been dishing out?   Then again since I generally dislike EA on a good day and rather hate them on others, I cannot claim to be impartial or feel any sympathy. 

  28. 0
    JDKJ says:

    Again, that’s primarily exploiting the ownership of the gun. That Dillinger once owned it is at best a secondary consideration. From what is the gun’s owner primarily benefiting? John Dillinger’s name? Or the fact that they own John Dillinger’s gun? If I owned and displayed in my vintage car museum a Model T Ford, should I expect to be sued by the heirs of Henry Ford for unauthorized use of Henry Ford’s name and the Ford trademark? Conversely, if I without authorization – and without a lick of common sense – chose to name my vintage car museum the Henry Ford Vintage Car Museum, I’d be well advised to just leave my door open so the process server doesn’t have bother knocking and can instead just walk right in and drop the lawsuit on top of my desk. 

  29. 0
    JDKJ says:

    You’d have noticed, if you could read at above a 5th grade level, that I said "directly exploiting." Pointing out who owned the gun isn’t a direct exploitation of the person’s name. It’s incidental and tangential to what’s really being exploited, which is ownership of the gun. And such use is therefore non-infringing.

    Still a couple IQ points short of not being completely retarded, I see.

  30. 0
    jedidethfreak says:

    Hmmm…let me see…  I have a gun owned by a famous criminal…and I want to sell it….no, I won’t point out the famous criminal who owned the gun.

    Still dense, I see.

    He was dead when I got here.

  31. 0
    JDKJ says:

    That, I suspect, depends on the law of inheritance. An interest in one’s name and likeness is bequeathable to someone else and if the person dies leaving a will which provides for someone to inherit the interest in their name and likeness, then that interest moves according to the decedent’s will. If the decedent hasn’t left a will or hasn’t provided for the inheritance of the interest in their name and likeness, then the interest would move along lines of so-called "sanguinuity" (i.e., starting with the closest blood or marriage relatives (e.g., children and spouse) and moving further away (e.g., parents, brothers, sisters, cousins, etc.) until a relative who can inherit intestate (i.e. "without a will") is found. As such, it isn’t surprising that the right to exploit a dead person’s name and likeness would often end up in the hands of a close family member.

  32. 0
    JDKJ says:

    That’s correct. Which would, I assume, pave the way for someone else to depict a crime without fear of legal action by the person who committed the crime (e.g., Spike Lee’s "Summer of Sam") It ain’t like the real Son of Sam can successfully sue Spike Lee for doing something he himself was prohibited by New York law from doing.  

  33. 0
    Neeneko says:

    I guess the legal question would be (for modern crimes), do the ‘Son of Sam’ laws also prohibit 3rd parties from profiting without the concent of the family?

  34. 0
    JDKJ says:

    That’s tricky. Many if not most states have passed so-called "Son of Sam" laws which prohibit profiting in way (books, movies, etc.) from crimes. But, regardless of the relative infamy of the crime, the criminal still owns the right to otherwise exploit their name and likeness.

  35. 0
    Neeneko says:

    I don’t know here.

    He probably is just looking to cash in on the name, but that is what EA is trying to do too.   The question is, who has the right to use the family name and who does not?

  36. 0
    hellfire7885 says:

    This is when Trademark and Copyright laws get stupid.

    The guy is either just looking into cashing in on the name, or he wants history to be re-written so the family doesn’t look bad.

    Either way, I hardly see the harm in payng homage to one of history’s great outlaws.

  37. 0
    GoodRobotUs says:

    Agreed, the thing about guns is, there’s no going back 5 years later and saying ‘Well, he may have looked like he was pointing a gun at you and telling you to give him your money, but the intention of pointing the gun was mis-interpreted by the victim.’…

    I’m tempted to mention the whole ‘cruel and unusual punishment’ line and the meaning of the word ‘punishment’ years ago, but this isn’t about that, so I’ll shut up now 😉

  38. 0
    GoodRobotUs says:

    Whilst I won’t comment on the legality of the case itself, there is a certain part of me that smirks about the fact that when the first Dillinger threatened people for money, it was against the law, and when the second one did it, it was using the law 😉

  39. 0
    Vinzent says:

    Does that mean that he can sue anyone whose last name is Dillinger? How do we know these machingeguns reference John Dillinger. Maybe it’s Mark Dillinger or Kyle Dillinger.

    In all fairness, if you want to profit off of the name Dillinger, you should first have to repay all the money he stole and pay damages for the people he killed. At least in my book.

  40. 0
    JDKJ says:

    How about the folks who sold the gun owned by Dillinger?

    Not unless they’re directly exploiting either name or likeness.

    How about all the websites using his name for various reasons (including google)?

    Sight unseen, I’d imagine much of the uses contained in this example would fall under the "fair use" exemption.

  41. 0
    nightwng2000 says:

    Did the creators of "Public Enemies" pay for the use of the name?

    How about the folks who sold the gun owned by Dillinger?

    How about Wikipedia?

    How about all the websites using his name for various reasons (including google)?


    NW2K Software

    Nightwng2000 is now admin to the group "Parents For Education, Not Legislation" on MySpace as

  42. 0
    JDKJ says:

    I wonder if Dillinger LLC plans on suing the Smithsonian Institute for the return of John Dillinger’s penis which the museum is reported to posses, stored in a jar of formaldehyde? 

  43. 0
    JDKJ says:

    Zip, it was pretty clear from the article that (a) Dillinger LLC (the grandson’s company) lays claim to ownership of the rights to the name and likeness and (b) under Indiana law, those rights do not revert to the public domain for 100 years.

  44. 0
    ZippyDSMlee says:

    Does the grandson own the rights to the name? Dose the statues/law make it so crime based famous names/likenesses are mostly public domain? What are the rules for stuff like this? This is some interesting stuff.

     If anything this shows why lengthy TM/CP times it dose more harm than good….

    Until lobbying is a hanging offense I choose anarchy! Stop supporting big media and furthering the criminalization of consumers!!

  45. 0
    JDKJ says:

    Rule No. 6 from the EA Manual of Corporate Affairs: "When using the name or likeness of a person in our products, whenever possible and by all means, avoid paying compensation for that use." 

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