Dillinger, LLC v. Electronic Arts Inc.
2011 U.S. Dist. LEXIS 63666
S.D. Ind.2011Background
- Dillinger, LLC sues Electronic Arts, Inc. for right of publicity and trademark-related claims regarding references to John Dillinger in EA's Godfather video game series.
- Plaintiff asserts ownership of Dillinger trademarks and a descendible right of publicity for Dillinger’s name, voice, image, and likeness based on heirs’ assignment and Indiana law.
- The alleged infringing uses include the Dillinger Level Three Tommy Gun and a Modern Dillinger weapon in The Godfather II, plus online weapon upgrades described in third-party stores.
- EA moves for judgment on the pleadings challenging the sufficiency of Count I (right of publicity) and related claims; the court also addresses unjust enrichment, unfair competition, ICVA, and trademark claims.
- The court analyzes retroactivity of the Indiana right-of-publicity statute, the statute’s literary-work exception, and the continuing-wrong theory, ultimately dismissing some counts and denying others.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Retroactivity of the right-of-publicity statute. | Statute applies to pre-death rights and dies with Dillinger, or alternatively is retroactive. | Statute does not apply to personalities who died before 1994; retroactivity uncertain. | Statute not retroactively applied; claims fail under Count I. |
| Literary-work exception and videogames. | Videogames are not literar y works and thus exempting them would be improper. | Literary-work exception covers videogames; broad reading avoids constitutional issues. | Indiana Supreme Court would adopt broad reading; literary works exception defeats Count I. |
| Sufficiency of the right-of-publicity claim after exceptions. | Right of publicity claim stands despite exceptions. | Litigated claims fail due to retroactivity and literary-work exception. | Count I dismissed; Count II dependent and also dismissed. |
| Trademark claims viability (Counts III & V). | Dillinger name used as a mark to identify and promote products; infringement alleged. | There can be trademark use without affirmative use as a trademark; fair-use defense precludes liability. | Counts III & V survive; court denies dismissal as to these counts. |
| ICVA claims (Count VI) for conversion/theft/deception. | Use of trademark and publicity rights constitutes criminal acts for treble damages. | No unauthorized control of property; no fraudulent intent or advertising elements shown. | Counts for conversion, theft, and deception dismissed. |
Key Cases Cited
- Ashcroft v. Iqbal, 129 S.Ct. 1937 (U.S. 2009) (plausibility pleading standard for complaint sufficiency)
- Mind-Games, Inc. v. W. Publ’g Co., 218 F.3d 652 (7th Cir. 2000) (predicting state-law outcomes when necessary)
- Todd v. Societe Bic, S.A., 21 F.3d 1402 (7th Cir. 1994) (choose narrower liability after ambiguous interpretation)
- Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001) (elements of trademark likelihood of confusion; fair use defense)
- Ward v. Rock Against Racism, 491 U.S. 781 (U.S. 1989) (constitutional considerations in expressive or protected activities)
- Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (U.S. 1977) (visual portrayal of performance and publicity rights)
- Jenkins v. Georgia, 418 U.S. 153 (U.S. 1974) (film and expressive works protection standards)
- Southeastern Promotions, Ltd. v. Conrad, 420 U.S. 546 (U.S. 1975) (commercial speech and entertainment doctrine considerations)
- Ellington v. Gibson Piano Ventures, Inc., 2005 WL 1661729 (S.D. Ind. 2005) (statutory and probate considerations in publicity cases)