Trademark Troubles: Bethesda v Mojang

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Indie developer Mojang Specifications has been threatened with legal action by Bethesda over the forthcoming Mojang game Scrolls, according to Mojang head Notch. This is another great example of the importance of understanding how trademarks work in the games industry- and this is a post to explain why.






THE ISSUE

Bethesda is the publisher of, and owns the IP rights in, the long running and well known The Elder Scrolls series (first released in 1994!) Mojang is the company behind indie hit Minecraft and recently announced it would next release a card-playing video game to be called Scrolls.

Notch reported this weekend however that Mojang had received a legal letter from Bethesda’s lawyers threatening legal action over the game Scrolls, on the basis that it infringes Bethesda’s trade mark over “The Elder Scrolls”. Cue confusion about trade marks and to what extent they give anyone ‘ownership’ over a word or name.

TRADE MARKS AND THE GAMES INDUSTRY

Here’s a detailed post I wrote earlier about demystifying trade marks in the game industry. And here’s the short version:

Trade marks are a kind of IP right used primarily to protect the name of your business/products/services. You can use them to stop other people trying to rip you off by copying or imitating you or your business. A well known example of a trade Mark is the famous Apple logo, or say the Tetris logo.

BUT, owning a trade mark doesn’t give you exclusive ownership of the thing that’s been trade marked, whether it’s a name, a logo, a smell (yes, you can trade mark one). It gives you the right to stop another guy IF:

– he is selling identical or similar goods/services in an identical/similar business, AND
– there is a likelihood of public confusion between the two goods/services.

(Caveat: this is the position under English law, which is broadly similar to European laws generally, including the Swedish law to which Mojang is subject – but there may be some differences I’m not aware of.)

Unless all parts of this test are met, there’s no trade mark infringement. Or put it another way: unless the public would think your product and his are the same or that your businesses are the same business, there’s no trade mark infringement. That’s why Apple and companies that sell or make products from apples can coexist: no-one would think an apple or an apple pie is connected with tech giant Apple, hence why both can use the word ‘apple’ in their product names etc simultaneously without trade mark infringement concerns.

There’s one more key aspect about trade marks you need to know: once you have one, you need to enforce it. There’s no point claiming a particular word or phrase etc is vital to your business if you then let everyone use it indiscriminately (that’s how the Hoover Company lost their trade marks over their Hoover vacuum cleaners, because they allowed it to become a generic, generally used phrase to describe vacuum cleaners). If you don’t protect your trade mark, you risk losing it. This is why we see these kinds of legal letters flying around from time to time.

BETHESDA V MOJANG

Clearly Bethesda feels Mojang’s proposed use of Scrolls infringes its trade marks – especially after Mojang applied for a trade mark over Scrolls itself. Hence the legal letter (though we don’t know what it says exactly – it probably requests that Mojang ceases and desists from using Scrolls as a game name under threat of legal action, rather than just launching legal action against Mojang immediately; it may well also have been sent in opposition to Mojang’s trade mark application).

The question for both sides is whether Scrolls really infringes The Elder Scrolls as a matter of law and, if so, what they’re going to do about it. To answer that question, one has to look at the test summarised above. In other words:

(1) Is Mojang selling identical or similar goods/services to Bethesda in an identical/similar business, AND
(2) Is there a likelihood of public confusion between Scrolls and The Elder Scrolls.

My personal view from a quick review is that legally the answer to (1) is ‘yes’ but the real fight could be over (2), ie whether there is actually any risk of consumer confusion regarding these trade marks. Obviously it’d be far too early to make any definitive pronouncements on who is in the right here – trade mark lawsuits have to go into a great amount of detail before that can be ascertained (for example, how many other games exist which include the word Scrolls in them?) However, I will say I don’t think this is an immediate slam-dunk for either side. On the one hand, clearly The Elder Scrolls IS the foremost game series to use the word ‘Scrolls’ and a consumer may therefore think that the Mojang game Scrolls is part of the Elder Scrolls series. On the other hand, the Mojang game Scrolls is reportedly going to be a different game to The Elder Scrolls series and Mojang itself has a good brand profile among gamers, making it arguably less likely that its game would be connected with Bethesda. Then again, if you just look at the games themselves, both are fantasy themed (one first person RPG, the other a card playing game with RPG elements) so is there a risk of confusion there? As you can see, it’s far from a straightforward yes/no answer (cue grumbles about typical lawyers…)

In any event, Mojang has three options at present:

(1) Fight the claim
(2) Capitulate and change the game name
(3) Agree to coexist with Bethesda (ie both use the name Scrolls, potentially in return for Mojang paying Bethesda)

I suspect neither side would be keen on a full legal fight, both from a costs and PR perspective (does Bethesda really want to be seen to be suing Mojang, the current darling of the indie games industry?), which suggests we’ll see either outcome (2) or (3) eventually. Then again, maybe one or both of them will dig their heels in and we could see a full lawsuit over this. Watch this space…

IN THE MEANTIME, HERE’S SOME TOP TRADE MARK TIPS FOR DEVELOPERS:

  • When you next make a game, check the trade mark registries and the Internet for current or forthcoming games with an identical or similar title
  • Build trade protection into your game: devise game names, characters etc which are distinctive so that you can trade mark them yourself. Don’t just give names to them because they sound cool.
  • Once you have a trade mark, you need to protect it rather than just ignore it. Otherwise yiou risk losing it.
  • Remember trade marks do NOT give you exclusive ownership over the thing that’s been trademarked: there has to be a sufficient degree of similarity and public confusion for it to be actionable.
  • If you can handle this on your own, great, but if in doubt – speak with a friendly lawyer. IP lawsuits have brought down tech companies and developers of all sizes on their own before, so please take them seriously. 

UPDATE: Rock Paper Shotgun has run a piece about this post (which is nice) – and some of the comments are very interesting (or a bit wrong-headed, depending on how legally educated the commenter is) – well worth a look.

15 Responses to “Trademark Troubles: Bethesda v Mojang”

  1. Anonymous

    I've got a question about the "defending or losing your trademark stuff":

    If it works same as in the example given here, wouldnt that mean, that Bethesda would lose their trademark over "The elder Scrolls" if "Scrolls" or somethin like that would become a generally acceptet term for fantasy themed roleplay games?

    Isn't that very unlikely?

    Reply
  2. Anonymous

    I have a question. Bethesda owns the trademark "The Elder Scrolls". Why would it automatically mean they own trademarks to every single word of this trademark separately? Isn't it just the correct combination of "Elder Scrolls" they own? Otherwise it would be pretty damn hard to name any new game, since chances are at least one of the words you've used would be taken already.

    Reply
  3. Jas

    @Anonymous 1 – yes that's right. If Bethesda was to stop policing its trade mark over The Elder Scrolls then it would risk losing it eventually. That's admittedly unlikely at present – but it has happened in the past. That's why Bethesda is taking the current action (or at least threatening to) vs Mojang

    @Anonymous 2 – owning a trade mark over "Elder Scrolls" just means they can object to anyone else using an identical or similar trademark which the public would confuse with Bethesda's trademark. It doesn't give Bethesda the right to control "The, "Elder" or "Scrolls" forever. In this case, Bethesda says there is sufficient similarity between "The Elder Scrolls" and "Scrolls" for them to be able to object to what Mojang is trying to do. Hope that helps?

    Reply
  4. Anonymous

    if this goes to court, i hope they pick gamers for the jury because they are the ones who are buying this stuff

    Reply
  5. Anonymous

    I doubt anyone's going to prison over this, so unlikely that there'd be a jury.

    Reply
  6. Anonymous

    It's impossible that there will be a jury, since Sweden isn't USA, and we don't use a jury system in Sweden.

    Reply
  7. Anonymous

    I wonder if the nigh ubiquity of the term 'scroll(s)' in games of the genre is of any relevance.

    Reply
  8. Anonymous

    Bethesda, don't you realize this is giving you a bad reputation? Minecraft is hugely popular. "Scrolls" won't be confused with "The Elder Scrolls", it's ridiculous. I love both TES (my favorite game series) and Minecraft and am getting Skyrim Collector's Edition and everything, but isn't going anywhere. Also, Mojang are Swedish like me so good luck hunting us down 😉

    Reply
  9. Anonymous

    OR Mojang can take the classy way out, settling it over a game of Quake 3.

    Reply
  10. Anonymous

    Anon 9 i assume you meant bethesda, since mojang (or at least notch) was the one who issued the challenge

    Reply
  11. Anonymous

    Another issue here is the fact that a lot of people never refer to Elder Scrolls games as "The Elder Scrolls." It's far more common for people to say "Oblivion" than "Elder Scrolls IV", for example. I've seen comments from people saying that stores had no idea what game they were talking about when they referred to it as "The new Elder Scrolls game." It was only when they said "Skyrim" that they understood.

    Obviously "Elder Scrolls" is still a trademark but this could be a point against the likelihood of consumer confusion.

    Reply
  12. Anonymous

    Well Anonymous 11, I have to disagree. While I can safely say neither of us really have reliable proof of whether the consumer will be confused. I have to say that out of how many people, do you think will have actually heard of scrolls? I myself saw a couple game reviewing sites get a first look at Scrolls. About 1 in every 3 people made a comment saying something like "Is this the Elder Scrolls game I've been hearing so much about?". While those weren't their exact words all the time I think you get the point. Now, I'm betting out of minecraft's fanbase only a million are dedicated fans who keep track of Mojang's other games. Now I am also guestimating that ten million people bought Elder Scrolls: Oblivion. So I am guessing that a fair bit of the market has never heard of scrolls before and has heard of Elder Scrolls. Now who's to say when they see this new game they may not think it's just some abbreviated name of the popular game they have heard of?

    Reply
  13. Anonymous

    I also have a lot of friends that I have to called the TES games by their specific name, "Oblivion" or "Skyrim". I usually have to remind them those are games in the TES series.

    Reply
  14. Anonymous

    wow… just wow you cant own a word otherwise no one would be making anything

    Reply

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