Trademark Troubles: Bethesda v Mojang

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.