GamerLaw Analyzes Scrolls v. Elder Scrolls Situation

August 9, 2011 -

GamerLaw has an in-depth analysis of the Scrolls v. Elder Scrolls situation that was made public last week by Indie developer Mojang - better known as the makers of Minecraft.

Late last week founder Markus "Notch" Persson jumped on Twitter and his personal blog to say that Bethesda had sent him a "cease and desist letter" concerning his upcoming "Scrolls" game, claiming that it would cause brand confusion with its Elder Scrolls series of RPGS - particularly the upcoming Elder Scrolls V: Skyrim. What Persson plans to do at this point is anyone's guess...

The analysis begins with an explanation of trademarks and how game companies tend to use them:

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).

The post goes on to point out that unless all parts of this "test: are met, the law doesn't recognize a trademark infringement. He then uses an example of a company that uses "apples" to make products like apple pies; no one is going to confuse delicious apple pie with an Apple product like a desktop computer or an iPhone.

So what can the Minecraft developers do at this point? GamerLaw offers three options:

(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)

GamerLaw goes on to say that - in a way - Bethesda is doing the right thing:

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.

Finally, they offer some sage advice for anyone developing a game:

- 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 you 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.

You can read the entire thing here. Thanks to Andrew Pfister (@andrewpfister).


Comments

Re: GamerLaw Analyzes Scrolls v. Elder Scrolls Situation

Why aren't people foaming at the mouth over this ridiculous lawsuit?  This is no better than Langdell's "Edge" trademark.  This is just as absurd!  The game is named "Scrolls".  Not "Elder Scrolls", not "Skyrim".  Just a very generic word, "Scrolls".

So what if EA sued somebody who made a game called "Mirrors"?  Would everyone just sit back and say "oh yeah, this is what EA should do.  Totally different then Langdell..."

Re: GamerLaw Analyzes Scrolls v. Elder Scrolls Situation

"he is selling identical or similar goods/services in an identical/similar business"

Card game is similar to video game?

Re: GamerLaw Analyzes Scrolls v. Elder Scrolls Situation

Scrolls is still a video game.  Both games have fantasy settings but that's about it.

 

Andrew Eisen

Re: GamerLaw Analyzes Scrolls v. Elder Scrolls Situation

Actually, it's both.

It's a collectible card game running on the computer. http://www.gamasutra.com/view/news/33260/Minecraft_Developer_Mojang_Reveals_Its_Second_Game_Scrolls.php

I really don't see how there's any confusion between that and Elder Scrolls

 

Re: GamerLaw Analyzes Scrolls v. Elder Scrolls Situation

Yes, I know but the original poster's phrasing implied that he thinks it's purely a physical card game.  It's not, it's a video game.  Oh sure, the genre is still a card battler, that was never in question.

 

Andrew Eisen

Re: GamerLaw Analyzes Scrolls v. Elder Scrolls Situation

No, I'm pretty sure it's a 100% physical card game.

 

(The content below is unrelated gibberish that has been stuck on my commenting account for a couple years and I have absolutely no means to address it.)

 

Re: GamerLaw Analyzes Scrolls v. Elder Scrolls Situation

You're incorrect.

http://gamasutra.com/view/news/33261/GDC_2011_Interview__Mojangs_Jakob_P...

Are you thinking about doing a physical, real game card to accompany the digital release?

JP: We're not saying a definite "no" to that, but it's not something that we're considering during the design process for the game. I think just the fact that we make this game digital and playable online and on handheld phones, we can add things to the game that would be very hard to add to a paper game.

So these are things that we can add to the game to improve the game, because it is a computer driven program, and the computer can manage that for you. We're not going to say that we never will - if the game is successful, and if we have a demand for it we will probably look into it, but it's not going towards the design at the moment.

 

Andrew Eisen

P.S. - I went ahead and removed your signature for you.

Re: GamerLaw Analyzes Scrolls v. Elder Scrolls Situation

(The content below is unrelated gibberish that has been stuck on my commenting account for a couple years and I have absolutely no means to address it.)

If you are referring to the block of text discussing Earthbound DRM, that is your signature. You can remove it and/or change it by clicking your username in the upper right of the web page, clicking the edit tab in the resulting page and make the changes near the bottom of that page.

Re: GamerLaw Analyzes Scrolls v. Elder Scrolls Situation

Excellent writeup of the legal issues around Trademark and how they intertwine with the game industry.  Hopefully stuff like this will help towards undoing some of langdell's damage...

 
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AvalongodAgain I think we're conflating the issue of whether Sarkeesian's claims are beyond critique (no they're not) and whether its ever appropriate to use sexist language, let alone physical threats on a woman to intimidate her (no it isn't)08/29/2014 - 5:04pm
prh99Trolling her or trying to assail her integrity just draws more attention (Streisand effect?). Which is really not what the trolls want, so the only way to win (if there is a win to be had) is not to play/troll.08/29/2014 - 5:02pm
prh99Who cares, just don't watch the damn videos if you don't like her. Personally, I don't care as far as she is concerned as long there are interesting games to be played.08/29/2014 - 4:34pm
Andrew EisenZip - And yet, you can't cite a single, solitary example. (And no one said you hated anyone. Along those lines, no one claimed Sarkeesian was perfect either.)08/29/2014 - 3:51pm
Andrew EisenSaint's Row: Gat Out of Hell was just announced for PC, PS3, PS4, Xbox 360 and Xbox One making it the 150th game For Everything But Wii U! Congratulations Deep Silver!08/29/2014 - 3:49pm
ZippyDSMleeI do not hate them jsut think its mostly hyperlobe.08/29/2014 - 3:40pm
Andrew EisenSleaker - I'd say that's likely. From my experience, most who have a problem with Sarkeesian's videos either want to hate them in the first place (for whatever reason) or honestly misunderstand what they're about and what they're saying.08/29/2014 - 3:16pm
james_fudgeWe appreciate your support :)08/29/2014 - 2:55pm
TechnogeekIt gives me hope that maybe, just maybe, the gaming community is not statistically indistinguishable from consisting entirely of people that your average Xbox Live caricature would look at and go "maybe you should tone it down a little bit".08/29/2014 - 2:49pm
TechnogeekI just want to say that while I've disagreed with the staff of this site on several occasions, it's still good to see that they're not automatically dismissing Anita's videos as a "misandrist scam" or whatever the preferred dismissive term is these days.08/29/2014 - 2:49pm
E. Zachary KnightZippy, So you can't find even one?08/29/2014 - 1:04pm
ZippyDSMleeAndrew Eisen:Right because shes prefect and never exaggerates... *rolls eyes*08/29/2014 - 12:53pm
SleakerAnd honestly, nearly all of the games she references, or images she depicts I've always cringed at and wondered why they were included in games to begin with, from pinups through explicit sexual depictions or direct abuse. I think it's cheap storytelling.08/29/2014 - 12:35pm
Sleaker@AE - aren't most people fundamentally misunderstanding her at this point? haha.. On a related note I think a lot of the backlash is coming from males that think she is telling them their 'Generic Male Fantasy' is bad and wrong.08/29/2014 - 12:33pm
Andrew EisenAnd no, I don't think the female community would be upset over the performance of a case study in and of itself. Possibly the mostivations behind such a study, the methodology or conclusions but not the mere idea of a case study.08/29/2014 - 12:29pm
Andrew EisenAmusingly, these videos aren't saying you can't/shouldn't use tropes or that sexual representations are inherently problematic so those are very silly things to have a problem with and indicate a fundamental misunderstanding of the series.08/29/2014 - 12:29pm
SleakerDo you think the female community would get extremely angry over a male doing a case study on the negative impact of sex-novels and their unrealistic depiction of males and how widespread they are in american culture?08/29/2014 - 12:25pm
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SleakerI think a large part of the controversy stems from the idea that games aren't culture setters, but culture reactors, and simply depict what is already in culture. So people don't care that games use tropes or are blind to them because we've failed ...08/29/2014 - 12:20pm
 

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