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.