What Happens When A Reasonable Developer Runs Into Aggressive Trademark Lawyers?
from the scrolls! dept
A whole bunch of you have been sending in Markus Persson’s blog post about the the legal threat from game developer Bethesda over his attempt to name his new game, Scroll. We’ve written about Markus, better known as notch, a few times. He’s the eminently reasonable and quite successful developer of the game Minecraft.
What struck me about Notch’s blog post wasn’t yet another story of lawyers overreacting via intellectual property law, but Markus’ continued reasonableness involving pretty much all things intellectual property related. Forgive me for quoting much of the blog post, but there are so many good examples of him acting reasonably. Let’s start at the top:
First of all, I love Bethesda. I assume this nonsense is partly just their lawyers being lawyers, and a result of trademark law being the way it is.
He’s being threatened with a lawsuit, and talking about how much he loves the company that’s threatening him, and even giving them excuses for why they’re threatening him. Okay, in this case, maybe he’s being a little too reasonable.
Next up, he explains why they even bothered to try to get trademarks in the first place:
About half a year ago, our lawyers recommended us to register ?Minecraft? as a trademark, so we did. I had voted against it initially, but we did it anyway. Better safe than sorry, and all that. At the same time, we also applied for ?Scrolls?, the new game we?re working on. We knew of no similarly named games, and we had even googled it to make sure. I?m not even sure if you CAN trademark individual words, like ?Scrolls?, but we sent in the application anyway.
I can definitely respect this position. While some countries (the US in particular) do allow for common law trademarks based on usage (meaning you never really have to apply for a trademark if you don’t want to), some countries do have first to file rules, and that can make things messy. I’m not convinced that it always makes sense to file, but it certainly can be a “better safe than sorry” kind of situation. I also like the fact that he even admits that he’s not sure trademarking a word like “Scrolls” is possible (though, the answer is that it is, with certain clear limitations).
(Disclosure: We?ve enforced the trademark for Minecraft once, when there was a minecraft clone on iOS, using our name. People were emailing me saying our iOS version was buggy and bad, so we asked them to change the name of their game, and they did.)
This is actually my favorite part of the post. This is how trademark law should work. When you have a specific case where there’s a very high likelihood of confusion — thus potentially harming the consumer — it can be useful. And even then, he was careful not to go legal at all, but to just reach out and ask them to change the name… which they did. Everyone’s happy, move on.
A while later, out of the blue, we got contacted by Bethesda?s lawyers. They wanted to know more about the ?Scrolls? trademark we were applying for, and claimed it conflicted with their existing trademark ?The Elder Scrolls?. I agree that the word ?Scrolls? is part of that trademark, but as a gamer, I have never ever considered that series of (very good) role playing games to be about scrolls in any way, nor was that ever the focal point of neither their marketing nor the public image.
The implication that you could own the right to all individual words within a trademark is also a bit scary. We looked things up and realized they didn?t have much of a case, but we still took it seriously. Nothing about Scrolls is meant to in any way derive from or allude to their games. We suggested a compromise where we?d agree to never put any words in front of ?Scrolls?, and instead call sequels and other things something along the lines of ?Scrolls – The Banana Expansion?. I?m not sure if they ever got back to us with a reply to this.
When contacted by another company, even when he thinks their case is weak, he responds amiably, and tries to figure out a reasonable compromise that will make them happy.
Today, I got a 15 page letter from some Swedish lawyer firm, saying they demand us to stop using the name Scrolls, that they will sue us (and have already paid the fee to the Swedish court), and that they demand a pile of money up front before the legal process has even started.
I assume this is all some more or less automated response to us applying for the trademark. I sincerely hope Bethesda isn?t pulling a Tim Langdell.
And… blech. A perfect example of bad trademark bullying in response from Bethesda. While notch implies early on that this may just be a result of trademark law, he’s being generous. While trademark law often does require proactive protection of the mark, that’s often misinterpreted to mean you must sue anyone who does anything remotely similar. In reality, you just have to protect the mark from becoming generic. There’s little evidence here that the use by notch in any way harms Bethesda. Hopefully notch is correct and Bethesda quickly comes to its senses and apologizes for going full-on trademark bully after he’s been entirely reasonable all along.