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.

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Comments on “What Happens When A Reasonable Developer Runs Into Aggressive Trademark Lawyers?”

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Patrick says:

Going legal

I’m not sure what you mean when you say “he was careful not to go legal at all” when he enforced his Minecraft trademark. I’d bet that when he asked the other company to change their name, he did so via a standard issue cease and desist letter. Since they changed the name, there was no need for further action, but it seems unlikely that he would have not sued them in order to be a nice guy who doesn’t “go legal.”

That Anonymous Coward (profile) says:

Re: Going legal

He asked before having to bother going legal.

He wasn’t angry someone made a clone, he was angry they made a crappy clone that wasted his staffs time trying to comfort players who were screaming how their iOS version sucked and how dare they blargh blargh blargh…

Would he have sued? He might have, but the difference is instead of flipping out and unleashing the legal hounds he asked politely that they stop shitting on peoples perceptions of his game and company first.

Anonymous Coward says:

Re: Re: Re:

‘Neither of the two options that you came up with are correct…’

Learn some English before you try to tell me to move along. The second option (apologizes for) is indeed correct. You’re on the internet. You could’ve googled it before you made a fool of yourself, telling me it’s incorrect.

Just to make it really clear for you:

If the infinitive were ‘to apology’, he would be right to write ‘…comes to its senses and apologies for going…’.

But since the proper infinitive is ‘to apologize’, the right way to put it is ‘…comes to its senses and apologizes for going…’.

I’m not even a native speaker and I know that.

Cheers, my orthographically challenged friend!

P.S.: Have yourself checked for dyslexia. If you really had to read my post 3 times and still failed to understand it…

TCBloo (profile) says:

Re: Re: Re: Re:

You’re right, the second option was correct. I just failed to realize that before I hit the submit button.

I’m glad that you can read at least read and write on a 4th grade level.

Is it ‘to apology’ now? Or did you mean ‘apologizes for’?
I’ll show you how these two short, stupid sentences are hard to read.

Is it ‘to apology’ now?
This is confusing because:
“Is it…” What is “it” referring to?
“‘to apology'” This is just bad grammar.
“now?” “Now” as opposed to when?

This could have been more clearly written as “Did you mean ‘to apologize?'”

Or did you mean ‘apologizes for’?
This one isn’t quite the trainwreck as the first, but when most people are trying to decipher what the hell the first sentence meant, they don’t give the second much thought. Still, you missed some punctuation.

Now, as for my having dyslexia, it’s true. I do have it; however, when I don’t have to dredge through idiotic and grammatically incorrect posts, it’s not a problem.

Anonymous Coward says:

apologies, i am at work and having a hard time finding a link to a non-gaming site (guess what they block here…)

just as a clarification, this is not Bethesda, but rather the company that owns? or distributes? Elder Scrolls.

So not the developer, but the publisher.

Someone with an open internet, could you post a link? thanks.

TCBloo (profile) says:

Re: Re: Re: Re:

Ok, I checked out the structure of the companies involved.

There are three that you need to be aware of: ZeniMax Media, Bethesda Softworks, & Bethesda Game Studios.

ZeniMax is the umbrella company. Bethesda Softworks is a division of ZeniMax that publishes games made by Bethesda Game Studios which is a subsidiary of ZeniMax.

The difference between a division and a subsidiary is that a division is legally the same entity as its parent company while a subsidiary is an entirely different company but is owned by its parent company.

Vidiot (profile) says:

Is Google your best shot?

“… and we had even googled it to make sure.”
Consistent with “… careful not to go legal at all…”, was that the extent of their search? I’m no lawyer, but the ones I’ve kept company with have told me about the crazy-ass, in-depth methods you need to employ before registering something. (And did I mention “expensive” methods, too?)

out_of_the_blue says:

"This is how trademark law should work."

Only happens when no large amount of money is at stake for the legally disadvantaged side. Your Pollyanna notions on “free enterprise” never take greed into consideration — and yet greed is ALWAYS present. I’m not disagreeing on trademark, but when situation is reversed as with Bethesda, whether a court battle occurs depends on how much power trip the executives are on.

Also, reasonable people should be aware that it’s risky in any lawsuit: the least concession (such as admitting that the word “Scroll” is in Bethesda trademark) can ruin your case. Should always just hear them out without admitting even that the sun is shining. — Everything is an “admission” to a lawyer, not a statement of fact.

Phillip Vector (profile) says:

Re: Re: Reporting first

I personally like seeing that I submitted stories. I enjoy seeing that number go up. It matters to me to see the number go up as a feel a sense of pride (since I’m not a paying insider, I feel I contribute to the site in comments and scoops).

However, I’m not going to bitch and complain if I don’t get it. If someone else scooped the story before me (I posted it up within 20 mins. of the post going up), I’m not going to get upset by it. I would’ve liked it, but it went to someone else. I’m cool with that.

What I’m not cool with is saying, “Lots of people sent me this” and no one in that group get the “Scoop Cred”. πŸ™‚

Make more sense now?

Mike Masnick (profile) says:

Re: Reporting first

Who was the first one to report this? I’ve been trying to get “Scooping rights” for awhile now. It’s seen as a badge of pride for me. If I didn’t get it, no worries. But saying “lots of people” still doesn’t give credit to the first one (and linked to his/her account). So who was the first?

If I just say “lots of people” it generally means the first submission was anonymous. This was was submitted a TON, but the first one was anon.

Engineer says:

Protecting the mark...

Wouldn’t a way to protect the mark be to enter a license agreement with people who aren’t really infringing but that you feel the need to be aggressive to?

Since Scrolls doesn’t infringe on the elder scrolls, but *could* be used to claim that they haven’t protected the mark, wouldn’t it be prudent for bethesda to just license the use of the word “scrolls” for $100 with some provisions?

Thus the cost is minimal and everyone’s butt is covered.

That Anonymous Coward (profile) says:

Re: Protecting the mark...

Because that negotiation does not earn the legal team their fees. We had to pay $$$$ to protect ourselves, but how much of that was wasted just trying to force the small guy into folding from the game, not because the law said the small guy was wrong?

And if they show any signs of weakness well then everyone will walk all over them, and their company and The Elder Scrolls will just simply cease to exist.

The problem is this happens more than anyone actually knows about, the problem for them this time is its Notch. Notch has a large platform, and decided to use it.

Look what happened to the woman behind WTForever21. Without the community supporting her, and getting better legal advice about her position, she would have folded and walked away. How many times have these firms overstepped their bounds, and won only because they are willing to spend stupid amounts of money on it?

When contacted Bethesda still was not giving any comment on the story, and I am willing to bet with a new game coming out the last thing they really want to do is piss off a bunch of gamers over the use of the word “Scrolls”.

Engineer says:

Re: Re: Protecting the mark...

I’m sure people send letters all the time. I got one once for registering a domain name in the form AdjectiveAdjective. Apparently, some company believed they owned the second adjective because they’d made “adjective skateboards” at some point.

They sent me a very threatening and expensive packet from a lawyer by fedex. Must have cost them $20. They were actually relatively reasonable and willing to licence the adjective to me for $1,000 or something like that.

I ignored them, and a few months later they spend another $20.

Now it is years later, still ignoring them, they stopped trying to contact me… still have the domain name.

Tehy had no case, but hey, why not spend $40 and see if people will cave?

I see it no differently than those who send out order forms that are designed to look like bills in the hopes that some harried bill payer at a company will think that someone in the company ordered the product and pay it….

Zot-Sindi says:

this is moronic

it’s like what does the elder scrolls have to do with just a generic scroll? besides the fact they use the word but it’s not just “scrolls” generically by itself, there’s a pretty huge difference there

they aren’t saying these scrolls are elder scrolls, just *a* series of scrolls, it could be elder scrolls, it could be someone’s grocery lists for all we know, until they brought up the whole issue i never even connected the two at all, why do trademark laws have to be used so stupidly?

Di Fiasco (profile) says:

Bethesda is really opening up a can of worms here. Do they honestly think that, in the history of gaming (electronic or otherwise), that they have any exclusive rights to the use of ‘scrolls’ within a fantasy game? At the end of the day, ALL fantasy games owe allegiance to one company and one only:
TSR Incorporated.

What seperates Bethesda from TSR is that TSR was only interested in people enjoying their games rather than chasing down any third-party designer who happened to like what they did and infuse elements into their own creations.

What’s more, all rights to TSR were bought by ‘Wizards of the Coast’ who are now owned wholly by Hasbro Inc. If Bethesda does get anywhere with this stupid legal action, perhaps someone should send Hasbro a little note to see if they would like to make Bethesda their legal plaything for a while.

Old advice but still relevant: Be careful what you wish for; you might just get it.

That Anonymous Coward (profile) says:

Re: Re:

Except TSR defends their IP and trademarks viscously, even the IP they lifted from other cultures and mentions in other peoples fantasy works. They don’t own the concept of scrolls as an item, just the names you might find on some of them in a RPG setting.

Bethesda has a trademark on “The Elder Scrolls”, and they want to make sure nothing hurt their property.
From the narrow limited point of view of the lawyers, a game called “Scrolls” will steal everything they ever built.

Will Sizemore (profile) says:

For the first time ever, I sort of agree with Bethesda on this. The power word in, “The Elder Scrolls” is certainly “Scrolls” and another game that uses that name, whether intentionally or not, can have the very effect that trademark law was enacted to prevent. However, I don’t understand the Swedish thing. Is Bethesda a Swedish company? I don’t have time to research it now but I will later.

I do think that, “Scrolls” is already too generic, therefore a bad choice in and of itself. If “Scrolls” were first and “The Elder Scrolls” second, there would be a case for infringement for sure. I think its best, in this case, to change the name and avoid any confusion.

That Anonymous Coward (profile) says:

Re: Re:

Mojang is in Sweden, so to sue them they used Swedish lawyers.

While Scrolls might be the “power word” to you, the power is in the concept of “The Elder Scrolls”. They call their game The Elder Scrolls: Name. Not Scrolls: Name.

The trademarks in question have yet to be seen, but this smacks of FaceBook trying to claim they own Face and Book in any online setting.

And remember this lawsuit is happening because they dared to FILE for a trademark on the name Scrolls, a game that is not even out yet. There were other options, like talking to Notch, that would have saved them having to retain counsel in a foriegn country. Rather than pursue legal action that will cost both sides, and might result in a loss for Bethesda, an email could have gotten an agreement that made the lawyers happy and we could have Notch working on his products rather than trying to fend off a stupid lawsuit.

I am uncertain if the trademark was even given, and if it was such a power word, why did Bethesda not file it previously. If they own it, shouldn’t the trademark been dismissed out of hand?

Other than they are both games to be played on the computer, they are dissimilar and the likelyhood of a fan of the game confusing a Mojang game with a Bethesda game is very low.

Will Sizemore (profile) says:

Re: Re: Re:

What I meant was that I think using generic words, especially common words that have multiple definitions (I can roll paper up and call it a scroll or I can run my finger over a wheel/button on my mouse and scroll) should not be fodder for IP lawsuits, but since they are, it is better to avoid them.

That being said, if notch’s game has nothing to do with rolled-up paper and more to do with scroll wheels, bars, and trackballs, then Bethesda should have some apologizing to do.

Chronno S. Trigger (profile) says:

Re: Re:

The power word in “The Elder Scrolls” is “Elder” not “Scrolls”. “Scrolls” is just a generic term to signify it’s paper rolled up. The “Elder” part is the name of said scrolls and the important part of the title. To single them out as “The Elder Scrolls” indicates that even in this mythos there are other scrolls, probably with other names (and other trademarks).

Dirrr says:

Sigh. Naive.

The sad thing is, his new found wealth and company may likely be completely destroyed because of this lawsuit. Lawyers are not friendly people who slap people on the wrist. They go for the jugular and want to destroy and put people out of business.

He has 3 million followers and fans of his work, why he hasn’t called on them to start boycotting is beyond. Why he still liked a company that will put him out of business and make him penniless is, again, beyond me.

I suppose they don’t have homeless people where he lives, but where ever he ends up I bet we will be seeing a quote saying “I should have used my resources more effectively. I should have know the industry is out for blood.”.

Dade says:

harden up and start swinging back

I agree with the author – clearly Notch is being WAY to civilized. I’s sure he believes in the goodness of people to find a compromise, or work out a deal.

What he should do is start swinging back at these people and not stand down to this type of bullying. He needs to get a few aggressive attorneys and let them start cracking skulls so they lay off. You go at these guys and it will send a message to other parties thinking about taking advantage of Notch’s humble personality – mess with us and its going to cost you dearly.

That Anonymous Coward (profile) says:

Re: harden up and start swinging back

He posted a blog post, and linked it on Twitter.

Consider if you will the sheer number of Minecraft players who hang on everything he says looking for any tidbit about the next patch.

Now consider what those people might do on their own to a company “picking on” Notch.

The blog post was meant to get the attention of the people at Bethesda. He pointed out that this was silly, and he was open to some sort of compromise.

Before engaging in some sort of scorched earth policy that is bound to hurt Mojang and Bethesda in the end, maybe the right people at Bethesda can step in and actually answer Notch’s reply to their initial claim.

Anonymous Coward says:

Re: What about the Dead Sea Scrolls...

I’m sure the guys who wrote the Dead Sea Scrolls were Elders at the time they wrote the scrolls…. So obviously the Elder Scrolls refers to the Dead Sea Scrolls that were written by the Elders, and the original trademark on the Elder Scrolls never should have been allowed…

Oh, that wasn’t the point being made here…. I always seem to be a little ‘off’….

Eo Nomine says:

Funny how most simply jump on Bethesda for “own the right to all individual words within a trademark” without the full background or sufficient information to actually assess what’s going on here. All Notch indicated in his blog post was that “out of the blue, we got contacted by Bethesda?s lawyers” and he received 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”

First, it’s hardly surprising that Bethesda contacted them when Mojang had itself applied for a trademark on the word “Scrolls”. In fact, according to the Swedish Trademark Database, Mojang applied for a trademark on the word “Scrolls” not just in association with his video game, but in association with just about any conceivable marketing usage one could think of. Here’s the full list of what Mojang applied to have the exclusive right to use the word “Scrolls” in association with (original in Swedish, translated by Google translate):

“Class description
9 Computer games, video games, computer software, computer software and video games, software downloaded or downloadable; Software Publications downloaded; Interactive entertainment software; data recorded electronically from the Internet, data recorded in computer readable form from the Internet;, tapes, cartridges, CD-ROMs and other magnetic, electronic or optical media, all with game software or video games, electronic entertainment devices for use with television receivers, electronic games apparatus; Hemvideospelsmaskiner.
25 articles of clothing, footwear and headgear, shirts, sweaters, pants, Training Shirts, Jackets, Knitted garments, Hats, Hats; Halsbekl?dnader, Shoes, Socks, Women’s Clothing, Men’s Clothing, Infants Clothing, apparel, parts and components for those.
28 Games and playthings; Electronic gaming equipment; Audiovisual games and computer hardware platforms (not for use with television receivers), handheld gaming devices, hand-held video game machines, parts and fittings for the aforesaid goods; Board games, electronic games machines, equipment sold as a unit for card games, Electronic handheld game device, game equipment sold as a unit for the parlor, a card game; Independent video game machines, toys aimed at problem solving, Playing cards, Board Games, Card Games, Three-dimensional puzzles; parts and fittings for the aforesaid goods.
41 Entertainment services in the form of electronic games, computer and video games provided via the Internet and other remote communication devices, Internet gambling (downloadable), organization of games; games (not downloadable) which is played via a global computer network; Educational and entertainment services in the form of movies, TV movies, digital movies and feature films, radio and television programs and shows, The processing, editing and production of cinematographic works, television films, digital movies and feature films, radio and television programs; Entertainment services in the form of electronic games, computer – and video games provided via the Internet, mobile phones and other remote communications device.”

Consequently, I find it more than a little disingenuous that Notch is incredulous about Bethesda claiming “the right to all individual words within a trademark” when HIS COMPANY IS APPLYING FOR A TRADEMARK THAT IS MUCH BROADER than the one Bethesda is asserting. In fact, if Mojang gets the trademark it applied for, it’s quite conceivable that Mojang could sue Bethesda for infringing its trademark in the word “Scroll”. And you wonder why Bethesda appears to reacting negatively to this?

Secondly, it is routine that after filing, trademarks are published for opposition (I’m not that familiar with Swedish trademark processes, but assume it follows the same basic process as most others). During this period, it is expected that those with similar trademarks will challenge the granting of the trademark. I’m not sure where Mojang’s application is in the process, but it’s not at all clear that this “15-page letter” isn’t part of this process (nor are the assertions regarding demands clear… is this a settlement offer? A licensing offer? Related to costs of opposition? What?).

There’s clearly more going on here… so I’d be wary about jumping to conclusions simply by virtue of a single blog post.

Chronno S. Trigger (profile) says:

Re: Re:

First, your Class Description is for a grand spanking total of four things. Video Games, Clothing, TV, and Movies. Did you even read it?

That trademark seems quite reasonable when you get past all the legal BS that has to go into a trademark, especially for the creator of Minecraft.

If a trademark is published for opposition, shouldn’t Bethesda file an opposition instead of a lawsuit?

Shouldn’t the trademark get denied initially on just the word scrolls, unless it’s the entire logo. That’s vary possible and would fit with the merchandising.

Anonymous Coward says:

Question: Ford has a trademark on the word Ford. Does this mean that WaterFORD glass can’t operate under that name in the U.S.? If EA holds a trademark on SimCity, does that mean that NCSoft can’t operate a game called CITY of Heroes? If I can confuse Xenogears and Xenosaga, should one of them be required to have a different name?

Anonymous Coward says:

The annoying thing about this is that few people even think of Elder Scrolls games as “Elder Scrolls” games, they think of them by their individual names. “Daggerfall”, “Morrowind”, “Oblivion”, “Skyrim”, etc. The Elder Scrolls IV: Oblivion is far from the first thing that springs to mind when you say to me “scrolls”.

Heck, the elder scrolls themselves didn’t even make an appearance within the actual games until the fourth installment, and they were only in an optional sidequest! Until then they were only referred to rarely and cryptically.

Sheogorath (user link) says:

Notch was in the wrong

The problem for BethSoft was if Notch had successfully got a trademark for the word Scrolls as a game title, that would mean no more Elder Scrolls games because their names contain another company’s trademark for a substantially similar product. Are you getting it now? It’s like a flour milling company registering the name Graham as a trademark and preventing all competing companies from making and selling Graham flour as a result.
As for the Elder Scrolls being unfiled, that doesn’t even matter. It simply makes the Elder Scrolls an unregistered trademark, and everyone knows they’re protected under the Lanham Act.
You don’t have to be Autistic to be highly intelligent, but it helps.

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