What Happens When a Reasonable Developer Runs Into Aggressive Trademark Lawyers(techdirt.com)
techdirt.com
What Happens When a Reasonable Developer Runs Into Aggressive Trademark Lawyers
http://www.techdirt.com/articles/20110805/17321115419/what-happens-when-reasonable-developer-runs-into-aggressive-trademark-lawyers.shtml
9 comments
That said, Notch is a pretty unflappable guy in the face of daily hordes of criticism and whining.
I actually aspire to Notch levels of sanguinity, as a software developer & community wrangler.
I actually aspire to Notch levels of sanguinity, as a software developer & community wrangler.
Confusing things about that blog post:
1. Is the action being pursued by Bethesda Softworks directly or by its parent, Zenimax? (Guessing Zenimax)
2. Are they 'suing' Mojang or is this just an aggressive ceast-and-desist action? (Judging from other updated news articles, I'd guess it's the latter.)
3. I appreciate that ZeniMax might be using a heavy touch here, and we hate lawsuits, and we like Minecraft, but does Notch's paraphrased claim "I don't like trademarks, but I let my lawyers do it anyway, and we almost had to enforce it but only once" really give the principled higher ground?
4. The trademark "Daggerfall" may have been cancelled in 2008, sounds like a perfect name for Notch's new game :)
1. Is the action being pursued by Bethesda Softworks directly or by its parent, Zenimax? (Guessing Zenimax)
2. Are they 'suing' Mojang or is this just an aggressive ceast-and-desist action? (Judging from other updated news articles, I'd guess it's the latter.)
3. I appreciate that ZeniMax might be using a heavy touch here, and we hate lawsuits, and we like Minecraft, but does Notch's paraphrased claim "I don't like trademarks, but I let my lawyers do it anyway, and we almost had to enforce it but only once" really give the principled higher ground?
4. The trademark "Daggerfall" may have been cancelled in 2008, sounds like a perfect name for Notch's new game :)
"does Notch's paraphrased claim "I don't like trademarks, but I let my lawyers do it anyway, and we almost had to enforce it but only once" really give the principled higher ground?"
Yes. There is a difference between honest attempts to avoid customer confusion and bullying competition just to cause them trouble (or show the "we're serious about protecting our IP" theatre to investors.) Obviously, some cases may be borderline, but here it is evident who's on which side of the division.
Yes. There is a difference between honest attempts to avoid customer confusion and bullying competition just to cause them trouble (or show the "we're serious about protecting our IP" theatre to investors.) Obviously, some cases may be borderline, but here it is evident who's on which side of the division.
By responding continually in a reasonable manner, did notch inadvertently make Bethesda's case easier, because now they can show that he somehow agrees with their case?
I'm not saying he does, at all. Just that when lawyers are involved, there's usually a good reason the first advice they give you is to keep your mouth shut.
FWIW, I never made the connection to the game "The Elder Scrolls" until it was made explicit. Shows you just what a weak case they have.
I'm not saying he does, at all. Just that when lawyers are involved, there's usually a good reason the first advice they give you is to keep your mouth shut.
FWIW, I never made the connection to the game "The Elder Scrolls" until it was made explicit. Shows you just what a weak case they have.
I agree - it's best to not let your enemy frame the debate. And agreeing to points is certainly not going to help your case.
That said, there is lots you can say. This is my favorite example of a great smackdown response from a small cable manufacturer to Monster cable who claimed design infringement. Turns out the owner of the cable company was a retired lawyer. It's long - but educational. Here's a sample of what's inside:
"If you sue me, the case will go to judgment, and I will hold the court's attention upon the merits of your claims--or, to speak more precisely, the absence of merit from your claims--from start to finish. Not only am I unintimidated by litigation; I sometimes rather miss it."
http://www.audioholics.com/news/industry-news/blue-jeans-str...
That said, there is lots you can say. This is my favorite example of a great smackdown response from a small cable manufacturer to Monster cable who claimed design infringement. Turns out the owner of the cable company was a retired lawyer. It's long - but educational. Here's a sample of what's inside:
"If you sue me, the case will go to judgment, and I will hold the court's attention upon the merits of your claims--or, to speak more precisely, the absence of merit from your claims--from start to finish. Not only am I unintimidated by litigation; I sometimes rather miss it."
http://www.audioholics.com/news/industry-news/blue-jeans-str...
You are making the assumption that Swedish law is like US law. US and British law are in some respects not sane on this subject (for example, defendants expressing sorrow or apologizing for personal injury being take as signs of culpability).
That Bethesda has gone as far as to retain a Swedish law firm should point out that 1) they mean business and 2) they know that this is going to play out in mojang's court (literally I guess!).
That Bethesda has gone as far as to retain a Swedish law firm should point out that 1) they mean business and 2) they know that this is going to play out in mojang's court (literally I guess!).
He agreed that the word "scrolls" is contained within the trademark "the elder scrolls". I don't think he agreed to any other part of their position.
He's also telling Bethesda to back off or get assraped by public opinion.
By now, I think most consumers have learned that the shenanigans in the games industry aren't easily stopped merely by a change public opinion. Just look at how widespread DRM is these days, and how much worse it's getting for end-users.
Isn't Bethesda worried about their corporate brand? I can't imagine them thinking this case would be worth pursuing, at the cost of their actual products.
I originally was pretty excited for Skyrim, but this whole thing is turning me off.
I originally was pretty excited for Skyrim, but this whole thing is turning me off.
This would be like Valve complaining about a game called "Half", or Blizzard complaining about a game called "Craft". Bonkers.
If Warcraft & Starcraft had been the first games to use that naming convention, it actually would be pretty reasonable for Blizzard to claim that as a trademark.
Certainly, when I first encountered some other game called <genre>craft, I initially assumed it was a Blizzard title. Maybe that was dumb of me, but I had such a strong association between Blizzard and that type of name. That's exactly what trademarks are all about -- preventing customer confusion.
Certainly, when I first encountered some other game called <genre>craft, I initially assumed it was a Blizzard title. Maybe that was dumb of me, but I had such a strong association between Blizzard and that type of name. That's exactly what trademarks are all about -- preventing customer confusion.
"That's exactly what trademarks are all about -- preventing customer confusion."
Yes, but the problem is that the theoretical customer whose confusion the laws try to prevent is getting doormat dumb. This in turn turns the trademark space into an (artificially) limited resource. You cannot use the orange color in your palette nor can you use the word "scroll" and suddenly picking a discernible tag turns into an expensive lawyer-fest.
As a consumer who can indeed discern between "starcraft" and "craft" I am a bit concerned - after all whatever makes the business more costly is in fact limiting my choice.
Yes, but the problem is that the theoretical customer whose confusion the laws try to prevent is getting doormat dumb. This in turn turns the trademark space into an (artificially) limited resource. You cannot use the orange color in your palette nor can you use the word "scroll" and suddenly picking a discernible tag turns into an expensive lawyer-fest.
As a consumer who can indeed discern between "starcraft" and "craft" I am a bit concerned - after all whatever makes the business more costly is in fact limiting my choice.
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notch also has a reasonable view on piracy and how it effects him http://notch.tumblr.com/post/1121596044/how-piracy-works
I know brands tend to go after any and all cases where the IP is even remotely related, but I wonder if this is a concentrated effort by Bethesda as they view "Scrolls" an actual threat, or just a knee jerk reaction to a game they might see as amateur. If the former, it will be interesting to watch the community's reaction to a prolonged legal assault on Minecraft. I know it's causing a big stink in some parts of the internet already.
Legal departments should always first check with the marketing department to avoid harming their company like this.
They are protecting their brand from what they think might be a takeover by someone else, but are harming it to a much higher degree than a game called "Scrolls" ever could
This story annoys me to no end, because it points once again to a seemingly pervasive online and generational sense of entitlement when it comes to things like trademarks and copyright.
While C&D letters are never a nice surprise, Bethesda is right and Notch is wrong.
Given that these both involve computer games and computer games in the same or similar genre, it's entirely reasonable to think that the average consumer would be confused at the titles. (And I have trouble buying the line about the Google search. Even now, "Elder Scrolls" and a link to Bethesda's website shows up in the top 10 results, filter bubble be damned).
The article lacks detail in a way that reads as inaccurate. While it's true you have to protect marks from becoming generic, this involves defending them against all infringers, proving that you've done so, and also proving that you've used the mark in public within a certain amount of time. Which means that Bethesda is only doing what it's required to do to protect their franchise from this exact sort of situation.
While companies like Activision/Blizzard and Ubisoft do things that are of dubious benefit to their customers, I feel like in this case Notch is riling up a large fanbase and positioning this as big-corp versus the little-guy.
This is disingenuous on two levels. One, ignorance and entitlement aren't excuses (just ask Andy Baio and his $35,000 lesson in copyright fair use). Two, Notch is the public face of a company that, by all accounts, is worth millions of dollars.
It's time he started acting like it, educate himself, and put the babe-in-the-woods routine to rest.
PS: I'd also be very surprised if a trademark was granted on a generic dictionary word like "Scrolls."
While C&D letters are never a nice surprise, Bethesda is right and Notch is wrong.
Given that these both involve computer games and computer games in the same or similar genre, it's entirely reasonable to think that the average consumer would be confused at the titles. (And I have trouble buying the line about the Google search. Even now, "Elder Scrolls" and a link to Bethesda's website shows up in the top 10 results, filter bubble be damned).
The article lacks detail in a way that reads as inaccurate. While it's true you have to protect marks from becoming generic, this involves defending them against all infringers, proving that you've done so, and also proving that you've used the mark in public within a certain amount of time. Which means that Bethesda is only doing what it's required to do to protect their franchise from this exact sort of situation.
While companies like Activision/Blizzard and Ubisoft do things that are of dubious benefit to their customers, I feel like in this case Notch is riling up a large fanbase and positioning this as big-corp versus the little-guy.
This is disingenuous on two levels. One, ignorance and entitlement aren't excuses (just ask Andy Baio and his $35,000 lesson in copyright fair use). Two, Notch is the public face of a company that, by all accounts, is worth millions of dollars.
It's time he started acting like it, educate himself, and put the babe-in-the-woods routine to rest.
PS: I'd also be very surprised if a trademark was granted on a generic dictionary word like "Scrolls."
I think you're going a little overboard. Can no one make a video game called "Rings" because of "Lord of the Rings?" Is "Legend" off-limits because of "The Legend of Zelda?" Or "Auto" -- does it belong to "Grand Theft Auto?"
And to say that this displays a "generational sense of entitlement" -- I think you're missing the actual point of trademarks, which is to protect consumers. Companies don't own phrases in the English language, they just have the right to ensure that their products cannot be easily mistaken for products from other companies. Considering that scrolls have been an element of RPG video games basically forever, I hardly think that the word "Scrolls" when applied to a video game is something so uniquely Bethesda that consumers would confuse "Scrolls" with "The Elder Scrolls III: Morrowind.
And to say that this displays a "generational sense of entitlement" -- I think you're missing the actual point of trademarks, which is to protect consumers. Companies don't own phrases in the English language, they just have the right to ensure that their products cannot be easily mistaken for products from other companies. Considering that scrolls have been an element of RPG video games basically forever, I hardly think that the word "Scrolls" when applied to a video game is something so uniquely Bethesda that consumers would confuse "Scrolls" with "The Elder Scrolls III: Morrowind.
Further -- if a game called "Scrolls" is published, it is in the best interest of consumers that another company can't put out an inferior game with the same name, and cash in on the confusion.
The system of trademarks is the way that's accomplished!
The system of trademarks is the way that's accomplished!
No, trademarks began and continue as a way to protect creators and commercial operators. It's a way to put your stamp on something and say "This is mine, I created it, I own it." It began, and remains, very closely tied to branding.
It's not about individual words. This is a red herring on Notch's part. Bethesda never claimed they owned "scrolls." They don't.
It's about Notch releasing a product in the same commercial space with a very similar sounding name to a product that Bethesda already owns.
As I said elsewhere, Bethesda must take action. They have no choice.
It's not about individual words. This is a red herring on Notch's part. Bethesda never claimed they owned "scrolls." They don't.
It's about Notch releasing a product in the same commercial space with a very similar sounding name to a product that Bethesda already owns.
As I said elsewhere, Bethesda must take action. They have no choice.
You're way off base here. The artificial construction of intellectual property exists solely because the state has created it as a monopoly, and a democratic state has no interest in doing such unless it benefits the public, not private operators. Private operators are protected in so far as the overall public interest is served (not being confused, sufficient reward for invention, etc.). If people aren't going to be confused, then there should not and ought not be a conflict.
It's entirely reasonable to think that the average consumer would be confused at the titles.
Serious question: Is "reasonable" being used as some legal term of art here? Because I think it's a totally ridiculous idea that the average consumer would be "confused" because one game is named, e.g. "The Elder Scrolls: Morrowind" and another is named "Scrolls." That doesn't even pass the laugh test.
Serious question: Is "reasonable" being used as some legal term of art here? Because I think it's a totally ridiculous idea that the average consumer would be "confused" because one game is named, e.g. "The Elder Scrolls: Morrowind" and another is named "Scrolls." That doesn't even pass the laugh test.
That's probably the target audience that buys a second copy "The Elder Scrolls: Morrowind" instead of "The Elder Scrolls: Skyrim", because - they got confused.
I agree: I fail to see how these can be easily confused.
I agree: I fail to see how these can be easily confused.
Bethesda has multiple trademarks for the franchise. Each individual installment is trademarked, eg "The Elder Scrolls V: Skyrim" and the entire franchise is trademarked, eg "The Elder Scrolls."
If you (in the collective sense, not you personally) know who Bethesda is and what games they've made in the past and know who Notch is, you're not the average consumer in this context.
I think there's a definite reason to think confusion could come into play when these titles are next to each other on the shelf, or show up in search results with little to no context, or are featured in Amazon's contextual results or on services like XBox Live or Steam.
Parents don't know Notch or gaming history. They know that little Timmy asked for a fantasy game with the word "scrolls" in the title. This situation, which I imagine would be pretty common at Christmas time, is part of why Bethesda is taking action.
The other part -- and this is the much more important part -- is that Bethesda has no choice. If they fail to take action and do their due diligence, and a competitor can later prove it (by citing this example with Notch) then they risk losing the mark entirely.
Which means then EA could conceivably come out with a game called "The Younger Scrolls: Obsession" and Bethesda would have no recourse.
If you (in the collective sense, not you personally) know who Bethesda is and what games they've made in the past and know who Notch is, you're not the average consumer in this context.
I think there's a definite reason to think confusion could come into play when these titles are next to each other on the shelf, or show up in search results with little to no context, or are featured in Amazon's contextual results or on services like XBox Live or Steam.
Parents don't know Notch or gaming history. They know that little Timmy asked for a fantasy game with the word "scrolls" in the title. This situation, which I imagine would be pretty common at Christmas time, is part of why Bethesda is taking action.
The other part -- and this is the much more important part -- is that Bethesda has no choice. If they fail to take action and do their due diligence, and a competitor can later prove it (by citing this example with Notch) then they risk losing the mark entirely.
Which means then EA could conceivably come out with a game called "The Younger Scrolls: Obsession" and Bethesda would have no recourse.
>If they fail to take action and do their due diligence, and a competitor can later prove it (by citing this example with Notch) then they risk losing the mark entirely.
// They would lose the rights to a trademark "scrolls" but they don't have that mark anyway.
You don't have to protect against people using similar marks unless they clearly are confusingly similar.
// They would lose the rights to a trademark "scrolls" but they don't have that mark anyway.
You don't have to protect against people using similar marks unless they clearly are confusingly similar.
My understanding is that the protection aspect only requires the trademark holder to prevent unauthorised use. There's nothing stopping them from accepting his terms (Only used within a specific phrase, etc) and granting him a licence to use it for a nominal fee.
That can all be done with a minimum of lawyering, and without getting courts involved at all.
That can all be done with a minimum of lawyering, and without getting courts involved at all.
Which is also somewhat silly because most of the Elder Scrolls games are commonly known by their subtitles (e.g. Morrowind, Oblivion, Skyrim, etc.)
I disagree. Coca-Cola, and Pepsi-Cola were both trademarked with the noun cola. Bethesda does not own the word "scrolls". The own the trademark "Elder scrolls". I do agree with your 'PS', since Scrolls probably wont get a trademark...but infringement? surely not.
I'm not 100% sure about this, but I believe Coca-Cola successfully protected "Cola" from being genericized by asserting that the generic term was "cola drink". Pepsi is now just known as Pepsi, and the company's name is now PepsiCo instead of Pepsi-Cola.
I think you're mistaken.
Pepsi-Cola Company changed their name to PepsiCo to reflect their more diverse product line after their merger with Frito-Lay, not as a result of any trademark lawsuit. In the United States at least (though I believe this is the case elsewhere as well), "cola" is the generic term, though Pepsi doesn't use it in their packaging much anymore. See for instance RC Cola.
Pepsi-Cola Company changed their name to PepsiCo to reflect their more diverse product line after their merger with Frito-Lay, not as a result of any trademark lawsuit. In the United States at least (though I believe this is the case elsewhere as well), "cola" is the generic term, though Pepsi doesn't use it in their packaging much anymore. See for instance RC Cola.
> It's entirely reasonable to think that the average consumer would be confused at the titles
Yeah, like people get coca-cola and pepsi-cola confused all the time. Nobody is going to get the TES series confused with Scrolls. Nobody. TES has been around since forever and every game is marketed by it's subtitle (see: Morrowind, Oblivion, Skyrim, even the first one (Arena) was marketed by it's subtitle).
I agree that "scrolls" is a rather generic name that shouldn't receive a trademark, but for "scrolls" to be infringing on TES is just ridiculous. Does "elder" belong to bethesda, too?
Yeah, like people get coca-cola and pepsi-cola confused all the time. Nobody is going to get the TES series confused with Scrolls. Nobody. TES has been around since forever and every game is marketed by it's subtitle (see: Morrowind, Oblivion, Skyrim, even the first one (Arena) was marketed by it's subtitle).
I agree that "scrolls" is a rather generic name that shouldn't receive a trademark, but for "scrolls" to be infringing on TES is just ridiculous. Does "elder" belong to bethesda, too?
To play devil's advocate, cola is an actual thing those drinks are/were made of, so that's not quite the same.[1]
[1] http://en.wikipedia.org/wiki/Kola_nut
[1] http://en.wikipedia.org/wiki/Kola_nut
Didn't know that, thanks for the link.
Show me an RPG game without scrolls.
Do you not understand how logical argumentation works? It is possible to address a particular supporting point without disagreeing with the conclusion.
The scrolls issue is completely orthogonal to whether coca-cola v. pepsi-cola actually bolsters OP's point.
The scrolls issue is completely orthogonal to whether coca-cola v. pepsi-cola actually bolsters OP's point.
Final Fantasy I, IV, VI; Dragon (Quest) Warrior I, II, III, IV and VIII; Final Fantasy Legend I and II.
Ones I've played, off the top of my head ;)
Ones I've played, off the top of my head ;)
Notch is attempting to reason with Bethesda and they are using the court system as a hammer to intimidate rather than even respond to him respectfully. The compromise that he proposes sounds perfectly reasonable (to me anyway).
"The Elder Scrolls" shows up in a google search for "Scrolls". That's great for Bethesda, but it isn't something that would cause Notch to avoid submitting his trademark for "Scrolls". The point remains that, "The Elder Scrolls" as a game title is not reasonably confusing with a game titled "Scrolls".
Unless Bethesda can show that the word "Scrolls" is often used to refer to their game as a short form rather than the acronym TES, I don't think they are in the right at all. And if "Scrolls" is what they use to refer to their game, they should have also trademarked it as such.
"The Elder Scrolls" shows up in a google search for "Scrolls". That's great for Bethesda, but it isn't something that would cause Notch to avoid submitting his trademark for "Scrolls". The point remains that, "The Elder Scrolls" as a game title is not reasonably confusing with a game titled "Scrolls".
Unless Bethesda can show that the word "Scrolls" is often used to refer to their game as a short form rather than the acronym TES, I don't think they are in the right at all. And if "Scrolls" is what they use to refer to their game, they should have also trademarked it as such.
Scrolls appears to be more like a fantasy card game than an epic fantasy RPG-FPS.
I really don't see there being much confusion.
I really don't see there being much confusion.
PS: I'd also be very surprised if a trademark was granted on a generic dictionary word like "Scrolls."
It happens all the time: Apple computers, Windows OS, Camel cigarettes, Ivory soap, Puffin books, the video game Doom...
From wikipedia:
"An arbitrary trademark is usually a common word which is used in a meaningless context (e.g. "Apple" for computers). Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Salty would be an arbitrary mark if it used in connection with e.g. telephones such as in Salty Telephones, as the term "salt" has no particular connection with such products."
Scrolls would certainly count.
It happens all the time: Apple computers, Windows OS, Camel cigarettes, Ivory soap, Puffin books, the video game Doom...
From wikipedia:
"An arbitrary trademark is usually a common word which is used in a meaningless context (e.g. "Apple" for computers). Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Salty would be an arbitrary mark if it used in connection with e.g. telephones such as in Salty Telephones, as the term "salt" has no particular connection with such products."
Scrolls would certainly count.
I don't know about that. I don't know what the legal threshold for such a thing would be, but it doesn't seem arbitrary to me.
I mean, scrolls are a major element in fantasy games, just like swords and wands and potions. If you could claim one of those words as a trademark, such that no one else could use it, I think it would do damage to the genre.
I mean, scrolls are a major element in fantasy games, just like swords and wands and potions. If you could claim one of those words as a trademark, such that no one else could use it, I think it would do damage to the genre.
Why downvote a response just because you disagree.
He has a point here: It is notch who wants to trademark a very general term, or?
Reminds me of the Ferrero case who wanted to trademark the word "Kinder" (German word for child): http://www.allbusiness.com/legal/legal-services-litigation/5...
He has a point here: It is notch who wants to trademark a very general term, or?
Reminds me of the Ferrero case who wanted to trademark the word "Kinder" (German word for child): http://www.allbusiness.com/legal/legal-services-litigation/5...
* A Reasonable Developer with essentially unlimited funds. Notch acts reasonable because he can afford lawyers. Most of us would lose our little company if we were sued.