Mojang v. Bethesda Part 2: The Attorneys (and Notch & Pete) Weigh In

While it may be arguable which came first, the complicated legal codes or the attorneys who get paid by the hour to decode them, what’s inarguable is that legal shit is mind-numbingly complicated. Trademark law included.

Take the case of Mojang v. Zenimax, for example. Earlier this week I wrote (and Kotaku republished) an editorial attempting to explain what may really be happening in the case over Mojang’s new game Scrolls and why the truth may not be as clear cut as some might be tempted to believe. Then, naturally, the truth was revealed to be even more complex than I had described. Well, fuck me then.

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“We win, and they compensate us for our legal costs,” said Markus “Notch” Persson, by email, when I asked him what he hoped the outcome of his case against Zenimax, parent company of Bethesda, would be. I also asked him why, if he didn’t believe his game (“Scrolls”) presented a possible trademark infringement against Zenimax/Bethesda’s registered trademark (“The Elder Scrolls”), he offered to change the game’s name anyway, as Kotaku reported earlier this week.

“All our suggestions were tokens of good will,” Notch said. “We wanted to end things in a friendly way where we met them half-way. I am a huge fan of Bethesda’s work, and I’m looking forward to Skyrim more than I am any other game this year. Picking a fight with my idols seemed like a silly idea.”

A fight, however, is exactly what he got.

As previously reported, Zenimax filed suit against Mojang in the Swedish courts on September 27th, seeming to draw to a close any possibility the dispute would be able to be resolved, as Notch hoped, in a “friendly” way.

“This is a business matter based on how trademark law works and it will continue to be dealt with by lawyers who understand it, not by me or our developers,” Said Pete Hines, VP at Bethesda, highlighting exactly what makes this case so complex.

On the face of it, this trademark dispute would seem to be a simple matter. Something two people who are able to have a friendly conversation could resolve without involving lawyers, as Notch had hoped. But in the business world it’s just not that simple. Mojang and Bethesda aren’t just two guys, they’re major companies, and what’s at stake in this dispute is potentially millions of dollars in revenue and trademarks that have been carefully tended for decades.

“Trademark owners have a duty to protect their marks and should enforce their rights,” said Angela Bozzuti, an associate specializing in trademark law at Davis & Gilbert LLP in New York City. “Trademarks are source identifiers and are often among a company’s most valuable assets. If they allow third parties to infringe their trademark rights without taking action, they can eventually lose their marks. ”

In other words, a trademark itself is part of the company’s product, not just a name. For two products to simultaneously exist with the same or similar names could be potentially devastating, literally meaning the difference between success and failure for the company who holds the trademark that is being infringed. It’s also a hazard for you as a consumer. If you go to the videogame store to buy the latest Elder Scrolls game, for example, and you end up with something else because the titles were too similar for you to tell the difference, you’re going to feel screwed.

Think about trademarks in terms of your own personal identity. The closest analogy to trademark infringement in our daily lives would be if someone, somewhere, started using your identity to apply for credit cards, ran up a huge bill in your name and then bailed. Your credit rating would suffer and you may have to spend your own money and time to correct the problem. You might even face charges for something you didn’t do. For companies, their trademarks are part of their identities, and a potential trademark infringement doesn’t have to be something with exactly the same name. If it’s close enough, it’s a problem. Even if it’s only similar by one word. Say, for example, the word “Scrolls.”

“The standard is not whether the respective marks and relevant goods and services are identical,” said Bozzuti, “but whether consumers are likely to be confused. Here, the question is whether Mojang’s use of the name for games is likely to cause consumers to wrongly think that ‘Scrolls’ is connected to Zenimax or its ‘The Elder Scrolls’ games.”

Alright, so that’s expert advice from a trademark attorney suggesting that a similarly-titled game could cause problems for Zenimax. Even if the title of the game was only similar by one word. But is “Scrolls” really all that similar to “The Elder Scrolls?” Similar enough to constitute copyright infringement? Zenimax seems to think so, and they’re not alone. The United States Patent and Trademark Office thinks so too.

The following is an exerpt from a letter filed by the USPTO on September 13th, just two weeks before Zenimax filed suit against Mojang for trademark infringement:

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark … so resembles the marks in U.S. Registration Nos. 2634683, 2861127, 3375520, 3421731 and 3584564 (THE ELDER SCROLLS) and 4010219 (SCROLLS) as to be likely to cause confusion, to cause mistake, or to deceive. … Regarding the THE ELDER SCROLLS marks, the applicant has merely deleted the term ELDER from the registered mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.

In other words, in the opinion of the foremost U.S. authority on trademarks, “Scrolls” is similar enough to “The Elder Scrolls” as to be confusing to consumers and therefore a potential infringement of Zenimax’s trademark. Mojang’s U.S. trademark application has therefore been rejected.

Case closed? Hardly. Even without a trademark Mojang can continue to use the name “Scrolls” to describe their game and if they did, Zenimax would have to take them to court to stop the game from being sold.

“Denial of its application would not stop Mojang from using the name in the U.S,” said Bozutti. “For that, unless both parties agree to an amicable resolution, Zenimax would need to obtain an injunction from a U.S. court.”

Whether or not the parties will agree on a resolution remains to be seen. According to Notch, Mojang offered a resolution – several, actually – but nothing the company allegedly offered appeared to dissuade Zenimax from taking Mojang to court.

“Our lawyers said we didn’t agree there was an infringement, but that we’d be willing to find a solution,” Notch told me via email. “We offered several different solutions, like us not getting the trademark, and us not using the word ‘Scrolls’ in its raw form, but as part of a longer title. [Zenimax] repeatedly refused, demanding we stop using the word ‘Scrolls’.”

Zenimax, perhaps unsurprisingly, has a perspective on those negotiations.

“Mojang’s public comments have not given a complete picture as it relates to their filings, our trademarks, or events that have taken place,” said Hines.

Wherever the truth of the public-facing commentary may lie, what seems clear is that in order to avoid legal action from Zenimax, Notch would have had to completely omit the word “Scrolls” from his game, something he has yet to indicate he’s willing to do. That word, and that word alone, seems to be exactly where the trouble lies.

According to the lawyers, this case is not about whether or not Zenimax wants to allow Mojang to use the word or some derivation of it, and may not be about Mojang at all. Zenimax’s response to this potential trademark infringement will have far-reaching consequences beyond just their dealings with Mojang, and could impact how future infringements are dealt with by the courts. If Zenimax doesn’t fight now they may not be able to do so in the future, when someone may intentionally try to damage Zenimax’s brand by releasing a game called, for example, Eldritch Scrolls X: Skyrim the Love Dragon. Or Morrowind from the Nether Regions, an Elder Rolls Game. Or…you get the picture.

“Failing to protect a trademark could be damaging to an owner’s rights,” said Bozutti. “Not only could it result in actual consumer confusion, but it could also weaken the strength of the mark in the marketplace. Furthermore, once there is widespread third party use of the term ‘Scrolls’ as or within a longer game title, it will likely weaken Zenimax’s mark and make protection difficult and limited.”

In other words, Zenimax literally has to fight Mojang in court over the title of the game “Scrolls” or they will be throwing away their decades-old “Elder Scrolls” trademark and unable to defend themselves in the future. According to Pete Hines, it’s not a personal decision, or a situation that anyone at Bethesda and Zenimax really wants to be involved in, but from their point of view, they have no choice.

“Nobody here enjoys being forced into this,” said Hines. “Hopefully it will all be resolved soon.”

Notch hopes so, too, although he remains confident the lawyers and Zenimax have it wrong. He believes there is no trademark infringement, never was a trademark infringement, and that he and Mojang will be validated.

“They’re being very unreasonable,” Notch said. “If someone made a game called ‘Minesomething’ or ‘Somethingcraft,’ we’d be fine with it. In fact, there are games that are VERY similar to Minecraft with these names already, and we are not going to go after them. We’d even be fine with both ‘Mine’ and ‘Craft’ separately.”

Although Notch admits that a game called “Mine Craft” “might be an issue.”

As for what’s next in this case, Zenimax has filed suit against Mojang in Sweden and resolution of that case may be months away. In the U.S., Mojang will have to appeal the USPTO’s ruling that “Scrolls” and “The Elder Scrolls” are too similar, which could also take months, but even if they are unable to convince the USPTO that a trademark infringement doesn’t exist, they can still make and sell the game, dragging out the process of resolution and potentially actually damaging Zenimax’s trademark.

Which, according to Bozzuti, would mean another court case: “Unless both parties agree to an amicable resolution, Zenimax would need to obtain an injunction from a U.S. court [to] stop Mojang from using the name in the U.S.”

In other words, this thing is far from over.

Russ Pitts is the former Editor-in-Chief of The Escapist and former Producer of TechTV’s The Screen Savers. He is currently looking for work and Tweeting at http://twitter.com/#!/russpitts

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