Markus "Notch" Persson has recently argued that he offered to change the name Scrolls of his game to avoid a legal dispute with Zenimax, owners of The Elder Scrolls brand. For their part, Zenimax did not see a legal recourse.
"All our suggestions were tokens of good will," Notch said to Kotaku. "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."
Pete Hines, VP at Bethesda, has come out and spoken publicly about the issue for the first time, highlighting how this business, not personal. "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 Hines.
"Trademark owners have a duty to protect their marks and should enforce their rights," notes Angela Bozzuti, an associate specializing in trademark law at Davis & Gilbert LLP. "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."
Trademark law is very complex, but it exists to protect a brand's identity. China is a good example of how when this protection doesn't happen, it hurts the original brand with inferior products portraying themselves as similar.
"The standard is not whether the respective marks and relevant goods and services are identical,but whether consumers are likely to be confused,” said Bozzuti. “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."
In fact, the USPTO, the U.S. authority on trademarks, has ruled that Scrolls is similar enough to The Elder Scrolls to be confusing to consumers and lead to potential infringement of Zenimax's trademark. This resulted in Mojang's U.S. trademark application being rejected.
Even with this, Zenimax would have to go to court to stop Scrolls 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."
Notch says he has already offered several potential solutions. "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 offers a more nuanced response. "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.
Legally, Zenimax's response might have implications for how future infringements could be dealt with. "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 a way, Zenimax feels they have to fight this to protect their The Elder Scrolls trademark. "Nobody here enjoys being forced into this," said Hines. "Hopefully it will all be resolved soon."
Notch, not surprisingly, feels differently. "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."
Unfortunately, this whole deal is far from over. The case Zenimax filed is for the Swedish legal system, and separately in the U.S. where Mojang will have to appeal the USPTO's ruling that Scrolls and The Elder Scrolls are too similar. "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." said Bozzuti.
