In what is one of the more bizarre legal disputes to occur in the video game industry, Bethesda Softworks’ parent company, ZeniMax Media, Inc. filed suit against Mojang in a Swedish court on September 27, 2011, to protect its registered trademark on the phrase, “The Elder Scrolls.” The suit stems from Mojang’s attempt to create and register its own trademark for its new game entitled Scrolls. With the substance of Mojang’s game being totally dissimilar to that of The Elder Scrolls games, many outside observers of the dispute (including us) quickly jumped to the defense of Mojang as it initially appeared to be a case of bullying by ZeniMax. However, as with most lawsuits, things are not always what they seem at first blush.
The legal brouhaha began when Mojang attempted to register the trademark “Scrolls” for its upcoming card game with the United States Patent and Trademark Office (USPTO). This federal agency prevents other companies from registering trademarks that are already in use, and since Bethesda had trademarked the phrase “Elder Scrolls” for its RPG series, the application was ultimately rejected by the USPTO for the following reasons:
“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.”
So when Pete Hines, the Vice-President of Bethesda Softworks, recently told Kotaku that, “Mojang’s public comments have not given a complete picture as it relates to their filings, our trademarks, or events that have taken place,” he seems to have a valid point.
While the USPTO sided with Bethesda, the agency is not responsible for policing the use of trademarks and its refusal to register Mojang’s trademark does not prohibit Mojang from using the word “Scrolls.” But because Bethesda has a federally registered trademark for the phrase “The Elder Scrolls,” it is entitled to a legal presumption of ownership over this trademark, the exclusive right to use the mark nationwide, the right to sue in United States federal court to protect the trademark from infringement, and the use of the U.S. registration as a basis to obtain registration in foreign countries.
As of today, ZeniMax has only filed suit in a Swedish court, but it may be forced to file in a United States federal court in order to obtain an injunction if a resolution cannot be reached and Mojang attempts release of its game in the United States. If such a proceeding takes place, a determination ultimately would be made as to whether Mojang’s use of the title “Scrolls” is a true infringement that could cause confusion in the marketplace.
The case is a strange one in that the founder of Mojang, Markus “Notch” Persson, is a big fan of Bethesda and The Elder Scrolls series: “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.” Notch even initially joked that he would be willing to resolve the lawsuit via a Quake 3 deathmatch. After realizing the sincerity of ZeniMax’s intentions, Notch allegedly offered to alter the name of the game to “Scrolls: [subtitle]” and drop the trademark application, but ZeniMax decided to press forward with its lawsuit. So why exactly is ZeniMax doing this and are they right in doing so?
Because of the USPTO’s conclusion regarding “The Elder Scrolls” and “Scrolls,” ZeniMax now must take action to prevent the unauthorized use of its trademark or risk losing it. Therefore, Mojang’s insistence on keeping the word “Scrolls” in its title has backed ZeniMax into a corner where it feels forced to take legal action. For his part, Notch believes that ZeniMax is being unreasonable:
“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.”
While that may be, whether Mojang chooses to enforce its trademarks has no bearing on what ZeniMax should do to protect its own business interests. The fact of the matter is, if ZeniMax let this perceived infringement of its trademark pass, it could ultimately lose its exclusivity over the phrase and a flood of “Scrolls” (or possibly even “The Elder Scrolls”) knock-off games could enter the marketplace diluting The Elder Scrolls brand. Sophisticated consumers would likely still know the difference but similar titles could confuse the general public. So the real question is whether The Elder Scrolls trademark should be so expansive to include all other games using the term “scrolls.”
Despite the USPTO’s position, ZeniMax may have an uphill battle in obtaining injunctive relief in a United States court. After all, the term “scrolls” is very generic in nature. Other generic words like “dragon” or “dungeon” are used routinely for game titles. Not only that, Zenimax would have to explain why it took no action as to the prior releases of other similarly titled games such as the Nintendo game, Flying Dragon: The Secret Scroll, and the PC title, Dungeon Scroll. The lack of an “s” on the end of the word “scroll” certainly appears to be a distinction without a difference.
Hopefully, the two sides can reach an amicable resolution. Or perhaps Notch could just rename his newest venture Dragon Dungeon Scrolls.
Source: Kotaku
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Bethesda seems a bit… Edge-y… with this.
+1 for you if you get it.
I tried not to laugh but was pushed over the Edge when I read your comment.
+1
I for one am disappointed at this whole brouhaha. The offer was made to completely change it, and ZeniMax refused. Now it’s just children fighting to get the last word.
ZeniMax, I am disappointed.
This is actually pathetic.
And the fact that this is now publicised, means everyone knows about the court case, why it’s a court case and how it’s a court case.
So the fact that everyone knows that Scrolls is Notch’s game and Elder Scrolls is Bethesda’ game, then there shall be no confusion to whose games is whose.
Well, everyone who’s been following the case, which is probably not the case with Billy’s mom who’s looking for Skyrim for him, “What was that game he wanted…. Scrolls… something?”
The fact of the matter is that Mojang filed for a trademark also in Computer Games, suggesting whatever this card game is, there are plans to expand the franchise in other media much closer to The Elder Scrolls’ territory, so the example above could very well happen a lot. If Bethesda doesn’t act now, Mojang can say that they forfeit their trademark when they didn’t sue for just the card game and Bethesda can lose in a court proceeding then. The fact that the government agency that runs all this trademark stuff sides with Bethesda says a lot about how trademark law works, and how strong Bethesda’s case really is.
I think that Bethesda, as a whole, is jealous of the ability of Mojang to get to the way it was so fast while they had to work really hard to get that far. They are taking this as a chance to take Mojang down a notch (see what I did there?) to feel superior.
This isn’t kindergarten, try again with a better reasoning behind it.
That doesn’t make any sense whatsoever, since there are no legal grounds there. Again, the government agency the does this stuff already said they were too close, so Bethesda CLEARLY has plenty of reason to go forward with this, and Notch’s constant broadcasting of what should be private company legal issues just shows that he’s intentionally making himself out to be a victim because he knows everyone loves a martyr when this is simply how trademark law works.
From what ive seen of this case the trade mark, word for word that Notch tryed to file directly infringed on the “Elder Scrolls” name by stating that any use of “Scrolls” would fall under their conrtol in any form of media, be it games television, CTG, or anything else they can think of.
Irrelevant, if you carefully read the article you will see that Notch was willing to drope the trademark aplication to avoid that and even put a subtitle on the game for more difference.
According to Notch himself, they were even willing to change the name completely if Bethesda would stop the suit. So, this whole thing has NOTHING to do with the title. As I stated above in another comment, Bethesda is jealous over Mojangs ability to grow so fast, so hey are taking this as a chance to try to knock them back quite a bit.
Hardly… Bethesda Softworks is a well-established entity that isn’t fueled by jealousy. The reason they aren’t dropping the suit is due to the principle of Mojang applying for an ALL-ENCOMPASSING ownership of the word Scrolls in almost every form of media.
well scrolls if im not mistaken is a nickname given by the fans for elder scrolls and thats not the name so my thing is why sue over one word in an intire name trump never got ur fired because everyone uses it so why is bethesda sueing over a word that comes second after elder i understand that mojang filed that thing and it would of made a prob for bethesda but if majong sued them over the use of scrolls in elder scrolls then they wouldnt have a case cuz es came first and its not the same name at all sure one word is but thats hardly grounds for sueing a fresh company
Dude, punctuation is your friend. Reading that was exhausting.
As is proper spelling. It really doesn’t add more than 2 seconds to your typing time, and it makes it so much more pleasant for everyone else to read. As an added benefit, people are less likely to think you’re a 12 year old if you spell things correctly.
The entire case against Mojang is stupid and is simply Zenimax trying to stroke their egos. I’m actually going to go out and copyright the words Max and Studios and then i’m going to file a lawsuit against Zenimax and every company that has the word Studios in their name.
I shouldn’t be able to do that cause it’d be a unjust lawsuit and one that makes no sense.
It’s funny to see how many people think they know stuff about law. Zanimax is perfectly justified to sue, and could honestly get money too. What Notch is trying to do is patent a word, “scrolls”. Beth needs to due because If he gets that trademark then it is illegal for them to use it. Notch is pulling a Tim Langdell without even being aware of it.
And Beth could probably get a lot of money thanks to Notch not shutting the hell up and causing irreversible damage to their good name, which would lead to lost sales.
A) As they say, haters gonna hate. You CLEARLY hate minecraft and Mojang by extension. All Bethesda had to do was actually talk to Notch rather than acting childish and just pushing the lawsuit in his face as much as they could.
B) Notch himself tried to avoid a lawsuit and even went so far as to say that they would drop the name ‘Scrolls’ altogether, but Bethesda just pushed the lawsuit in his face again.
If I were to go out of a limb, I’d say this is the industry equivalnt of either demanding respect from the knaves, or putting your fingers in your ears and making loud noises as someone talked.
Anyway, if this was actually all that, don’t you think that ‘Dungeons’ would have been sued by ‘Dungeons and Dragons’?
And what about notch’s provocation of Beth via twitter? Just conveniently forget about that?
Just to clear something up for everyone
Scrolls is a VTCG (virtual trading card game), not an actually card game
thats why it was filed as a computer game
glad if i helped
AS for the last segment, the reason zenimax didn’t take any action against the prior games using the word scrolls is due to the fact that those companies didn’t apply for a literally all-encompassing trademark of the word scrolls. Mojang has overstepped the boundaries a bit in my opinion by trying to play the innocent indie dev while they know full well what kind of precedent this could set for future games.
Having a system in place that provides the means to literally own a word is nothing short of absurd.
As of today, ZeniMax has only filed suit in a Swedish court, but it may be forced to file in a United States federal court in order to obtain an injunction if a resolution cannot be reached and Mojang attempts release of its game in the United States