Bethesda VP says company 'forced' into Scrolls dispute
Legal experts and Bethesda's Pete Hines have chimed in on the legal dispute with Mojang over the use of the word Scrolls. Experts say the company has a legal obligation to defend its trademark, or risk losing or weakening their defense in the future.
ZeniMax is pressing forward with legal action against Mojang Specifications over use of the word "Scrolls," but now Bethesda VP of marketing Pete Hines is speaking publicly on the case for the first time, with some expert analysis from lawyers uninvolved in the case.
"Mojang's public comments have not given a complete picture as it relates to their filings, our trademarks, or events that have taken place," Hines said.
Kotaku reports that the legal action is part of ZeniMax's duty to protect its trademark. The US Patent & Trademark office noted the naming similarity in a letter filed two weeks before ZeniMax's suit. The USPTO rejected Mojang's US trademark application.
That would seem to be the end of it, but Mojang's Markus Persson claims ZeniMax has rejected offers to compromise, calling the company "unreasonable." However, ZeniMax may be legally obligated to defend its trademark, and deny any permutation of the word "Scrolls" in Mojang's game. Trademark owners have to protect their marks, or risk losing them, according to trademark legal specialist Angela Bozzuti. Even if Mojang didn't gain a US trademark, ZeniMax would have to gain an injunction to prevent Mojang's use of the name unless the two reach a resolution.
"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, if they fail to defend against this case, the trademark could become diluted and they'd have a weaker position against future cases.
Hines echoed the sentiment. "Nobody here enjoys being forced into this," he said. "Hopefully it will all be resolved soon."
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Steve Watts posted a new article, Bethesda VP says company 'forced' into Scrolls dispute.
Legal experts and Bethesda's Pete Hines have chimed in on the legal dispute with Mojang over the use of the word Scrolls. Experts say the company has a legal obligation to defend its trademark, or risk losing or weakening their defense in the future.-
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I think this gets into it in enough detail http://kotaku.com/5847295/mojang-v-bethesda-part-2-the-attorneys-and-notch--pete-weigh-in
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Ah, here it is
In other words, Mojang intends to own the word "scrolls" in pretty much every form of visual entertainment media, not just in videogames. This means that, if the trademark is upheld, the company could rightly take action against anyone else using the word "scrolls" in any form of media whatsoever. Now, that would only be a problem if you were a successful media company planning to use the word "scrolls" in some form of entrainment media … Oh wait … that's right. If you're Zenimax, this trademark fucks you. Hard.
http://kotaku.com/5846111/mojang-v-bethesda-or-i-hate-it-when-mommy-and-daddy-fight-
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He offered to stop the trademark application for "Scrolls" and instead trademark "Scrolls: Something" (Scrolls with a subtitle).
If he had offered to change the name to "A Game of Scrolls" or something I'm sure the whole thing would be done but since "Scrolls: Something" is more or less the same thing as calling it "Scrolls", he's still in the shit. -
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.. and Zenimax saying "Hey UPTSO, here's the licence we gave them to use the word Scrolls, it's all cool" would solve all of this instantly. They've "defended their trademark" and Scrolls can come out with its name.
Of course, I think Zenimax would ultimately lose in court, because the word Scrolls in itself isn't all that close to their mark "The Elder Scrolls".
UPTSO were right in denying a TM on "Scrolls", because it's too generic. It's why you see marks all the time that are 'misspellings' of normal words. However, if they wish to go ahead and title a game using the non-protected title "Scrolls" they should be allowed to do so, though it might not be the wisest thing if it's an "IP" they want to build over time.
This will end with Mohang chosing another title (one that they CAN TM) and Zenimax publicly declaring a GREAT VICTORY, because that's what companies do.
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The application covers
Entertainment services in the form of electronic, computer and video games provided by means of the Internet and other remote communications device; internet games (non downloadable); organising of games; games (not downloadable) played via a global computer network; education and entertainment services in the form of cinematographic, televisual, digital and motion picture films, radio and television programs and shows; preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; entertainment services in the form of electronic, computer and video games provided by means of the Internet, mobile telephone and other remote communications device.
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I kind of feel sorry for Bethesda employees in all of this. They're innocently in the middle of this but on the "evil" side and are probably a little embarrassed of their parent company's legal action. While I can, to a limited degree, understand the desire of Zenimax to set a precedence for protecting their IP, I do think it's absurd in this instance.
I honestly do not think it's in Mojang's interest, both financially and in time, to fight this. I'm sure if I were in his case I'd feel the same as he does, but it's easier to have perspective on the situation when not involved. For his own sake, he should just change the name of his upcoming game completely to get the case dropped. -
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Everyone complains about this case as if what's happening is that Zenimax is claiming they own the word "scrolls"
No it's not, what's happening is that Mojang wants to own the word scrolls
Do you get it now? You're accusing Zenimax of doing the thing that Mojang is trying to do, and you're taking Mojang's side.
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So, what' s next in the world? Apple to trademark the word Apple and we'll be force to spend $1 to Apple, Inc. for every "apple(TM)" we eat? Or maybe Apple and Samsung will get into yet another pissing match about the word phone in how calling anything a phone is diluting the iPhone brand causing untold consumer confusion since other things may have the same parent word in their use.
Big business has gotten too big for it's britches.-
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Shows how much history you know.
Apple Computer got sued by Apple Corps (the media company that handles all things Beatles, especially Apple Records) back in the day because they used the word Apple.
Apple Computer reached a settlement of cash and the mutual agreement not to get in each others business (i.e., Apple Computer stays out of the music business and Apple Corps stays out of the computer business).
And then Apple made the iTunes Music Store, thereby entering the music business, and Apple Corps sued them again.
http://en.wikipedia.org/wiki/Apple_Corps_v._Apple_Computer
You act like this is a new thing and it's just not.
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Trademark law prevents the patenting of common words but has let stupid things go through ( I think Trump has trademarked the phrase "You're fired" for example).
If I were in B's lawyers shoes, I would be uncomfortable not perusing action on the assumption that "scrolls" is a common word. At worst, the judge says "Common word, sorry, no action", which means that they never will have to sue for a game with "scrolls" in the name, and can rest that its "elder scrolls" that's their trademark, which they have suitably defended.-
That's the biggest thing here - people don't understand lawsuits.
Lawsuits are seen as these horrible viscous things that only total assholes would ever file.
No, Zenimax thinks that Mojang's attempt to copyright the word "Scrolls" in all forms of media isn't right, and more specifically could pose an issue for them.
So the matter will be settled in court. Where these things are decided. They're not trying to squash Notch like some bug, they're trying to make sure that they can't take the word "Scrolls" in all media if they're not supposed to be able to.-
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So then you agree that Mojang shouldn't own the word "Scrolls"?
Because that's what's happening here - Mojang wants to own the word "Scrolls" and if they get their wish they they could legally force Zenimax to change the name of their Elder Scrolls series, pull Skyrim off of shelves, etc. Zenimax is saying "wait, you can't claim to own the word 'Scrolls', it's too generic and besides we already have games with that word in their title" -
But assuming there's no prior case on the explicit word "scrolls", and you in the multi-million dollar shoes of Zenimax, would you be willing to presume that there's no trademark conflict here?
It is a shame this needs to go to court: I would think that there should be a binding arbitration board set up by the USPTO to review cases like these conflicts and make a preliminary, from which then if one side is upset with, it can go to court, but otherwise counts as "defending trademark". -
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QUESTION
So - and I don't claim to know anything about the law here, so try with all your might to resist insulting me - if Mojang doesn't get the trademark for "Scrolls", can they still legally name their game "Scrolls"? I mean, it seems to me you should be able to use a common word as a name for your product without having the right to block everyone else from using that word as part of a bigger name for theirs.-
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The lawsuit is about Mojang calling their game Scrolls. Not about their earlier attempt at getting a trademark. Seriously.
I even read the damn lawsuit, and although my swedish isn't great, I'm pretty sure I have it right, and the people claiming that this is an attempt at blocking a trademark application got it wrong.
Of course, if the trademark application had gone through, Mojang would probably have ended up in the same situation as Bethesda is in now.
I'm curious how this will end. This is a lawsuit in a Swedish court. I don't think we have a lot of experts on Swedish trademark law here.-
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But even in the US, why would you say that they couldn't use the name, if they couldn't get a trademark?
Do you mean that they couldn't because Bethesda would sue them for trademark infringement, or that they simply wouldn't be allowed to release a product with a name they couldn't trademark?
I don't think the latter is true in the US. As I understand it, there can be some amount of room between:
- not being able to get a trademark on a name "A" because it's too close to trademark "B"
- "A" infringing on trademark "B"
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the longer this goes on, the weirder that todd howard/notch round table appears
http://www.gameinformer.com/b/features/archive/2011/06/14/notch-and-todd-howard-the-one-on-one-interview.aspx -
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what is the issue with someone putting scrolls in a video game name? I agree no one should put "elder scrolls" in a video game name, but forbidding people from using one of the words from the title of their series?
Not that Mojang went about it the right way, I just don't like seeing a company that owns "elder scrolls" also owning "scrolls" -
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+1 A lot of people don't seem to realize that Notch has essentially forced ZeniMax to take action. First with just the application for 'Scrolls' and second by making everything public. This isn't a major corporation on an IP warpath, this is a company being forced into defending IP rights they legitimately own.
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