Elder Scrolls vs. Minecraft dev: “scrolls” is our word

Elder Scrolls vs. Minecraft dev: “scrolls” is our word

Elder Scrolls publisher ZeniMax is suing Scrolls developer Mojang… over the …

Andrew Webster – Aug 10, 2011 3:45 pm | 166

Credit: Image courtesy of Bethesda

ZeniMax Media publishes a series of role-playing games called The Elder Scrolls, developed by Bethesda Software; the fifth such game, Skyrim, will be released this November. Mojang, the indie studio behind Minecraft, is currently developing a collectible card-style game called Scrolls. Confused by the similarity between “The Elder Scrolls” and “Scrolls”? No? Well, ZeniMax believes that you and other consumers might just be. It has filed a lawsuit against Mojang, claiming that the developer has infringed upon The Elder Scrolls trademark.

What’s going on

Last week, Minecraft creator and Mojang founder Markus “Notch” Persson announced on Twitter that he had received a document from lawyers working for Zenimax Media which claimed that Scrolls infringed upon The Elder Scrolls trademark. He then posted an image of the document, reportedly 15 pages in length. According to Persson, prior to that document, ZeniMax’s lawyers had contacted his studio regarding the same issue. All of this happened after Mojang had itself filed for an application to trademark the name Scrolls.

“We looked things up and realized they didn’t have much of a case, but we still took it seriously,” he wrote in a blog post. “Nothing about Scrolls is meant to in any way derive from or allude to their games. We suggested a compromise where we’d agree to never put any words in front of ‘Scrolls’, and instead call sequels and other things something along the lines of ‘Scrolls – The Banana Expansion’. I’m not sure if they ever got back to us with a reply to this.”

Credit: Bethesda's 15 page letter to Mojang

Since Mojang is based in Sweden, the document itself is in Swedish, and thus we can’t gather much from it. However, Persson explained that, in brief, the document says that “they demand us to stop using the name Scrolls, that they will sue us (and have already paid the fee to the Swedish court), and that they demand a pile of money up front before the legal process has even started.”

Is it The Elder Scrolls V? or Skyrim?

The question is, of course, does ZeniMax have a case?

“Trademark infringement relies on likelihood of confusion,” Mona Ibrahim, a Seattle-based entertainment lawyer who focuses on areas including trademark and copyright issues, told Ars.

“Under US law there are a couple of additional grounds (tarnishment and dilution) for famous marks, but whether the Elder Scrolls series falls within the parameters is difficult to see without conclusive market studies,” she added. “So at the end of the day, Bethesda would have to spend a considerable amount to push this through litigation as far as collecting evidence to show either tarnishment or likelihood of confusion.”

Of course, the lawsuit is being filed under Swedish law, and as Ibrahim explained, “the benchmarks and barriers as to trademark protection differ from country to country.” Still, ZeniMax would have to prove that there is a likelihood of confusion between the two games, which could be difficult to do.

This is primarily due to the fact that neither game has been released, and so the only way to prove such confusion would be to produce convincing market research. This would definitely be the case in the US; however, according to Ibrahim, “the same principles may generally apply due to international IP treaties.”

The situation is similar under English law, as London-based lawyer Jas Purewal, author of the Gamer/Law blog, points out.

“Owning a trademark doesn’t give you exclusive ownership of the thing that’s been trademarked, whether it’s a name, a logo, a smell (yes, you can trademark one),” he wrote. “It gives you the right to stop another guy if: a) he is selling identical or similar goods/services in an identical/similar business, and b) there is a likelihood of public confusion between the two goods/services.

“This is the position under English law, which is broadly similar to European laws generally—including the Swedish law to which Mojang is subject—but there may be some differences I’m not aware of.”

What’s next

Persson and Mojang have already made the right first move by making the issue public. No matter if it’s right or wrong, this is bad PR for Bethesda, the developer of the Elder Scrolls series. For all of the success of Minecraft, Mojang is still substantially smaller than ZeniMax or any of its development houses, and picking on the little guy is never a good look.

But if PR fails, Mojang could always fall back on geography. “Another option is filing a declaratory judgment in the States to make sure the US has jurisdiction over the matter,” said Ibrahim. “If Bethesda doesn’t have a US trademark for the Elder Scrolls registered they’d almost certainly be limited to injunctive relief, and that’d be after protracted litigation.”

As for Persson, he doesn’t blame Bethesda’s developers, tweeting last week, “Again, to be clear, the devs at Bethesda are cool people! This is their lawyers. They’re a very big company now.”