[Editor's note: Brock Janikowski is currently a law school student with an interesting take on the recent ZeniMax scandal. He will be contributing to Destructoid every once and a while with features focusing on the fascinating role law plays in the world of videogames. Also, his name is Brock ... which is awesome. -Chad.]
What is in a name? If you ask indie developer darling Notch or publishing behemoth ZeniMax, they might say it means quite a lot. Mojang v. ZeniMax has kicked off, a trial that will decide the fate of the title for Notch’s upcoming game Scrolls, but many of us are still shaking our heads.
With seemingly so little to gain and so much much money to lose for the parties involved, is ZeniMax really just evil, or is there something more to the story?
You've probably already read the first indications that there is more to the Notch vs. Bethesda debate than angry bloggers may have led folks to believe. Maybe it was a feeling of loyalty to Bethesda or a skepticism over what seemed like an arbitrary attack on Notch.
Regardless of the reason, since the start of this debacle I've felt a need to dig deeper. After all, Bethesda Marketing VP Pete Hines' statement that, "Nobody here enjoys being forced into this," doesn't mean much unless there is actual justification.
So, putting my legal training to the test, I dove into researching Trademark Law in an effort to understand whether ZeniMax really was an evil corporation crushing the future of gaming under its uncaring heels, or if just maybe there could be another explanation. What I found was that an issue called Trademark Maintenance may indeed be forcing ZeniMax’s hand.
Trademark Law is traditionally all about protecting consumers from being confused as to the origin or composition of a product. If a trademark holder takes the time to make a mark famous, others aren’t allowed to leech off that success. Therefore, if a court finds that consumers might be confused by the name of a new product, a court may find that the name infringes on the trademark holder’s mark and can therefore not be used. Once a trademark holder establishes its mark though, it has to maintain the mark.
Part of Trademark Maintenance is the idea that a trademark holder must “police” its mark. If ZeniMax becomes aware another developer might be infringing upon its marks, it must address the issue, possibly by sending a letter and asking the developer to stop using the mark, or failing that, by taking the developer to court. If ZeniMax, or any corporation in this situation does nothing, a future court may find that a trademark has become “diluted” and is therefore not deserving of trademark protection.
This tends to lead to some rather ridiculous cases for companies with famous trademarks; McDonalds for example has a long history of suing the "little guy" for using names that might be "confusingly similar." Just a few cases include a man named Norman McDonald who was forced to change the name of his restaurant, and another man by the name of McAllan who won a case brought against him for opening a restaurant under his name.
ZeniMax has stated that they believe consumers could potentially be confused by the similarity between The Elder Scrolls mark and Notch’s Scrolls. Is ZeniMax truly worried that people won’t be able to tell the difference? Possibly, but even if the company has little fear of such confusion, allowing Scrolls to slide by could create an unfortunate precedent should a larger, future trademark issue arise.
Keep in mind as well that Notch's offer to change or alter the Scrolls name doesn't count for much in this case. If Scrolls became Scrolls: Insert Sub-Title Here the potentially confusing word "scrolls" still exists. In fact, adding something to Scrolls might make is seem even more similar to The Elder Scrolls. The only thing that would truly end this case would be Notch dropping the Scrolls title altogether, an option Notch and Mojang have yet to offer.
But Scrolls will most likely be a niche game with a niche audience, so then why spend all this time and money to litigate a case against a poor indie developer? It’s the reality of Trademark Law. If you don’t make efforts to maintain your mark, you may lose your mark.
I believe that Bethesda and ZeinMax are taking very little joy in this litigation, but if they are worried about the long-term survivability of The Elder Scrolls mark, the companies may well feel they have no choice but to take Notch to court. Whether or not this is right, or whether Trademark Law should be revised to avoid “trademark maintenance” litigation are entirely relevant questions to ask, but this case won’t be addressing these issues.
So is ZeniMax evil? I personally don’t think so, but that determination is up for debate. I think the company is following what is ultimately an unfortunate aspect of Trademark Law and Notch is suffering as a result. Maybe adherence to this flawed system still makes ZeniMax evil, but if it were a choice between potentially losing your ability to protect your famous trademark and suing an indie developer, what would you do?
Contest:
4:00 PM on 10.14.2011 | 
So are they evil? Nah, no more than any large gaming company is now a day. (Aside from the evil overlords, EA & Activision, of course.) It isn't evil, it's just rather ridiculous that they are forced to do this to protect their brand. So yeah, it's a silly suit.
They know they're wrong, they were offered a settlement out of court, they basically backed Notch into a corner before starting up the lawsuit in order to see if he'd bail out early, there is a clear understanding from Notch that he didn't know he was infringing in the first place, and ignoring this does not cease validity of taking down actual infringements on the license.
All signs point to Zenimax's lawyers blatantly ignoring the outer regions of this case to make a buck.
I can barely tell what you're saying but I think "alien" is too generic to copyright.
The word "scrolls" by itself doesn't mean anything to gamers. The combination of "Elder" and "Scrolls" is what creates the brand recognition. Scrolls by itself does not have imply a connection with the elder scrolls brand.
Maybe I'm wrong. But, eh. I'm with him. Law VS Common Sense, go.
@monti you are jim sterling in disguise I'm fucking sure off it.
I was thinking the same thing!
- Sky Rims
- Beyond Oblivion
- Older Scrolls
- Fallout Through The Sky's Rim
- Zenimax Said We Can't Just Call This "Scrolls"
- etc
Still like Notch more, though.
As far as the idea that they should only object if "Elder Scrolls" is copied, keep in mind that "Elder" is only a modifier, and one that is easy to get around. Another company could make a very viable knock-off with titles like "Ancient Scrolls" or "Older Scrolls". "Scrolls" is obviously the important word, not "Elder".
Sometimes I hate this world...
No one can tell what point you are trying to get across, and more importantly,no one cares.
Btw I wonder just how much cash Notch is forking out for the court case vs all the extra sales he'll get from all the press he is getting. Even if he loses the Scrolls name everybody is gonna know what the new title is.
Also, if the case is brought up before a Swedish court, I still have hope for Mojang. The law system there doesn't seem as crazy as in the US.
Stop referring to 'us readers' like we're all with you, and don't think you're a robot body for Jim Sterling that's breaking down.
Oh people, never learning from dumb mistakes...
Sweden is most likely a participant in the same copyright agreements as the U.S., possibly the Berne Convention, but I'm not sure about that.
Get off your high horse and stop acting as if you are representing me, that is when I can understand what the fuck you are even saying. As a reader I dont even consider what Zenimax is doing as a necessary "evil", its just necessary.
Zenimax can't risk losing their trademark which is worth millions of dollars. Trademark law is really dense, difficult, and nonsensical. It makes more sense to litigate the issue than to not litigate it and risk losing their trademark. You list Bandai Namco and Capcom, which are both Japanese companies, and if I am not mistaken, Japanese trademark law is significantly different than U.S. TM law.
There are constant issues with US companies having their trademarks infringed upon by Chinese companies with little recourse because of Chinese trademark laws and the way that the laws are interpreted in these countries.
The Kinect Sports and Wii sports examples are a wash because the word "sports" has been interpreted to be basically public domain, you can't trademark the word sports, but a phrase involving sports could be trademarked. Of course the word Wii is proprietary for nintendo and Kinect is Tm'd by microsoft, so if Nintendo were to make Kinect Sports I would guess there would be an issue.
I'm not saying that Bethesda will win, or even should win, just that I can't blame them for trying. As for the other games you mentioned, each case is different, and copyright law is complex.
Regarding Japan, though, I can say that they are often pretty lax about copyrights, because of the HUGE fanworks industry they have over there. Well, except for Nintendo, I think, they can be pretty strict.
I haz evidence to back you up!
I'm almost inclined to ask if Norm McDonald also sued this guy for his name, also. I could could just see that headline 'Norm McDonald sues man over name, Not being funny' ....Poor guy, lol.
"Keep in mind as well that Notch's offer to change or alter the Scrolls name doesn't count for much in this case."
So wait, that offer to change the name wasn't to change the name completely? Cause I was under the impression it was and Zenimax was still going ahead with the suit any way, because they had too for all this brand crud.
"It’s the reality of Trademark Law. If you don’t make efforts to maintain your mark, you may lose your mark."
I'm going to sound like one of "those people" but It sounds like the reality of Trademark Law is to litigate those with less money into the ground so they have no choice but to quit and/or completely lose their business (while keeping those lawyers well compensated doing ALL that legal work they must do in this field, mind you). Which is what people are worried about more then anything for Notch in this case.
It doesn't matter if ZeniMax likes that they have to do it or not, the fact of the matter is we, as a people, have let things like this get stupidly out of hand.
I don't think ZeniMax is evil, they have to do what they have to do, but the law itself is leaning pretty heavy towards it.
Also, yeah, we're worried about Notch and all, but has their been any actual word he's even suffering at all yet? This has just started, and while it sucks, and puts a hamper on things, I'd wait to hear more concrete word that he's suffering from all this before we jump off that deep end.
As for the last question: I wouldn't sue him, because its obvious they know its ridiculous they have to do it, too. I'd suffer the Scrolls name, and if it came up at any point that the court says it may have diluted my trademark, I'd make it pretty well known that the there's no possible way that this name , or this game, could ever be confused with mind.
If the courts won't take that as enough evidence that the trademark isn't diluted enough for it to matter, and no other reports come in that people got confused for GOOD reason, then the problem is obviously with the courts and the laws, which all of this points to in the first place.
Then again, this is also why I don't have a trademark, nor a company that has any -and probably never will.
Hahaha I knew it! Indisputable evidence.
That is very funny ! :)
"I'm going to sound like one of "those people" but It sounds like the reality of Trademark Law is to litigate those with less money into the ground so they have no choice but to quit and/or completely lose their business (while keeping those lawyers well compensated doing ALL that legal work they must do in this field, mind you). Which is what people are worried about more then anything for Notch in this case."
While this obviously does happen, don't forget the other side of the equation, small "copyright trolls" who really exist for no other purpose except to sue larger companies for damages AFTER they use a certain name. See the word "Edge" for more details on that.
This is similar to "patent trolls". There are important technologies being held up simply because large companies are afraid patent trolls are waiting in the wings, ready to sue after a product goes to market. Look at all the trouble HTML5 video support is having in that regard.
Thanks for doing the research, Brock.
Well done Brockzorz
But, as with most laws that are based around people being stupid (see Electoral College) it has become obsolete (at least in its current form) with the bottom-end level stupidity rising to that of complete moron rather than stupid monkey.
People are still a LOT dumber than they should be, but not nearly as stupid as they used to be.
34.45%....seriously? You have to be crazy to not think it would be at LEAST 40%
IMA RAGE IN MY CAGE!
And when you get down to it, it is arbitrary. The law is a long series of contrivances and shoving matches that only controls culture as a result of our believing it is something more concrete than that.