Notch Offered To Give Up 'Scrolls' Trademark, Bethesda Still Sued

In response to the Russ Pitts editorial that we published earlier today, Minecraft creator Markus "Notch" Persson wrote a short post on his personal blog. In it, he offers a bit of clarification about the series of events leading up to the current legal situation.

I feel the need to clarify a couple of things:

We realised we should apply for the trademark "Minecraft" to protect our brand. When doing so, we also sent in an application for "Scrolls". When Bethesda contacted us, we offered both to change the name to "Scrolls: [some subtitle] " and to give up the trademark.

They refused on both counts.

Whatever reason they have for suing us, it's not a fear of us having a trademark on the word "Scrolls", as we've offered to give that up.

Earlier this year, Kotaku compiled a collection of the legal documents from the case (though they are in Swedish). Find them here.

A Short Response [The Word of Notch]


Comments

    And theres good reason they did this.

    Scrolls:[Subtitle]

    Is even closer to

    The Elder Scrolls:[Subtitle]

    that Scrolls is.

    And as for the trademark, they don't have a choice they have to sue notch to set a standard here. even if notch wins in court, when someone else comes and says we want to name our game. The Eldest Scrolls: Skirim they are able to say we have been actively defending this trademark.

    The fact here is that Bethesda shouldn't be able to get any money out of notch anyways(maybe court costs but that doesn't incentivise suing them).

    Seeing as Mojang is yet to release or profit from the game title Scroll's, they haven't actually impinged on the trademark. So at most Mojang could lose and have to pay bethesda's court cost's.

    It's not as some have said oh look mojang has money lets go and take it

      Which part of "we offered [...] to give up the trademark" didn't you understand?

        Evidently you didn't understand the point that alinos was attempting to make. Bethesda were left with no recourse but to persue legal action lest a precedent be set which could create further stirring in the already sensitive world of trademark and patent enforcement. [...]

        Ignorant people will often feel compelled to adopt a David Vs Goliath in moments like this but let's not forget that more often than not we know absolutely nothing about the legal and business aspects of developing and publishing a game.

        It's not like they weren't baited somewhat either. Didn't that Minecraft guy challenge them to a game of Quake for the rights to the patent? If I were a big game developer and faced such unprofessionalism in relation to a trademark quarrel, I'd PREFER to let the lawyers sort it out.

          Meant to say
          "ignorant people will often feel compelled to adopt a David Vs Goliath mentality in moments like this."

          My bad.

            What about the recourse of letting Mojang drop the Trademark application?

              Again, it's about IP and title enforcement, not just Notch dropping HIS copyright.

        Also, Bethesda gave Mojang the chance to change the title before going to court in the first place!

        It doesn't matter if they trademark it or not.

        The fact is the game could be associated as coming under the elder scrolls brand.

        Which means that technically speaking one could argue that scrolls could either be rewarded due to it's relevancy to the original title or if it's a bad game could damage The Elder Scrolls name.

        While this probably isn't the case because they are kinda far removed from one another. If Zenimax don't oppose Mojang if someone comes out and releases a game called The Eldest Scrolls:Skirim.

        And Zenimax then goes after them for infringing on their trademark, that company could cite the fact that they didn't try to defend their trademark from people with names like Scrolls. And as a result the trademark can be taken away from zenimax.

        Mojang can win this and zenimax won't care, the fact is it has to happen in order to satisfy the trademark law.

        There are plenty of thing's in the legal system that actually force a parties hand in order to actually have a sound legal defence if something nasty actually shows up.

        which is why when the dust settles on this no matter which side win's. The only money involved should be to pay the winning sides legal cost's.

        Because Mojang hasn't made any money off of scroll's yet.

        So it can't be argued that some of their profits were a result of The Elder Scrolls.

        and it also can't be argued that the Scroll's game has done any damage to The Elder Scrolls.

      Seeing as Mojang is yet to release or profit from the game title Scroll’s, they haven’t actually impinged on the trademark. So at most Mojang could lose and have to pay bethesda’s court cost’s.

      You just said they have done nothing wrong, so they should pay court costs?

      THIS.

      God, it shits me so much that there are people who don't understand TM and copyright law and *have no intention of absorbing multiple posts on the topic, or looking into it themselves*.

      However, they ARE quite happy to sit back and yell "ZOMG BIG CORPORATION MUST BE EVIL VIVA LITTLE GUY" when the "little guy" has tens of millions of dollars behind him. AND DID THE WRONG THING.

        Naming your game a word that is also 1 of 4 words in another title is not doing the wrong thing. Notch did nothing wrong here trying to name his game Scrolls and the idea that this infringes on the Bethesda copyright is ridiculous, dozens of games have similar titles.

        I understand the point where they are trying to set a precedent, I don't know copyright law but I would think that this would be such an insignificant similarity that they could let it go and still fight other copyright infringements should they happen.

        If you are worried about precedent, if Bethesda was to win what kind of precedent would that set? You can never use a word that has been used before in the name of a game?

          What if he called the game "Gathering?" What then!

            Most people would probably miss the reference, actually.

              just like people would have missed the Scrolls reference if there hadnt been a f$*&ing court case made out of it. This is why i couldnt be involved in this kind of work, i just get too frustrated at all the bullshit. why cant bethesda say they took precedence by enacting the whole court case, then pulling out when Mojang agreed to change the name. Surely the records would show that they have taken action?

        Did the wrong thing?? By using a somewhat common english word that has no relation to the tradermarked name by itself? Seriously, must we totally give up a perfectly fine word of our vocabulary just to protect the trademark of a company? Do you realize that Notch's game is actually about scrolls? Like, mechanically?? That game will likely have much more reason to be called Scrolls than TES.

        I understand what all you are saying about the importance of setting a precedent in a rather difficult case, but I believe that it's also equally important to set the precedent for fair use of common english words, lest we face a future where people with no scruples trademark things like "The Tree of Life and Happiness" just to be able to sue your ass every time you use any of those nouns in a product.

    Bethesda won't win the case....

    Well they wouldn't if it was in Australia, at least.
    I'm not so sure about the American system, which is all sorts of fucked up.

      Thing is though they don't need to win the case.

      Winning or losing is irrelevant to them. They need only prove that they are sufficiently defending their Trademark.

      Actually, they probably will win tbh. The term "Scrolls" for a video game is sufficiently close to a part of their trademark that a reasonable association could be made between the two. Such association is in violation of their trademark

    Bethesda aren't copping enough slack for such a douche piece of litigation. That pathetic bugger who had trademarked the word Edge got heaped on by the gaming press for his constant stream of trolling litigation, attempting to defend a trademark for the work scroll doesn't seem much different.

      Oops, that should be *flack not slack :-(

      They have to defend it for the same reason writers have to defend theirs when people write 'fan fiction'. If they dont, it can lead to reprecussions should people try to reproduce their work later for profit. They have to be able to demonstrate that they have defended their trademark evenly, rather than selectively.

    The world of IP/Trademark and patenting is so buggered. It had a good core when it started out, but now it does nothing to protect individuals with ideas or new concepts. It only protects whoever has the most money to prove their "ownership".

    A corporate dick-slapping debacle between huge corporations that think they can mark every word or idea with their musk.
    I don't like seeing cheap knock-offs and piracy, I don't want people/company's ideas stolen, but so much of this IP shyte is pathetic money-grubbing.

    When it comes down to it Bethesda trying to cover the word "scrolls" as a trademark/IP/ is like Marvel saying the word MEN is theirs due to X-Men.

    If Notch was calling the game "ancient scrolls" I could see the problem. But just scrolls... it's a lame lawsuit.

    I must disagree to this. Bethesda's argument is based on the premise that anyone can be confused into thinking that the Mojang "Scroll" game is misrepresenting or misleading consumers into thinking it is the Elder "Scrolls" game.
    What lies in the heart of this legal trademark challenge is the concept of Mojang "passing off" Bethesda's reputation in order to mislead consumer to buy their game. My issue is that the intended consumer cannot in anyway be confused at all by these two games.
    Let us look into this hypothetically. If Bethesda sues Mojang under Australian jurisdiction, they are most likely to take action under the tort of passing off. This is covered under both statute and common law. Under the Trade Practices Act, s. 52 establishes that Bethesda needs to prove three criteria in order to prove that Mojang was passing off their TM.
    Firstly, Bethesda needs to establish the existence of a reputation or goodwill. This is not entirely important because you don't need a reputation to argue passing off (Peter Isaacson v Nationwide News). This is easy to prove because Bethesdas 'Elder Scrolls' series is known worldwide so no need to argue for this.
    Secondly, s. 52 requires for Bethesda to prove that Mojang's conduct is "likely to mislead or deceive", meaning that it is unnecessary to prove that the conduct in question actually deceived or mislead anyone, or that there was a strong probability of confusion. Establishing that conduct is 'likely' to mislead is sufficient. The court will apply an objective test in determining for itself whether conduct is misleading or likely to mislead. Here is where I challenge Bethesda's claims. When one is to distinguish the Elder Scrolls series, many have either simply said the name of the game "Oblivion or Skyrim etc." OR the name is only distinguishable when used in conjunction - that is - both "elder" and "scrolls" must be uttered. I’ve actually tested this and asked a few people in my workplace that were gamers and asked if they can distinguish between “Scrolls” and “Elder Scrolls”. All of them were able to identify Elder Scrolls while they asked what Scrolls was. Hence, the mere statement of the word "Scrolls" as a title does not conjure up the image of Bethesda's "Elder Scrolls" series. Moreover, any gamer can easily distinguish between both games, and I am seriously doubting whether anyone is “likely” to be mislead by Mojang’s use of the word “Scrolls”, and think it is passing off as a Bethesda game (see Stuart Alexander and Co. V Blenders Pty Ltd). This is all up in speculation though so I must stress that this is merely how I see it working in an Australian setting.
    Thirdly, will the deception cause (or liked to cause) loss or damage to the plaintiff. In this case, I strongly doubt that the sale for Skyrim will be reduced, or will ultimo ately lead to an increase in the sale of the “Scroll” game. I’ve heard many people have already pre-ordered Skyrim, and many will still buy it despite this new “Scroll” game coming out at the same time. Despite the popularity of “Minecraft”, I believe it is still a niche game only embraced by hardcore or knowledgeable gamers. And if we look at it artistically, the brand names for “Elder Scrolls” and “Scrolls” are prominently displayed in each respective website, packaging, advertisement etc. in a different style and colour from each other.
    But it must be stressed that through all these, the intention to deceive or mislead is irrelevant under s.52. A corporation may still breach s. 52 despite the fact that a statement or representation has been made honestly, innocently, and without any intention to actively mislead or deceive: The Thai Silk v Aser Nominees. Nevertheless, a court may easily find that a company is passing off where there is clear evidence of an intention to mislead or deceive, or where reckless indifference exists: Nylex Corp v Sabco Ltd. From media presses, this seems highly unlikely given Notch’s intention to change the name after Bethesda’s threats.
    In any case, all Notch needs to prove is to establish that the “Scrolls” game sufficiently differentiates from the “Elder Scrolls” trademark. I believe it has, and I will be sad if Bethesda wins this suit.

      Sorry for the blob, I copied and pasted it over word.

      Your wordy article is... very wordy... but it stumbles when you try to argue the legality of it via Australian Laws and Regulations (hypothetically or not).

      At any rate, I don't expect ZeniMax to win the case, I just expect them to show signs that they're trying to defend their copyright title.

        Hypothetical or not, the premise of the "passing off" trademark arguments is shared in all trademark legislations.

        Also its trademark, not copyright as many people seem to fail to distinguish both intellectual property rights.

          Also considering that the case will be heard in Sweden, and EU laws are pretty similar to UK Law, which the Australian law is based on, I believe the general arguments made can be transferred

          (Caveat: this is purely expressed as an opinion. No court would allow for the application of foreign rules in a domestic case, but perhaps it could be persuasive).

      I think you make some fantastic points and certainly they are valid within the context of Australian law. I also agree that it would be a far reach for people to become confused between the products of the two companies.

      However,

      "Notch" is Swedish and I believe his company is based in Sweden. Bethesda/Zenimax are an American possibility. Therefore the foundation of opinion such as yours would require an understanding of American trademark law, there is nothing to be gained from referring constantly to Australian law unless the case takes place in Australia.

      P.S -> I "feel" I have a valid point, and I didn't need "word" and 25 minutes to form it ;) I don't think (although amazingly well written) the level of detail in your "essay" was completely "necessary." Refer to Section 54 of the 1987A revision of the this is a joke act.)
      :)

        Apologies for the thesis, it's just my research is based on Australian IP law so I pride myself on being knowledgeable on it.

        However TM law in America, I believe, is based on common law and the Lanham Act. Further research finds that the concept of passing off is entitled under the trade dress provisions of the Act.

        I'm not particularly familiar with the act but a quick summary in Wikipedia finds that under s. 43(a) of the Act:

        "Any person who, on or in connection with any goods or services [...] uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

        (A) is likely to cause confusion, or to cause mistake, or to deceive [...] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
        (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

        shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act.

        In this case, it seems the burden again lies with Bethesda to prove that the false misrepresentation is likely to mislead consumers. Mojang on the other hand needs to prove that it is distinguishable and "taken as a whole, is famous separate and apart from any fame of such registered marks" - § 1125 (4) Burden of proof.

      The case will be argued in Sweden, where the laws covering such cases are not necessarily entirely the same as they are here. As such, half of what you just wrote may in fact be irrelevant

    I think ZeniMax will probably win. However, I suspect that they will simply force Mojang to abandon the trademark and pay for all legal costs. They haven't suffered any significant damages so there's little more that they're likely to be awarded anyway, so I doubt they'd push their luck.

    I really dont care, if it gets Notch and to a lesser extent, Minecraft, out of our gaming sites, ill be happy.

    Sorry, I just dont feel for this guy.. Few things ive ever read about him or what he has said, just made him sound like a complete jerk.

    Just a quick question. If this is primarily so Bethesda can be 'seen' to defend their IP, why don't they just come out and say so?

      Because going into a court of law and telling them that you don't really mean it isn't a good plan?

    That's cool Bethesda i just will never buy any of your games again because all you really care about is money, the whole court case is stupid in the first place and notch is now saying yeah i'll change it and your still being little dicks about it. I hope notch wins.

    I hope Notch wins, but I doubt it.
    Bethesda will just spend more money than Notch can.

    I think the entire case is BS. Bethesda have the trademark "The Elder Scrolls" sure, but they can't start sueing because some-one uses the word "The" in their title. If "Scrolls" is such an important trademark to them, why don't they already have it trademarked?

    Skrolls, or Scrollz. Fixed.

    If there was a game convention on right now, and you asked any random bunch of people, "what game is Bethesda bringing out in November?"

    They would either say Who? or Skyrim.

    I think at most 5% of people incorporate "The elder scrolls" into the game title when saying it.

    When we played The other elder scrolls game we simply said Morrowind and oblivion. Heck some people dont even know The elder scrolls was in the title.

    Completely bull**** case, Do Bethesda own the Trademark "Scrolls" no? What are they sooking about Mojang got there first.

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