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5 Minute Legal Lessons for Indie Devs - Part 2: Game Names and Trade Mark Troubles

by Pete Lewin on 05/03/16 02:06:00 pm   Featured Blogs

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The following blog post, unless otherwise noted, was written by a member of Gamasutra’s community.
The thoughts and opinions expressed are those of the writer and not Gamasutra or its parent company.

 

[My name is Pete Lewin and I'm an interactive entertainment lawyer specialising in video games and eSports. The following is an extract from my own blog over at www.legalgamer.weebly.com]

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Who should read this?
Anyone making any game at all – seriously. 

The potential problem
Game names have been the source of a lot of problems in the past - 2 examples illustrate why:

Mojang – Zenimax - Scrolls
In 2011, Mojang (Minecraft) filed a trade mark for the name “Scrolls” for their new collectible card game of the same name. Bethesda (or more accurately their parent company, Zenimax) who make the epic fantasy RPG Elder Scrolls series, didn’t like this. Regardless of the clear differences between the actual content and gameplay of the 2 games, Zenimax sued Mojang for trade mark infringement. In the end the case settled and Mojang was granted a licence to use the name Scrolls for its new game (without the need for a Quake-off as suggested by Notch at one point), so it wasn’t all doom and gloom, but it was by no means an easy ‘win’ for Mojang and wouldn’t have turned out this way if Mojang didn’t have the ability and funds to fight the case.

Black Forest Games – Diesel Clothing - Dieselstormers
In 2015, Black Forest Games (The Giana Sisters: Twisted Dreams) was about to release its new game, then called Dieselstormers. And in order to protect this it wisely filed for a trade mark. The only problem was that during that process, BFG's application was objected to by Diesel (the clothing company) who it turns out had also registered its trade mark “Diesel” for video games, as well as clothing. OHIM (the EU trade mark body) decided to reject BFG’s application in the end – I’ve written about exactly why here. BFG renamed Dieselstormers to Roguestormers prior to final version release, even though the game had been out in early access and promoted as Dieselstormers for more than a year already. 

Take-aways from the above?

  • Mojang/Zenimax - if your game name is similar to an existing game’s name, you may be challenged on grounds of trade mark infringement.
  • BFG/Diesel – this shows how (i) challenges can arise from unlikely sources even when the 2 marks aren’t exactly the same and (ii) you’re not completely safe by just checking existing game names.

So how do you check for pre-existing names / trade marks?
Step 1: I know it sounds obvious, but once you have a game name in mind, do a really thorough Google search. Also remember to check the app stores, Steam, industry news sites, flash game sites, iTunes, Amazon and anywhere else you can think of. Remember that you’re also looking for similar game names, not just identical ones.

Step 2: If step 1 doesn’t reveal any time bombs, the next thing you can do is check the trade mark registries. This is a fairly complicated process since the databases are understandably huge, so I’d normally recommend getting some professional help with this, but if you’re patient and willing to spend some time getting used to the systems, you can make a start yourself. Two things to bear in mind if going solo:

  1. each jurisdiction around the world has its own trade mark registry (e.g. in Europe this is EUIPO (formerly OHIM) and in the US this is the USPTO), so there’s no easy or quick way to do a global trade mark search, and
  2. trade marks are registered in respect of certain ‘classes’ of goods / services – e.g. class 1 includes chemicals, class 6 includes metals and class 9 largely includes software (and in turn, video games). So if you see an existing trade mark for the name you want, but that mark is only registered for classes that have nothing to do with video games, this doesn’t necessarily stop you from using that name for a game.

Step 3: If in doubt, get some professional assistance.

How close to an existing registered trade mark can you get?
This is a really interesting question, but unfortunately the answer is more complicated than this 5 minute piece allows me to explain. Generally speaking though it would involve asking: (i) are the 2 game names identical or very similar; (ii) are the 2 games identical or similar, and (iii) could there be public confusion (i.e. due to the name, could people mistakenly think your game literally is the original game or possibly a new game made by the same people)? If the answer to all 3 of these questions is maybe / yes, you could have a problem. As shown by Mojang/Zenimax though, you may still be challenged in practice even where the answer to these is arguably no. I’ve written a bit more on this topic over here.

If you want to be completely safe, obviously steer clear from names which are identical or very similar to pre-existing games. If you’re intentionally picking a name though which skates the fine line between okay and not okay, be prepared to fight your corner (which would probably require legal assistance) or potentially change your game name. A good tip here is the ‘gut-feel’ test – if you feel something’s slightly off about the name you’ve chosen, someone else will probably think so too.

What happens if you accidentally / intentionally pick an existing game’s name?
Whether accidental or intentional, there are several things that could happen, including (in no particular order):

  • Nothing at all – unlikely, but still a possibility depending on the success / reach of the earlier game (as well as your own), when it was released, how litigious the developer is feeling etc.
  • Coexistence agreement – you could enter into an agreement with the dev of the earlier game effectively agreeing between the two of you that yes, there are possible trade mark issues here, but neither of you will take any action on them (as seems to have been the case between King (Candy Crush) and Stoic Studios (The Banner Saga).
  • Change your game name (forced - cease and desist) – this is the most likely outcome since it’s often the easiest, cheapest and cleanest way to do things (particularly pre-release). Remember though, just because someone tells you to change your game name doesn’t necessarily mean you legallyhave to, but fighting your corner will take time and money and possibly involve a lawyer. 
  • Change your game name (voluntary) – sometimes you’ll just want to change the name of your game, not because you’ve been made to but because you don’t want to detract from an awesome, already existing game. For example, in Feb 2016, State of Play (Lumino City) announced their new game, Ink, but this was quickly renamed to Inks to avoid confusion with an earlier game from Zack Bell called Ink.
  • Get a licence – this is unlikely as most studios will want to keep tight control over who makes content in relation to their franchise, but it’s still a possibility. It’s unlikely you’ll be able to get a licence to a huge, current, still-being-produced franchise like Fallout, but who knows!
  • Trade mark infringement lawsuit – this is the nuclear option for the original game owner and would probably, but not always, follow a cease & desist letter.

Summary:

  • Always do a thorough search of available sources before committing to a name,
  • Don’t pick a game name which is identical or really similar to an existing game (or non-game) name, but
  • If you do, be prepared to fight your corner or potentially change your game name.

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