This Kotaku post on the continued trademark dispute between lawyers for Minecraft developer Mojang and Elder Scrolls series developer Bethesda offers some interesting quotes from Bethesda VP Peter Hines, and attorney Angela Bozzuti from Davis & Gilbert LLP in New York City.
As you already know, Mojang founder Markus "Notch" Persson said earlier this week that his company tried to appease Bethesda parent company Zenimax when it came to his upcoming Scrolls game, including offering to change the name by adding a sub-title to it. He claims they rejected all the options that he presented to them.
Persson told Kotaku that the best-case scenario for his company is that they win in court and are paid for their legal fees:
"We win, and they compensate us for our legal costs," said Persson by email.
But Peter Hines puts it all in perspective:
"This is a business matter based on how trademark law works and it will continue to be dealt with by lawyers who understand it, not by me or our developers," said Pete Hines, VP at Bethesda. "Nobody here enjoys being forced into this. Hopefully it will all be resolved soon."
When it comes to trademarks, companies that don't enforce them probably shouldn't own them, according to most trademark experts. Angela Bozzuti points out to Kotaku that Trademark owners have a duty to protect their marks or risk losing rights to them:
"Trademark owners have a duty to protect their marks and should enforce their rights," said Angela Bozzuti, an associate specializing in trademark law at Davis & Gilbert LLP in New York City. "Trademarks are source identifiers and are often among a company's most valuable assets. If they allow third parties to infringe their trademark rights without taking action, they can eventually lose their marks. "
"The standard is not whether the respective marks and relevant goods and services are identical," adds Bozzuti, "but whether consumers are likely to be confused. Here, the question is whether Mojang's use of the name for games is likely to cause consumers to wrongly think that 'Scrolls' is connected to Zenimax or its 'The Elder Scrolls' games."
Bozzuti concludes by saying that Zenimax will be taking this show on the road to other territories because in order for the company to stop Mojang from using the name in the U.S. it will have to get an injunction in a U.S. court.