Let's talk sense about game trademarks

Jas Purewal is an interactive entertainment lawyer and author of leading gaming law blog Gamer/Law.  This post expresses his personal thoughts only.

The games press and sections of the games community has got hot under the collar (again) over trademark law.  This time around, it’s about news that King.com, maker of Candy Crush Saga and other games, is seeking to trademark ‘Candy’.  Cue lots of (to put it charitably) loose talk about ‘monopolies’ and even ‘patent trolling’ - much as there was regarding Games Workshop (with “Space Marine”) and Bethesda (with “The Elder Scrolls”) previously.  I’m going to try and talk some sense about this topic.

The bare essentials of trademark law:

Trademarks are a branch of IP law which protect the things which represent the brand of a business – its name, its logo, for a creative product like a game or film then potentially things like its characters’ names or other important game names.  Trademarks do not protect anything else about the underlying product, e.g. what the game’s like or its gameplay (that’s copyright law) or potentially how the product works (that’s patent law).  So, trademarks = the way in which you protect your business brand and how it’s referred to in the market.  For more on the basics of trademarks, read my post Demystifying Trademarks and Games.

Why get a trademark in the first place?  (1) to stop someone from misusing your brand or potentially even pretending to be you; (2) to build and protect value in your business (having the right trademarks are the kind of thing that financiers, investors and buyers of your business will expect to see; if you don’t have the right legal protections in place, it’s one fast way to finding the money you get is chipped down).

Enforcing trademarks:

Once you have a trademark, you have to enforce it or you risk losing it.  Put it another way, there’s no point going to all that expense and time to show the world that legally the trademark is associated with your business, if you then let anyone in the world make use of the trademark without consequence.  If you did, it wouldn’t really be a trademark for your business at all and would risk invalidation (which is what happened with the trademarks and patents the Hoover Corporation once had with Hoover vacuum machines).

So, that’s why we see legal issues around trademarks in the games industry from time to time.  The trademark holder writes to another developer, points out that the developer is misusing their trademark(s) and asks them to stop – usually by changing the name/logo that they’re misusing.  Or, sometimes, the trademark holder is willing to enter into a contract with the games developer so that they can  live side by side using the trademark without legal issue – this is called a “coexistence agreement”.

But isn’t this just an abuse of the system? What gives the trademark holder the right to tell people what to do?

This is the crux of the issue.  In a small minority of situations, there may be situations where Person A acquires a game trademark and then brings an action against Person’s B game which is unjust or inappropriate.  For example, Person B may have a totally different business to Person A, or they might have a similar business but Person B has been doing it longer.  For example, I register a game trademark but you’ve been using that game name for longer than me.  In this situation, there are already well established processes in place under the law in which folks affected by these issues can try to achieve redress.  At the very least, there are online resources (including my blog) which they can use to understand the issues.    Getting angry, or attacking the law for being the law, is no defence and it won’t help.

But much more importantly than that – how many situations have there actually been where this situation actually comes up – where a pre-existing game is harmed by a similar trademark being registered and then used to attack that earlier game (maliciously or not)?  I’m an IP expert in the games industry and I can tell you it comes up pretty seldom.  In part that’s because of the following reason….

Many innocent looking games in a trademark dispute aren’t that innocent.

We’ve all seen games online that like to flirt with, or zoom past, the line between homage and copy.  Let’s take a look at Clash of Clans for example. 5 minutes on the iOS App Store or online will show you games like Clash of Zombies, Clash of Factions, Amazing Clan War and so forth. Now, most of these games look very similar to Clash of Clans and have similar gameplay, but my point here is the similarity of the NAME.

Then you have other games, which might not have such a direct name relationship to other, more successful games, but they use the name of those successful games as part of a discovery optimisation strategy (e.g. using “Clash of Clans” or “Candy Crush Saga” as keywords to make their own game appear more highly in searches).

In all these cases, a game which may look like it only has some or a passing resemblance to a trademarked game actually has a lot more in common with it than it might first seem.  They are using the hardwon success of other developers to try to leapfrog ahead.

That’s not ALWAYS the case of course and there have been grey areas where the similarity between game names can legitimately be debated (such as the Scrolls/Elder Scrolls litigation I mentioned earlier).

Which brings us to back to the start of the post:

The Forbes post I linked at the start has a good summary of the requests made by King to the developer of All Candy Casino Slots – Jewel Craze Connect: Big Blast Mania Land and the (I think very reasonable) comments that King made in response.  In particular:

“The particular App in this instance was called ‘Candy Casino Slots – Jewels Craze Connect: Big Blast Mania Land’, but its icon in the App store just says ‘Candy Slots’, focussing heavily on our trademark. As well as infringing our and other developer’s IP, use of keywords like this as an App name is also a clear breach of Apple’s terms of use. We believe this App name was a calculated attempt to use other companies’ IP to enhance its own games, through means such as search rankings”.

If that’s correct, it suggests that the developer of ACCS-JCC: BBML (since it’s rather tiresome to type the full name out more than once) is indeed in some murky territory from a trademark and Apple developer agreement perspective.  We haven’t had the developer’s response yet though.

Some final thoughts from Jas:

IP law and how it applies to the games industry is still evolving fast (that’s one big reason I write this blog) and there are a number of issues we don’t understand fully yet.  In those situations, it’s right that there should be a lively debate about how we want our games industry to develop, including what legal rights games developers should and shouldn’t have in their games.

But there is a lot we DO already understand about IP law and the games industry.  How trademarks work is one of those things.  I’d venture to suggest therefore that those sections of the games community who are up in arms about this latest trademark issue would probably benefit from taking some time to think things through, to try to understand how games businesses and the law actually works, rather than drawing rushed conclusions from little experience on the subject.  But then, that’s the Internet for you isn’t it?

Some FAQs in order to try to avert being flamed:

Isn’t Candy Crush Saga just a clone of XXX or YYY game?  What gives them the right therefore to take control of anything?

I’m going to avoid getting into one of those debates here about originality versus homage versus copying etc which come up occasionally in games, film and so forth (though for the record I think CCS is a brilliant, original game).  That’s not the point here.  King registered the trademarks (in the EU and the process is underway in the US), they are going properly through the trademark process, if anyone objects to their claims then they can go through the process too.  Anything else is just armchair lawyering, I'm afraid.

Why should anyone be able to register basic words like “Candy”?

It looks like King has already registered a trademark for the word "Candy" in the EU and its US application is still underway (they also have registrations completed or underway regarding other trademarks, including "Candy Crush" or "Saga"). Let's look into that for a second: does this mean the law is really as bad as some people have made out? 

As I talk about below, commonplace or purely descriptive words can't be trademarked except under certain conditions.  King clearly feel that "Candy" is sufficiently associated to their brand in relation to video games that they should have a trademark registration over it (and they are not the first video game company to make such a decision for an otherwise commonplace/descriptive game name).  This is being done under the trademark process with the available redress under it if people with a stake in the trademark application disagree.  As I explain in some detail in my trademarks and games guide, trademarks aren't a monopoly right: it's not like those irritating people who like to comment "first!" in a comment thread so that no one can beat them to it (I'm not sure if that's a completely apt analogy but I liked it and dammit this is my blog, so I put it in).  If someone trademarks e.g. "Mario" or "Clash" in relation to games, that doesn't make them the absolute controller of those words in a game name for all time and in all situations.  Trademark law gives them certain rights as it gives other people with an interest in using those marks certain rights.  If those interests come into collision, trademark law sets out remedies.   So that you can see this is grounded in reality rather than just me spouting platitudes about the law, read about Mojang and "Scrolls" versus Bethesda and "The Elder Scrolls". 

The ultimate fallback point though, the reason why this shouldn't be an issue for businesses that educate themselves about trademarks, is that trademarks are not a monopoly right.  The test for whether one game trademark infringes another is NOT 'does one of them have a trademark registration' but 'does one of them have a trademark registration AND are the infringement tests met too'.  Boiling that down even further, what we're really saying is 'are the two games confusingly similar'?  If you can make good arguments why consumers would know your game isn't made by the other guy or similar to his/her game, then that's a big step towards proving no infringement.  Conversely, if you have a trademark for a game name and it's obvious that the other guy is making a game that trades off your gameplay and brand, then the trademark will help in an infringement action.

One last thought on this: as an IP practitioner, I find that there can sometimes be issues with wide trademark registrations, where a client wants to register a name not only for their core business activity (e.g. making software or games or books) but for potentially several other categories of activities like merchandise or cleaning products.  You might be surprised to know that Rovio's "Angry Birds" trademark for example extends to cleaning products.  There's always a discussion between lawyer and client here: on the one hand, one doesn't want a registration so wide that it could be criticised for going too far or even be opposed and potentially invalidated.  On the other hand, if the business has ambitious plans in relation to the brand then it will want as much trademark coverage as possible. 

Hopefully that helps explain a little about what these kinds of applications actually mean.  I'm not passing any judgment myself on the rights or wrongs of the King.com situation - but hopefully this helps explain the reality a little.

Why can’t I register “Door” or “Game” or “Cat”?

Trademark offices won’t allow you to register completely commonplace or descriptive phrases which are part of the common language and have no association to your business.  UNLESS of course they do have a particular association to your business within certain fields of industry – Apple Inc for example with their name “Apple” and the apple logo.  Or, put it another way: generally commonplace phrases aren’t registrable unless they are  particularly tied to your business and you can show it.

Isn’t this just like patent trolling?

Erm, no.  Here’s a quick go to explain why.  First, read my guide to patents and games.  Second, read my guide to trademarks and games.  Then you’ll have a basic understanding of what patents and trademarks actually are and how they’re obtained.

For folks who don’t often deal with business and legal issues, I can understand how patent trolling might look similar to  ’trademark trolling’: a big bad business buys up patents/trademarks and then threatens to sue other businesses unless they pay a licence fee. That does happen in patents, but that’s in part because patents protect inventions and they can be traded back and forth and because, once you incorporate an invention which is patented into your product you’re kind of stuck already (since it’s usually quite hard to redesign the product by that point).

Trademarks however are intimately tied up with the brand of a business and with its products and therefore they are bought and sold far less often.  Even if they were bought and sold as often as patents, it”s a lot easier to just change your product name than it is to change the underlying patented technology in it – which means that licensing of trademarks would be less complicated and less expensive than for patents.

For all these reasons, I’m trying to say that trademark trolls don’t really exist, certainly not how patent trolls exist.

Isn’t this just like Tim Langdell and the Edge trademark? Isn’t he a trademark troll?

You can read my and my friend Jonny Mayner’s thoughts about that particular saga here.  Actually, Tim Langdell is a great example to prove my point about how the trademark system works. Tim Langdell claimed, for a long time, that he was the exclusive rights owner of the word “Edge” and an “Edge” logo in relation to games.  He even sued various people, including Future Publishing (publisher of Edge magazine) to protect those rights.  But actually the litigation determined that he wasn’t the exclusive owner of any Edge trademarks and that, even if he was, he hadn’t actually been using them.  Thus his attempts to wrest control of trademarks were defeated by the evidence of what he had and had not been doing with them in connection with his business.

To me, this demonstrates again the very real differences between patent and trademark infringement and show how the trademark system can be used as both a sword and a shield (to use legal language for a second) in the right circumstances to defeat unjust actions.

But what about the little guy?  What if he/she can’t afford big lawyers?

There is still a lot you can do:

- Read official resources (such as the USPTO or OHIM websites for US and EU) to understand what’s happening in your particular case.

- Get informal legal guidance, or even pro bono advice, from lawyers (including me).

- In particular, you need to take a cold hard look regarding whether you’re actually legally infringing someone’s trademark, or whether it’s them who are making the unjust claim, based on the relevant trademark rules.

- Get in contact with the person making claims against you, so that you can understand their concerns and try to reach an amicable resolution (in particular, whether you can reach a coexistence agreement with them if the situation warrants it).

Trademarks are a waste of time in games and/or I don’t care if people copy my name/logo/app.

Fair enough, you’re entitled to your view.  Hopefully if nothing else this post explains a little about how trademark law sees these issues.