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Demystifying trademarks and games

By on February 17, 2011
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This is a guest post from Jas Purewal, a games lawyer and author of games law blog Gamer/Law. You can follow him on Twitter.

Jas Purewal picture

Trade marks are generating a lot of heat in the games industry right now: look at Lima Sky and Tim Langdell for recent examples. But trade marks are often misunderstood in the games industry. So, this post explains what trade marks are, what they do, when you can protect them and when you can’t.

What is a trade mark?

Trade marks are signs (like logos or brand names) used so that customers can recognise your goods and services and distinguish them from the goods and services of your competitors. Here’s a couple of examples:

Electronic Arts logo

Apple logo

Trade marks are important to a business because they prevent competitors from confusing customers into thinking that they are buying products and services from a trusted, known source when in fact they’re not. In other words, they can be used to stop your rivals stealing your customers.

Example: You’re a developer and release a game called TrademarkVille, over which you register a trade mark. A rival developer then releases a very similar game called Trademark City. If customers purchase your rival’s game Trademark City because they wrongly conclude that you made it, or that it is actually your game TrademarkVille, then in principle you may have a trade mark infringement case.

Four key points you need to know about trade marks

  • To be fully effective, they need to be registered. This is complex, so you should take legal advice to register and keep them.
  • If you operate internationally, you may need to get foreign trade mark protection too.
  • They can last indefinitely, but need to be renewed every 10 years.
  • Practically, trade marks are helpful in two situations: (1) you can sell/assign/leverage them; and (2) you can use them to stop trade mark infringement by a rival (aka ripping you off).

I’m going to explore this last point about trade mark infringement further today, because that is what has generated all the heat recently.

Trademark infringement

As a very broad summary:

  • If you use an identical or similar trade mark to sell identical or similar goods and services to a trade mark which has already been registered,
  • then you may be infringing that registered trade mark if your trade mark creates a likelihood of confusion on the part of the public (whether that confusion is mistaken or not).

So trade mark infringement DOESN’T just mean that if your trade mark is similar to another guy’s registered trade mark, then you are automatically infringing his trade mark (or vice versa). There has to be that ‘likelihood of confusion’.

What happens in practice when one developer claims another has infringed his/her trade mark? To explain this, I’m going to look at the two examples I mentioned above: Lima Sky and Edge Games.

Lima Sky and the ‘Doodle Jump’ trade mark

Lima Sky, developer of the hit mobile game Doodle Jump, registered a US trade mark for “Doodle Jump”. But soon after Doodle Jump became a huge hit, rival games with the word ‘Doodle’ in their title began to appear (a quick look at the iOS App Store shows such games as Doodle Hockey, D.O.O.D.L.E and – slightly worryingly – Doodle Dump, among many others). Lima Sky were not happy.

But things really exploded when (according to Igor Pusenjak, founder of Lima Sky) a rival applied for a US trade mark over the phrase ‘Doodle’. Lima Sky felt it had no choice but also to apply defensively for a trade mark over ‘Doodle’. On top of that, Lima Sky’s lawyers advised it to ask Apple to take down some of the Doodle type games on its App Store. All this caused just a bit of a ruckus (more on that later) and two of the questions levelled at Lima Sky were (i) ‘how can you claim you own the word “Doodle”‘ and (ii) ‘how can you try to stop other Doodle type games?’

As to the first question, registering a trade mark doesn’t mean you own the word ‘Doodle’ or ‘Face’ or ‘Apple’ to do with as you please. It simply means that, provided you can meet the trade mark infringement test outlined above, you can use your registered trade mark to stop a rival ripping you off or even shutting you down.

As to the second question, actually I think there was some legal force in Lima Sky’s arguments:

  • The rival Doodle games were using a trade mark which is arguably ‘similar’ to Lima Sky’s (e.g. compare Doodle Hockey and Doodle Jump) for ‘similar goods and services’ (i.e. they are all casual mobile games sold on the iOS App Store).
  • There is at least some ‘likelihood of confusion on the part of the public’ because Doodle Jump is a massive hit on the App Store and customers may be fooled into thinking that a game with ‘Doodle’ in the title is either Doodle Jump itself or was at least made by Lima Sky.
  • Plus, once Lima Sky became aware of these rival Doodle games, if they didn’t try to stop them they ran the run of weakening or even losing their own trade mark.

(Obviously, that’s not to say that Lima Sky were definitely right, since trade mark cases are never this straightforward in reality.)

However, in this case Lima Sky came in for a deal of criticism from the typically vocal games industry and, as a result, appear to have withdrawn at least some of their claims. Who ends up owning the ‘Doodle’ trade mark remains to be seen.

Edge Games and the ‘Edge’ trade mark

Tim Langdell probably needs no introduction to you. Over the last few years, he spent a lot of time and money attempting to shut down seemingly any and all uses of the phrase ‘Edge’ in the games industry – from the games magazine Edge to Mobigames’ game also called Edge. In 2010, Langdell sued EA over its game Mirror’s Edge. It didn’t work out well for him: he received a stinging verdict from a US court which found that, not only was there no likelihood of confusion between his Edge trade mark and EA’s, but Langdell had actively falsified the material which he used to obtain his trade mark in the first place. Cue public embarrassment and ridicule in the games industry, plus probably a hefty legal bill.

The moral of the story: just having a trade mark doesn’t mean you and you alone control anything to do with it. And if you take your claim all the way and lose, it can have serious consequences for your business. It also means it is vital to get your trade mark registered properly in the first place.

Top tips for developers

So, hopefully that has given you an idea about what trade marks are and how they work. To round this post off, here’s some top tips for developers:

  • Do your homework: when you’re designing your game, check to see if there are already released games with similar content/names/logos to your designs. You can do some of this yourself both on the Web and (in the UK) using the IPO database here, or…
  • have a word with a friendly games lawyer: a little legal advice early on can save a lot of time and money later, especially since the process of registering and defending trade marks is complex.
  • If you have a problem with another developer misusing your trade mark (or vice versa), you must act, but think carefully first. Is the other developer just making an innocent mistake which you can talk through with them? Or are they actively trying to copy your product and take your customers such that a fight is inevitable? Can you use third parties, like Apple, to make your life easier via takedown requests? Can you enlist your player base or the games press to help?
  • BUT, don’t just be guided by legal factors alone. Think about how much a legal fight would cost, how much time you have to devote to it, what your player base or partners would think of you. It may be a result that a negotiated settlement is better than an all out fight.
  • Don’t forget your safest bet is to make sure your games are better than your rivals’. The legal steps outlined above can be a defence to attacks against your business, but only good products can grow your business and ensure your player stay with you rather than go to a rival.

One last thing: where one game copies another, it usually raises issues of copyright as well as trade mark law. So, next month, I’ll be writing about demystifying copyright and games…

About Jas Purewal

Jas Purewal is an interactive entertainment lawyer at Osborne Clarke and writer of Gamer/Law