ZeniMax, Mojang Settle "Scrolls" Dispute

On Monday, ZeniMax Media, parent company to Bethesda Softworks, announced that it finally reached an agreement with Minecraft developer Mojang over the use of "Scrolls."

The battle over "Scrolls" had been ongoing for quite a while. It began after the latter, smaller studio submitted applications covering a range of "Scrolls" trademarks for an upcoming game and other media. The controversy should be obvious: the word "Scrolls" is used in Bethesda's The Elder Scrolls trademarked label. ZeniMax and Bethesda argued that Mojang's use of "Scrolls" would not only conflict with their own RPG trademark, but cause consumer confusion and thus possibly damaging the Elder Scrolls franchise itself.

Last we heard, Mojang won an intern junction which allowed the studio to continue its use of "Scrolls" even after the U.S. Patent and Trademark Office saw that it would be confusing, and thus rejected the studio's U.S. trademark application. Still, it was a given that Zenimax and Bethesda would not give up despite the slight victory.

"Failing to protect a trademark could be damaging to an owner's rights," said Angela Bozzuti, an associate specializing in trademark law at Davis & Gilbert LLP in New York City, back in October 2011. "Not only could it result in actual consumer confusion, but it could also weaken the strength of the mark in the marketplace. Furthermore, once there is widespread third party use of the term 'Scrolls' as or within a longer game title, it will likely weaken Zenimax's mark and make protection difficult and limited."

Mojang offered to settle the dispute outside court in a game of Quake 3 Arena, but that never transpired. Instead, the two finally settled the matter in court seven months after Bethesda's lawyers initially sent their warning. Under the terms of the new settlement, all ownership rights to the "Scrolls" trademark will transfer to ZeniMax, and Mojang will assign to ZeniMax ownership of any pending "Scrolls" trademark applications.

While it sounds as if ZeniMax won the battle, Mojang got to keep a souvenir at least: the use of "Scrolls." ZeniMax has licensed the "Scrolls" mark to Mojang to be used solely in conjunction with its existing Scrolls digital card game and any add-on material it makes to that game. Other than that, the terms of the settlement prevents Mojang from using the Scrolls mark for any sequel to the current card game, or any other video game.

"We are pleased to have settled this matter with Mojang amicably," said Robert Altman, Chairman and CEO of ZeniMax. "The Elder Scrolls is an important brand to us, and with this settlement we were able to protect our valuable property rights while allowing Mojang to release their digital card game under the name they preferred."

"The settlement is that we give them the trademark, get to keep the name, and won't make an Elder Scrolls competitor using the name," Markus "Notch" Persson said via Twitter. "The actual document I signed was like a billion pages, so at least we know a bunch of lawyers got rich. Good, wouldn't want them to starve."

"For us this was never about a trademark, but being able to use Scrolls as the name of our game which we can," reads the Mojang website.