"The law is a ass," Mr. Bumble said in Oliver Twist. And trademark law is a asshole, or at least it is to video gamers whenever it becomes a newsworthy topic. A match-three mobile puzzle game is telling a PC indie game it can't call itself by a word that dates to 1709. WTF? You've got questions, I'll try to answer them.
Candy Crush Saga's opposition to a trademark filing by The Banner Saga isn't necessarily unique, it's just the latest example of what laypeople find to be absurd: The broad "ownership" of a very common word as a trademark. Normal people don't speak in the language of trademark filings and legal briefs, so I went to a lawyer who specializes in intellectual property law and business litigation to ask some of the questions you may have. Because, as Mr. Bumble's statement implies, the law seems to defy common sense sometimes.
With the help of Greg Collins, a partner at the firm of Kercsmar & Feltus, PLLC of Scottsdale, Ariz., I've put together the following FAQ on this legal scrape, and what it means to the gaming public, with whom I will now have an imaginary one-on-one dialogue.
/tinkly sound effect
So what's the matter now?
Alright, The Banner Saga, which is in the news because it launched Jan. 14 and a lot of folks think highly of it, did what most video games do, which is apply for a trademark on its title. There's another video game out there which objects to that trademark.
What, there's another The Banner Saga out there?
No, but there's a bathtub full of games with the word "Saga" in their names. Perhaps you've heard of one of them: Candy Crush Saga.
Yeah, my mom plays that. It's nothing like The Banner Saga!
Candy Crush Saga's makers agree, actually—
Then why are they suing!
Calm down, nobody is "suing" anyone. King, which publishes Candy Crush Saga is formally objecting to the trademark application Stoic Studios filed in late December for The Banner Saga. That does not mean Stoic has to change The Banner Saga's name, nor does it mean they have to pay money to King.
So what's the point?
King—probably because they understand their huge moneymaker is itself derivative—is trying to shut down people who derive another match-3 type puzzle game and then try to fool people into thinking it's the same thing as Candy Crush Saga by cleverly using one of those words in its title, in this case either Candy or Saga. To do that, King needs to defend their trademark claim to the words "candy" and "saga" against any other video game using it. If such a game goes unchallenged, it can weaken that claim.
Right, yeah, I've read this before—"Oh, don't blame us (*waves hands*) the law forces us to be douchebags!" But what about this: If Candy Crush Saga can keep The Banner Saga from registering The Banner Saga as a trademark, doesn't that mean some bigger d-bag can make a crappy game and—literally—call it The Banner Saga, and make money off of that? How is that fair?
Greg Collins is gonna step in here. Greg?
"If somebody were to make a game and call it by the exact same name, and pass themselves off as that game, they [Stoic Studios] have common-law rights to the name that they would be able to enforce against a person or a company doing that."
Yeah, great, thanks, Greg. That still does not answer why King is entitled to trademark a simple word like "candy" or "saga" in the first place.
They don't have any special entitlement to trademark the word any more than you or I or some other person who has made and titled a video game with the word "saga." But no one else made that claim to the word with regards to video games yet, and the law doesn't forbid King from doing so, so, why not?
Well the law is stupid—
Well, yeah, I said so at the beginning of the article. But this is what happened: King made a game. King called it Candy Crush Saga. That game makes a hell of a lot of money—King made a billion in revenue in 2013 alone off all its games (many of which have Saga somewhere in their title). Now if you think King's work is derivative piffle, that's fine, but what do you think of some bottom feeder who comes in and copies that and puts some knockoff name on it and makes money that way?
I think they deserve each other.
Alright, but if it would be unfair for someone to openly copy The Banner Saga's name—to straight-up make a terrible game under that same name and charge a lot of money for it in hopes people are confused or dumb enough to to think it's actually, The Banner Saga, or a game in the same series—then isn't it also unfair if some other parasite does the same thing to Candy Crush Saga, and all of the other Sagas?
It's unfair, but what you're proposing is a law that allows ownership over a common word for a huge product category, just because someone has a big money maker and is shameless enough to claim the word.
Let's clear that up. First, this is not "ownership" of a word. The Los Angeles Lakers have registered that name as a trademark but they can't charge a fee everytime someone writes that word.
Right, yeah, I know, fair use, blah blah blah.
No, that's copyright law, but let's move on. In this case, King hasn't even "trademarked" the word, as that term is commonly misunderstood. "Registered trademark" is the more accurate term, and it's what most people think of. You know the (R) and the (TM) you see in advertisements?
Yeah, they work great as an Ironic Punchline(TM).
Cute. When you see (TM), that means someone has simply claimed that word or title as a trademark, in this case with the U.S. Patent and Trademark Office, as King has done here (and Stoic Studios, too.) After five years of continuous use, it gets registered, and that gets the (R) designation, which is more powerful. In this case, King says Candy Crush Saga(TM) entered use in 2011. So it'll go (R) in 2016.
So what's the difference?
Greg should answer this:
"In the United States, once a trademark is registered and has been used in commerce for five consecutive years, the trademark is entitled to a presumption of secondary meaning in a trademark infringement lawsuit."
"This means that, typically during the first five years of registration, if the trademark owner files an infringement lawsuit, the trademark owner has to prove that the public identifies the trademark (here "Candy") almost exclusively with the owner of the trademark. As you can imagine, this is often difficult to prove.
"For this reason, strategically it often makes sense for a trademark owner to more actively police its mark during the first five years after a registration is granted."
Thanks again, Greg.
What about that phrase "presumption of secondary meaning." WTF does that mean ...
Apple is a great example. Apple is a common word, like "candy." In common usage, "apple" often identifies a tasty fruit or a pie containing it, not an inedible computer. But the common use of that word does not allow someone today to make their own computer and market it under the "Apple," brand. Apple, Inc., has, first, a long running history of using that word as a trademark and, more importantly, that word, in the context of computers, means something altogether unique.
So Candy Crush Saga: What the hell does Candy or Saga uniquely describe?
Basically, King argues that "candy" (or "saga") describes the game itself. Others would argue it primarily describes some gameplay, visual detail or other subordinate feature. U.S. trademark law does not recognize marks that are "merely wholly descriptive." You can't trademark the word "phone" for a brand of telephone, for example. But how do you argue whether "saga" describes a product or gameplay? The literal definition of "saga' is an abstraction.
So Candy Crush Saga, nor Candy, nor Crush, nor Saga are "registered trademarks."
Nope. Not yet, anyway. And even if they were, the claim to those marks still is not ironclad. It just makes it a lot harder to challenge their claim to the word or words. The presumption of secondary meaning is not an ultimate nullifier. With "saga" (and "candy") King didn't go in, file a trademark and immediately get a stamped certificate from the U.S. government proving their ownership of all commercial use of that word in video gaming, like a deed to land proves what I own if someone challenges my property line in court. King's registration just started the clock on a claim that, after five years, becomes a lot easier for them to defend.
Greg's got something to add here:
"This is the time period when it's the hardest to bring an infringement action against someone, because you don't have a presumption that the mark has that secondary meaning. So you often see companies being aggressive in this time period, because by being aggressive they can avoid litigation.
Then let them be hardasses against the real leeches. Why is The Banner Saga involved? Can't they just cut a deal?
"Trademark owners enter into coexistence agreements all the time. These agreements set the boundaries for each side's use of their chosen trade names."
I asked a King representative this same question (more or less) in an email yesterday morning. I've received no reply.
If King has no special claim to "Saga," why don't The Banner Saga guys just sue them?
Look, I loved it when The People's Court typed out "COUNTERSUIT FILED." That meant it was on. But in the real world, I don't think Stoic Studios has the kind of legal firepower King is packing. Besides, King put a claim on the word "saga" first.
So that's what all this is? Plant the flag and might makes right?
In a single, disappointing word: Yep.
"That's one of the overarching problems with the legal process," says Greg. "Those that are able to bring litigation and assert claims, valid or not, are in a better position when they're well financed than those who are not."
I'd add that might not only makes right, the mere threat of it does, too. We saw this with the claim over the word "Edge." Its owner hadn't made anything by that name in a long time, but he was able to bully others into not making games under those names or, worse, paying a licensing fee to use it, because of legal threats and a longstanding registered trademark to the word.
What's the bottom line to me, as a gamer?
Very little. The Banner Saga is not being sued out of existence. The game will continue to be available under that name, though I think anyone is rightly suspicious of King's claim to be a benevolent dictator over the use of "saga" in a video game title, as long as that authority goes unchallenged. Despite its nice-sounding statements, King is not some steward of the public trust; it makes video games for profit and like every corporation, it will act in its interest and no one else's.
Well. This really made my head hurt and I'm actually unhappier now than I was before I started reading.
Welcome to the world of law.