King Goes After Stoic for The Banner Saga Trademark

In a bit of trademark law news (this kind of dispute has been more common than I’d have believed before I started writing for this website), King (formerly King.com) is going after The Banner Saga developers Stoic for the use of the word “Saga” in the game’s title. King is the developer of titles such as “Candy Crush Saga” and “Farm Heroes Saga”, and has recently filed for trademarks for the words “Candy” and “Saga” in the US and EU (see here and here for examples). You can find King’s filed opposition here (credit goes to Polygon), with King’s reasons for the opposition to the trademark being, essentially, that they believe players might be confused by the similar titles.

While the motivation might seem ludicrous, it’s worth pointing out that enforcing a trademark is something you’re obliged to do while you own it, as pointed out by this Gamerlaw post also rehosted on Gamasutra (though the advice to developers that can’t afford the lawyer is fairly weak):

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.

That, of course, doesn’t necessarily mean that King’s opposition has merit, but is the reason King themselves offered to GamesIndustry.biz to explain their actions (though, I’ll note again that they’ve only filed for the trademark and don’t currently own it):

“King has not and is not trying to stop Banner Saga from using its name. We do not have any concerns that Banner Saga is trying build on our brand or our content. However, like any prudent company, we need to take all appropriate steps to protect our IP, both now and in the future.

“In this case, that means preserving our ability to enforce our rights in cases where other developers may try to use the Saga mark in a way which infringes our IP rights and causes player confusion. If we had not opposed Banner Saga’s trade mark application, it would be much easier for real copy cats to argue that their use of (Saga) was legitimate. This is an important issue for King because we already have a series of games where (Saga) is key to the brand which our players associate with a King game; Candy Crush Saga, Bubble Witch Saga, Pet Rescue Saga, Farm Heroes Saga and so on. All of these titles have already faced substantive trademark and copyright issues with clones.”

Speaking of statements, the Stoic team has released one for themselves, reaffirming their intention to release a sequel to the first title, with Saga in the name (and, I presume, The Banner too):

Two years ago, the three of us at Stoic set out to make an epic viking game: The Banner Saga. We did, and people loved it, so we’re making another one. We won’t make a viking saga without the word Saga, and we don’t appreciate anyone telling us we can’t.

King.com claims they’re not attempting to prevent us from using The Banner Saga, and yet their legal opposition to our trademark filing remains.

We’re humbled by the outpouring of support and honored to have others stand with us for the right to their own Saga. We just want to make great games.

We’ll keep you updated on future developments of this story.

Update: While not directly linked to the news, game developer Matthew Cox is pointing out that his deals with King have been less than pleasant in the past, as they contracted a developer to copy Scamperghost, a mobile game he developed with Nick Bray, after they decided to not license it to them:

We were in talks with Lars Jörnow at King.com to license our Scamperghost game. Before the deal was closed (and certainly before any contracts were signed) MaxGames.com made a better offer so we thanked King for considering our game and politely ended our negotiations.

King.com (giant company) retaliated against us (two young indie devs) by quickly making a direct clone of our game and almost released it before us! We only got ours out sooner because a friend close with the company contacted us privately to warn us in advance…