Trademark lawsuits in games are hardly a new phenomenon. From Scrolls to Praey For the Gods, the industry is no stranger to disputes over titles in recent years. However, it is a rare thing indeed when a world-famous metal band such as Iron Maiden (of whom your author is an ardent fan) sues a game publisher for trademark infringement. Per a complaint filed in a federal court in California last week, the band is suing publisher 3D Realms Entertainment over the title of Ion Maiden, a game it is publishing which is developed by Voidpont, LLC. While the case is an interesting novelty, there are several legal lessons game developers can learn from the situation in order to protect their assets and themselves. As you may imagine, being a video game lawyer and a metalhead, I am hardly at a loss for words on the subject.
Brief Overview of the Case
The point of this article is not to argue the merits of the case. But because there are aspects of it which are instructive as far as how to develop or publish a game without running afoul of trademark law, it would be useful to start with a summary. Iron Maiden’s main claim is that 3D Realms’ use of the name Ion Maiden creates a likelihood of confusion for consumers by leading them to erroneously associate the game with the band, and therefore 3D Realms is infringing on their trademarks. Different federal jurisdictions have their own precedents and tests for how likelihood of confusion is determined, but they all have some variation of a multi-factor test. Iron Maiden contends that the Ion Maiden logo is similar to the band’s logo in style (including a “steel cut” font), the names sound similar when spoken aloud, and they look similar when read. The band also points to some of the game’s content as evidence of the intent to confuse potential customers into believing the game is somehow affiliated with them. They further argue that forum posts, articles covering the game, and comments on those articles in which authors connect the game with the band show that there actually is confusion among potential customers.
What Does This Mean for Game Developers?
There are several important takeaways from this case:
1. Carefully Select and Register your Trademarks.
Before or during development (preferably before), do your due diligence to make sure that your game titles and studio names are distinctive enough so as not to be confused with other trademarks and brand names. This is especially true of trademarks that have been registered with the US Patent and Trademark Office, which receive additional protections including imposing statutory damages on infringers. Another thing to be aware of when thinking about trademarks is that the legal protections for a registered mark are not always limited to only the specific goods or services for which the owner has received the registration. One of Iron Maiden’s arguments is that their brand is so well-known throughout the entire world and the name “Iron Maiden” is so readily-associated with them that the band name is a famous* enough mark to warrant the same protection for use in video games as they have for music–even though they do not yet have the federal registration for games**. Trademarks are a very complicated and nuanced subject, so proceed with great caution if your titles or business names are similar to those of any well-known brands.
The other side of trademark law is that developers and publishers, as owners of trademarks for game titles and their business names, are able to assert their own trademark rights. If you find that someone else in the game industry is using your brand name or any of your game titles in a way which is likely to lead to confusion among consumers as to which companies are associated with which products, you could be within your rights to try and stop them from doing so. Registering your own trademarks with the US Patent and Trademark Office has many worthwhile advantages, including granting you nationwide use of that mark and the right to sue an infringer for certain damages and costs. When considering trademark searches and registrations, it is highly recommended that you work with an attorney who is experienced in the trademark field and has at least some familiarity with the game industry.
2. Be Mindful of Your Dealings with Your Publisher.
If you have a publisher, as Voidpoint does, you (hopefully) signed a contract which comprehensively lays out your respective rights and obligations. You are likely to have warranted to your publisher that nothing you produce for the game and in relation to it violates the intellectual property rights of any third parties. For example, you guarantee that none of your game assets are plagiarized, or that your chosen game title (under which the publisher will market and sell your game) is not similar enough to one that already exists to be considered infringing and expose them to liability. If the publisher finds out that this warranty is broken, you may be liable to them for a breach of contract.
Another potential provision to keep in mind as you develop and shop your game to publishers is Indemnity. Indemnity in this context commonly means that if the publisher has to defend against any lawsuits arising out of a developer’s breach of any of the warranties (including the above Warranty of non-infringement), then the developer is responsible for paying the litigation costs and damages the publisher incurs in that case. Even if the publisher is the only named defendant and is footing the bill to defend against the suit upfront (as they are in the Iron Maiden case), that does not necessarily mean the developer is running free.
3. When in Doubt, Err on the Side of Caution.
It is not uncommon for developers to want to work references to movies, books, or music into their games or game titles. At the same time, your title should be thoroughly-researched so that you know the level of risk if you continue using it. Intentionally making your title similar to someone else’s trademark for the sake of increased publicity is asking if you can play with madness, to be sure. But even if you don’t have that intention, the title can still be considered too similar to another and thus it may still infringe. Iron Maiden’s legal arguments are not limited to the defendant’s intent; they also point to the similarities in the way Iron Maiden and Ion Maiden look and sound to consumers, and to evidence of consumers actually believing the game is somehow affiliated with the band. Even if your game’s content truly has nothing to do with the party whose mark yours is being compared to, that does not mean your mark is not confusingly similar to theirs. In this case, the game’s content is being mentioned by the band to show the intent to confuse, which is only one factor in the trademark infringement analysis. If it is important to you creatively to use a particular name which you know or suspect is similar to another, that is another context in which a thorough trademark search and counseling from a professional can help you avert a legal controversy.
At this point, the case will likely be settled and 3D Realms’ lawyers will convince them to change the title rather than waste years in litigation. Even so, the publisher will have to pay legal fees to defend against the suit and then Voidpoint might be forced to indemnify them. All of this could have been prevented—if not at the time the game was named then at the time when the band sent 3D Realms a cease-and-desist letter warning them that continuing to use the name Ion Maiden would result in legal action taken against them. When it comes to the intersection of law and game development, remember that prevention today is the best way to protect your assets tomorrow. The legal issues at hand might seem daunting, but keeping the above points in mind will hopefully prevent you from having to fear the dark outcome and expense of a trademark infringement lawsuit.
*”Famous mark” is a legal term of art which means a trademark that is very well-known among the consuming public in the US. For example, the company Google does not have a registered trademark for selling swords. But because the name Google has been adjudicated to be a famous trademark (the mention of which causes someone to immediately think of that company), they could potentially have the right to stop a business which sells swords from putting Google or something similar enough to mislead consumers into their name. Google may also have the right to sue that business for trademark infringement and dilution.
**As of this writing, Iron Maiden’s application for a registered trademark for the sale of games is pending. The US Patent and Trademark Office has found that there are no conflicting marks already registered in that class of goods, and members of the public will have the opportunity to oppose the registration if they would be damaged by it for a certain time period. Assuming there is no opposition, the band will be granted a registered trademark for Iron Maiden for the sale of games by the fall of this year.