Written by Andrew Segna
Edited by Jonathan Allred
On October 13, 2010, Valve, a major video game developer, announced Dota 2, its new title, for which it registered the trademark “Dota” with the USPTO on August 6, 2010. This game is a sequel to the extremely popular Defense of the Ancients (abbreviated “Dota”), a“mod” that independent videogame developers created by modifying the game Warcraft III. The trademark registration evoked concern among members of the industry and consumers, especially in light of recent overly aggressive trademark enforcement by Tim Langdell, developer and president of the video game company Edge Games. As developers and publishers acquire and assert control over trademarks, members of the video game community are concerned that mod creators and independent developers could feel intimidated and, fearing liability, not take on certain projects. Naturally, those concerned by aggressive trademark enforcement would prefer that the trademark rights not be granted in the first place. However, even where the law is not able to prevent video game companies from obtaining and enforcing trademark rights in game titles and assets, private policing by members of the video game world can prevent overly aggressive trademark enforcement from disrupting the industry.
In developing Dota 2, Valve likely seeks to build off the popularity of the original Dota. In fact, Dota was one of the most successful products to arise out of the mod community. Games journalist Michael Walbridge praised Dota as “likely the most popular and most-discussed free, non-supported game mod in the world, judging by the numbers.” Valve also seems to be building off Dota’s talent, hiring Dota developer IceFrog to head up one of Valve’s development teams. Bringing in such individuals further demonstrates Valve’s attempt to profit from the original mod’s reputation and success.
Dota’s legacy as a free and popular mod fostered opposition to what many saw as Valve’s attempt to take the phrase Dota away from the public domain. Rob Pardo, the Executive Vice President of Game Design at Blizzard Entertainment, the developer of Warcraft III, described Valve’s trademark registration as “a strange move . . . considering it's something that's been freely available to us and everyone in the Warcraft III community up to this point.” Members of Riot Games, a development team who worked on Dota and recently released a similar game called League of Legends, voiced similar concerns. In an interview with PC Gamer, Director of Community Relations for League of Legends Steve Mescon stated:
[T]he idea that one single company is taking control of the name of something that hundreds of people have contributed to is surprising. I believe [Dota] should always remain a community-owned product that modders, independent developers and game fans can continue to modify and play as often as they’d like…I had hoped that the [Dota] name would live on in perpetuity as a community project that is both free to play and free to modify and expand.
Fans of Dota have echoed Mescon’s and Pardo’s concerns. On NeoGaf, a popular video game online forum, several users criticized Valve’s trademark registration, including one who stated “[t]rying to take a name from a community for better brand awareness just feels wrong.” Many members of the gaming community see Valve’s trademark registration as an attempt to unfairly capitalize on a free game and concept that the mod community has created and the fans have supported.
Mescon, Pardo, and the NeoGaf users’ concerns about community ownership could be alleviated by establishing that the term Dota should not be one person’s trademark; rather, it should belong to the community through the public domain. Although one can dispute whether Valve, Mescon, or some other individual has the right to the trademark, the inability of the public to prevent someone from obtaining trademark rights in the term creates the possibility that someone will, in fact, obtain rights in it and restrict its use. Therefore, those who believe the community has a legal right to the term Dota can establish such a right by proving that “Dota” is not capable of trademark protection.
Opponents of trademark protection for the term Dota can claim that the term is generic and, therefore, not eligible for protection. A generic term is one that indicates a group of products of which the product in question is a member. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). The test for whether a mark has become generic is “[t]he primary significance of the registered mark to the relevant public[.]” 15 U.S.C.A. § 1064. In Glover v. Ampak, Inc , the appellant claimed that appellee’s term “White Tail” for pocket knives had become generic. 74 F.3d 57, 58 (3d Cir. 1996). The Court stated that the evidence demonstrated that purchasers of pocket knives who asked for “White Tail” knives were referring to the appellee’s specific knife, not a general class of goods. Id. at 59-60. Therefore, the term was not generic.
Regarding the term Dota, one has to examine the reaction of video game purchasers to the term “Dota.” Like purchasers of “White Tail” knives, purchasers who ask for “Dota” are referring to the specific mod. In a NeoGaf thread about Heroes of Newerth, a video game similar to Dota, commenters termed the game a “Dota clone” and made comparisons between the two products. Even the gaming press’ articles intended for the purchasing public has made this distinction. IGN reviewed League of Legends, another product similar to Dota, and stated that it is “[b]uilt using the same principles as the wildly popular Defense of the Ancients mod[.]” If video game purchasers and those interacting with the purchasers want to discuss games similar to Dota, they clearly distinguish between those products and the word Dota. These forums and articles demonstrate that the term Dota refers to a specific product, not a general genre of goods.
Even if the term Dota acquires trademark protection, developers are not necessarily completely banned from using the term. Trademark owners could grant licenses to other developers or the mod community to use their games’ names, characters, and assets in other works. Also, developers are free to refer to and make comparison to Dota in advertising, as long as it is not engaging in false advertising. See August Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 618 (7th Cir. 1995).
However, the largest flaw of these options is that many mod creators and small independent developers will not pursue them due to financial constraints. The legal costs required to have Dota declared generic or to defend a use of the term could be beyond what these small developers would be willing or able to bear. This is a major barrier for mod creators and independent developers. Mod developers often release their products for free. Independent developers, as mentioned in a previous comment, have extremely limited budgets and often do not have the ability to spend much on legal assistance. Jeff Brown, director of corporate communication for Electronic Arts (EA), explained the situation caused by these cash constraints when he stated, “A lot of small developers who are faced with [litigation over trademark] settle claims because they don’t know how, or can’t afford to fight for their rights.” The specter of lawsuits has a chilling effect on the ability of developers to use trademarked items in any respect.
Despite this bleak picture, the social norms of the members of the video game industry restricts overly aggressive trademark enforcement. Many trade communities have established normative systems that create an intellectual property system beyond what the law provides. In Eric Von Hippel and Emmanuelle Fauchart’s article Norms-Based Intellectual Property Systems: The Case of French Chefs, the authors analyze the French chef community to demonstrate the existence of norms-based intellectual property systems. 19 Org. Sci. 187 (2008). In the absence of any formal intellectual property protection for recipes, French chefs still maintain the rights to prevent exact copying of a recipe, to prevent other chefs who have been told about a recipe from passing along that information to others without permission, and to ensure that a chef who invents a recipe will always be given credit for her invention. Id. at 188. These rights exist without formal legal mechanisms because community members sanction those who violate these rights by criticizing them, lowering their position and reputation in the community, and restricting their access to valuable information. Id. at 187. Although these social norms for French chefs occur in the absence of any legal regime, “law and norms do not generally operate in separate spheres . . . they typically operate either to support or subvert each other.” Id. at 190 (quoting Arti Rai, Regulating Scientific Research: Intellectual Property Rights and the Norms of Science, 94 Nw. U. L. Rev. 77, 84 (1999)).
Intellectual property rights within the video game industry falls under an established legal structure that includes trademark law. However, just as in the French chef community, social norms can constrain the exercise of rights under trademark law in the video game community. The recent controversy over Tim Langdell’s enforcement of his trademark in the title “Edge” demonstrates the power of the community to restrain such enforcement.
Tim Langdell is the CEO of Edge Games, a video game developer whose last game release was in 1994. In 2009, video game news website FingerGaming reported that independent developer Mobigame pulled its iPhone game Edge from the Apple App Store at Langdell’s request, since Langdell claimed his company owned the trademark in the word “Edge.” In response, news website GameSetWatch claimed that Langdell had vigorously enforced his rights in “Edge” against video games and other forms of media, despite having never released a game under that name and being a board member of the International Game Developer Association (IGDA), a non profit organization that protects small developers. The article was taken down after Langdell threatened legal action.
Langdell’s actions against the small independent developer created significant backlash in the video game community. Games journalists wrote scathing articles on Langdell, including a Kotaku article that stated “ [Langdell’s] ‘studio's’ major contribution to games development is only to force actual developers to give him money if they think about using a word that dates back to the 12th century.” After Langdell complained to Apple that the game Killer Edge Racing from developer PuzzleKing infringed his trademark, other independent developers protested by publishing mock announcements of new games all incorporating the word edge. An IGDA member started an online petition to remove Langdell from the IGDA’s board and NeoGaf members promoted and signed the petition. In these protests against Langdell, few made arguments that what Langdell was doing was against the law. The aforementioned Kotaku article even stated that “someone with registered trademarks has every right to protect it[.]” Instead, these protests claimed that what Langdell was doing was socially and ethically detestable. By enforcing a trademark for a vide game that he actually was not using against a small independent developer, Langdell violated the decorum required in the video game community.
Langdell suffered significant consequences as a result of this criticism. He resigned from the board of the IGDA in August of 2009. The IGDA eventually revoked his membership in October 2010 based on the stipulation in their bylaws that membership can be revoked if “the Member has demonstrated a lack of integrity or unethical behavior.” Langdell attempted to sue EA for trademark infringement for using the word edge in EA’s game Mirror’s Edge. The District Court for the Northern District of California refused to grant Langdell a temporary injunction against EA. Edge Games, Inc. v. Electronic Arts, Inc., 2010 WL 3895533 (N.D. Cal 2010). District court judge William Alsup ordered Langdell to inform all of his licensees that his trademarks in the word edge and associated terms were cancelled. Electronic Arts responded to these victories by stating, “This settlement goes a long way in protecting the rights of independent developers.” Mobigame is currently selling Edge on the Apple App Store without any change to its name.
The video game community has created a normative structure on top of trademark law that limits the extent to which one can engage in enforcement. Like the French chef community, the video game community has identified rights which current laws do not necessarily promote. There is a strong sense that mod creators and independent developers should have more leeway in terms of utilizing established trademarks to certain ends. Gearbox Studio recently granted a small development team a “personal, non-commercial license” to create a remake of Duke Nukem 3D even though Gearbox currently controls and is creating a new Duke Nukem game. Valve has allowed a developer to remake Valve’s seminal shooter Half-Life with improved graphics and additional material. Even though EA’s lawsuit was done to protect its own intellectual property, EA framed the lawsuit in terms of protecting independent developers from overly aggressive trademark enforcement. These examples do not indicate a complete disregard of trademark law, as Activision, for example, would likely not let an independent developer release a game called Call of Duty. However, they do indicate that large publishers and developers are willing to let independent developers and mod communities have access to some trademarked assets, as long as they seek permission to use it, use it in a noncommercial way, or do not use a significant part of the protected assets.
The leeway granted to independent developers and mod creators arises from these entities’ importance as a pool of creativity and talent. These independent developers are often hired by larger entities to work on games. Mods of games add more content, including new environments or gameplay, to existing titles. Extra content makes game a better value to consumers and could foster more sales for a developer and publisher. Aggressive trademark enforcement could impose financial and work-related hardships on independent developers and mod creator, forcing them to shy away from certain projects or cease working altogether. This situation would deprive the community of much needed talent and creativity.
However, the rights created by trademark law oppose these norms. By granting entities the right to exclude, trademark rights could prevent independent developers and mod communities from having any access to protected assets. Since the aforementioned norms of the video game industry oppose the nature of trademark law, strong enforcement of these norms is necessary to overcome this discrepancy. One such enforcement mechanism is the universal opposition that arises from all parts of the industry. In the Langdell situation, video game developers, publishers, journalists, and fans all united against his actions, just as other chefs would do to someone who violated the accepted norms of the French chef community. The video game community also retains the ability to deprive transgressors of important information and opportunities, such as the IGDA removing Langdell from its board and its organization. Should the effects of aggressive enforcement reach harmful levels, larger entities in the video game community may step in and initiate a lawsuit. Although this is a legal remedy, the threat of the lawsuit grants norms further authority in the community. The video game community has restricted the rights granted by trademark in order to achieve a level of protection for mod creators and independent developers.
This normative structure will restrict the ability of Valve or any other entity to enforce the Dota trademark in a way that harms the interests of independent developer or mod creators. Granted, Valve will likely not allow a developer to take the name Dota for its own commercial product without permission. But Valve is one of many companies that have enforced the previously discussed norms and have an important stake in them. Valve has relied heavily on independent developers and mod creators to staff its projects, such as its popular multiplayer game Team Fortress 2. The developer has also benefited greatly from mods, including the original Team Fortress and its popular game Counter-Strike. In order to prevent losing access to these benefits by aggressively pursuing trademark infringement by independent developers and mod creators, Valve will likely continue to abide by the norms of the video game industry. Should the company change and begin engaging in activities like negatively affecting the original Defense of the Ancients mod or any derivative works creators by mod teams, the response of the video game community will be swift and powerful. Even if another entity acquires control of the term Dota, community norms will still apply. The community will ensure that trademarks in Dota or any other game do not jeopardize the norms it values.