Sins of a Solar Empire : Real-Time Strategy. Unrivalled Scale.
© 2003-2014 Ironclad Games Corporation Vancouver, BC. All rights reserved.
© 2006-2014 Stardock Entertainment

Sins of a Solar Empire's Ironclad Games Sets New Legal Precedent for Video Game Trademarks

By on June 25, 2014 1:12:45 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Blair Fraser

Join Date 10/2006
+157

Sins of a Solar Empire's Ironclad Games Sets New Legal Precedent for Video Game Trademarks

Over two years ago we embarked on an adventure that led us to stand up against a much larger company, fight for freedom of expression and ultimately set a new legal precedent. We had hoped to never talk about this publicly however recent events have convinced us that it might help our ongoing business, other developers, and the community as a whole to share some of our experience.

Ironclad Games is a game development studio of 15 employees based in Canada and is best known for its Sins of a Solar Empire series. Rebellion Developments is a video game company of approximately 250 employees based in the United Kingdom and is best known for its Sniper Elite and Alien vs. Predator series (source).

In April of 2012 we received a cease and desist order from representatives of Rebellion Developments. They asserted that our use of the word "Rebellion" in the title of our game "Sins of a Solar Empire: Rebellion" was violating their trademark. Rebellion Developments made a number of demands including destroying all our existing promotional and marketing materials, paying them money and agreeing to never talk about it.

But from our perspective, the most influential portion of the cease and desist order was the following paragraph:

"There can be only one reason for choosing the name "REBELLION" as the name of this game, and that is that it is identical to our client's name. The choice of name for your game is designed to confuse members of the public into believing that this game emanated from our client or has been endorsed by our client. Alternatively, you have chosen REBELLION as the game's name to take unfair advantage of the reputation of our client or to dilute the distinctiveness of our client's reputation. All these actions are types of passing off that the choice of REBELLION by your company is intended to perpetrate on our client's goodwill. If you are allowed to misrepresent your game in the way indicated, it will cause damage to our client's goodwill".

We'll leave it to the reader to decide if that is the only reason we could have chosen the title "Sins of a Solar Empire: Rebellion", whether or not the gaming community is so easily confused and whether or not we would have benefited from associating with Rebellion Developments' reputation.

Rebellion Developments' full complaint was issued in June and can be found here. You'll notice that the complaint is filed against Ironclad Games and Stardock. However, as we (Ironclad Games) are the owners of the Sins of a Solar Empire intellectual property we are responsible for the defense of it.

Just a month prior to receiving our cease and desist order we witnessed a high profile settlement between Mojang and Bethesda over the use of the word "Scrolls". Strongly influenced by this we decided that reaching a settlement was the best course of action. During the settlement discussions we were brought up to speed on U.S. trademark law and became convinced of the validity of our position even though there was no legal precedent set for video games. Additionally, over the course of this process the story broke and spread to various news outlets. Hundreds of posts across dozens of websites vocalized support for our case and against Rebellion Developments' actions. This further emboldened our resolve to seek favorable settlement terms despite the risk.

Our research suggested that it was very likely that Rebellion Developments would take further action against us if a settlement wasn't reached. Rebellion Developments and its founders (Chris and Jason Kingsley) have aggressively opposed or petitioned to cancel trademarks containing the word "Rebellion" and have been very successful in preventing third party use of the word "Rebellion" in conjunction with video-games in the U.S. and Europe. A quick search on the public U.S. Patent and Trademark Office website will reveal the surface of their activity within the U.S. alone.

Ultimately, the settlement discussions bore no fruit and we were soon served. For the better part of a year we moved through the legal process. While we had multiple arguments to support our case we decided to focus on a First Amendment defense. Our U.S. legal representatives at Nixon Peabody successfully argued on our behalf and obtained the following judgement best said in the judge's own words:

"...Defendants’ use of REBELLION is expressive speech and is protected under the First Amendment. Plaintiffs cannot satisfy the Rogers test; they cannot establish that REBELLION has no artistic relevance to Defendants’ computer game, or that it is explicitly misleading as to source or content. Defendants’ Motion to Dismiss is GRANTED."

The full judgement can be found here and a summary analysis of the judgement can be found here.

This judgement is an important result for anyone developing games and for the gaming community as a whole. First, it reaffirms that video games are protected by the First Amendment. Second, it establishes that artistically relevant video game names are also protected by the First Amendment so long as the name isn't explicitly misleading about the content of the game or who created it. Finally, it demonstrates that a First Amendment defense of a video game can be successfully applied to a motion to dismiss thus "preventing a chilling effect on speech". This last point is particularly important to smaller developers who cannot afford to enter a lengthy and expensive court battle. We are very proud that this judgement could help others in the future.

With this case resolved, the U.S. Patent and Trademark Office has recently allowed us to move forward on trademarking the name "Sins of a Solar Empire: Rebellion" and our Certification of Registration is forthcoming.

Finally, we wish this story had a happy ending. Last week we received notice that Rebellion Developments and the Kingsley brothers have submitted evidence in opposition to our trademark application in Canada and we have unconfirmed reports that they issued a cease and desist order to our partner in the United Kingdom. We fully expect they will continue this worldwide but so long as the countries they choose to oppose us in protect freedom of expression, we intend to continue fighting.

 

51 Replies +4
Search this post
Subscription Options


Reason for Karma (Optional)
Successfully updated karma reason!
June 25, 2014 4:14:34 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Thanks for sharing, Blair;  this was a really interesting read.  It is a sad statement on the litigiousness of our society that after picking one of the most unique and non-derivative names possible for your intellectual property, a trademark troll still figured out a way to attack you.  If companies are allowed to trademark the usage of common words and regular expressions in a language, before long it will become impossible for anyone to communicate.  I'm glad you were able to set this important precedent and hope the financial burden of this fight is not too onerous for your company.

Reason for Karma (Optional)
Successfully updated karma reason!
June 25, 2014 4:44:46 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

They what?  Oh my...

Congrats on the US win, and here's wishing you the best in the other countries.

Reason for Karma (Optional)
Successfully updated karma reason!
June 25, 2014 4:54:48 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

I didn't know "Rebellion Developments" even existed until reading this.

Gratz on the successful defense.  It scares me people, bullies really, have access to lawyers and could make up such an argument.

Reason for Karma (Optional)
Successfully updated karma reason!
June 25, 2014 5:32:07 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Terrible waste of time and energy these legal battles. Ofcourse there are situations in which a company will have to protect its trademarks, but this certainly is not one of them. I feel really sorry for you that you have to spend attention on it, but I'm also very happy that you won the case in the U.S.

 

Let's hope that this judgement will deter others from trying the same thing as the lamers from Rebellion Developments.

Reason for Karma (Optional)
Successfully updated karma reason!
June 25, 2014 5:39:32 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

I'm really glad it turned out this way. It would have been totally daft if a single common word trademarked as part of a company name somehow became off limits for anyone else in the [same] industry. Image if "Command and Conquer" (I don't know if that's trademarked, but it could well be) resulted in both "command" and "conquer" being off limits for anyone else titling a game, etc. I'm saddened that you guys [probably] had to pay the Biglaw firm mentioned for this common sense outcome to come to a rather obvious conclusion. But being IP case law now it will probably help others in the long run too.

Hopefully the press will pick up this story so the plaintiffs' [stated] concerns about their reputation will win them a dose of poetic justice.

Reason for Karma (Optional)
Successfully updated karma reason!
June 25, 2014 9:16:06 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

I'm glad common sense prevailed for you guys!

Does Rebellion Developments even know what SoSE: Rebellion is about? Do they even realise it is the third expansion (albeit standalone) to a fairly successful game?

I get fairly offended when developers use the argument of 'confusing customers' for stuff like this. Do they really think we're so stupid??

 

I'm really happy you guys stood your ground and didn't cave to the pressure! Justice definitely prevailed!

 

Reason for Karma (Optional)
Successfully updated karma reason!
June 26, 2014 12:12:06 AM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Rebellion is such a common word. I would understand if it was a unique name but usage of a common word and to try and "trademark" it is ridiculous. What next? The word "The"? I am glad you guys won.

Reason for Karma (Optional)
Successfully updated karma reason!
June 26, 2014 12:26:59 AM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Quoting Ryat,

Rebellion is such a common word. I would understand if it was a unique name but usage of a common word and to try and "trademark" it is ridiculous. What next? The word "The"? I am glad you guys won.

I've always wanted to start a company named "Our Leading Competitor" or "The Other Company" just to screw with advertising firms.

Reason for Karma (Optional)
Successfully updated karma reason!
June 26, 2014 3:26:47 AM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Post-dismissal [gaming] press coverage http://www.gameinformer.com/b/news/archive/2014/06/25/after-defeat-in-u-s-rebellion-still-doesn-t-want-developers-to-use-its-name-in-titles.aspx. This is a bit more like what I would have liked to read rather than the wish-wash from gamestop. 

 

Reason for Karma (Optional)
Successfully updated karma reason!
June 26, 2014 7:01:18 AM from Galactic Civilizations III Forums Galactic Civilizations III Forums

So they tried to sue you based on the assumption thier customers are stupid ...

Great. On more company on my blacklist.

Thank you for going to court (even if you tried to settle first ) and winning. And good luck in the other countries.

Reason for Karma (Optional)
Successfully updated karma reason!
June 26, 2014 10:04:52 AM from JoeUser Forums JoeUser Forums

Thanks for sharing this and I'm glad to hear about the ruling.  Not so happy to hear they are still at it.  Honestly, I feel like these folks fall into the patent trolling mindset and I really hope their brand is increasingly damaged by their behavior.  I can't imagine the mindset (outside of searching for a payout) of thinking anyone on earth would buy SINS on the belief that it was made by Rebellion studios... same goes for that whole "scrolls" thing as well. 

Reason for Karma (Optional)
Successfully updated karma reason!
June 26, 2014 10:37:08 AM from Galactic Civilizations III Forums Galactic Civilizations III Forums

Look how easy it would be for a consumer to confuse Ironclad's Sins of a Solar Empire with Rebellion Development's Sniper Elite:

 

(They're so similar you can hardly tell. Sniper Elite is the one on the bottom.)

I'm glad you guys won, Ironclad.

Reason for Karma (Optional)
Successfully updated karma reason!
June 26, 2014 3:10:58 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

What a bunch of clowns are they...i did not even know about their existence, though i am aware of Sniper Elite.

Reason for Karma (Optional)
Successfully updated karma reason!
June 26, 2014 6:59:40 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Congrats on the win, Blair... I can only imagine how relieved you must be.

 

It's never easy, is it?

 

...jeff

Reason for Karma (Optional)
Successfully updated karma reason!
June 26, 2014 10:23:17 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Yeah!

 

To anyone who has been sued by unreasonable people: Never give up!  Never surrender!

 

backs out of the room slowly...  

Reason for Karma (Optional)
Successfully updated karma reason!
June 26, 2014 11:33:21 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Glad Sins is winning the war in both the game arena and the legal battles. Makes me smile that patent lawyers might be reviewing this case for decades to come here in the US, and that our legal system actually stopped this round of patent trolls.

Hope you are as successful in other jurisdictions, especially in the game's native Canada.

Reason for Karma (Optional)
Successfully updated karma reason!
June 27, 2014 12:12:58 AM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Quoting GoaFan77,
Glad Sins is winning the war in both the game arena and the legal battles. Makes me smile that patent lawyers might be reviewing this case for decades to come here in the US, and that our legal system actually stopped this round of patent trolls.


It is trademark trolling, same kind of harassment as a patent troll, just brand names and graphics rather than technology (patents).

Reason for Karma (Optional)
Successfully updated karma reason!
June 27, 2014 2:07:34 AM from Galactic Civilizations III Forums Galactic Civilizations III Forums

Wow this is pathetic of Rebellion Developments

Reason for Karma (Optional)
Successfully updated karma reason!
June 27, 2014 6:36:42 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Quoting Taranabug,


Quoting Ryat, reply 7
Rebellion is such a common word. I would understand if it was a unique name but usage of a common word and to try and "trademark" it is ridiculous. What next? The word "The"? I am glad you guys won.

I've always wanted to start a company named "Our Leading Competitor" or "The Other Company" just to screw with advertising firms.

"Our Leading Competitor" would also mess with your clients and vendors.  "We've just made a strategic deal with Our Leading Competitor".  Then the Justice Department would get confused and start anti-trust investigations.  When CNBC reports it, their heads will then start spinning.

You have to do this.

Seriously, though.  Congratulations on the win.  As was mentioned before, some companies pull stuff like this in bad faith to try and protect their own trademarks, but there has to be a less dickish way of going about that.

Reason for Karma (Optional)
Successfully updated karma reason!
June 27, 2014 8:13:34 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

I didn't even know who "Rebellion Development" was until today.

Reason for Karma (Optional)
Successfully updated karma reason!
June 27, 2014 10:36:46 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Wait a minute .....so that's where you got Snipe from.

Reason for Karma (Optional)
Successfully updated karma reason!
June 28, 2014 2:10:03 AM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Did not know who Rebellion or whatever company was but I'll be sure to avoid any of their products and if able make sure others are aware of this.

Reason for Karma (Optional)
Successfully updated karma reason!
June 29, 2014 9:18:47 PM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

I'd completely forgotten about this whole mess...  It's good that common sense prevailed, but it's so stupid that you had to do this in the first place.  Given the fact that they're not giving up, it seems like they're just trying to lawyer you into submission simply because their purse is bigger than yours.

Such stupidity.  Oh well.  Good luck in the other countries.  It's just disgusting to me that they're doing this.

Reason for Karma (Optional)
Successfully updated karma reason!
June 30, 2014 5:37:47 AM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

Unfortunately, insanity has become the norm thanks to a laundry list of absurdities, like obscure references to hand waving getting patents, and costs to fight a lawsuit being in the hundreds of thousands.

 

The trolls will stay alive for a very long time most likely, lawyers run many of the major governments involved.  If anything gets fixed, it will be so guys like Apple can actually steal everyone else' shit without having to worry about lawsuits.

 

This isn't ripping on Apple, they do suck ass in a spectacular fashion on this subject, but most if not all of the smart phone guys are ripping patent holders off left and right, as well as each other.  They're keeping a great many lawyers employed between them and the patent holding companies(referred to as patent trolls whether they have a fair case or not) they're screwing.

Reason for Karma (Optional)
Successfully updated karma reason!
July 1, 2014 4:03:11 AM from Sins of a Solar Empire Forums Sins of a Solar Empire Forums

I. Am. Shocked!

Never knew this happened, so very glad Ironclad won in the US though, I've never liked Rebellion Developments after the way they deal with their games and customers, not a nice developer at all. Only purchased 1 game of theirs, AVP, but never again. Good luck to Ironclad Games!

Reason for Karma (Optional)
Successfully updated karma reason!
Stardock Forums v1.0.0.0    #108432  walnut2   Server Load Time: 00:00:00.0000329   Page Render Time: