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.