Decoding Blizzard and Valve's trademark dispute: who really owns DOTA?

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This week, it was finally revealed that Blizzard and Riot are both disputing Valve's attempts to trademark DOTA in the US ahead of the eventual launch of DOTA 2. The case is fascinating/horrifying for a bunch of reasons:

1) It demonstrates how grey the area of ownership of copyright and materials can be when it comes to mods and total conversions.

2) the documentation we've got access to gives a good detail on how Blizzard view themselves and their ownership of community content

3) It may have an interesting knock-on effect on the validity of EULAs.

4) The result of the dispute may have a knock on effect on the DOTA mod itself

5) it's like watching your mom and dad go through the early stages of a trial separation.

In order to make sense of what's going on I've been digging through Blizzard's filed trademark objection, and what it might mean for DOTA and community content in the long run. To make it clear: the case is just about the trademark for the name DOTA.

The first point to make: at no point do Blizzard explicitly state that they wish to own the DOTA trademark. In objecting they're not at present, trying to trademark DOTA for themselves. However, they believe that the terms DotA, Dota: DOTA and Defense of the Ancients are all part of their Warcraft 3 business. Much of their objection hinges on one word: Ancients.

So: to the legal stuff!

The first paragraph gets right to the point, doing a good job of summing up Blizzard's objections. Blizzard say DOTA is a varient of Warcraft 3, and has been exclusively associated with Blizzard games, built on the mechanics of Warcraft 3, using Warcraft 3 art, and starring Warcraft 3 characters. Open and shut case, right?

Paragraph 1: “By this Opposition, Blizzard seeks to prevent registration by its competitor Valve Corporation ("Valve") of a trademark, DOTA, that for more than seven years has been used exclusively by Blizzard and its fan community, under license from Blizzard. By virtue of that use, the DOTA mark has become firmly associated in the mind of consumers with Blizzard, including to signify a highly popular scenario or variant of one of Blizzard's best-selling computer games, Warcraft III. Over the past seven years, the mark DOTA has been used exclusively in connection with Blizzard and its products, namely Warcraft III. Most notably, DOTA has been used as the popular name of a Warcraft III software "mod" file that has been distributed, marketed, and promoted by Blizzard and its fans (under license from Blizzard); that utilizes and is built upon the 1 Warcraft III game engine, interface, and gameplay mechanics; that is comprised of Warcraft III characters, items, spells, artwork, textures, and color palates; that can be played only using Warcraft III software and via Blizzard's online service Battle.net ; and whose name (DOTA, an acronym for "Defense of the Ancients") is a reference to Warcraft III characters known as the Ancients."

But wait! There's more. Paragraph 2 says Valve have had nothing to do with DOTA, and if they were to be granted it, consumers would believe that Valve's products (i.e. DOTA 2) are associated with Blizzard.

In contrast to Blizzard, Applicant Valve Corporation ("Valve") has never used the mark DOTA in connection with any product or service that currently is available to the public. By attempting to register the mark DOTA, Valve seeks to appropriate the more than seven years of goodwill that Blizzard has developed in the mark DOTA and in its Warcraft III computer game and take for itself a name that has come to signify the product of years of time and energy expended by Blizzard and by fans of Warcraft III. Valve has no right to the registration it seeks. If such registration is issued, it not only will damage Blizzard, but also the legions of Blizzard fans that have worked for years with Blizzard and its products, including by causing consumers to falsely believe that Valve's products are affiliated, sponsored or endorsed by Blizzard and are related or connected to Warcraft III.

Hmm. This is where it gets tricky, and where I think Valve will be able to push back. Valve certainly haven't used the mark DOTA formally in a commercial game, yet. But, in Icefrog leading development of DOTA 2, they have a developer who helped create and improve DOTA on their books. Valve Corp may not have created DOTA, but, they employ someone who did.

The next question is does Icefrog own DOTA? According to Blizzard and their EULA; probably not. The key section is paragraph 8 and 9 and 10, where Blizzard explain the terms of their EULA and how it relates to mods and maps created using the bundled World Editor.

Paragraph 8: Use of the World Editor (and Warcraft III) is subject to the terms of an End User License Agreement ("EULA") between Blizzard and users of Warcraft III. The

EULA sets forth the relative rights and responsibilities of the parties regarding their use of Warcraft III and the World Editor. The EULA is displayed to users during the installation of Warcraft III and the World Editor. All users of Warcraft III and the World Editor must consent to the EULA by clicking on a button labeled "Accept." If the user declines to assent, he or she may click a button labeled "Decline," at which point the installation will terminate, denying access to the user. If a user declines to accept the EULA, he or she may request and obtain a full refund from Blizzard of the purchase price.

We should totally test that refund policy at some point.

Paragraph 9: Pursuant to the EULA, Blizzard grants to the user, subject to the terms of the EULA, a limited, non-exclusive license to install Warcraft III and the World Editor on his or her computer, use the game for noncommercial entertainment purposes, and distribute Warcraft III mods to other users via the Battle.net game service. Warcraft III's EULA clearly specifies that all underlying intellectual property rights in and to Warcraft III are owned by Blizzard: "All title, ownership rights, and intellectual property rights in and to the Program and any and all copies thereof (including, but not limited to, any titles, computer code, themes, objects, characters, character names, stories, dialog, catch phrases, locations, concepts, artwork, animations, sounds, musical compositions, audiovisual effects, methods of operation, moral rights, any related documentation, and `applets' incorporated into the Program) are owned by Blizzard or its licensors."

So: you're fine to do with the Warcraft III engine what you want as long as you a) distribute your mod over Battle.net, and you make no claim of ownership of the titles, computer code, themes, objects, characters, character names, stories, dialogue...

Pro-tip for mod-makers: if you have dreams of potential commercial success, never ever use anything from the fiction of the game as the name of your mod.

Paragraph 10: The EULA prohibits the use of Warcraft III or the World Editor for any commercial purpose without Blizzard's prior written consent. In addition, the EULA restricts any distribution of "New Materials [defined as modifications of Warcraft III created using the World Editor] on a stand-alone basis... through any and all distribution channels, including, but not limited to, retail sales and on-line electronic distribution without the express written consent of Blizzard."

Pro-tip #2: you're probably best not making a mod after all.

The next section explains how mods are made, and how DOTA is distributed: i.e. it is a map for Warcraft 3 and you play it on Battle.net, and it is constructed entirely from Warcraft 3 art and code. And that if you're making a mod with the Warcraft 3 engine, you're making a mod under the terms of the EULA.

I think that if Blizzard had stopped at this point, I'd have said job done, move away Valve. But they start making odd claims that I don't think stack up. For instance: they try and claim that by promoting DOTA in-game and at their events, they therefore own the trademark. And that because Blizzard have already licensed DOTA to other companies, they have ownership of the DOTA trademark.

Paragraph 16: Since at least 2003, Blizzard has used the DOTA Marks extensively and consistently in interstate commerce. Blizzard has distributed in commerce products bearing the DOTA Marks, including the DotA Mods. For example, Blizzard has offered for download the DotA Mods directly via the Battle.net network and/or the Blizzard.com and/or Warcraft.com websites. Blizzard also has regularly and consistently advertised and promoted the DotA Mods via the Battle.net network and/or the Blizzard.com and/or Warcraft.com websites. Blizzard also has regularly and consistently advertised and promoted the DotA Mods at its annual convention, Blizzcon, at gaming events and conventions, and in the gaming and mainstream media.

I think the key word here is consistently: if this goes to arbitration I'd expect Valve to make Blizzard show how and where they've advertised DOTA on their official sites, and in-game. In five minutes messing about with archive.org, for instance, the warcraft.com domain mostly re-directed to the worldofwarcraft.com trial, or blizzard.com. However, it is true that Blizzard have hosted DOTA tournaments at Blizzcon - and have licensed DOTA to e-sports broadcasters as early as 2005. And promoting and/or hosting something doesn't necessarily mean ownership, even if the status of DOTA as a mod of Warcraft means there's a grey area.

The next section of the document relates to how Blizzard are already licensing the DOTA trademark to external organisations. And it starts to get really, really interesting.

Paragraph 17: Blizzard has licensed various third parties and third party websites, including but not limited to the websites www.dota-allstars.com, www.playdota.com, and www.getdota.com , to distribute and promote the DotA Mods, and to use the DOTA Marks in connection with such distribution and promotion, subject to and consistent with the terms of the Warcraft III EULA. To the extent that the owners of any of these websites have used the DOTA Marks in commerce, they have done so pursuant to license with the Blizzard and for the benefit of Blizzard.

i.e.: all those DOTA sites? They're under license from Blizzard, too. I do wonder if that's an implied license, or something you'd have to apply for via legal@blizzard.com.

We interrupt these proceedings for a brief musical interlude. Dear Mr Judge man. Have you ever heard of popular modern beat combo Basshunter? He's a Blizzard licensee. Apparently.

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