Valve is making a sequel to the hit Defense of the Ancients (DotA) and, naturally, wants to trademark the word mark for this game. Normally a simple affair, except Valve did not make the original. Neither did Blizzard. DotA is a community developed game mod and based on Blizzard’s Warcraft 3. So who should own the mark?

Blizzard developed and published Warcraft 3, which community members used to make the game mod Defense of the Ancients. Blizzard has now tapped Valve with the development of a sequel. To further muddy the waters, there was no centralized development in the DotA community with multiple variations on the theme. The original designers were not involved in what has ultimately become the most popular rendition. Riot Games, comprised of a collation of DotA designers, has sought to challenge Valve’s registration. Blizzard is curiously silent; neither claiming it for themselves nor challenging Valve’s registration (Blizzard’s EULA did not require users to assign their trademarks in the derivative works based on Blizzard’s tools).

This brings to mind the Linux trademark debacle. Linux creator Linus Torvalds did not register the LINUX mark, believing that use of the trademark ought to follow the open source software community’s ideals on copyright, of sharing in their mandatory licensing of code. When an enterprising Bostonian, William R. Della Croce Jr., tried to register the mark and hold the Linux community hostage over use of the mark, the community and Torvalds took action. Eventually settling the case, Torvalds acquired the mark and has since allowed a royalty free sublicense of the mark in accordance with the open source software philosophy.

Linux is distinguishable from DotA in that Linux at least had a central authority for its initial use and development. DotA’s ad hoc distributed community may face an uphill battle in making the same claim. While the original map maker, known only by his handle “Eul,” may be the first user of the DotA mark, it was the subsequent community team, led by Steve “Guinsoo” Feak and Steve “Pendragon” Mescon, who popularized the most successful version, DotA Allstars. Feak and Mescon have since joined Riot Games, developing the DotA style game League of Legends. Valve has also hired on the custodian of the Allstars mod for the last four years, “Icefrog,” so Valve is not short on community members associated with the mod. Though Feak & Mescon might be able to claim priority in use of the mark, Riot Games may not be as successful. This wrinkle in the timeline of the mark’s use could have been easily cured if Blizzard had simply stepped up and asserted ownership.

DotA is not the first mod turned commercial product at Valve. The most famous mod turned retail product is of course Counterstrike, developed by two young college students in 1999, Minh Le and Jesse Cliffe. Here, the acquisition of the mark was simplified by the fact that rather than a large development team, Le and Cliffe were the only two developers involved and were both hired on by Valve to continue the game’s development, and assigned the rights to the game.

Blizzard may have made a mistake in not inserting an assignment of marks clause in the EULA/TOS of their game and/or tools that the community used to develop the game. If Valve or Riot Games are successful in registering the mark, then they will be able to hold onto the valuable mark for all future development, further complicating (or perhaps simplifying) the licensing of future sequels. Blizzard claims that they wanted to refrain for registering the trademark and “leave” it free for the community to use and develop on its own. Even so, Blizzard could have followed Torvalds in acquiring the mark and allowing it to be freely used by the community.

Community developed games, especially when based on tools/sources owned by another company, will always run the risk of trademark claims which could jeopardize the future of the game. However the USPTO sides on the DotA mark, developers are forewarned to speak to legal counsel on the potential risks of failing to register their mark early.