Say Good-bye to "Doodle Dash!" Thanks to PlayFirst, Inc.

General (non-technical) Off-Topic
#1

PlayFirst, Inc. emailed Apple–note, didn’t go to ME first–stating that the name “Doodle Dash!” infringes on their trademark. I guess they actually have the word DASH trademarked.

They own games such as: Monster Dash, Diner Dash, and apparently a plethora of other “something Dash” games.

They also claim that the name of my game interferes with their games because the naming convention is similar to their games.

But let’s be real here. I’m not going to fight them on this. I wrote a–somewhat disgruntled tone–email asking them to re-consider, but I’m 99.9% sure they won’t. They’re a company with legal resources, I don’t have those resources.

So everyone say good-bye to “Doodle Dash!” as you know it. Once this thing settles and the final “verdict” comes out and Doodle Dash! is taken down, I’ll most likely re-release it as a new title… but I’ll have to make some significant changes or old players probably won’t want to re-download (or re-pay) for the same thing.

The funny thing is, I thought if anything, someone would give me flak about the word “Doodle”, so this was a little surprising… as well as highly disappointing.

–> BEGIN RANT

Is it really necessary for a company to pick on an indie developer like this. I mean, if I put the PlayFirst logo in my games, and REALLY copied their stuff, I’d understand. But I used an ENGLISH word in the title of my app, which is VERY fitting for my game.

The dictionary defines the word Dash like so:

“to run or travel somewhere in a great hurry”

And that’s exactly what the little character does in my game–very fitting. You can see I had no intentions on infringing any copyrights or ripping off any ideas. The game them is “Doodle”, INSPIRED by other Doodle-style games, but not copied in any way.

As far as I’m concerned, it’s a successful company picking on an indie developer because they have the legal resources to do so. I doubt Doodle Dash! is really affecting their sales, or their brand all that much.

I’m pretty steamed, so if read this all, thanks for “listening” to my rant.

–> END RANT

Just thought I’d let you all know about what was going on! I’ll almost make a blog post for those interested, and keep this thread updated with the latest news on the topic.

Take care!

Jonathan Beebe
http://jonbeebe.tumblr.com/

Beebe Games
http://beebegamesonline.appspot.com/
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#2

Steams blown off now. Not that angry about it anymore, just live and learn. Will be an opportunity to make the game way better and re-release as a new game.

Lesson to be learned: Be more careful when it comes to trademarks, even if you’re dealing with plain old english words (such as “Dash”). [import]uid: 7849 topic_id: 3317 reply_id: 9909[/import]

#3

Wow that sucks. Just because now we have to look up a name and their associated trademark owner? Just more research when you just want to make a game. If I ever release anything for retail it worries me. What if you build recognition and a brand around your name, or product, then have to have it taken down? Glad you got over it, you are a better person then I as I would still be stewing.

What would really irk me is if they released a game, after yours is taken down, under a similar title and other people flock to it thinking it was your game. You did all the hard work to build an audience and they can just take it. Now I’m starting to get miffed. [import]uid: 10832 topic_id: 3317 reply_id: 9911[/import]

#4

I feel your pain. You might wanna look up Tim Langdell and his EDGE shenanigans.

You can look at the aftermath here:

http://www.neogaf.com/forum/showthread.php?t=409947

You’ll find detailed analysis, plus all the backstory should you be interested (it’s juicy stuff!).

Basically Mr. Langdell was a trademark troll, bullying people with his EDGE trademarks. Got the EDGE game removed from the appstore, SoulEdge renamed to SoulCalibur among other things. Until he decided it was a good idea to pull that crap to EA with Mirror’s Edge. Long story short he lost all the trademarks and now may face fraud charges.

While not exactly the same situation, maybe point them to the Langdell case, which sets precedent that you can’t sue for trademark infringement for one English word like “Edge” or “Dash” when the products are nothing alike.

Good luck. [import]uid: 10835 topic_id: 3317 reply_id: 9913[/import]

#5

scontapay: My suggestion to ease your worries (and a route I’m going to start taking as well), is to go to this website to search for existing trademarks when you come up with your app/game name:

http://tess2.uspto.gov/

Then, once you’re settled on one, you can start saving up the $375 (give or take $100) to get your own trademark registered.

To save money you could give each app some time to see how it does, and slowly register your favorite apps that you own… or you can just register them all to make sure they’re all protected. [import]uid: 7849 topic_id: 3317 reply_id: 9914[/import]

#6

IgnacioIturra: Wow! Thanks for bringing that to my attention! [import]uid: 7849 topic_id: 3317 reply_id: 9915[/import]

#7

No problem. If you’re feeling thankful maybe you could take a look at my topic in the new user forum and help a noob coder out :wink:
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#8

Sure, I had a look, posted a question for you. [import]uid: 7849 topic_id: 3317 reply_id: 9918[/import]

#9

This is outright PATHETIC. How can anybody “trademark” one English word… how does PlayFirst somehow “own” the word “Dash”? You see, if I made any profit from a game like Doodle Dash, I would fight them on it… you could hire one lawyer, and probably not WIN, but you’d give them a run for their money and make them waste their own time and money…

In the meantime, I’d just re-release the game under another name. :slight_smile:

I would fight this, but if you’re ready to move on, that’s perhaps a better option. I just detest when a “big company” outright tramples on the rights of a small indie developer, for NO other reason that the COINCIDENTAL use of the word “Dash”.

Brent
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#10

@IgnisDesign: I really like the case that IgnacioIturra brought up, and I did some reading on Wikipedia and I really don’t think I did anything wrong, since I use the word “Dash” descriptively (my use for it matches the definition of the term EXACTLY).

I was pretty angry when it first happened, but after giving it a lot of thought, I don’t want to let all the negativity get to me. I already removed the game from sale and am waiting for response from both Apple and Playfirst, so I’m just waiting on that.

I’m planning on eventually re-designing the game a little, renaming, and re-releasing it later on, but for the time being, I need to roll with the punches and stay focused on the things I’m doing. I’ll definitely post it on my blog, on twitter, etc. and maybe give them some bad press (because it seems like they are just picking on me because I’m an indie developer who has a game that might be placed higher in the same search results as many of their games, because of the fact that they own a trademark on the word “Dash”).

Even though, from my understanding, you can’t enforce trademark on a one-word English term if it is being used descriptively, I’m going to be the better person in the matter and just try to avoid this altogether in the future by first making sure none of the words in my title are trademarked, and also register trademarks for the games that might potentially have conflict.

Thanks for reading my rant from earlier though, lol. [import]uid: 7849 topic_id: 3317 reply_id: 9923[/import]

#11

Well, I see your point… I guess it’s the Sicilian blood in me that makes me want to pick a good ol’-fashioned fight. :slight_smile:

But from your understanding, it’s more the “combination” of words rather than the specific word “Dash”? For example, Doodle DASH, Diner DASH, etc. Perhaps you could have named it simply “Dash!” and PlayFirst would have no case?

The reason I’m asking is because both of my primary game ideas (one of which I’m now building in Corona) uses a ONE-word name… something that I feel can’t legally be questioned by another app which might use it, because I’m using it solely as the English word… but moreso, this particular word has multiple meanings in English, not just one. (Sorry I don’t want to divulge the name; my game is still a work much in progress).

Brent

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#12

@IgnisDesign,

I almost think the opposite would be true. They have a trademark for the word “DASH”, all caps.

Jon,

If you used just “DASH”, they could complain. But, because you are using a combination of words that they do not have a trademark for, you should be in the clear.

Edit: Also, check the trademark approval date. You may have had this app in the store before the trademark was approved. In that case you should be grandfathered in regardless of their mark. [import]uid: 10248 topic_id: 3317 reply_id: 9927[/import]

#13

@jonbeebe: Sorry to hear abour your trade mark issue. I had a similar issue recently with a domain name I owned the dot com of. A large organization owned the dot org and threatened to take legal action if I did not hand over the domain in 14 days. I considered the domain to be generic however I assumed as the letter had come from a reputable trade mark attorney that they must have a genuine case. I couldn’t afford to fight so cheekily asked for £500 and they jumped at the offer. It may be worth seeking free legal advice off a trade mark attorney if you think there is any doubt.

I wonder where we need to check trade marks - every trade mark region in the world where the game could potentially be sold?

I have chosen a game name for my soon to be released game based on what domain name was not taken - the assumption being that it is safer than one where the domain name is taken. However I am still not 100% sure it is completely safe to use from a copyright perspective. I have checked UK and US tradmarks and it is not trade marked. However it is way too expensive to trade mark every game name for all geographical regions - unless of course the game sells millions of copies. [import]uid: 7863 topic_id: 3317 reply_id: 9929[/import]

#14

Trademark law is weird. If you own a trademark you must defend it, or you can lose it.

Almost every game Playfirst makes has the word “Dash” in the title. The success of that company is practically riding on that one word, so, while it seems unfair that they’re picking on an indie game developer, it’s not too surprising you heard from them. Your game could be nothing like any of theirs, but they can argue that your game dilutes the perceived value of their trademark.

I think the lesson for everyone who wants to make money with their own games is to spend a little time Googling and browsing the App store with the name you have in mind BEFORE you commit to it. If you find another game with a similar title you’d be doing yourself a favor to come up with a different name.

There’s nothing particularly inspired about the names “Angry Birds” or “Cut the Rope”, but they are original titles attached to very polished games. So make a great game, come up with a mediocre, but original title (NOT “Cut the Angry Bird’s Rope”) and you will hopefully have the enviable problem of having to defend your own trademark someday!
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#15

Jonathan,

I feel for you. Regards TM’s, I think it comes down to if you have enough money to fight them in court. When you search the TM databases for the word DASH, a LOT come up. So I am wondering who really has a case in this. Anyway, mostlikely it isn’t worth fighting them. I will make sure, that my games have mockup words as names or somethign similar.

Cheers
Michael [import]uid: 5712 topic_id: 3317 reply_id: 9938[/import]

#16

I considered the domain to be generic however I assumed as the letter had come from a reputable trade mark attorney that they must have a genuine case. I couldn’t afford to fight so cheekily asked for £500 and they jumped at the offer.

Companies with legal departments try to scare people into giving up their domain names all the time – even when they have ZERO chance of winning it in a court battle.

Also, turning around and asking for money for a domain name that someone says is “theirs” can bite you in the butt. They can use the fact that you asked for money to be proof that you registered the name “in bad faith” and get it yanked from you via a WIPO decision – even if they have no legal recourse otherwise.

Several years ago I got a letter from Nintendo’s legal department demanding that I turn over a domain that was the name of a Pokemon character. However, it was also a generic word and had been for hundreds of years, so I told them to kiss off. Never heard from them again.

In many cases the first contact from a lawyer is just a bullying tactic to see if they can get what they want quickly and cheaply.

Jay
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#17

Thanks for all your support and advice everyone. I’ve learned my lesson, and I’ve blogged about some tips that might help everyone else avoid having issues themselves:

http://jonbeebe.tumblr.com/post/1477304778/avoiding-trademark-issues-in-the-app-store

Tweet it if you like it :slight_smile: [import]uid: 7849 topic_id: 3317 reply_id: 10066[/import]

#18

Jon

Sorry to hear, but I wouldnt give up on this.

Firstly, Doodle Dash, thats your Trade Mark and Copyright. You dont need to register the TM (thats what the R is for) but it does limit your recourse on ownership. This would be very limited though.

Dash is descriptive and if your game, logo and style do not match their games then you can rightly claim you are not interfering or trading off of their games. Its a similar argument to claiming the word racing and suing anyone using that in their game name.

Dash is also the name of a symbol on a keyboard / font / English Language.

You can also inform Apple that the AppStore has titles link “SpongeBob Diner Dash” and “Diner Dash < PlayFirst”, “Monster Dash” and many other uses of the term.

There is also a precedence in the term Dash, as used in video games in “Boulder Dash” which was well before PlayFirst (also on the app store).

You can also point to the Trade Mark Database and the many numerous uses of the word dash and that PlayFirst have failed to enforce their Trademark, if they could at all. With many names already using Dash in their titles it would invalidate the claim to the word alone as they were registered before PlayFirst.

There is also a Trade Mark for Doodle Dash, owned by “FUNFARE LLC” and filed in Nov 2008. This shows PlayFirst have not opposed that name.

There is also the Epic games story as mentioned above.

So any reply to Apple or PlayFirst should be direct and demanding. You are not trading off their name and you are not infringing their Trade Mark. They have failed to enforce the Trade Mark and the legality of it is questionable outside of the actual game names they have also registered.

If you get no joy there I would contact TouchArcade, Gizmodo, Engadget and tell your story. Get some free PR if anything. Not against Apple but PlayFirst. [import]uid: 5354 topic_id: 3317 reply_id: 10082[/import]

#19

Let me share our own experience with “trademark infringement”…

x-pressive.com vs. Tetris Inc. :

A couple of years ago, we published a Tetris clone called “Arcatris”. It was the time where the Tetris Inc. grabbed the original Tetris trademark and tried to agressively wipe away any competitors on the market. Their goal was clearly to sell the ONLY Tetris-like game from the market.

We sold the game on CD-ROM and via ShareIt.com for download. Tetris Inc. emailed them (before they emailed us) and ShareIt.com removed the game from the catalog. A few days later, Tetris Inc. emailed us about the “trademark infringement”, hoping that we will be shiver with fear not to be sued. What they couldn’t know is that we had ordered a general lawyer report about copyright infringement a few months ago just to know what is allowed -and what not. So we KNEW our rights very well and were well prepared for a counter attack.

I don’t have their email at hand right now, but basically they stated that:

  • They own all rights to the name “Tetris”

  • The affix “tris” may not be used

  • The layout of the bricks would be a registered trademark

  • The genre would be a registered trademark

As it turned out, every single “fact” (except that they registered the name “Tetris”) was a simple lie.

We replied that we are not impressed in any way, because we

  • Don’t use the name “Tetris” anywhere

  • The affix “tris” cannot be protected (at least not by german copyright law which is where our company is located)

  • Copyright only applies for original, not general artwork. This means we shall not use any of the game’s original graphics but the brick layout itself cannot be a registered trademark. Additionally, our game featured more brick shapes than the original ones.

  • A game genre cannot be copyrighted. If this would be true, you can imagine that there wouldn’t be any games left on the market at all.

  • Then we let them know that we are awaiting copies of the trademark registration process that proof all those “facts” within the next ten working days. If they hesitate to send us any written evidence, we will absolutely ignore their request (there was NO single official document attached to their mail that proved what they wrote -which was strange enough).

This is what we let them know (in a more detailed way as written here) -and we never heard from them again and continued distribution of our game. Well, nice try anyway…

In the “DASH” case stated above, you could order a lawyer expertise or just look if the word “DASH” is really a registered trademark. If so, it should appear in the official trademark index, which can be inspected (at least here in Germany). Or simply write them back, demanding copies of the official documents that proof that they really registered the name.

This won’t help you, however, if Apple rejects your app from their store. They are allowed to do so -even if you are justified here. So I think it would not pay off to insist in this case. Your (or our) problem is that Apple created a somewhat totalitarian selling platform where they are allowed to wave through or reject any app without further explanation. You will need a lawyer’s expertise to convince Apple to approve your app again.

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#20

Wow that’s a very interesting case x-pressive, glad you had everything in order and didn’t let Tetris bully you around!

I looked up the trademark, and DASH is in fact registered by Playfirst, inc.

Apple didn’t remove my app from the app store, instead I decided to remove it from sale until this whole thing blew over because I didn’t WANT apple to delete it.

After speaking with Playfirst, Inc. via Email, and looking up their registered trademarks, I’ve decided I don’t have the resources to fight them in a battle that I would most-likely lose (because all of their games DO end in DASH and they do own that trademark for games/software).

I’ll just issue an update at some point with lots of new updates and a new name (in iTunes Connect you can change the name of the app via an update without losing your customers, I didn’t think that was the case before).

Thanks for sharing your story! [import]uid: 7849 topic_id: 3317 reply_id: 10104[/import]