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Space Marines
james_nicoll

In mid-December, Games Workshop told Amazon that I’d infringed on the trademark they’ve claimed for the term “space marine” by titling my original fiction novel Spots the Space Marine. In response, Amazon blocked the e-book from sale [original post and update]. Since then, I’ve been in discussion with Games Workshop, and following their responses, with several lawyers.

To engage a lawyer to defend me from this spurious claim would cost more money than I have, certainly more than the book has ever earned me. Rather than earning money for my family, I’d be taking money from them, when previously my writing income paid for my daughter’s schooling. And I’d have to use the little time I have to write novels to fight a protracted legal battle instead.

In their last email to me, Games Workshop stated that they believe that their recent entrée into the e-book market gives them the common law trademark for the term “space marine” in all formats. If they choose to proceed on that belief, science fiction will lose a term that’s been a part of its canon since its inception. Space marines were around long before Games Workshop. But if GW has their way, in the future, no one will be able to use the term “space marine” without it referring to the space marines of the Warhammer 40K universe.

Also posted at Dreamwidth, where there are comment count unavailable comment(s); comment here or there.

"We're Space Marines, we're glorious
We're steadfast, brave and true.
So don't you dirtbags mess with us,
Or this is what we'll do..."

-- from "D.R. and Quinch Get Drafted"

It's worth approaching EFF and the Comic Book Alliance to see if they would be willing to help swat GW.

That's worth saying in the original post, or to haikujaguar directly...

Ngram for the terms 'Space Marine' and 'space marine' prior to 1980 here.

This degree of dickishness can only be the corrupting influence of CHAOS!! The UNCLEAN must be PURGED from GW!!!!


Sadly, this is completely par for the course with GW.

Wait a minute, weren't the soldiers in the movie Aliens specifically called out as space marines? Maybe Hollywood would be interested in a copyfight with Games Workshop?

I wondered that for a minute, but I think they were mostly referred to as "Colonial Marines"


And AFARIK Hollywood hasn't bothered to assert such a copyright, and GW is likely to pretend to not notice it when a major studio uses the term, as their lawyers have probably told them it's not a winnable case except by bankrupting the opposition.

In this partiular case GW is making the rather impressive claim that they own the trademark for the use of "Space Marine" in e-book format, because they used the term "space marine" in an e-book first or something... of course I'm pretty sure that's not how prior art works.

But this is the company that didn't want to take the money of a little known software company called "Blizzard" when they asked to use the warhammer fantasy license in their new RTS strategy game...

They did end up licensing Warhammer to make Warhammer Online: Age of Reckoning, which famously failed. I think it still has three servers up.

"Prior art" isn't really relevant to the establishment of a common law trademark. This nearly universal misconception—which does allow nerds to show off how clever they are by spotting an earlier use of "space marine"—is part of what makes the discussion around this non-issue so tedious.

is part of what makes the discussion around this non-issue so tedious.

oh well. Thank you for wasting your own time to tell us that.

The important thing is that I need only link to the comment now.

Is it a crime to put forward a trademark claim that you know, or that a knowledgeable worker in the field would know, was bogus? Could it become one?

Probably not; Imaginary Property lawyers and lobbyists exert considerable time and effort to make sure that any accusations of infringement only get directed at the little people.

But it's a damn good idea.

I'd like a law like that. Moreover, that the penalty for doing so would be to have one of the offender's trademarks of the wronged party's choice placed in the public domain.

It’d probably be a sufficient deterrent just to pay the accused’s legal fees.

I'd like a law like that. Moreover, that the penalty for doing so would be to have one of the offender's trademarks of the wronged party's choice placed in the public domain.

Seconded.

These days I'm pretty sure that's more encouraged than illegal.

No and no.

It isn't illegal to sue (although if you have been declared a vexatious litigant you will need to seek the Court's approval). And it is a matter of principal that you cannot be barred from access to the courts, allowing that would set an extremely dangerous precedent.

In this instance Games Workshop is asserting "passing off" that is that his book could reasonably be mistaken for an official Games Workshop product. The use of the the in the title gives them an at least arguable case. Basically if the term is so strongly associated with Warhammer 40,000 that he is trading on their reputation.

It is, as I recall, a problem to issue a DMCA take-down notice that is not valid.

Sadly, as far as I know, no courts have ever done anything about that.

Perhaps they could be referred to the famous case of Arkell versus Pressdram?

Oh GW, no.

You excuse your change from metal to plastic by saying it'll cost less for customers, then raise your prices. You ship magazines for subscribers later than you ship magazines for retailers. You have customer service that rivals that of Wizards of the Coast. Now you're suing people for using 'space marine' in print? You didn't sue Deus Ex Machina for their 2009 album I, Human even though it talked about the 40k universe. But that probably acted like free ads for you, whereas MCA Hogarth is merely using two of the same words.

How do trademarks work when the phrase was already in use?

That evil wiki place lists 1932 as the first known use of "space marine" in Scifi.

Someone pointed out in a discussion of this on a forum I read that:
"Games Workshop doesn't have a registered trademark on Space Marine for fiction in the United States. They have two registered trademarks for the following goods and services:
'board games, parlor games, war games, hobby games, toy models and miniatures of buildings, scenery, figures, automobiles, vehicles, planes, trains and card games and paint, sold therewith' and
'video computer games; computer software for playing games'

They're claiming a common law trademark of 'space marine' in all other contexts, and the equivalent of 'prior art' is a valid defense against a common law trademark infringement suit."


Edited at 2013-02-06 01:48 pm (UTC)

They assert an area where the trademark applies.

This is old knowledge, and Canadian, so it might not apply here. Or it might be wrong; I don't remember all of the little bit I learned from my brief forays into Intellectual Property.

For instance, TSR could trademark the term Nazi (they didn't really, as I recall, but it's a famous piece of folklore) for hobby games, if there was no prior art and no reasonable argument that the term was un-trademarkable for other reasons.

If the term is already trademarked but no reasonable person could confuse the two areas (one is software and one is kitchen design services), there will probably be an agreement between the two trademark holders. Early on in my work with a certain software company, we had to send text for approval to the kitchen design company. I always imagined them looking at the title page and going, "Eh, a POSIX shell. Who cares?"

In this case, there seems like a reasonable argument that the term "space marine" existed before in fiction, even in the UK, but it costs money to get lawyers to do the work.

For instance, TSR could trademark the term Nazi (they didn't really, as I recall, but it's a famous piece of folklore)

AIR, Lucasfilm owned a specific image of a Nazi from the Indiana Jones movie and that was used on a counter by TSR.

Exactly. They trademarked the image, not the term.

As I understand it, and the usual caveat that I could well be wrong, unique images are easy to register as trademarks, and easy to claim as common law trademarks.

Text in a piece of fiction is harder; if they're claiming "Space Marine" as a trademark, it helps their case if they're obeying the trademark guidelines (such as never trademarking a noun, only an adjective; setting the trademark apart; claiming the trademark at the beginning of the piece of fiction--I've never looked, so do they assert that "Space Marine" is a trademark?).

As I recall, the intent of trademarking (even common law) is to preserve the goodwill for the company and prevent it being passed off as someone else's. That might be a fruitful avenue of investigation: claiming that Games Workshop gets no goodwill associated with the term "space marine." But I don't know how difficult that is to prove.

I also don't know what the status between the UK and the US for trademark agreements. I recall that common law trademarks are often not protected in other geographical areas, but I don't know whether that would apply here.

Hmmm. I'm not really very helpful. I should shut up.

Edited at 2013-02-06 05:37 pm (UTC)

claiming the trademark at the beginning of the piece of fiction

The list of trademarks claimed at the beginning of the reprinted edition of N. K. Stouffer's RAH And The Legend Of The Muggles is quite remarkable. It includes "Winkle", "Elders", and "Rah".

Her trademark claims have been amply not supported by court action.

Okay, twenty minutes of Googling and here's what blew my mind:

Regarding common law trademarks--you can claim it even if it existed before, so long as the previous user has "abandoned" it, whatever that means in a legal context.

It's like Games Workshop said, "Hey, there's this term that's lying around, we're going to use it and make everyone think of us when they see the term 'Space Marine.' And then none of you dare use it, because we don't want them thinking your stuff was produced by us."

In fact, according to the discussion I found by American lawyers, they can even register the trademark if it has been found to be abandoned by the previous common law owner.

I'm sure there's a way that prior art can help in a defense, but it's liable to be expensive.

Trademarks are complicated, because they can be registered or unregistered, regional or national. And then they are specific to areas (except when they're not).

You can trademark something that was already in use; however, if challenged during the registration phase, whoever was using it earlier stands a good chance of at least getting it heard. And if something was used, and then fell out of use, it can still be trademarked. However, you can't trademark generic words; "space marine" seems to be pretty close to that to me, but IANAL. (Note that when uSoft trademarked "Windows," they only got it by promising not to assert it in the US.)


IANAL, but my understanding is that you can never "trademark generic words" -- you get to trademark a "mark", which could be made of words, but then it's the presentation or form of those words that's important and not the word itself. I understood it's for this reason that some sort of "unique presentational feature" is one of the testing aspects of a trademark.

It's for this reason that stupid iNeologisms and CamelCasedSquishyWords and always with the Capitalization even in-sentence, or always using a Corporate Font came about: because the companies that use them are essentially turning words into "unique marks" by doing so.

The exact explanation of when a word is a word and when it's a mark is of course a grey area, and companies love to throw large amounts of money at lawyers to wrangle about it (thus 'Windows' versus 'window' and 'windows').

Edited at 2013-02-07 01:41 pm (UTC)

"That's one Doomed Space Marine"... From the original Duke Nukem IIRC, back in the early 80s and referencing the earlier Doom game.

Doom 3 also explicitly called the main character a "Space Marine" – it's not a trademark GW has ever really bothered to defend.

It's strange the things people can get trademarks for. Dimarzio, a company that makes electric guitar pickups, has the trademark for double cream humbucking pickups, the double cream referring to the colour of the plastic bobbins the pickup wire is wound on. They didn't come up with the idea, merely copying earlier Gibson pickups that had two bobbins made of cream coloured plastic. But because Gibson hadn't trademarked the colour combination(since the pickups were designed with the bobbins hidden by a metal cover) Dimarzio did. So you can't market a pickup with bobbins in that colour without getting a cease and desist request from Dimarzio.

Since trademarks (in the US) are established by use, Gibson could have contested that at the start, and presumably won. Why didn't they? Seems like an oversight!

Perhaps because it wouldn't have served Gibson to spend money trying to stop Dimarzio, when they could just respond to any c&d letter they'd receive with "No, you fuck off. Thanks, Our Lawyers," and that would be the end of it.

Or they could just say, "yeah, whatever.... Louis! Get Raleigh on the phone and tell them to use a different die pack in the bobbin moulds going forward!"

Yes, we'll be using off-cream from now on!

Or, of course, the way the BBC copied some London police department gear and then managed to get a trademark on it, over the objection of the Metropolitan Police...

Reposted from elsewhere: It seems to me that the issue isn't a legal one between Hogarth and Games Workshop, but a robot issue between Hogarth and Amazon, who happily, and one assumes automatically, respond to every c&d request that pops up in their inbox. Hogarth is free to say "Nah" to GW at relatively little legal cost to herself, but the actual trick is to get Amazon to carry the book if they prefer not to. Amazon's under no legal obligation to carry every single book in the world, trademark infringement or not.

I guess the point is to make a big enough stink to convince Amazon to re-consider the book, or maybe to have an actual human consider it for the first time. But nobody seems to be talking about the situation that way. Of course IANAL.

I am perfectly happy to shame companies that use robots for copyright infringement. There have been so many cases of obviously bad DMCA takedown notices going out, yet there are never any repercussions for the sender. DMCA takedown notices are supposed to be signed under penalty of perjury, but I'm not aware of anyone being tried for any of the myriad notices that are sent without human review. I'm not talking about "fair use" cases, I'm talking about when a copyright holder sends a takedown for every song with a given word in the title.

Since the prosecutorial apparatus in the US has no apparent interest in punishing companies that abuse the law in this manner, I am falling back on shaming for individual incidents.

Ha. I should have scrolled down sooner... :)

It would appear that Popehat is now on board.