Space Marines and the Battle of Tradem Ark

Posted on February 6, 2013    Posted by      272 Comments

Today’s thing people in e-mail are clamoring for me to comment about: This, in which the sale of a self-published book by M.C.A. Hogarth was blocked from sale on Amazon after Games Workshop complained that it violated its trademark for the term “space marines.” If the linked post above is at all accurate, apparently Games Workshop, which uses the term “space marines” in its Warhammer 40,000 games and has a trademark in that area, has branched out into handling its own ebooks and therefore believes that trademark carries over into the literary world as well.

I am not a lawyer, so factor that in here. That said: Games Workshop, really? You know, a simple search on the term “space marines” over at Google Books shows a crapload of prior art for “space marines” in science fiction literature, from the 1936 Amazing Tales novelette “The Space Marines and the Slavers” by Bob Olsen, to Robert Heinlein’s novel Space Cadet, to the very recent use of the term in The Sheriff of Yrnameer by Michael Reubens and So You Created a Wormhole: The Time Traveler’s Guide to Time Travel by Phil Hornshaw and Nick Hurwitch. There is no lack of evidence that the phrase “space marines” has been used rather promiscuously in science fiction literature up to this point.

To argue, as Games Workshop must, that the phrase “space marines” has a distinctive character in science fiction literature relating only to their product involves, shall we say, a certain studied ignorance of the field. Table top games? Possibly; I’m not an expert. Science fiction literature? You have got to be kidding. It’s pretty damn generic in this field, and was long before 1987, when Warhammer 40,000 was created in game form . Nor does it seem, as far as I know, that Games Workshop attempted to claim trademark on the phrase “space marine” before, despite a veritable plethora of Warhammer 40K tie-in literature using the phrase.

So, yeah, this seems like pretty weak sauce on the part of Games Workshop. If it believes it has a trademark claim it has to defend it, but the fact it believes it has a legitimate trademark claim on “space marine” in the field of science fiction literature is absurd (or, alternately, if it believes it doesn’t have a legitimate trademark claim but is attempting an intellectual rights land grab anyway, it is odious). It’s easy enough to pull this crap on a self-published author who doesn’t have the resources to fight the assertion. I’ll be interested to see what happens if they try to pull it on an actual publisher, with actual lawyers. That should be fun.

(As people will ask what this means in terms of the Science Fiction and Fantasy Writers of America, of which I am currently president: Well, obviously it’s on my radar. I’m not going to say anything more in that capacity for now.)

In the meantime, I don’t know. As apparently Games Workshop is asserting this trademark in the field of science fiction literature through its expansion into ebook distribution, maybe this is a good pro bono case for the EFF. Someone go tell them. Alternately Games Workshop could just stop being jerks and let this writer sell her book. Seems doubtful anyone will be buying it instead of a Warhammer 40k story, or will confuse it for one.

Category: Uncategorized    

272 Comments on “Space Marines and the Battle of Tradem Ark”

  2. I think the finger of disapprobation ought to point equally to Amazon, which I believe could have exercised a little more judgement in deciding whether Games Workshop’s complaint had any merit. Granted, I Am Not A Lawyer any more than you are.

  4. Well I think part of the issue is that Games Workshop also publishes novels about the Warhammer 40K universe (through daughter company Black Library), which more often than not feature their incarnation of Space Marines.

  6. Prior art doesn’t factor in here, because we’re talking about trademarks, not patents. As far as I know, you can trademark pretty much anything related to your product, as long as it’s not trademarked yet. But then, I’m not a lawyer either.

    Anyway, it’s probably not the best move they’ve ever done.

  7. Just so everyone is clear, I’ve already trademarked Earth Marines and Jam Rations, or JREs. THESE TERMS ARE ALL MINE. THIS IS WHERE MY CREATIVITY COMES FROM. YOU CAN’T SHARE.

    I am writing a story about Earth Marines who transport JREs in space to a Land Colony (nother TM to me) via Space Ship (DIBS).

  8. John,

    if anyone wants to see the actual trademark application for this, it can be found here – http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:hym7hu.2.6

    The mark was registered for US Class 22 – games and such – and is most specifically not the class(es) for printed books or ebooks.

    IANAL but did work successfully in the IP field for over ten years. Why Amazon would fail to recognize the limitation of class of goods and services when receiving the kind of complaint they must have from GW seems a bit clueless. If one had a line of say, “Book” sneakers and trademarked for such, could I get Amazon to stop using that word on their site? Unlikely.

    Sometimes the IP strategy adopted by a company uses the cost and ignorance of the IP laws to expand their reach in practice if not in actual law. Unfortunately, this kind of thing is usually not stopped until someone does pony up the expense of a good IP attorney.

  10. Which will hopefully be struck down by a guy in a robe saying “No, you can’t” followed by “Pay damages”

    Don’t really see how they could claim a trade mark on a generic term originating in the 1930’s, seeing as how they didn’t invent the term or the general concept themselves. But I’m not a lawyer thank god (dodged that bullet for a career in the more distinguished field of political science…) and I’m not sure how this will play out in court or even the specifics of how the term is used in that book.

  11. Sounds similar to a situation we had down here involving the little town of Pinehurst, self proclaimed “Golf Capital of the World.” A company called Resorts of Pinehurst, which pretty much runs stuff in that neck of the woods, started throwing their weight around, telling entitles like Pinehurst Hardware, Pinehurst Decorating, etc that they were infringing RoPs trademark, even though the businesses (1) claimed they’d been there before RoP even existed, and (2) were perfectly entitled to use the name of their town in their business. Of course, RoP is a big, well-heeled corporation and these were mom and pop local businesses, so guess who knuckled under eventually. I fear we’re going to be seeing more and more of this sort of thing.
    Now if you’ll excuse me, I have a platoon of lawyers with cease and desist orders knocking on my door…

  12. @steve davidson

    Amazon does a simple calculation:

    1. Possible damages when sued by Games Workshop vs.
    2. Possible damages when sued by M.C.A. Hogarth

    Since they will judge 2. to be close to zero while 1. may be a real number, they act accordingly. Companies work that way, and the laws encourage them to do so.

  13. one addendum: not applicable in this particular case, but all trademarks go through a stage in the filing process called “filing for opposition”. The details of the application are published in one or more USPTO “registers” (open to the public) so that those who may have a prior claim or believe the mark should not be granted for one reason or another can have their say. Perhaps it is time for someone, somewhere, to put together a Watch Group (Fans United to Prevent the Theft of Common SF Names and Phrases – awful acronym, there must be better) to keep a regular eye on the registers and provide the USPTO with the background information needed to prevent this kind of thing in future. I don’t remember right now what kind of standing someone has to have to file an objection, I’ll try and check that later today.

  14. There is nothing worse than an IP researcher with too little to do. I wonder if the originating troglodyte gets a bounty on each complaint filed?

  15. Which will hopefully be struck down by a guy in a robe saying “No, you can’t” followed by “Pay damages”

    Which assumes an indie author like Hogarth has the funds to carry on Federal litigation.

  16. *headdesk, headdesk*

    Of course there’s now also the issue of having no recurse against amazon’s decisions AND no viable alternative with even half that reach, amazon pretty much has defacto monopoly.

    Games Workshop regulary has it’s ideotic ideas, but I wonder – do they plan to go after Bungi, Nintendo and etc., too? Or is that just them trying a new strategy by testing on a weak target? Did that author piss off one of the higher ups in Games Workshop and that’s their revenge?

    It looks so random.

  17. Martin, yes, that’s true, but if someone did hire an IP attorney, they’d now have some grounds to go after Amazon (loss of business, business interferences, loss of reputation, etc.) True, the odds are in Amazon’s favor, but you only need one case to change that.

  18. The sad part is, this is not surprising behaviour from Games Workshop. They are extremely agressive in protecting their IP, to the point I’m sure they’d even go after parody/satire if they thought they could make a case. There was a webcomic called “Turn Signals On A Land Raider” awhile back that wanted to make t-shirts based upon his webcomic, which lampooned GW and the Space Marines, but couldn’t because he was basically told if he made them then the lawyers would be unleashed.

  19. “Why Amazon would fail to recognize the limitation of class of goods and services when receiving the kind of complaint they must have from GW seems a bit clueless.” Amazon simply doesn’t care – they got a trademark complaint, and they’re going to abide by the path of least common resistance, and kick the accused infringer off. This is the great DMCA society, y’know. And, as Martin says, “Possible damages when sued by M.C.A. Hogarth: close to zero”.

  21. I have a friend who just happens to be a trademark attorney and I’m running this past them this morning.

  22. Chris:

    “Prior art doesn’t factor in here, because we’re talking about trademarks, not patents.”

    Well, it matters in that all the examples of prior art show that the phrase is used generically in science fiction literature. Which does matter in terms of trademarks.

  24. And then there’s the whole “let’s piss off people who pay attention to these things and who will retaliate with boycotting our products and filling the intertubes with scorn and invective” thing. No doubt (I haven’t checked today) Reddit is on this one like black on a bowling ball (well, a black one at least),

  27. It’s a short matter of time before the hardcore 1 million plus twiter followers level notice hits Games Workshop, and then a major news source starts looking in at it. This should be hilarious, if GW does not instantly apologize. The author might actually find a lawyer happy to work on contingency to go for damages and get a reasonable settlement on this one.

  28. There should be a postscript on the U.S. Constitution to the effect “you only have as much rights as you can defend in civil court with expensive lawyers”. Freedom of speech? Bwa-hahahahahahaha!

  29. @J.D. Rhoades
    Which assumes an indie author like Hogarth has the funds to carry on Federal litigation.

    Hence the “hopefully”
    I truly hope that he’ll get some assistance in this matter, either funding or a pro bono case.

  31. Oh look, Ian Livingstone (co founder of GW) has a twitter account. I told him to warn GW that the internet is not happy with them right now.

  32. The Internet hasn’t been happy with Games Workshop for years now. They’ve been making ludicrous, unsupportable intellectual property claims for pretty much forever.
    People keep buying their overpriced crap, so those tears in their eyes are laughter, not remorse.

  33. nicoleandmaggie, I think you mean Melancholy Elephants by Spider Robinson (please note that the link leads to his web site). One of his best.

  38. I hate that this is happening to MCA. She’s one of the nicest people on the Internet I’ve ever met.

    According to one of her posts (MCA has been doing a lot of research into this, and I’ve been holding my tongue while she tries to negotiate with the very big people with more money than her) Games Workshop is asserting a Britsh Trademark for using the term on stationary to assert their rights on books, and they’re using the British Trademark to hit the beaches on the American legal front (see what I did there). Some Amazon lawyer has decided they don’t want to figure out how to deal with it and so MCA is screwed.

    She’s had plenty of advice from the EFF, but no one is volunteering to take her case pro bono, so at this point it doesn’t matter that everyone seems to think she has a case–she can’t afford to prove it.

  39. IIRC back in the early 90s they had problems with being too liberal with their IP and had some chancer try wrest a fair chunk of it off them because of that. I can’t remember the specific details though. I think that made them more than a little cautious and somewhat aggressively pro-active ever since.

  40. Must let my 19-year-old miniatures addict know about this one, if he hasn’t already added it to his ever-growing pile of reasons for scorn and derision regarding Games Workshop.

  41. Games Workshop has an odd relationship with the internet. While most game companies embrace things like e-commerce and lively online fan communities, they go out of their way to make selling, or even discussing, their games online very difficult.

    For example, Games Workshop distributes its own product and the company prohibits it retail customers from using online shopping carts, posting order forms on their web sites, or even providing lists of available products. For online communities, any direct discussion of their games’ rules, beyond “See page 27 of the rulebook,” is enough to earn a DMCA take down notice.

    To be honest, I’m a big fan of their Warhammer 40,000 game (aka “The one with space marines”), mostly because I enjoy the local gaming community. But I would love to see the company move into the age of the internet. If that requires a serious legal drubbing at the hands of the EFF, then sooner would be much better than later.

  42. For what it is worth, my first thought was of the abysmal mid-90s film called Space Marines, and if Games Workshop want to block that particularly dire film from infecting more DVD collections, then they can go right ahead. Oh, and to save anyone checking, the Encyclopedia Of Science Fiction (ed. Peter Nicholls, 1979) doesn’t have a specific entry for Space Marines, though it is missing a few other accepted terms from earlier publications, so that doesn’t mean much in and of itself…

    At least the Alien franchise went with something a little less hoary and cliched than “Space Marines”, and I can’t help but see the phrase as something which belongs solidly in the pulp era. Perhaps this is a good opportunity for people to come up with more interesting and original terms for their military forces.

  43. So, BigWords, you support Amazon blocking a book MCA has had on the market for years (she can no longer sell it in eBook format on either the US or UK site) on the grounds that you saw a dumb movie? Or that pulp is too pulpy? Or something? Well, awesome. Glad she could be the sacrifical lamb for your notions of aesthetic whatever.

  44. When Games Workshop went public, it stopped being a game company, and became an Intellectual Property holding company. The other (more high profile in the gaming community) lawsuit is against a third-party company that sells ‘GW compatible’ parts. (See: Games Workshop Limited vs. Chapterhouse Studios). While some of the lawsuit has merit, GW attempted to claim control over heraldry iconography dating back hundreds of years.

    Recently, an entire plethora of new tabletop miniatures games has arrived, thanks to modern CAD/CAM design, 3D printing, and the like. GW has turned their backs on the ‘long tail’, and is focused purely on ‘new’ customers, as well as wringing as much money for their stockholders out of the company (hint: Their #1 stockholder is also the CEO). Large dividends are paid out regularly, in spite of the company’s sales being flat. Additionally, there are already copycat knockoffs of their product being mass-produced in places where GW will never be able to engage, legally. 3D printing coming to the home means that, in a few years, everyone will be able to download and print all the Space Marines they could possibly want.

    The net result is the company is under siege, their long-term customers have abandoned them in favor of other games, and they have no choice but to aggressively pursue their strategy of defending their IP, while they try and rent it out (books, movies, video games, and so forth).

  45. Space Marine, eh?

    Why didn’t GW sue Id Games and the Carmack for all of the Doom games?

  46. This reminds me of when Seattle was bidding for the Olympic games: part of the reason the whole thing fell apart was the Olympic Committee’s trademark of the word “Olympic.” Unfortunately for the committee, there is a big ass mountain range called the Olympics just across Puget Sound, on the Olympic Peninsula. And, of course, every fourth business (those that don’t have Emerald, Cascade, or Evergreen in their names) is Olympic-something, plus the college, the state capital, etc. The committee demands payment for using the word, but how do you make a mountain range pony up? The entire thing was HILARIOUS.

  47. I’m just about certain the claim is bogus even in gaming. I can’t be 100% sure that Traveller has used the term, but I would bet on it, and Traveller’s been around in various editions since 1977.

  48. I used to regularly play Games Workshop games back in the day and wish I still had the free time to keep playing them, but reading things like this just makes me sad that this company has become the selfish, paranoid, litigious beast it is now.

    It’s a sure sign that the creative class in the company is no longer really in control of the direction Games Workshop is taking. I’ve got nothing against a gaming company being aggressive in protecting its trademarks. Games Workshop has a number of other trademarks that make complete sense. When it comes to “Space Marine”, though, it’s just not justified. There’s just no way that a science fiction author is going to be able to degrade Games Workshop products by using that term. In order for any work of fiction to be taken as a direct rip-off on Games Workshop’s IP, an author would have to steal a lot more than just that one word.

    Maybe GW did get burned years ago by being to liberal with their IP and so have now become protective of it, but two wrongs don’t make a right. If a *tabletop gaming* company can’t see beyond the paranoia of its lawyers then what hope is there?

  49. Brian C. Johnson (above) has it bang on: “When Games Workshop went public, it stopped being a game company, and became an Intellectual Property holding company.”

  51. Showing my age, I remember a set of miniature rules called Space Marines that came out in 1977. (Small little pale blue book with amateur graphics.) The web says that it was self-published by Mike Ratner and later sold to Fantasy Games Unlimited who published a second edition in 1980. So it’s not like Games Workshop was the first or only gaming company to use the phrase.

    But then again I’m talking about the industry where a company tried to imply a trademark of the word Nazi.

  52. Military forces don’t generally have “interesting and original terms” as names. (Special ops teams, yes. They revel in having interesting and original names. Big organizations, no.) :Space marines is a perfectly reasonable name for a military operating in space to use…and thus for those writing about them to use.

    Nor does one person’s desire to “block [a] particularly dire film” or rid the future of a term that individual considers “belongs solidly in the pulp era” justify blocking use of a generic term that’s been around for 7+ decades and is still in use. Games Workshop didn’t invent the name; they used a term already in use and understood. That’s different from Kleenex ™ wanting to keep its product from becoming the generic term…they didn’t try to trademark “tissue.”

  55. This is old hat for Games Workshop. Anyone active on boardgamegeek.com can tell you about the Great Games Workshop Purge, where the company’s razor-fanged lawyers asked for any and all possible copyright-infringing content to be removed from the site.

    (Link: http://boardgamegeek.com/geeklist/48933/the-games-workshop-files-purge-of-09)

    BGG’s admins, fearing a legal battle which would have destroyed the site, ordered ALL player-created Games Workshop content — custom scenarios, rejiggered rules, even jokey fan-pictures — be removed immediately. It’s still sort of a joke over there when you post a picture of your painted minis (or, God forbid) GW’s own box-art, that the lawyers will rain fiery blood from the sky upon you.

    I remember reading about this issue a month or two back (the GW fans/haters on BGG started a thread on it). I thought it’d been resolved. I’m surprised, therefore, to learn it’s still ongoing.

  56. A little background – my friendly local game store is a GW retailer (but not an exclusive GW store).

    Their anti-online-anything policy is designed to prop up the game stores where people go to buy, paint, and play with their GW products. This sounds good for local stores but when those stores get too successful, GW opens one of their own stores in the same area and revokes the retail license of the other store. This often puts the locally-owned store out of business, in the process killing the place where people went to buy and play other games, like tabletop RPGs and Magic: The Gathering.

    The real effect of the brick-and-mortar-only rule is that this creates artificial scarcity and lets GW charge ridiculous prices for their product. GW is very paranoid about this enforced monopoly. There’s a big “modding” community in the GW fanbase – most people paint their models, and many sculpt unique models using pieces of different GW models and a modeling resin called “Green Stuff” (which GW sells, though there are third-party versions). GW has strict rules about this; a model must contain a certain percentage of GW product to be considered “legal”, including paint, resin, and glue. GW judges at tournaments have been known to take player’s models (lovingly sculpted and painted over hours or days) and literally cut them in half to verify that they’re legal.

    GW’s pricing is also increasingly insane. They’ve recently released small packs of models (one to three, made of plastic, measuring only a few inches high) that are priced upwards of $70-80. The three trolls from The Hobbit (GW has the LoTR license) fall into this category, but there are also Warhammer models coming out in this price range. There are no rules for them yet, but people are speculating that the ultra-expensive models will have special rules that let them be better for their point cost than cheaper models, forcing competitive players to buy the overpriced units or fall behind the curve.

    Why all the paranoia and cash-grabbing? I think it largely stems from them being burned when they didn’t control their IP as tightly. As an illustration, I present: Starcraft and Warcraft, two franchises you may have heard of. Blizzard stole their ideas whole cloth and never credited them or bought their IP (though Warcraft, at least, was designed with the intent of getting the Warhammer license; it just never worked out). And now the most profitable franchise in computer gaming is effectively based on GW’s IP and doesn’t get them a red cent.

    This doesn’t excuse GW’s behavior. If anything, they should know firsthand how hard it is to go up against the “big boys” as an small or independent publisher. But it does sort of explain why they do what they do.

  57. There is a subtle point that is being missed; you’d almost have to have an MBA to get it. Under current US law, if you do not vigorously protect your trademarks, then you run the very real risk of them becoming “diluted” and unenforceable even for the product that they originally covered. The classic examples for this are aspirin (http://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/bayer.htm) and refrigerator, both of which were trademarked terms at one point but which lost their trademark because the company did not pursue folks who used the term in writing and elsewhere.

    This is not to say that I support GW in the slightest. I merely point out that their lawyers have a duty to the shareholders of the company to protect the gaming “space marine” trademark by going after use of the term elsewhere.

    What is likely to happen should this make it to court is that the trademark will be put down as “improperly granted” (due to multiple prior use examples) and removed from protected status in the USA.

  58. I love “I am not a lawyer, but” posts, especially when they’re followed by a lot of “I am not a lawyer, but” comments. Always good for a laugh or three. (I’m not saying that this doesn’t sound shady — it does seem like overzealous protection of a mark — but even the IANAL posts that get to the right conclusion often take fun routes there.)

  59. Having talked to my lawyer friend they scoff at GW’s claims for trademarking anything but figures and the rules that go with them. Now if they want to buy up registrations, that’s another issue.

    They also note that this has never stopped anyone from bringing suit before.

    As for alternatives to “space marines,” anyone for special naval landing force?

  60. Thank you for mentioning this. MCA Hogarth is a wonderful person, and Spots the NOT WARHAMMER 40K Space Marine made me smile a fair big after deployment. I’d like GW to get smacked down on this, hard.

  61. JohnD, that’s true, but you’re only allowed to defend the patent in the areas you have actually patented. You don’t get a blanket patent for the use of the term in every situation–you have to register “This is a patent for x in the area of y.” GW has no patent in the US that is registered to cover the area where MCA is using it, and the patent they’re asserting in the UK… well I don’t understand UK law but I also don’t see how it could work, other than “well, we have this and we also have more money than the author we’re trying to screw over, so why the hell not.”

    Their lawyers do not have a duty to defend a trademark in an area that isn’t actually trademarked.

  63. While I completely disagree with GW, the easier and cheaper option would be to replace the generic term ‘space marine’ with a synonym. How about Cosmic Green Berets? Celestial Commandos? Galactic Musketeers? Hard Vacuum Militia? Void Marines?

  64. Christopher, one of the reasons that Bayer lost he patent for aspirin was because the name had been used generically in songs; the same thing happened to cellophane. Even when the patent isn’t in that area, if the use makes the term more generic then it dilutes the trademark and the lawyers have to grumble.

    Note that they don’t actually have to file suit or anything; they just need to show that they have attempted to keep the term from becoming generic in order to maintain the protection. Typically, a “cease and desist” letter (or, better still, a “Could you please us TM when discussing this?” letter) is enough to show that the company has attempted to protect the trademark. Where it all goes wibbly-wobbly is when third parties are involved. As places like Amazon and eBay don’t get paid to arbitrate disputes, they tend to err on the side of caution and remove things that they have been told violate trademark even if the goods in question actually don’t.

    Again, this is not to defend the ridiculous situation; merely to explain how we got here.

  65. Shouldn’t the real takeaway here be that SF authors should avoid tired, cliched concepts like space marines in the first place?

  66. There is a subtle point that is being missed

    So subtle that JS pointed it out in the original post?

  67. If you folks feel that strongly about this, take up a collection for Hogarth’s legal fund.

  68. I’ve trademarked the word “the”.

    I accept cash, paypal, and major credit cards. All you weirdos with QR codes, get the hell away from me.

  69. “Shouldn’t the real takeaway here be that SF authors should avoid tired, cliched concepts like space marines in the first place?”

    Yeah, who wants to read a book about enhanced, futuristic soldiers who wield fantastical weapons in an interstellar theater of war? Certainly no reader of John Scalzi!

    (Waaaaaait a tick…)

  70. John Ringo’s “Looking Glass” series, which appears to be pretty popular, includes a military force called the (United States) Space Marines. I would pay money to see GW try this crap on him.

  72. I wrote to their customer service:

    ———-
    Hi,

    just wanted to tell you: i disapprove your legal action trying to
    monopolize the term “Space Marine” for Games Workshop. That you are
    asking Amazon to block eBooks just because they have “Space Marine” in
    the title is IMHO an abuse of the legal process.

    Please look up (for example) the 1936 Amazing Tales novelette “The
    Space Marines and the Slavers” by Bob Olsen. The term was coined
    before your founders were even born.

    You are working hard at getting bad press in the SF&F area. See
    http://whatever.scalzi.com/2013/02/06/space-marines-and-the-battle-of-tradem-ark/

    Sincerely yours, …..
    ———-

    and they answered within minutes:

    ———-
    Hey there,

    Thanks for writing in to us! Unfortunately I am unable to answer any IP or legal questions on behalf of Games Workshop. Those kinds of questions need to be fielded to our legal department at legal@gwplc.com. I’m not sure how long it may take them to answer your question, but this is the right place to send it to.

    Thanks!

    Games Workshop
    North America Customer Services
    ———-

    So now i wrote to legal@gwplc.com

    Let’s see what they have to say.

  73. @JohnD, correct, but there’s more than one way to show that one has protected one’s trademark, as lawyers for Jack Daniel’s and Linden Labs demonstrated. (Admittedly, I fall on the side of suspecting this is less about reflexive trademark protection, given that it seems to be a UK trademark rather than a US one, and more about trying to aggressively shut someone down whether or not they have a right to do so.)

    There should be a postscript on the U.S. Constitution to the effect “you only have as much rights as you can defend in civil court with expensive lawyers”.

    This is what contingency fees are supposed to be for, and is why certain groups like ALEC are very pro-damage caps. Cuts down on the number of pesky lawsuits when you never have to worry about getting sued by anyone your golf club would not admit. /rant

  74. mythago, exactly right. Jack Daniel’s and their lawyers understand that you can protect your trademark without being a jerk. Unfortunately, far too few lawyers understand that. Instead, they expect us to play the game using their rules and to pay them for teaching us the rules. (As is fairly common, I have my own “lawyers are scum” story {http://venera4.wordpress.com/2010/06/14/lawyers-are-scum/}.)

    IMHO, what GW should have done is write MCA and ask very politely if she would either add a TM to “Space Marines” or include a note that the story was in no way affiliated with the GW games. Instead, their lawyers started off with a “salt the ground” strategy and now are doing tons of PR damage to the company.

  75. @JohnD, speaking as a lawyer I think you are attributing far too much forethought here. Lawyers talk to each other this way all the time; one of the afflictions of the profession is forgetting how to talk to normal people.

  76. Military forces don’t generally have “interesting and original terms” as names.

    Harrumph. I disagree most vigorously, sir, and I would like you to know that the 7th (Parachute) Royal Horse Artillery, the Highland Cyclist Battalion, the Northampton Fencibles, the Vermillion County Zouaves and the New South Wales Imperial Bushmen are behind me 100%.

  77. @JohnD, @Mark Cabot
    (Sorry for the earlier post, hit “Post Comment” by accident…)

    Perhaps it’s paranoia on my part, but I can’t help seeing this action as an attempt to build precedent to go after bigger fish like Ringo or other, deeper pocketed targets. If they pursue a claim against a self published author and won, wouldn’t that give them grounds to build IP cases against other authors/publishers, effectively giving them a stream of revenue defending their claim on space marines?

  79. Mythago is right, not that they need my confirmation. I often have to be reined in by the business people when I write notice letters, and *I* am at least sorta kinda a nice guy when I can be bothered and I work for a nice company. An attorney for a company like GW has a template letter with “comply or perish” language, they drop in the victim’s name, they send it, they move on to the next victim.

    One of the problems with registered trademarks (and similarly patents) is that they are presumed valid. Therefore once you get the registration, you can send letters like this claiming the most ludicrous things secure from any accusation of ethical misconduct, because you are entitled to rely on the legal presumption of validity. “Well, okay, maybe the term has been used before, but so what? The PTO said the mark was mine. Take it up with them.”

    What I might suggest to the victims of such an attack, assuming the facts support it, is that they file an action in the PTO seeking to have the registration cancelled. You’d still want a lawyer to help you – the paperwork is arcane – but it actually doesn’t have to cost that much and it’s MUCH more effective than saying “I’ll see you in court.” I have used this approach very effectively – “Leave me alone or I’ll have your trademark/patent invalidated and you’ll have to start all over again.” That’s much scarier to IP trolls than expensive lawsuits which they know you don’t have the resources to pursue.

  80. Christopher, one of the reasons that Bayer lost he patent for aspirin was because the name had been used generically in songs; the same thing happened to cellophane.

    Far more importantly was that the trademark for aspirin was deliberately quashed as part of the reparations after WWI that the Treaty of Versailles demanded, at least in the US, UK and France. However, that’s an exceptional case, and Aspirin (with a capital A) remains a Bayer trademark in many countries, where the generic is known as acetylsalicylic acid, and Bayer does defend that trademark.

  81. The paperback version of Spots The Space Marine is still available on Amazon. So I found its page and clicked their “I would like to read this book on Kindle” button…do you think it would send them a vaguely useful message if a lot of us did that?

  83. I meant that mythago was right about how lawyers talk, but they’re also right about the fact that this sort of thing is not useful to build precedents. Trademark infringement is heavily fact-dependent.

    I’ve had IP trolls claim that X, Y and Z had knuckled under and so I would too if I knew what was good for me, but that’s just puffery meant to make them sound more intimidating. “We got Amazon to take down several books for using our mark, comply or you’re next” is a good threat but has no legal relevance.

  84. If GW intimidates a self-published author, that means nothing when somebody like Ringo makes the actually go to court and prove their case.

  88. joehempel, it is more akin to Apple Records suing Apple Computers over the use of the name “Apple”. Apple Records won in the short term. See “sosumi” for more details.

  89. What I might suggest to the victims of such an attack, assuming the facts support it, is that they file an action in the PTO seeking to have the registration cancelled.

    Marc, I like the cut of your jib.

  90. Step 1: identify a number of books sold on Amazon that use the term “space marines”.
    Step 2: Identify their Amazon rankings and how long Amazon has been peddling them.
    Step 3: Find a hungry, under-employed lawyer willing to take this case on a percentage basis.
    Step 4: Sue Amazon for discrimination because they allow authors X, Y and Z to use the term whilst denying it to Ms. Hogarth based on GW’s obviously tenuous claim. Sounds like a rather serious case of discrimination against Ms. Hogarth by Amazon. Since she has suffered loss of market and taken a hit to her reputation, the depth of sought damages should be sizable.

  91. This is where self-publishing sucks. You don’t have the people in your corner (lawyers, publishers, ect) to fight b.s. things like this. Space marines, btw, is a trope, and you can’t patent those. It’s like trying to patten deus ex machina or Zeus.

  92. ” Since she has suffered loss of market and taken a hit to her reputation, the depth of sought damages should be sizable.”
    Plus you want the damages to be large enough to stop Amazon and other retailers from doing this in the future. Esp since a search of their own site would have found HOW MANY other books??

  93. Hey, Games Workshop! You’ve Got Mail!

    I am going to write to GW’s legal department, but will still CC it to customer service. Nothing like a clogged inbox to irritate someone into getting an answer.

  94. @MVS: “discrimination” based on what? Your hungry, under-employed lawyer isn’t going to want the case anyway, because a contingency (percentage) basis requires that lawyer to carry all the costs of the litigation up front, and that’s likely to be years of fighting a big company with lawyers who bill by the hour deliberately running up costs.

  95. @MVS

    Any discrimination suit in the US would have to be covered by a protected class, (Race, Color, Religion, National origin, Age, Sex, Disability status, Veteran status, or Genetic information). Despite Amazon’s lack of discretion in such cases, MCA is not employed by them, and they are a private (i.e. not Government) business. I think that would cost MCA a lot of money for very little chance of success. Even under the best of circumstances, Discrimination cases are amazingly hard to win no matter how much news coverage those who do win receive.

  96. IANAL, but I suspect that this isn’t actually a good way to protect their trademark. Suing someone who doesn’t have the money to fight back is easy. Have the sued James Cameron for “Aliens”? Have they sued Ridley Scott (and Heinlein’s estate) for “Starship Troopers”? Have they sued id Software for “Doom”? Are they hassling Wikipedia or TVTropes for their entries on space marines? Are they sending their legal team after everyone who uses the term “space marine” in the text or title of a work? ‘Cause Xerox fights like hell, mostly through PR, to keep people from using “Xerox” as a generic verb for photocopying. Wham-O fights like hell to keep people from using “Frisbee” as a generic term for flying discs.

    “Space marine” is already a completely generic term. You can’t trademark a generic term, or if you do, you can’t expect to keep it as a trademark once a real judge gets your case.

  97. @mythago

    So, you’re a lawyer, eh? I’m a law student (appropriately enough, I’m posting this comment from my IP law class). Concerning access to justice and the inability of even middle class people to afford these sorts of legal actions, what are your thoughts on legal insurance like they have in parts of Europe? There was some discussion a few years back that it might be a good thing to implement here in Ontario.

    Seems like not a terrible idea to me – you pay your premiums, and if you need a lawyer, they pay for one. Can’t be worse than the situation right now where you can’t pay for a lawyer at all.

  98. @Mythago; you are certainly correct. I would recommend a generous split in favor of said lawyer as well a strong PR push whereby the lawyer makes a name for herself (recent legal graduate takes on corporate meanie in defence of Those In Need). I would also say the basis for discrimination is quite sound IIF (If and Only If) most of the usage of “space marines” was written by men. I imagine that is the case.

  99. How come no one wants to take her case pro bono? I bet I could get her a lawyer by the end of the day.

  100. Space Marine is a useful but odd noun. Useful because an author does not need to write a back story on the military unit’s purpose. It’s obvious they’re invaders that are launched from space ships. Creating a new term requires an author to explain it.

    That said, I’d like to propose Cosmonos a portmanteau of Cosmos and Agrianos (elite light infantry). I’d have suggested Astronos but I see that it’s already been coined and used in this online story: http://sorin1253.tumblr.com/Astronos and we want to stay away from this sort of debacle again.

    Yes, this doesn’t solve or address mcah’s problem, it would only make it worse as the name and thread to her stories would be lost by changing its name. Short of filing a Trademark for this new term it would not prevent anyone from pulling the same stunt if it somehow caught on.

    -michael

  102. @Mythago, et al;
    Thanks for pointing out this wouldn’t be good grounds for bootstrapping bigger suits, it would well and truly suck to see self publishing authors become cannon fodder to IP trolls

    @MVS
    I’d be reluctant to bring this fight to Amazon. Because they’ve created an easy platform to self publish a lot of authors now have a platform, but there are also cases of “authors” putting up slapped together junk under variant names of more famous authors (Nora Roberts was a victim of this, where a poacher put up junk under the “clever” name Nora A. Roberts). Their policy of pulling down titles quickly in cases of possible infringement sucks, but without it a lot of author’s reputations and market share would be in danger. The focus needs to stay on Games Workshop for pursuing a spurious claim.

  103. I just sent an angry email to their customer service department saying that as long as this is happening my gaming group will no longer buy any of their products. They responded by basically agreeing with me and directing me to their legal department to complain about the policy. Definitely not putting forth a unified front on this issue.

  104. As Jane Winter pointed out, using the Amazon link for “I’d like to read this book on Kindle” is a cost free way of pushing some metrics to Amazon in Hogarth’s favour.

  105. Just got an auto-reply from GW legal. Sounds like this is going into the cyber version of the circular file.

    Thank you for your email to Games Workshop Group PLC’s legal department.

    · If your email is in respect of an infringement of Games Workshop intellectual property, such as counterfeiting, we would ask you to kindly forward that email to

    infringement@gwplc.com

    Please be aware that any emails that are not related to an infringement of Games Workshop rights will be deleted from the infringement@gwplc.com mailbox.

    · If your email is in respect of a legal query, we would encourage you to review in detail our Intellectual Property policy on the internet. This policy contains comprehensive information in relation to what you can and cannot do with our intellectual property without a license. Please log on at: http://legal.games-workshop.com. Any query that you have in respect of Games Workshop’s intellectual property should be answered by that policy.

    If in the unlikely event that your query is not answered by the IP policy or if your query is not about intellectual property matters, we would ask for your patience with regard to a detailed reply as, unfortunately, some emails are inadvertently identified as SPAM by our filters. If you have not had a response within a reasonable period of time we would invite you to forward your email to LegalQ@gwplc.com To speed up the process we would encourage you to prefix the subject header of your email with the words: “Legal Query”.

    This is an automated email response.

    Yours faithfully,
    Games Workshop Group PLC Legal Department

    Games Workshop Group PLC
    Willow Road
    Lenton
    NG7 2WS
    +44 (0)115 9168100
    __________________________________________________
    Disclaimer –
    We reserve the right to take action without notice against any infringement of our Intellectual Property Policy. This email is in no way intended to be a license or a waiver of any rights of GW whatsoever. Information in this e-mail and any attachments hereto is confidential, is solely for the intended recipient(s) and may not be used or disclosed except for the purpose for which it has been sent. Unless otherwise stated you must not copy, print, distribute, or otherwise use, rely on or disclose to any third party this e-mail or any part thereof. If you have received this e-mail in error, please advise the sender immediately by return and delete this email and all copies along with any attachments from your workstations, networks and systems.
    This email is not legal advice and you must not take it as such. You must seek the advice of a qualified professional lawyer in relation to any legal material that may be contained in this email. Games Workshop adopts anti-virus policies and best practice but in no way accepts any liability for any damage whatsoever and howsoever caused by any virus or similar program transmitted by this e-mail or any attachments hereto.

  106. Rob, my understanding of that link (and I’m sure someone will kindly correct me if I’m wrong) is that Amazon uses demand for the book to encourage the publisher to make a deal on a Kindle edition. Since this book is self-published and she would love to have a Kindle edition, I don’t know how it will help. Can’t hurt to click it, though, I’m guessing.

  107. Actually, Scalzi, you’re doing the smartest thing you can – making this public to start Amazon being embarrassed into rescinding the ban. I’d also suggest something you can do as SFWA President is have SWFA make a stink about this – if M.C.A. Hogarth’s a SFWA member then it’s for him/her, if not then it’s for the principle of longstanding SF terms like “space marines” trying to be taken over by Corporate America.

    If Hogarth likes, s/he can further start a petition on causes.com protesting this decision on Amazon’s part – if there’s a stink made, Amazon will back down, same as they did on yanking e-versions of Orwell’s 1984 from Kindles or delisting LGBT literature. Personally, I’d say the more outlandish and extreme the claims the petition makes (“Amazon denying Free Speech in Favor of Big Corporation Games Workshop!”), the better – Amazon may not be that Leftist or hacktivist themselves, but a big part of their regular users are ….

  108. To those who are pushing the “Read on Kindle” button: beware of unintended consequences. It’s entirely possible that this will have the result of drawing Amazon’s attention to the fact that an allegedly infringing work is still available (the paperback) and will simply result in its being withdrawn from sale as well. Too late to put that rabbit back in that hat, but in future analogous circumstances, consider whether all attention is good attention. I could tell, but won’t, a story about somebody requesting a new category tag which resulted in a bunch of works being removed from Amazon for impermissible content.

  110. I think it’s important to consider the changing face of the publishing industry and how something like this impacts all writers. The author in question is self-published and that still carries a certain stigma, but that ship is already pulling away from the harbor. It seems like I read a new story of self-publishing success every week or so. The traditional model is on the way out, and it might be wise for the traditionally published authors to reach out in this case.

  111. @Christopher Wright No – I was being flippant as the GW claim is ludicrous. :)

    Games Workshop didn’t invent the name; they used a term already in use and understood.

    I think you’ll find that rather a lot of the 40K universe is “inspired” by other works. They used to be quite open about that (“It is like ____, but without the license”), but of late… not so much. Seeing them try to claim originality on anything is rather painful to watch.

    And for historical perspective, back in the early 90s Spielberg considered going after toy manufacturers who used the word Jurassic on their dinosaur packaging. As long as there is a buck to be made somewhere, someone is going to have one of these “hey gais, that’s totally my great idea” and try to claim sole ownership of the word or phrase. If there was a touch more originality in most of the claims which have come to light in recent years, I might be a tad less cavalier in my dismissal of the claims.

  112. If you read the comments that followed, then yes, it was being missed.

    You didn’t specify this in the original comment (I wouldn’t spend time on this, except it’s a common & condescending rhetorical lead-in: “*I* know what the important issue really is”)

  113. Ok, I second the idea of setting up a fund for this poor lady. Also wouldn’t it be neat if we could organize a protest where everyone wrote a story titled “Space Marines and the Battle of Tradem Ark?” But that’s just how my mind works. I’m a bit contrary by nature. :/

  114. Sometimes in dealing with attorneys or people with attorneys is to make them work. Right now MCA is stymied because some clerk in a lawyer’s office drew up a cease and desist letter. Now if that same office were to receive calls and letters referencing that letter, especially if the calls and letters were from interested parties (such as the Heinlein Estate, SWFA, or any of the others listed above and/or there attorneys), OR at least appeared to be, then the attorneys for GW would need to respond. At some point this would cost them money, especially if they could not tell which letters were genuinely from interested parties. Sending following up letters asking for a response or clarification on a response from them would keep them very busy.

  116. I sent an email to Games Workshop customer service, letting them know that until their legal department stops bullying authors they won’t be getting any more money from me. And I’m encouraging the same behavior from all of my gaming friends.

  117. I wouldn’t spend time on this, except it’s a common & condescending rhetorical lead-in

    I apologize if that is how my comment read; it was not intended to be either condescending or rhetorical.

  120. As a gamer, my understanding is that GW is actually pretty adamant about this. They apparently forced the Aliens toys that came out after they registered the trademark to display said trademark on the packaging, because they were “Colonial Space Marines.”

  121. @Raven: I was just thinking that. I would totally help to organize (or at least participate in) an effort where everyone involved wrote a story with a title of “Space Marines and the Battle of Tradem Ark” (or some variation thereon, like “Space Marines and the AyePee Takedown” or “Space Marines and the Ambush of Gheedub”). Then put together a collection of everyone’s stories for free on a website, with an explanation of why this is up and maybe downloadable PDF, Mobi and ePub forms…

  123. @Rachel and Raven. I’d willingly submit for such an anthology, being just as contrary. Also, I’d already considred writing something odd/funny already.

  124. A Brief Technical Note: Those of you who are providing examples of the prior use of the term, while thinking along the right lines, should be aware that prior commercial use which was discontinued prior to the registration of the mark by GW is not all that relevant legally. (It’s not totally irrelevant for reasons which are too complicated to explain in a blog comment, but it’s not very relevant.) The main question on that score is whether at the time the mark was registered somebody else was currently using it to identify the source of similar goods and services.

    Whether the term was in general use in the field at the time *is* relevant, whether it was being used to identify the source of similar goods and services or not, but the fact that, for instance, somebody sold an action figure called a Space Marine in 1980 but had stopped selling them long before the mark’s registration is not particularly helpful in either case. Again, you are thinking along the right lines, but the more recent your examples, the better.

    In other news, I note with amusement that “space marine games workshop” is now an autofill suggestion on the PTO’s website search tool. Another technical note: the search function tool on the PTO’s home page is the wrong place. You want this page:

    http://tess2.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk

    Please note that the PTO’s website uses session cookies, so it can be very problematic to give links directly to pages you find while searching. The trademark registrations at issue are #2100767 and 1922180, particularly the former. I didn’t look up the UK registrations but I understand they may also be at issue.

  125. She could try the J. R. Ward trick of using extra letters/funky spelling and change it to Space Marynes/Myrines/Mayrines

  128. Good thing I checked the Whatever to see if you posted about this before forwarding a link. (grin) My 29th century Unified Star Fleet Marine Corps will (a) be greatly relieved to know that you are aware of this and (b) be greatly disappointed if it doesn’t require dropping the 133rd Armored Combat Team from space on the good people at Warhammer. Civilians get all the fun.

    Dr. Phil

  129. This seems to indicate anyone who uses (or has used) Empire of Man is also up for litigation.
    That will be worth all the popcorn I eat while watching.

  130. Didn’t GW attempt to claim ownership of the Chaos symbol, despite the fact that it was demonstrably created by Michael Moorcock for his Eternal Champion mythos?

  131. Caveat – I have not read the lawsuit or the book in question, (Or all of these comments, there are so many . ..) but I have one question from the “Devil’s Advocate” position: Does the story in question take place in the War-hammer 40k world, or something so close as to be a violation?
    I ask because it game up ages ago when Lucas Arts was mocked for putting, “Indiana Jones ™ fights the Nazis ™” on a game description. He was not trying to Trade Mark Nazi’s, but the concept of his totally trademarkable character fighting them for treasure. It’s thin, but a viable argument.
    Especially if GW has an agreement with a publisher to make WH40k fiction – someone else playing in their sandbox could be a problem.

    Of course, if it is just the phrase, “Space Marines” they object to . . . then the above it moot.

  132. Next answer is completely automated:

    ———-
    Thank you for your email to Games Workshop Group PLC’s legal department.

    · If your email is in respect of an infringement of Games Workshop intellectual property, such as counterfeiting, we would ask you to kindly forward that email to

    infringement@gwplc.com

    Please be aware that any emails that are not related to an infringement of Games Workshop rights will be deleted from the infringement@gwplc.com mailbox.

    · If your email is in respect of a legal query, we would encourage you to review in detail our Intellectual Property policy on the internet. This policy contains comprehensive information in relation to what you can and cannot do with our intellectual property without a license. Please log on at: http://legal.games-workshop.com. Any query that you have in respect of Games Workshop’s intellectual property should be answered by that policy.

    If in the unlikely event that your query is not answered by the IP policy or if your query is not about intellectual property matters, we would ask for your patience with regard to a detailed reply as, unfortunately, some emails are inadvertently identified as SPAM by our filters. If you have not had a response within a reasonable period of time we would invite you to forward your email to LegalQ@gwplc.com To speed up the process we would encourage you to prefix the subject header of your email with the words: “Legal Query”.

    This is an automated email response.

    Yours faithfully,
    Games Workshop Group PLC Legal Department
    ———-

    So my next email to LegalQ@gwplc.com is out….

  133. I apologize if that is how my comment read; it was not intended to be either condescending or rhetorical.

    No worries.

  134. @K.W.Ramsey: That’s three!

    @Mrs. Campbell: Not so far as I know. WH40k is basically Warhammer In Space; orcs and elves and suchnot, but in space with heavy artillery. Based on the summary, Spots the Space Marine is, well… not.

    From a description elsewhere: “Spots follows the adventures of Magda “Spots” Guitart, a Space Marine fighting the “Crabs” at a remote anti-matter production facility. Which would be a standard issue coming of age story, except that Spots is a middle-aged reservist with a husband and two kids, pulled up from her one weekend a month desk duty and who’s at least ten years older than her squadmates. As their battle against the Crabs goes on, she finds herself the designated liason with the facility’s resident alien technology advisor, a friendly insectoid alien who goes by the name Samuel Colt. Which is good, because they’ll need his help as the crabs start evolving almost literally under their feet…”

  135. @Rachel: Thanks for that plot summary — I am now going to have to buy this book (assuming I still can…).

  136. I’m a wargamer/gamer of the old school type and Games Workshop is in it for the money, pure and simple. It’s such a small niche industry, and most people publishing this sort of thing have day jobs. They do it for the love of game as simulation. And then you have Games Workshop, which is a sort of gaming abomination thingie. I hope they fall on their tush’s with this one.

  137. Just a couple of general notes on the way trademark works (and doesn’t):

    (1) Trademark is a “rabid dog” statute: You have to use your one bite or you lose it. That is, GW is obligated to object to any conceivable at-the-margins or we-think-this-is-hilarious-but-still infringement, or they can lose the mark against everybody. If you remember the recent Jack Daniels incident, you have to accept that that still qualifies as an objection and defense of the mark… and requires lawyers with an actual, working sense of humor.

    Note that this is not approval of the particular means of defense chosen by GW (or, more likely, a bills-by-the-hour associate who is desperate to make his quota of billable hours); it is only an acknowledgment that a defense of the mark is mandatory.

    I suppose that really the short version is that “trademark law requires mark holders to be assholes,” but it’s not quite that extreme.

    (2) There is no requirement in the statute that a C&D letter disclose the class(es) for a mark. Indeed, it’s quite rare that it does so. Instead, the onus is on the recipient to determine the limits of the mark. This says more about the legal department at Amazon than it does about GW or its counsel. (It says nothing whatsoever about the legal department at Amazon of which I was unaware… but that’s for another time.)

    (3) As noted above, there was a period for opposition to the application for the mark. In the mid-1990s. There remains a procedure called “cancellation” available, at least in theory… but remember that cancellation requires a demonstration of abandonment (is GW still selling anything at all in the class? yes? it’s not abandoned), of prior use in commerce in the class (any board games, etc. using space marines as a mark? the jury is out; the closest is probably the original, 1970s-era Traveller, but that may not be sufficient), or of improper extension to another class (the best bet, but note that there has not been a formal claim made by GW that it own the mark in [International] Classes 9, 16, or 41 — just the generic claim that a set of goods/services offered at Amazon infringes its mark, which is silently limited to [International] Class 28; further, GW is using the mark on books, so it is at least in the field, which weighs heavily against cancellation).

    (4) It is extremely difficult for a prevailing accused infringer to get reimbursed for attorney’s fees under the Lanham Act (the federal trademark statute). It is theoretically possible, but it requires that the judge find that this is an “exceptional case,” and in practice it requires much worse behavior than a C&D letter for goods that do undoubtedly use a mark — it’s the proper scope of the mark that’s at issue — to convince a judge that it’s an exceptional case. As it happens, I’ve obtained such a result before, but its was much, much more objectionable, involving actual fraud and attempts to cut off financing by serving a factually defective notice on the alleged infringer’s bank.

    IMNSHO, point 1 above leads to everything else. If trademark was not a “rabid dog” statute, the rest of this would not follow. But it is and does.

  138. While also certifiably Not A Lawyer, I am quite sure that this is the most spurious BS Games Workshop have ever come up with. Perhaps they thought White Wolf were so successful in copyrighting “Vampire” that they could do so with “space marine”? (Not even “Space Marine”, no).

    UK copyright law would require that such commonly-occurring words be written in a highly specific way (a particular font, in a certain colour, for example) for it to be a copyrightable logo. There is no way on Earth “space marine” would be included – especially as all of GW’s own literature capitalises both words.

  139. @Rachel: “WH40k is basically Warhammer In Space; orcs and elves and suchnot, but in space with heavy artillery.” In the case of the Imperium of Man, the setting is also fairly derivative of the xenophobic Termight (“Mighty Terra”) empire in Pat Mills’ 2000AD series Nemesis the Warlock.

  140. CE, the problem is that none of what you said is relevant (mainly because, as you note, it all flows from the “rabid dog” issue); as many folks have pointed out here, at Hogarth’s site, and on Boing Boing, A) the trademark doesn’t apply to books, and B) GW has very much NOT gone after everyone using the term “Space Marine.”

    Shorter version: Games Workshop isn’t acting like assholes because of trademark law; it’s acting like assholes because it’s a company run by assholes.

  141. Tangentially: Apple Records vs. Apple Computer over the trademark “Apple” for music is a special case. When the computer company was much younger and smaller, they negotiated and signed an agreement with the record company, which basically said that the computer company could use the trademark in other contexts, and agreed not to use it for music publishing, a field they had no interest in at the time. “You acknowledged in writing that we own the trademark ‘Apple’ for anything to do with music” will influence a court.

  142. As an aside, the ebook is still available at Barnes & Noble if you want to pick it up to get a few bucks to the author and show support.

    As for other terms for space marines (FUGW*) I’m using the one proposed on Winchel Chung’s Atomic Rockets website, to wit, espatier.

    * – said in the same spirit as FUOC

  143. Rachel –

    Even better, we get a bunch of people to write short to medium stories and epublish them as ebooks on Amazon for $0.99. Which takes next to no effort to set up these days. Make the point both to Amazon and GW…

  144. @Raven and Rachel – That sounds like an idea. :D Would be willing to submit art for it.

  145. The even easier answer is to simply have the “space marines” in question derive from the US Marines. The US Government can not trademark anything and the author would be protected as a result.

    Anyone remember that great old TV sci-fi show “Above and Beyond?” It worked for them.

  146. Has anyone read the author’s work? GW would have an IP complaint if the actual soldiers used by the author were represented in a similar enough fashion to those of GW (i.e. big powered armor, quasi-religious rites, genetic modification based on a archetype, etc.–yes I played 40k…). GW would also certainly be able to trademark “Adeptus Astartes”, their bad-Latin name for the Marines used in their games, as well as the various chapter names (which were clearly developed when the game desginers were fairly young “Blood Angels”?!?); but “space marines” as a descriptive? Naw, they’ll lose that.

    But as many above have pointed out, them losing requires someone willing to fight first. Though I will note that Amazon has published works with space marines before without issue, Dominant Species by Michael Marks, for one.

    Ultimately the best argument is the “who can hit us hardest” one offered above.

  147. Or people could decide to buy the self-published book and tell the obnoxious corporation, “When you act like a dick, it makes me want to spend my money on someone else’s products.”

  148. Why would you post this without doing any research and just assuming someone’s spurious internet claim to be accurate?

  151. Upon further review, this guy is just looking for free publicity, which he has garnered. Good job, reactive Internet.

  152. Another data point: My very first professionally published story, “The Return of Captain Nucleus”, way back in 1975, also mentioned Space Marines. And I was parodying prior use when I used that term.

  154. Anyone else reminded of one of the greatest trademark battles of all time? Ohio University v. The Ohio State University. If you’ve ever wondered by alumni say “THEE Ohio State University”, that’s the history.

  155. @Krusatta, the book in question is about a middle aged grunt who is part of an understaffed unit that’s slowly giving in to fatigue. She’s been a reservist most of her time and is pretty green when it comes to combat. They don’t have any resemblance that I can see to GW Space Marines, not even close. Their armor is rather inconsequential until they figure out how to weaponize one aspect of it.

    @cepettit, rabid dog salute or no, any company that tries to enforce their trademark in an area where it didn’t actually register the trademark needs to be turned into a smoking hole in the ground where it’s legal offices once stood. Just because the law allows you to be unethical, or even encourages it, there’s no reason for the rest of us to nod sympathetically at their “plight.”

  156. @Harley: I was on her side before, and I knew she was a her, but now I am TOTALLY convinced of the righteousness of her cause because DEAR GOD ADORABLE.

  158. I just bought Hogarth’s book on running successful Kickstarter campaigns from Smashwords.

    According to the write up, she has successfully funded four projects so I figured, what the hell? Maybe I could help her out and myself if I ever get the urge to try something like that. It might be a useful resource for others who frequent John’s site. It was $7.95 and I just downloaded it so I don’t have a review for you, and I had never heard of Hogarth until I read today’s post, so who knows?

  159. “Guest”, concern trolls are horribly boring. Go do something meaningful with your life.

  160. This has been picked up on BoingBoing by Cory Doctorow as well. One hopes she will have some lawyerly help in her corner soon.

    Guest, kindly read the article. Sigh.

  161. The “actual evidence that Games Workshop is involved” is Hogarth’s report, here: http://mcahogarth.org/?p=10593 — which discusses her communications with Games Workshop. “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.”

    Hogarth is a known and credible person in the science fiction world. Contrary to the insinuations of “Guest,” this is not a case of the “reactive Internet” randomly choosing a stranger to be their cause celebre.

  162. @BruceArthurs: Another data point: My very first professionally published story, “The Return of Captain Nucleus”, way back in 1975, also mentioned Space Marines. And I was parodying prior use when I used that term.

    Feel like writing a cease and desist letter to GW?

  163. @Guest: Since you couldn’t even bestir yourself to ascertain that Hogarth is a woman, you’ll pardon us if we lend greater credibility to her account of her dealings with Games Workshop than to your cynicism.

  164. @Davis: the two are related. As you can tell from the Wikipedia article you cited:
    “In most cases, trademark dilution involves an unauthorized use of another’s trademark on products that do not compete with, and have little connection with, those of the trademark owner. For example, a famous trademark used by one company to refer to hair care products might be diluted if another company began using a similar mark to refer to breakfast cereals or spark plugs.”

    So if a writer uses “space marines” which is trademarked by GW for gaming, then they are diluting the trademark. (Note: it doesn’t matter if the use is intentional or not. It doesn’t even matter if the use is for profit or not. All that matters is that the use happens.) Dilute it far enough and other companies can claim that the trademark is meaningless and that way leads genericization. Or so they told us in the patent law section of the MBA courses.

    And that is why lawyers assume the “rabid dog” posture, as Petit pointed out above. Even though a reasonable person would say “Hey, calling this car the Blathium does nothing to harm Blathium Soap (TM)”, the law isn’t reasonable. To coin a term, “the law is an ass”. By barking at every instance of supposed infringement, the lawyers protect the trademark.

  165. Gamma Rabbit and the Space Remains! (Oh really, you have to go to the internet anagram server and ask for “space marines”. So many, many ….)

  166. Greg: I’ve trademarked the word “the”.

    JohnD: You just think that you are kidding

    I’m Shirley, don’t call me Kidding.

    Now pay up, muddafuqqahz!

    Also, my lawyer has just texted me that my patent application for “method of combat operations wherefore some guys kill some other guys by any means available” just got approved.

    The way I figure it, I’ll charge a royalty of $100Million per killing, at which point, world peace will break out. Sure, sure, there will be some well monied organizations that will just shrug and say “fine, here’s the cash” and make craters by remote control. But those will help finance my patent infringment enforcement protocol. You should see it. It is the bomb. Literally. Like a ginormous explosive device a drone will drop on your head.

    The only reason we haven’t seen world peace is because we haven’t figured out a way to monitize it.

  167. @Christopher Wright: Then GW has little legal recourse…in the United States. Regrettably, I can’t speak very knowledgeably (yes, read ‘intelligently’) about UK trademark laws. Being a multi-national, Amazon would have to respect an order enforced in the UK and apply it to their domestic trade as well because the US is a member of WIPO.

    After a little research, “Space Marine” was a registered trade mark (UK usage “RTM”) of the second incarnation of GW’s future sci fi game, the first being “Rogue Trader”. As such, they probably have a (tissue-thin) legal argument to apply in the case of Hogarth’s novel. Instead of using the UK’s court system, they’ve elected to pressure a retailer and issue a cease-and-desist. GW can think whatever it wishes concerning its “entree into the book market”, it doesn’t make it so.

    Technically under US trademark law, generic terms cannot be trademarked. A simple list of previous uses of the term space marine would like destroy GW’s case. As I said before, they can trademark their “Adeptus Astartes”, they cannot trademark space marine any more than Wilson can trademark “tennis racquets”.

    Amazon was more than a little spineless with this.

  168. You are entitled to think Amazon spineless, but I’ll tell you right now if I was Amazon’s GC and I got a letter from somebody holding a registered trademark in the same or similar class, alleging that the exact same mark was present on some third party’s goods which were for sale on my website, I’d do the exact same thing. Legally, the only ethical advice I can give my client is “comply or face potential liability.” The potential economic reward for noncompliance does not compare to the potential economic liability for noncompliance. These questions are highly fact-specific so no overarching principle is at stake. At least not one we can realistically hope to maintain – “Come back with a court order” is a perfectly good overarching principle, but not an economically viable one.

    As other attorneys have pointed out in this very thread, it sucks that that is true, but it is still true.

  169. Spots the Space Marine purchased and awaiting my pleasure on my Nook app. Not just because GW is picking on a relatively defenseless author, but also because the summary sounds like a fun read! You may have acquired a new fan, MCA Hogarth. Thanks to Scalzi, BoingBoing and the Internets in general for alerting me to a new (to me) artist.

  170. I concur, especially with “it sucks that it’s true”. I still stand behind the “spineless” comment, but not in a professional sense and I didn’t mean to convey it that way.

    The missing fact pattern is what GW sent to Amazon. Likely, they engaged the large multi-national distributor in an entirely different fashion from what they sent the author.

  172. It is a shame that law isn’t always synonymous with justice. What’s interesting is a quick look through the Black Library’s catalog doesn’t reveal a damned thing titled “Space Marine”…we’ve got “Ultramarine”, The Horus Heresy (which is trademarked)…several others using “Space Marine(s)” in the description…I haven’t found a title “Space Marine”.

    I wonder if GW is actually attempting to establish a precedent.

  173. You know…. Michael Moorcock as well as any of the authors that GW has “borrowed” from should actually drop them a line and “suggest” that they just may have to take more action in investigate claims that GW has accumulated. You know.. “Russia (and a dozen other countries) called and Use of “double headed eagles” has violated their national sovereignty with a trademarked likeness”

  174. Well, based on “guest’s” uninformed comment, and another one on MCA’s blog, I’d say the Damage Controll has begun, but I doubt it will be effective.

    ISTM that GW isn’t really defending a valid trademark here, but trying to /take control/ of a commonly used pair of words. IMO comparing GW’s actions to aspirin, Kleenex(TM), and Xerox(TM) is a less than apt comparison. Perhaps a better comparison would be McDonald’s corporation filing suit against Clan McDonald over their use of their own name, as well as their many other actions against business owners who were born with the name McDonald – whether they were in the food biz or not.

    She does raise an interesting question on her blog, though: is an e-book “printed matter”?

  175. @Krusatta I wonder if they would throw litigation around with the use of the name Horus? Some sort of Chariots of the Gods thing…Oh wait that’s Stargate.
    @C.E. Petit your argument and explanation would hold a lot more water if they were going after “Big Guns” who could defend themselves in the legal arena.
    – they are not.

  176. Well if someone claims something on the internet without any substantiated citations, it certainly must be true.

  179. Well, if it turns out GW denies everything, and the book goes back up, then everyone from Guest to Hogarth can be happy, yes?

  180. To people advocating complaining to Ian Livingstone – do we know that he has anything at all to do the with Black Library?

  182. A little history lesson here might make this kerfluffle at least more understandable (if not more rational or justified).

    Trademark did not start out as a property right, or a right to exclude. It started out as a criminal, anticounterfeiting, consumer protection statute to keep upper- and upper-middle-class families from being defrauded by cheap knockoffs of East London silverware, all of which bore a “trade mark.” At that time, the markholder could not take any action at all; instead, the markholder complained to the guild (usually the silversmiths’ and jewelers’ guild, but it slowly expanded), which then contacted the Crown, which then dispatched gentlemen to seize counterfeit wares and arrest (and imprison) the sellers and manufacturers of the counterfeit wares.

    But that’s a couple of hundred years ago, when courts of equity still existed, chancellors’ feet did vary in length, and government still closely regulated trade. (Anybody who claims that government overregulates now needs to take a close look at medieval/Renaissance/Enlightenment practices.) Thus, only government was viewed as having standing to object to misuse of trademarks, particularly since marks were granted and registered (and did not just arise from use). The very first privatization of enforcement in England (and, for that matter, in the Hansa) included an ancestor of genericide as an equitable defense against private enforcement of public-law consumer protection statutes.

    So, a couple of centuries later, we’ve got whale hips and scapulae in trademark law — great big honkin’ bones that unbalance the rest of the structure and don’t serve a discernable contemporary purpose in the whale’s environment. That’s the way the law is, folks: It builds by accretion, and a lot of the action gets generated by fossils.

    This is not an excuse for the way this dispute has been handled; it is an explanation, along the lines of “know the mind of the enemy if you want to defeat him/her/it.” I would have hoped that others would have taken my earlier contribution to this thread that way, but I’ve noted a few exceptions… to which I give a loud raspberry.

  184. @Nemo 4:58 — in fact, the wife of the Chief of Clan Donald is a fabulous gourmet chef. The burger joint tried to keep her from publishing cookbooks. She basically told them that in fact her husband was Chief of the Whole Name, which his ancestors had damn well INVENTED maybe 800 years ago, and where were their medieval supporting documents and castle?

    Needless to say, Herself has published some lovely cookbooks, one of which I have.

    On-topic, it’s pretty clear that the MCAH story is about some future version of the US Marines, who therefore would own the trademark and should probably kick GW’s ass for this (in the US; the Royal Marines would of course handle UK duties).

    OO-RAH and Semper Fi.

  185. Just as an F-U to Games Workshop, Spots is now on my Kobo… And if I happen to derive additional enjoyment from the reading, so much the better, and yet another reason to keep up with Whatever!

  186. The “actual evidence that Games Workshop is involved” is Hogarth’s report, here: http://mcahogarth.org/?p=10593 — which discusses her communications with Games Workshop. “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.”

    I’m going to paint an abstract oil and call it “Games Workshop”. I believe my entry into the oil painting market will then give me the common law trademark for the term “Games Workshop” in all formats

  187. I don’t “game” but this has been interesting. Just a question–instead of emailing customer service and the legal department; has anyone tried for the execs or shareholders if any?

  188. I need to rush and quickly trademark “Space Navy” before someone beats me to it, no?

  189. Oddly enough, there are several other ebooks with Space Marine in the title still up on Amazon, and Spots is available at Barnes and Noble. Guess GW can’t even find a competent legal department.

  190. For Whateverians who might care, I have purchased said ebook from Barnes and Noble. SO THERE. This is another reason why monopolies are bad, m’mmkay?

    She also had some short stories for free which I downloaded, and I skimmed the description of her other works — looks like quite the wide variety of spec fic.

  191. As a long time tabletop wargamer, allow me to hide my face in shame that something I’m associated with is being so dumb. Oy. I feel so sorry for this person. Especially when the jerk move is coming from a company already reviled in its industry for jerk-like tendencies and behaviors.

  192. @JohnD: There’s an important distinction: Trademark dilution can only apply to “famous marks,” which means that the trademark is a household name (i.e., if you ask a random person on the street, they’d know the product). It’s extremely difficult to show that a mark is “famous,” and GW would have a snowball’s chance in hell of doing so with its “Space Marines” mark. In contrast, genericization can occur even if the mark is not famous — for example, “space marine” could become a generic science fiction term without people ever knowing about GW’s “Space Marines” (one might even argue that this has already occurred).

  193. A commenter in Nick Mamatas’s LJ suggests that, due to the impending legal issues, from now on ‘space marines’ will be known as ‘vacuum SEALs’.

  194. How much justice can you afford in this era of guilty until proven innocent?

    If anyone wants to kick-start a legal fund to call these kleptomaniacs on their bullshit claim, I’m in for $25. I hate abuse of IP laws. They ruin it for everyone, legitimate copyright holders, artists, fans and the human race. IP trolls are bad enough, but when a legitimate publisher devolves to rent-seeking, they’re pissing in the pool they swim in.

    @ mintwitch

    The committee demands payment for using the word, but how do you make a mountain range pony up? The entire thing was HILARIOUS.

    I’m laughing on the inside…really.

  195. Davis, I suspect that if you asked a dozen random people on the street, you’d get people attaching the name to the Alien franchise, people assuming the government is sending Marines into LEO, and people confusing the term with drone warfare. Games Workshop wouldn’t be in the top 10, unless you conducted the survey at someplace like GenCon.

  196. @FL Transplant: Sure, but I already went and submitted for ‘Space™.’ So you’ll have to license my mark for use in yours. ;)

    @Huey: …I now totally want to use that term in something.

  197. Trademark dilution can only apply to “famous marks,” which means that the trademark is a household name

    Dilution is more serious with famous marks (mainly because it is more prevalent), but it applies to all trademarks.

  198. @Krussatta
    “It is a shame that law isn’t always synonymous with justice. What’s interesting is a quick look through the Black Library’s catalog doesn’t reveal a damned thing titled “Space Marine”…we’ve got “Ultramarine”, The Horus Heresy (which is trademarked)…several others using “Space Marine(s)” in the description…I haven’t found a title “Space Marine”.”

    http://wh40k.lexicanum.com/wiki/Space_Marine_(Novel)

    “Space Marine by Ian Watson was the third Warhammer 40,000 novel to be published by Games Workshop. It appeared in 1993 – three years after Inquisitor, also by Ian Watson (later re-named Draco), and Deathwing – a compilation edited by David Pringle.”
    —————————————————————————————————–

    Personally I know quite a bit about 40k; GW does a very good job of emulating its own creation.

    Not that I am picking a side here (were I to do so it would be GW out of nothing more than loyalty, it doesn’t excuse the fact that they are foolish at times, but nonetheless); if anyone else is having trouble with their research of it I would be happy to oblige.

    (I will however note that there is a stark contrast between the marines in the story in question (if the description earlier in the comments is correct) and the 40k ones, the most significant difference being the main character of that book is female; women are physically incapable of becoming Space Marines in 40k.)

  199. @Huey…. I love Vacuum SEAL! Just don’t use it in this exciting title: NO ESCAPE VACUUM SEAL as it was trademarked in 1996.

  200. @JohnD: That is incorrect. At least in the US, you cannot maintain an action for trademark dilution if your mark is not a famous mark; take a look at the dilution statute, 15 U.S.C. § 1125(c) (scroll down to subsection (c)). This section only applies to “the owner of a famous mark that is distinctive.” For some fine overviews on the topic, see BitLaw and LII.

  201. Oh, will everyone just start burning books so we can succumb to the inevitable Big Brother of Business Empire? We obviously can’t lead ourselves and need someone to tell us what to do.

  203. @TA711: Don’t get me wrong–I purposely qualified it by saying I looked at quickly. I always enjoyed GW’s penchant for detailed universe-building, and you’re also correct that the Imperium of Man is one of the most dystopic, horrific governments in sci-fi–which GW frequently does emulate.

    All that being said…

    I vote we treat GW like the colonialist imperial asshats they are acting like and start shoveling miniatures into Boston Harbor.

  204. Their trademark is useless even in the game market. When I hear “Space Marine”. I think of Doom. (Yes, I’m using myself as data.)

  205. I can’t agree with that…I think Heinlein…and then immediately think of Mark IV power armor (I was introduced to 40k in my developmental impressionable years.)

  206. I suspect that if you asked a dozen random people on the street, you’d get people attaching the name to the Alien franchise, people assuming the government is sending Marines into LEO, and people confusing the term with drone warfare. Games Workshop wouldn’t be in the top 10, unless you conducted the survey at someplace like GenCon.

    @TheMadLibrarian — I suspect you are quite correct.

    Showing a mark is famous is difficult—for example, “Avery Dennison” (whom you may have heard of) was held not to be a famous mark.

    That means that GW is restricted to claiming trademark infringement; I haven’t looked at the details of their mark there, but my gut reaction is that there’s no “likelihood of confusion” between MCA’s e-book and GW’s products.

  207. @Dave way the heck back this morning – It would be Space Jollies rather than Space Tommies.

    @C E Petit – While I know you’re a lawyer, and I’m not, I can’t see how this would be reasonably defensible. To pull up a strangely appropriate analogue from another gaming company a couple of decades back, TSR once trademarked ‘Nazi’ in the indicia and other material of an Indiana Jones role-playing game; it was an obvious and dumb mistake by an overzealous legal department, but imagine if they’d been stupid enough to attempt to defend that trademark in court? (After all, the original owners hadn’t been using it since 1944…)

  208. @Don Hillard: TSR was merely applying the trademark indicator given to them by Lucasfilm, as noted earlier in this thread. And Lucasfilm was trademarking *that specific use* as it pertained to the Indiana Jones property, not applying for a general trademark on the term “Nazi.”

    Yes, it looked to the layman like a gross over-reach, but in fact it was reasonably well-founded in IP law.

  209. I’ve got quite a few orks on my own desk…

    The reason she’s having trouble finding pro bono representation is that these issues are already being examined in the GW v Chapterhouse case mentioned above. Similar case except that GW was possibly slightly more within reason, since Chapterhouse actually makes parts and markets them as things people can use for modeling with their 40K models. In that case, he got sued and the firm Winston and Strawn agreed to take the case pro bono. It’s been going on for perhaps two years now, and was just about to enter the trial phase when GW issued an amended complaint (adding a bunch of extra accusations, though granted, pointing at stuff that CHS had done since the original suit) and CHS’s lawyers rapped GW for not disclosing their communications with the government (they were originally denied some of the copyrights they wanted to register on designs, hoping for a more lenient ruling from the judge in this case… which he gave them, but since he’s really supposed to defer to the gov’t on that issue, it’s all back up in the air.)

    GW’s got a long history of asserting that their IP rights cover everything with “space” or “marine” in the name, but they usually shy away from real fights (like the one they could have reasonably had with Blizzard many years ago, given that both Warcraft and Starcraft are their IP with the serial numbers filed off…) The Chapterhouse case is really blowing up on them and, with any luck, will have the good effect of defining just what is legal and isn’t legal in respect to this sort of thing. Precisely what GW didn’t want to happen – being lawsuit-happy let them take maximum advantage of the confusion, but a clear precedent the other way will shut that down hard.

    At any rate, usually when law firms take pro bono work, they’re interested in the underlying legal issue. This case doesn’t really raise any legal issues that aren’t already at stake and a couple of years into litigation already…

  210. @Andrew Hackard – As I asked prior, do you really think that that argument would prevail in court, had TSR attempted to defend it?

    And to take that argument as precedent, it would mean that GW would be trademarking “Space Marines” for a specific use – their game – as opposed to the rest of the world, yes?

  212. I was doing a bit of refreshing on Trademark Law. Apparently, trademarks on descriptive phrases or terms have different levels of protection. At the bottom end of the scale are ‘generic terms’ that have no protection because they cannot be trademarked. For instance no company can trademark the term ‘chocolate cake’, since it would create an unfair marketing advantage in a situation where many product manufacturers rely on being able to use the generic descriptive term ‘chocolate cake’. I believe the term ‘space marine’ should fit into that case. Curiously, its not the first time I recall some controversy over the term ‘Space Marine’ in relation to a game. See “Princess Ryan’s Space Marines” and “Princess Ryan’s Star Marines”.

  213. @Don: I long ago quit trying to predict what U.S. courts would do. I suspect that TSR would have attempted the defense that they were not claiming the trademark, merely respecting the trademark claimed by Lucasfilm (as, no doubt, their license required). They might get the suit thrown out, but they might well NOT have.

    I’m very carefully NOT wading into the current mess, for Reasons.

  214. This is the third use of patent law to discourage the use of words that I have come across in the past week. There is the case of Ray Felix, who has been sued for encroaching on Marvel/DC’s patent on use of the word “superhero” (for more: http://crispcomics.com/ray-felix-the-little-guy-who-dared-to-use-the-word-superhero/?goback=.gde_45166_member_210446924). There was an article in my local newspaper about another case (I’ll have to look for it now). I think it may be time to cue ominous music…

  215. This is not the first time they have tried to stop someone from using the term “space marine.” I have heard of at least one other case that they pressed years ago on this very subject. According to the account I heard they proceeded to lose big time in court based on the fact that the target of their actions had been using the term long before they even existed.

  216. @ Rachel

    *Draws circle around the Earth*

    Everything inside this bubble you can have. Everything outside this bubbles is mine mine mine!

  217. Also, my lawyer has just texted me that my patent application for “method of combat operations wherefore some guys kill some other guys by any means available” just got approved. The way I figure it, I’ll charge a royalty of $100Million per killing, at which point, world peace will break out.

    Interesting historical note: there is a patent on the atom bomb. It is held by the British Ministry of Defence (whose predecessor, the British Admiralty, obtained it in 1938 from the original inventor).
    British nuclear weapons are thus legal; so are US ones, under the terms of a 1940 intergovernmental agreement. But the Russians, the Chinese, the North Koreans, the Israelis and so on are all infringing our patent…

  218. Hi John,

    Just caught up with this odious shit. My suggestion (if – I’ve only skimmed comments – no-one has already come up with it):

    SFWA puts together an anthology called “Space Marines – This Ain’t No Fucking Game” or similar; ask for contributions from heavy weight SF authors around the world (and MCA Hogarth should have a story in there too.) Then look for a major publisher to put it out, and blow large raspberry in the face of GW.

    I’m in if you are :-)

  219. Gorman: New orders from HQ, people. “Space Marines” has been trademarked, so our very existence is violating intellectual property law. We’ve been ordered to stand down until JAG can get us a waiver.

    Apone: Allright, sweethearts, you heard the man and you know the drill! Assholes and elbows!

    Hicks: Oh, maaaaaan and I was getting short. Four more weeks and out, now I’m going to die on this rock. This ain’t fair man.

    Hudson: How do I get out of this chickenshit outfit?

    Apone: You secure that shit, Hudson!

  220. The guys who created the game Minecraft got sued for using the word ‘scrolls’ in an upcoming game by Bethesda Softworks the makers of ‘Elders Scrolls’ Game.

    Our patent and trademark laws need to change. Mark Cuban has had some very good blog posts on how this is costing companies alot of money and people jobs. Large companies are constantly suing each other for ‘copyright’ infringement (see Apple suing everyone).

    Google the company ‘Sco’ They claim to only the patent on Unix. They have used patent trolling to scare money out of HP, IBM, Oracle, etc… and other very large companies that sell Unix. They have been at it for years. A few years ago a judge basically said they were not allowed to sue anymore. However, they are now back and suing one company after another. I don’t think this company even has any products. They just sue.

    There was an article somewhere recently about how newegg.com saved the online retail industry. Some patent troll claimed they owned the patent for the checkout cart. Newegg fought them and won. If not for them, Amazon might be paying massive amounts of money to some patent troll.

    Patent trolling is really hurting innovation and costing jobs. These big complains about it, then do it to each other all the time.

  223. This is one of GW’s many silly attempts at bullying. It reminds me of years ago when the lady who started Renaissance Fairs wanted to copywrite the term Renaissance.

    PS space marine

  224. Heh, I’ve been meaning to buy Spots the Space Marine for ages and this has made me finally get round to it. And admittedly I haven’t bought a GW product for years, but this has just turned that habit into a principle.

  226. Google the company ‘Sco’ They claim to only the patent on Unix. They have used patent trolling to scare money out of HP, IBM, Oracle, etc… and other very large companies that sell Unix. They have been at it for years. A few years ago a judge basically said they were not allowed to sue anymore. However, they are now back and suing one company after another. I don’t think this company even has any products. They just sue.

    Actually, SCO is dead. They’ve converted their Chapter 11 filing to Chapter 7 and essentially, there isn’t any SCO anymore. And they didn’t scare money out of anyone. They sued IBM and Novell and lost, catastrophically.

  227. I just bought a copy of Spots the Space Marine on Smashwords – available in whatever format you want.

    So 1) Amazon’s policy lost them a sale, and 2) the publicity resulting from the bullying of an author led to me buying the author’s book (I always intended to after reading the online version, but hadn’t gotten around to it).

    It’s quite entertaining. Now I will also look into getting her book about running a Kickstarter campaign.

    Nyah, hyah – GW and Amazon.

  229. Just a small suggestion, regarding the possible compilation of a series of SF stories revolving around Space Marines theme: name it “Future games workshop” :)

  230. @Alex Beecroft: “And admittedly I haven’t bought a GW product for years…” Ironically, my last Games Workshop purchase was Warhammer 40,000: Space Marine for the PC.

  231. Does this mean that using the term “cow-orker” to describe the people with whom one associates at your place of employment is also verboten?

  234. Dear Games Workshop – I understand you’ve trademarked the term “Space Marines” which you probably adapted from my books, if not from many other authors’ books, and are trying to harass booksellers into not selling books by other authors who use the term.
    I’m dead, and you’re being an ass.
    Tomorrow morning, I’ll still be dead, but you’ll have the opportunity not to be an ass. Take it.

  235. My response to the mess: a Space Marines recruitment poster! It’s free to download, and I made art prints available for purchase, unfortunately I can’t make THOSE free. Share the image, folks, recruit some Space Marines!
    http://racerxmachina.deviantart.com/#/d5u3eyw
    I sent this to Ms Hogarth first, with best wishes. What a wild time for her!

  237. @Andrew Hackard – While I perhaps understand your Reasons ™, I do think it’s ironic that I learned of the TSR stupidity through a publication of your present company back in the day.

    I will not use the acronym IANAL, which sounds too much like something from Apple that while intriguing shouldn’t be discussed in polite company…but I did at least minor in Law in university, and one of the things that came up _constantly_ was the “reasonable person” standard. As in, “would a reasonable person (i.e. a juror) find this to be a convincing argument?” Neither the old TSR example nor the present GW one pass this test, as far as I’m concerned.

    And that’s the problem, as I think has been delineated elsewhere here: an indefensible argument, greeted by a “well, crap, who needs trouble?”…and thus complied with, adding weight to the next similarly ridiculous complaint.

  238. @ Don Hilliard

    And that’s the problem, as I think has been delineated elsewhere here: an indefensible argument, greeted by a “well, crap, who needs trouble?”…and thus complied with, adding weight to the next similarly ridiculous complaint.

    Yeah, it’s amazing how poorly the precedential law system functions when no one, whether a private person or a small business, can afford to risk loosing or spending the next aeon in litigation against a company with bottomless pockets and their own legal department. On the other hand, I suppose if your a big business it works swell.

    It sometimes seems that for all the legislation we’ve reformed to try to ensure that the law treats everyone equally, the courts have become commensurately inegalitarian by simply getting bogged down in bureaucratic excess. Now the mere threat of a suit holds nearly the same force as a judgement against the defendant, and companies that could stand up to the bullies, such as Amazon, instead cravenly do the bullies’ bidding.

  239. @Don: I think the “reasonable person” standard is a perfectly fine one to use. I also don’t think lawyers are reasonable people . . . at least as far as that legal standard goes. (I make no claims about the world at large, especially not where my lawyer sister can hear me. :-) )

  241. This is just stupid, the first people they need to take on if they want to enforce a claim on “Space Marine” are Blizzard. After all to an extent their “Space Marines” do bare more than a passing resemblence to the 40K space marines. But I suspect they know Blizzard could easily take them on and win so they are leaning on the little guys in the hope they don’t have the money to fight back. If I was younger and still bought their products I’d boycott them over this as it is I’ll ensure my son is discouraged from an interest in their games as he grows up. Space Marine is a generic term in sci-fi fiction and has been since before games workshop existed.

    I think a kickstarter should be started to raise funds to fight this case, for the good of sci-fi authors everywhere.

  243. http://www.comicbookresources.com/?page=article&id=6738 surely this demonstrates that games workshop are in the right here?

    No, it doesn’t. Next question?

    To put it more clearly, I don’t think that Games Workshop can demonstrate this:

    “Besides filing for a trademark, what Marvel and DC had to demonstrate was that, when consumers thought of the word “superhero,” that they thought of DC or Marvel. Surveys would have proven this. Therefore, it was considered to be reasonable that if some other product called itself “Superhero,” that a consumer would think the product came from DC or Marvel, which, in my opinion, is a reasonable claim”

    with regards to “space marines”

  244. It is interesting that the Trade Mark only counts in the title, you can use it as much as you like in a book essentially. How about going for Spot the Marine in Space :-) as the title and leaving the rest of the books as it is. Anyway since it’s back on Amazon I assume they have dropped it or Amazon have looked into it and decided their claim has no merit.

  245. GW have a massive history of “protecting their Trademark” and this is nothing new. If you review the web you will find countless gripes of GW lawyers bashing fan-sites, games that hint of GW products, and I recall a painting of citedel minitures site getting closed down.

  246. I think that GW is in trouble. Not simply because of this but also due to their marketing strategy and corperate greed as well as thirt unwillingness to admit when they are indeed in the wrong.
    I’ve been following (a little) thier case against Chapterhouse where the general unpreparadness of thier legal staff is almost criminal in itself. They wish to claim ownership over double headed eagles (which I’m sure the Russian Federation might comment on) Roman numerals, arrows, the term “mace” “Pole arm” “battle axe” and several other laughable common concepts. And as for some of their “original trademark concepts” they are blatant rip offs of other writers works and creations.
    “Space Marines” the “Eight-armed symbol of chaos” and a “God Emperor of Man” being just three.

  247. I hope they ARE in trouble, NeilS. Companies like that deserve to go down, and we shouldn’t spare them any regret. (I do feel sorry for the employees who haven’t been in any way involved in these decisions, and who will lose their jobs when the company gets its just deserts, but that’s about it.)

  248. Remember when TSR’s Indiana Jones Game amused everyone with the claim inside that everything in the manual was copyrighted — which meant they were claiming they’d copyrighted Nazis?

    It’s not so funny when a gaming company actually PULLS THIS STUNT.

    By analogy, if Games Workshop can claim that “space marines” is their trademark, then TSR should be able to claim “Elf” and “Dwarf” as their trademarks, and get Lord of the Rings and Snow White and the Seven Dwarves shut down as trademark infringements.

  249. @Xopher: I’d settle for a change in GW managerial staff and business policy and frank acknowledgement of their creative sources, but I suppose that’s unlikely to happen.

  250. @Greekgeek: The Indiana Jones thing has been commented on several times already. As regards the use of “elf” and “dwarf” by TSR, and, latterly, by Wizards of the Coast, it is worth noting here that roleplaying, wargaming, and video game producers commonly use “halfling” in place of the word “hobbit”, presumably so as not to call down the wrath of the Tolkien estate.

  251. NeilS, i thought like you until i read the actual complaint as to the iconography, the double headed eagle they were suing over was the particular stylised version they use under their TM name, the roman numerals/chevrons part was only an issue for GW when used in conjuction with the same stylised shoulder guard worn by Space marines, the weapon names in the end GW dropped them from the suit but they were an issue as Chapterhouse had used them with other GW themed (and TM) items. the fact that a US judge allowed most of the claims speaks volumes as to the validity of the claims.

    As for the book, i think the point being missed is that GW didnt apply to have the whole book taken down just the eBook version. They may have been concerned that the ebooks they sell (which are often the rule books for the game) when searched by users in Amazon, would also show Spot the Space Marine, which to a non fan of the Game may cause confusion as to what is GW and what isnt, the fact that they only asked for the eBook to be removed and not the paperback would indicate it wasnt so much the use of the word as to its use on the cover.

  252. Well, the word ‘hobbit’ really is the creative work of JRR Tolkien. He created an unattested compound *holbytla, in Old English, meaning “hole-builder,” and took it through the regular sound changes that relate OE to Modern English, and it came out ‘hobbit’. I don’t think anyone could dispute that the word belongs to him (notwithstanding arguments about the ridiculousness of copyright being inheritable etc.).

    Interestingly, if you do the same with “house-wife,” the OE is huswīf, and regular sound change turns it into Modern English ‘hussy’. Note that there is no asterisk in front of huswīf, because that’s a real OE compound, and it really is the source of our modern word ‘hussy’. So Tolkien made a bit of a leap by assuming the meaning wouldn’t change in all that time (since after all the words ‘housewife’ and ‘hussy’ aren’t particularly similar in meaning).

  253. @Xopher: True, though “halfling” is used as a synonym for “hobbit” in Tolkien’s legendarium, and the generic halflings of the gaming world tend to be more like Tolkien’s hobbits than not. My point is that the gaming world has essentially appropriated hobbits, but filed off the serial numbers, and that this is interesting because it means that one can effectively make use of a rather specific concept so long as one substitutes the name of that concept. This strikes me as ironic in light of GW’s complaint over the use of the term “space marine” by Hogarth, since not only is the term part of the sf lexicon, but Hogarth’s space marines are demonstrably not those of GW’s Warhammer 40,000 setting.

    Incidentally, I’m sure that GW et al. are well within their legal rights to make use of the term halfling, etc. I’m just remarking that the law is a funny old beast where these matters are concerned.

  254. I am stunned that “halfling” doesn’t bring the Muppet lawyers as well as Tolkiens’. Oh, those were gelflings. Still, syllable-lfling should be attracting them.

  255. Also, for those who would like to utilize the internet to maximize the change GW will see the light on this issue, I suggest sending a letter with the following contents:

    1 – reference to media coverage
    2 – statement of being a GW customer (if you are) or displeased outside observer
    3 – reference to dismay and willingness to spread the word of what GW is doing
    4 – reference to GW’s stock listing in the UK (GAW on the London exchange)
    5 – reference to the fact that GW is harming book sales that go partially to charity (wounded warrior project)
    6 – reference to the fact that the entity you are writing appears to be a more than 10% owner of the firm and you are concerned they support this conduct

    To the following:

    Investec Asset Management
    http://www.investec.com/products-and-services/united-states.html

    Notice the general enquiries tab on the right. You can email or snail mail. There may be a UK specific tab as well – I am in the US and get that one.

    And

    Sleep Zakaria and Company
    Attn: Nick Sleep and Qais Zakaria
    1a Burnsall St
    London SW3 3SR 6B

    If anyone has better contact info for SZC and wants to help, please post.

    Again, let me stress, be polite and coherent. However, be firm and be clear you intend to stop purchasing and express negative views of this action. If GW starts catching hell or fielding questions from their normally silent owners, behavior may change.

  256. Harley, I’m not at all certain that the term ‘halfling’ doesn’t predate Tolkien’s use of it. It sounds like it might be a calque from Norse. Diminutive humanoids abound in Norse legend (as in Celtic). I don’t know for sure though.

    Yes, the gaming ones are pretty much hobbits. But I’m also unsure how much of the nature of hobbits is original with Tolkien either. Did you know that there’s a Finnish character who is practically event-for-event identical with Turin Turambar? Tolkien borrowed heavily from the Romance/Epic/Saga tradition (most obviously from the Nibelungenlied).

  257. As a former player of the original fantasy Warhammer, I was thinking of getting into Warhammer 40K, but I don’t think I’ll bother now – I have a habit of refusing to trade with companies that behave in such bullish and despicable ways. I suspect that if Games Workshop pursues this, they risk making their brand toxic.

  258. I guess GW really got too greedy with this. There are many scifi titles and franchises using the term space marine. I also read on Wired magazine that they had a 3d model of a tank removed from a 3d printing service site because it was similar in style to one of their scale models. So apparently if you are a writer / painter / scale model maker if you even think about a mixing scifi and gothic in your work, you’re in trouble.

  260. @Chris Ogilvie: On the tangent, I don’t know much about how legal insurance operates in Europe so not sure I could give an informed opinion on how well it would port to Canada. We do have a sort of variety of that in the US, in that if you have auto or liability insurance and are sued your insurer is generally the entity funding the defense. But as for legal insurance (in the US, prepaid legal services), it’s tricky, because then you get into whether the insurance covers your type of lawsuit, and what the limits are (how much money do they have to spend defending you?), and a conflict of interest between you and your insurance company.

    In the US I think the larger problem is a distinct lack of affordable legal help and self-help services. My state is getting better about plain English legal forms for simple and common issues, like restraining orders or uncontested divorces, so that people don’t need lawyers much, but there’s nowhere near enough help.

  261. Some somewhat relivant stuff involving the GW v Chapterhouse rulings.
    – although GW had a ton of stuff thrown out and was actually quite unprepared for the case and it’s legal representitive unfamiliar with it’s own claims and mis-tagged “evidence”
    Shoulder-pad design in a particular minature was one of the few things that the court actually found in favor of GW – but none of it’s broad sweeping claims or “ownership” of Arrows, Cheverons, Roman Numerals etc…
    There are more in depth works on this including claims in particulair, transcrpts and evidence disclose which read like pure buffoonery. They are curently waiting fo rmore findings.
    http://www.belloflostsouls.net/2012/11/breaking-legalwatch-summary-judgement.html

    p.s.
    Space Marine.

  265. I am not surprised by GW doing this. Way back in early/mid 2000’s I set up a website just for me and my mates to use relating to for one of their tabletop games – yes I know ‘geek!’ :) Shortly after I received several threatening emails telling to stop using any reference to their name and games titles or they’ll sue me.
    It took a LOT of convincing that this was a just a fan site for me and my mates, no money was made from it, it had an obscure URL so no one would accidently find it. In the end I had to put loads of disclaimers all over the site to stop them taking action.

  268. The Space Marines, along with the Terran Federation Space Navy, were characters in H. Beam Piper’s Future History. Piper is a foundational science fiction writer whose stories were published and reprinted as beloved science fiction classics long before the Games Workshop ever existed. Piper’s book Little Fuzzy (copyright 1962) depicts “Ankle boots and red-striped trousers; Space Marines in dress blues.” (found on page 143 of the Ace Books paperback reprint, see also pg 120 of the modern collected reprint The Complete Fuzzy.) And on page 152, the little Fuzzies of the title are given ‘a little shoulder bag-a Marine Corps first aid pouch-slung from a webbing strap.” The Terran Federation Naval Base orbiting Zarathustra plays a pivotal role in the story, and ‘space marines’ are mentioned again in the sequel Fuzzy Sapiens (copyright 1964 by Piper as The Other Human Race, and copyright again by the Berkley Publishing Group in 1998 in their re-issue of all three classic Fuzzy Novels titled The Complete Fuzzy) as well as in the third book in the series, Fuzzies and Other People, published posthumously in 1984. On page 16 of Fuzzies and Other People, Piper again clearly mentions the ‘space marines’, to wit: “they and the men who operated them had been borrowed from the Space Marines.”
    The Space Marines are pictured prominently on the front cover of Federation, a 1981 paper back collection of Piper’s Future History stories prefaced by Jerry Pournelle. In that collection, the story Naudsonce contains the character of “Major Luis Gofredo, the Marine officer” in charge of a “joint Space Navy-Colonial Office expedition.”
    If anything, the term ‘space marine’ has long been proven to be in the public domain. Games Workshop has no stronger claim to it than the estates of H. Beam Piper, E.E. ‘Doc’ Smith, or RA. Heinlen. ‘Space Marine’ was not a term originated by Games Workshop, and it is not theirs to do with as they please. Space Marines are as generic a science fiction term as rocket ships and ray guns. Games Workshop might as well try to copyright BEM or ‘bug-eyed monster’, another SF classic. Or the moon.
    And to use this sort of spurious claim to prevent the publication of an author’s story simply because it uses the words ‘space marine’ in the title is the sort of corporate bullying that leads to boycotts, and an irretrievable tainting of the Games Workshop brand. Who wants to be associated with a bully?

  269. It’s a trademark. Not sure about UK law, but US law, you have to proactively defend it, or you risk losing it.

    They even said it, “Whenever we are informed of, or otherwise discover, a commercially available product whose title is or uses a Games Workshop trademark without our consent, we have no choice but to take reasonable action. We would be failing in our duty to our shareholders if we did not protect our property.”

    The problem however is this: A trademark does not give its owner any rights to an idea.

    Example:

    “Homeworld” is a trademark owned by THQ, now possibly Sega, covering novels amongst many others. Does this mean we can’t mention the word “Homeworld” in any works of fiction? NO.

  270. @Arnulfo
    ” They even said it, “Whenever we are informed of, or otherwise discover, a commercially available product whose title is or uses a Games Workshop trademark without our consent, we have no choice but to take reasonable action. We would be failing in our duty to our shareholders if we did not protect our property.””
    Except for the fact that they are NOT doing this with “big names” in any industry just small “Mom and Pop” design and modeling houses and writers.
    They are NOT going after anyone who can actually put up a legal fight (Pay legal fees) in hopes that these “notches in their belt” will create legal precedent. If your claims were true they would ardently be after *everyone* who used the term “Space Marine” in internet friendly lingo “they done goofed” in tying this in the first place – just as they will get more or less reamed in the Chapterhouse case.

  271. @nicoleandmaggie
    “I was not aware that games workshop owned Princess Ryan’s Space Marines. http://boardgamegeek.com/boardgame/24814/princess-ryans-space-marines”

    Note that in 1997 Princess Ryan’s Space Marines became Princess Ryan’s Star Marines. I am quite sure that money from GW to caused this to happen.
    http://boardgamegeek.com/boardgame/127/princess-ryans-star-marines

    @Krusatta
    Here is the Black Library listing for the reprinted version of the 1993 novel:
    http://www.blacklibrary.com/warhammer-40000/Space-Marine.html

WHATEVER


Taunting the tauntable since 1998
John Scalzi, proprietor – JS
Athena Scalzi, editor – AMS
About the site

Whatever Days
February 2013
S M T W T F S
 12
3456789
10111213141516
17181920212223
2425262728  
Whatarchives
Whatever Holiday Gift Guide 2023!

Need gifts for the holidays? The Whatever gift guide has you covered! Click on the links below for books, crafts, art and other cool stuff!
11/27: Traditionally Published Books
11/28: Non-Traditionally Published Books
11/29: Crafts, Art, Music and More
11/30: Fan Recommendations (Books and more)
12/1: Charities
The Big Idea

What's the Big Idea? Authors explaining the the big ideas behind their latest works, in their own words. See the latest Big Ideas!

Authors/Editors/Publicists: for information on how to participate, click here.

Translate Whatever
Random Whatever
Click this link -- and you'll be taken to a random Whatever entry in the archive. Which one will you get? Got me!
Subscribe to Whatever

%d bloggers like this: