Games Workshop files trademark infringement claim against e-book author

[sir-talen]

Summary: M.C.A. Hogarth, an independent artist and self-published author is being hit with a trademark infringement claim by GW over her script-novel Spots the Space Marine: Defense of the Fiddler, under the idea that GW has exclusive copyright to the phrase "Space Marine".

Mrs. Hogarth disagrees, pointing out the relative trademark covers, quote:

IC 028. US 022. G & S: board games, parlor games, war games, hobby games, toy models and miniatures of buildings, scenery, figures, automobiles, vehicles, planes, trains and card games and paint, sold therewith

Note that fiction is not included there, and further the cover art of the book, especially the design of the armor (what you can see of it), in no way resembles GW's house style for their 40k universe, nor does the any of the history presented in the book. [1]

I'm trying to stay reasonably non-inflammatory about this. If someone self-published a book about science-fiction tank warfare with the word "Ogre" anywhere on the cover, I'm sure SJG would have Words with them. On the other hand the term "Space Marine" has been in fiction since at least the days of Doc Smith, and it seems grossly unfair that GW would come down on Hogarth, who probably hasn't made even $5k off the book and likely a lot less.

Unfortunately he with the biggest legal fund usually wins, and it doesn't look like Hogarth has much of a chance here.

[1] They're near-future USMC for the record.

[adm]

Didn't the Bond film Moonraker have Space Marines? USMC no less, IIRC.

[sir-talen]

Originally Posted by adm

Didn't the Bond film Moonraker have Space Marines? USMC no less, IIRC.

Good point, though I'm not sure they were ever specifically addressed as "space marines" which appears to be the sticky bit.

[Polydamas]

They are about 60 years too late to get a valid trademark, so I suspect that they just intend to inflict legal costs.

Andre Norton, Star Hunter (1961): "And a scarred, ex-Space Marine had blaster-flamed one of the Star-and-Comet dealers into charred ash."

A TV show under consideration in 1952 was "Kit Carter, Space Marine."

Heinlein's Space Cadet (1948) has the hero think of quitting the Patrol for the Space Marines until an old-Heinlein-hero gives him a lecture about human personality types.

[David L Pulver]

Originally Posted by sir-talen

Summary: M.C.A. Hogarth, an independent artist and self-published author is being hit with a trademark infringement claim by GW over her script-novel Spots the Space Marine: Defense of the Fiddler, under the idea that GW has exclusive copyright to the phrase "Space Marine".

Mrs. Hogarth disagrees, pointing out the relative trademark covers, quote:

IC 028. US 022. G & S: board games, parlor games, war games, hobby games, toy models and miniatures of buildings, scenery, figures, automobiles, vehicles, planes, trains and card games and paint, sold therewith

On the face of it, the cover and other trade dress of Spots Marine book and its ad copy would seem to make confusion unlikely.

Regarding trademark registration... one can still sue for someone using an unregistered trademark (TM rather than (r). It's possible Space Marines, while registered for computer games, figures, etc., is an unregistered GW trademark for novels.

Given all the GW novels with Space Marine in their series title (e.g., Space Marine Battles, etc.) it might not be unlikely if some had a TM listed somewhere; most of the novels also include a blanket trademark listing claiming trademark protection for significant names of institutions and people in their universe. How well such would fly is another question, but IANAL.

Individual titles can't be trademarked, but trademark law generally aggressively protects series titles in favor of the series.

Another possibility: perhaps GW might argue that Space Marine is a "famous trademark" (though that might be debatable as to whether it's a household name or not). If they did, it lets them try to sue under the trademark dilution law, to avoid dilution even if there's no direct competition or risk of consumer confusion. (I guess this means that if Coco-Cola don't have a trademark on hotels but someone wanted to open a hotel chain called the Coco-Cola they'd risk a lawsuit for trademark dilution).

[David L Pulver]

Although Space Marine has a long history in SF, it seems to have been rarely used as a book title - there's the 1930s story it originated in (any rights probably long lapsed) but the term seems more common as a passing mention in the text of a book, then one that was actually used. Actually seems to have been less used than some stuff like stargate or singularity...

[sir-talen]

Ms. Hogarth has spoken on the phone with Games Workshop reps. Apparently their basis for trying to block her novel is from their European Union Class 16 Trademark, which is as follows:

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks

Note that there's nothing about e-books in that, and while "Spots" is available in a print edition through CreateSpace, Hogarth hasn't toggled it for sale in Europe.

She also says, "I’ve had some positive discussions with lawyers on my next steps, and am now researching lawyers with specialties in international trademark law. If you know of any such people (or are one), I’d like to hear from you!"

[merry442]

Originally Posted by sir-talen

Ms. Hogarth has spoken on the phone with Games Workshop reps. Apparently their basis for trying to block her novel is from their European Union Class 16 Trademark, which is as follows:

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks

Note that there's nothing about e-books in that, and while "Spots" is available in a print edition through CreateSpace, Hogarth hasn't toggled it for sale in Europe.

She also says, "I’ve had some positive discussions with lawyers on my next steps, and am now researching lawyers with specialties in international trademark law. If you know of any such people (or are one), I’d like to hear from you!"

Unfortunately, "derivative works" (like the one above, "Spots the Space Marine")) are often covered by a "fair use" or a logo license that only provides for non-commercial use of a games ideas, mechanics and setting. E-books are included in this by default since they are game-related derivative works. I know this causes a major headache, but the company has a right to conserve their intellectual property (that's how they see it). European markets have every right to block this use of game material and amazon is probably just following suit to avoid future problems.

Funny, I don't see how "space marine" is a unique trademark--it's just two words put next to each other and then put on the cover of a book. If Space Marine is a direct transplant from Heinlein, it would probably make sence to rename the book to something else.

To illustrate this principle, suppose you used "Tales from the Dark Side" as a title of a novel expanding the role of Darth Vader as the supreme (but tragically misunderstood) ruler of the Galactic Empire. According to this law, ou would be infringing again. It's sad and unreasonable but it is the law The law doesn't always favor game designers or writers. Artists starve while lawyers become wealthy. Solution: become a lawyer, not an artist

[smurf]

It's GW's knee jerk reaction to any enchroachment on tm.

[merry442]

Originally Posted by smurf

It's GW's knee jerk reaction to any enchroachment on tm.

Mind you, it is within their rights