Games Workshop files trademark infringement claim against e-book author

[morleydotes]

Originally Posted by smurf

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

IF you made a living off your works, it would / should be your "knee jerk reaction", or else why do it?

Pat

[sir-talen]

Unsurprisingly, Ms. Hogarth has determined that she doesn't have the resources to engage in a legal battle with GW over their claim to an all encompassing trademark for the use of the word "Space Marine", noting that the cost to engage a lawyer at anything besides pro bono rates would cost more than she's ever made off her book.

At this point, her only means to move forward would be though donations from her readers or other concerned parties. Please note that if anyone here would be willing to contribute, keep in mind that a percentage of her profits from "Spots" goes towards the Wounded Warrior Project.

Update!: In the past day or two since Hogarth posted her latest update, there's been a nice explosion of favorable publicity for her on the net, mostly following the narrative of "Housewife vs. Big Mean Corporation". And now the story has hit the mainstream media via The Guardian.

[Hans Rancke-Madsen]

Originally Posted by merry442

Mind you, it is within their rights.

I fail to see how a trademark for game supplies gives them any rights to a literary trope that predates the founding of the company by a number of decades.

I wonder why the copyright owners of various literary works featuring the term aren't clamoring for the chance to challenge GW's outrageous claim.

(The above is, of course, just my opinion.)


Hans

[Andrew Hackard]

Originally Posted by Hans Rancke-Madsen

I fail to see how a trademark for game supplies gives them any rights to a literary trope that predates the founding of the company by a number of decades.

The trademark is broader than just game materials -- in fact, it specifically includes fiction.

Trademark law requires companies to defend their trademarks if they wish to retain them. Whether those trademarks should be retained is an issue for the relevant trademark offices and, ultimately, the courts -- but they've been granted the trademark and, for now, are acting within not only their rights but their obligations as well.

[sir_pudding]

It seems like a company with so much obviously derivative IP would be treading on very thin ice here. In a fair world H.R. Giger and Ridley Scott should be suing them.

[Hans Rancke-Madsen]

Originally Posted by Andrew Hackard

Trademark law requires companies to defend their trademarks if they wish to retain them. Whether those trademarks should be retained is an issue for the relevant trademark offices and, ultimately, the courts -- but they've been granted the trademark and, for now, are acting within not only their rights but their obligations as well.

Legal and right are not always the same, and while legal may be the purview of the courts, right and wrong is something everyone is entitled to have an opinion about. If the law permits GW to prevent writers from using a term that predates the founding of the company by decades, the law is wrong; doubly so if the law requires GW to act like jerks. (Which, IMO they are.)

Originally Posted by sir_pudding

It seems like a company with so much obviously derivative IP would be treading on very thin ice here. In a fair world H.R. Giger and Ridley Scott should be suing them.

Not to mention the ill will generated in their customer base.


Hans

[thrash]

I suppose it doesn't matter that there was even a miniatures wargame named "Space Marines" published by FanTac Games in 1977?

[Andrew Hackard]

Originally Posted by thrash

I suppose it doesn't matter that there was even a miniatures wargame named "Space Marines" published by FanTac Games in 1977?

Not if it was out of print for a while before GW submitted their trademark claim. An abandoned trademark may be claimed by a new party -- witness the new TSR, publishers of Gygax Magazine.

[Mister Ed]

Originally Posted by Andrew Hackard

The trademark is broader than just game materials -- in fact, it specifically includes fiction.

Trademark law requires companies to defend their trademarks if they wish to retain them. Whether those trademarks should be retained is an issue for the relevant trademark offices and, ultimately, the courts -- but they've been granted the trademark and, for now, are acting within not only their rights but their obligations as well.

Except (if the author is to be believed) they don't HAVE a US Trademark that covers printed material, their European Trademark does not cover electronic media, and the print version of the book is not sold in Europe (the only place their European Trademark is enforceable).

So, no, it doesn't actually seem like they are within their rights, nor are they required by law to defend a Trademark that they don't actually HAVE. But that does not, apparently stop them from trying.

So yes, the courts are the ones to decide if they should have been granted the trademark in the first place (which seems absurd on the face of it, but I'm no lawyer), but the situation SEEMS to be one where they are trying to enforce Trademark rights that they don't actually possess...

[Archangel Beth]

*nod* The quote is

Originally Posted by http://mcahogarth.org/?p=10593

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.

The fastest way to look at what they definitely have as a registered trademark is to go to http://www.uspto.gov/trademarks/index.jsp and search... (The session IDs expire; can't make a direct link.)

Originally Posted by and copypasta, editing somewhat

Word Mark SPACE MARINE
Goods and Services 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. FIRST USE: 19870900. FIRST USE IN COMMERCE: 19871000
Mark Drawing Code (1) TYPED DRAWING
Serial Number 74186534
Filing Date July 19, 1991
Published for Opposition November 23, 1993
Registration Number 1922180
Registration Date September 26, 1995
Owner (REGISTRANT) GAMES WORKSHOP LIMITED CORPORATION UNITED KINGDOM Willow Road, Lenton Eastwood Nottingham NG7 2W5 UNITED KINGDOM
Type of Mark TRADEMARK
Renewal 1ST RENEWAL 20051125
Live/Dead Indicator LIVE

So the question becomes: can they actually have a common law (unregistered) trademark on "space marine" in fiction? A number of authors (including Elizabeth Moon, and apparently Scalzi, current president of SFWA) are taking the stance that one can no more have a trademark on "space marine" in fiction than one can have a trademark on "sliced bread" in the grocery store, "in-line skates" in the sporting goods store, "smartphones" in the cell phone store, or "flying discs" at the toy store. After all, "soldiers & space marines" is a category at Barnes & Noble: http://www.barnesandnoble.com/s/?category_id=1439027 .

(I.e., no one disputes that "Warhammer 40K Space Marines" would be a valid trademark, just as Xerox photocopiers, Rollerblade in-line skates, and Frisbee flying discs are all valid.)

Ze spouse considers that, since Games Workshop seems to have functioning lawyers, if they thought they could get "space marine" trademarked in fiction, they would have registered it already. However, since the Heinlein estate has kept his books -- which contain references to "space-marines" -- in print, the term has not actually fallen out of "generic" usage. The TV Tropes and Wikipedia entries for "Space Marine" certainly suggest that the phrase does not automatically bring only the Warhammer Space Marines to mind.

(Further, even in the UK, common law trademark infringement requires that there be the potential for confusion (http://www.ipo.gov.uk/types/tm/t-other/t-infringe.htm) -- something that is fairly unlikely in this case, as Games Workshop only has genetically modified all-male Space Marines, whereas the book in question is named after the female protagonist.)

I suppose there's some chance that GW's claim of Common Law Trademark might hold water, but that they've gone after a small self-publisher, and not John Ringo (who, according to Wikipedia, has Allied Space Marines in his books)? This suggests (though of course we don't know if they sent a letter to Baen, who sent back raspberries*) they are not actually pursuing all "infringement," but only those "infringers" who are unlikely to be able to retain a lawyer to fight back -- which would mean they aren't adequately protecting their trademark in the first place?


*If you send a letter to an "infringer" who says, "Dude, pull the other one, it's got bells on," and then you take no further action, and their books remain available... Is that sufficient "defense" of the trademark to still validly go after other targets?