Home » Trademark » Games Workshop trademark bullying goes thermonuclear: now they say you can’t use “space marine” in science fiction

Games Workshop trademark bullying goes thermonuclear: now they say you can’t use “space marine” in science fiction

7 February 2013

From Boing Boing:

For years, there have been stories about Games Workshop being trademark bullies and sending threats to people who use the term “space marine” in connection with games. But now that they’ve started publishing ebooks, Games Workshop has begun to assert a trademark on the generic, widely used, very old term “space marine” in connection with science fiction literature.

MCA Hogarth, an author who has published several novels in ebook form, has had her book “Spots the Space Marine” taken down on Amazon in response to a legal threat from Games Workshop.

. . . .

* Amazon didn’t have to honor the takedown notice. Takedown notices are a copyright thing, a creature of the Digital Millennium Copyright Act. They don’t apply to trademark claims. This is Amazon taking voluntary steps that are in no way required in law.

Link to the rest at Boing Boing and thanks to SGL and many others for the tip.

Trademark

42 Comments to “Games Workshop trademark bullying goes thermonuclear: now they say you can’t use “space marine” in science fiction”

  1. They can try taking it up with John Ringo and Travis Taylor at Baen among many others.
    Glen Morgan and James Wong of the late, lamented SPACE ABOVE AND BEYOND might also have a thing or two to say.
    And I seem to remember the Lensmen’s Galactic Patrol relying on “Valerian Space Marines”.
    I suspect those folkks are going to have a tough time enforcing that trademark in novels.

    • There’s reams of prior art. [nod] GW is being a cowardly bully — note that they went after an indie writer rather than one of the big publishers who are “infringing” just as heavily on their supposed trademark.

      Scalzi opined that this’d be a great pro bono case for the EFF. I agree, especially if GW keeps targetting the little guys while avoiding the 800-pound gorillas of the industry. Someone definitely needs to spank GW hard for this piece of idiocy.

      Angie

      • And right up with the big boys is the entire Alien franchise, including the highly-anticipated Aliens Colonial Marines video game, to be released in five days. In this case, GW is going to have to take on 20th Century Fox, Gearbox Interactive (makers of Borderlands), and Sega.

        I’m curious to see where this goes.

    • You think anyone would mourn if Travis Taylor and John Ringo had their books delisted?

      • They have a lot of fans. John Ringo especially has a ton. Tastes vary, and fans get to choose what they like.

      • Have you actually *read* their books?
        Try VORPAL BLADE.
        It’s old-school “valiant space explorers” boldly going and all that. Updated for modern times.
        The tongue even presses against the cheek from time to time. (The Anime Zone effect comes to mind.)
        The gents are competent writers telling fun stories that *sell*.
        So, yes; a *lot* of us would mourn if the VORPAL BLADE series got de-listed or didn’t continue.
        I, for one, want to see where the Miriam Moon arc ends up. Her cat is a hoot, too.

        • I’ve read something by Ringo. He’s nowhere near competent.

          • Tastes vary.
            He’s competent enough to outsell many in the genre and beyond. And his stories can be fun if you appreciate spoofs and romps.
            He rattles cages, often political ones, so he has detractors but it is for the ideas he presents, not storytelling failures.

            Which is all fine by me.
            I would hate for any book to be delisted for bogus trademark claims or for unpopular ideas. If anything, the more unpopular the idea, the more interested I am it.

      • That wasn’t even snappy. 3 at best, and only because you didn’t spell anything wrong.

  2. Where is the SFWA in support of defending this novelist?

    • The SFWA won’t defend self-published writers. And as noted above, GW isn’t going after the folks who are.

      • Fortunately, someone linked Elizabeth Moon to the original post, and she is a SFWA member with some Marine standing. (As in, ex-Marine. Also writes about soldiers in powered armor, aka Space Marines…)

        • Neil Gaiman jumped on the Twitter bandwagon. It’s good to see some of the “names” jumping to defend Hogarth. But it is enough to make GW and Amazon back down and reinstate Hogarth’s e-book?

          • The ebook is back as of last evening, fairly late, so someone blinked. My money is on Amazon, who’ve shown themselves to be more sensitive to internet controversy than GW — and whom the author has carefully not been mentioning with more than the bare facts.

            It’s also possible that Amazon had some prodding behind the scenes from Tor and/or Baen people.

            There’s one final thing that might be the case, but it’s tricksy and mean and I’m not going to talk about it on a web-searchable page.

            I’m not changing my twitter name from Space Marine McCoy till I feel the term (or at least her book) is safe. >_>

      • The SFWA won’t defend non-members (and Hogarth has confirmed she let her membership slip) but the current president of the SFWA has blogged about it and helped feed the ever increasing inferno, which has included Popehat sending out the Popehat signal to try to get her a pro-bono lawyer.

        Making Light has also mentioned it (run by editors of Tor Books).

        It’s not like everyone is saying “hurr hurr, screw you self-pubber.”

      • They probably need to figure out that pretty soon the authors that need their help the most are the ones who are self- or indie-published.

        MCA is a pretty successful webfiction author that managed to leverage that aspect of her writing life into some pretty impressive success with ebooks. If any non-trad published author deserved a little bit of a hand, I’d say MCA is the author.

  3. I’ve just developed a strong desire to write, “Jock Smith, Space Marine”.

  4. Kate Paulk, over at madgeniusclub.com, has suggested a concerted mosquito attack on GW: Twitter, etc., mocking them for doing something so idiotic as to try to grab a term which has been common parlance since before they existed.

    I just checked Amazon: if Spots the Space Marine was removed, it is back up, WITH its reviews.

    I hope MCA Hogarth gets positive publicity from this attack by GW – Spots is actually quite entertaining.

    • Shouldn’t post before FINISHING the morning caffeine: the KINDLE version was removed. And is not available.

      I’m hoping Amazon will do the right thing (might need to be prodded) and review the takedown quickly and put it back up.

  5. Didn’t we go through the same kind of thing a few months ago with that Jazan Wild idiot and “Carnival of Souls?”

  6. WTF? Unbelievable. Heinlein had space-based marines in Space Cadet, published in 1948 (“They know we don’t have a contingent of Marines aboard, so obviously they’re not expecting us to mount a police action.”).

    I wonder who thought this genius move even remotely resembled a good idea?

  7. Speaking as someone who has played GW games and is still familiar with their work, is the fact that they have never been shy about borrowing ideas from other. Their flagship game Warhammer is based in a setting that is a blatant Middle Earth copy, the Space Hulk game could easily be called ‘Aliens the board game’.

    There have been abuses of the GW setting – most notable one where someone ripped out someone else Fan Fiction, a piece of GW art work and stuck it up on Amazon. But this smacks of a large company where either no one has engaged their brain or a pretty cynical attempt to grab what is not theirs.

  8. And there’s an update by the author here:

    http://mcahogarth.org/?p=10638

  9. Was Speculations.com really that long ago? I used to love that site.

    Edit: ok, that went into the wrong box :)

    I think this is a silly DCMA, and would get a lawyer to quote tortious interferene with contracts, and (in the uk) reserve the right to apply for a vexatious litegant order.

    • I am probably going to regret this, but I can’t take it any more.

      THIS HAS NOTHING TO DO WITH THE DMCA. THIS IS A TRADEMARK MATTER.

      I’m sorry. I jut couldn’t take it any more. I feel better now. I need a hug.

      • THIS HAS NOTHING TO DO WITH THE DMCA. THIS IS A TRADEMARK MATTER.

        That has been noticed. The fact that GW used a GMCA takedown to harass someone on a trademark issue is one of the problems with this whole situation. [wry smile]

        Angie

        • Do we know for sure that GW issued a DMCA takedown notice? Or was it just an ordinary trademark C&D or even just a “we think it infringes, do something or we will?”

          • [runs off to do some research]

            Possibly not. :/ Everyone and their brother-in-law has been saying “DMCA,” and some folks have pointed out that DMCA doesn’t apply to trademarks (I think I saw that first in Cory Doctorow’s post, but wouldn’t swear to it) and there was some discussion about that without any protests, so I assumed it was actually a DMCA. [hides under keyboard] But I just checked Ms. Hogarth’s original post from December, which I hadn’t read before, and she doesn’t mention a DMCA.

            It looks like this is a case where someone heard “an infringement notice” and assumed it had to be a DMCA takedown, and that assumption got passed around. So fine, Amazon is (sorta) off the hook about the format of the request.

            GW is still not, to our knowledge, going after the bigger publishers yet, though. Assuming this “common law” thing is legitimate (which I can’t imagine, but then I’m not a lawyer so my imagination might simply not run in the right directions) aren’t they required to go after the big publishers who publish books that mention space marines? You’re required to defend a trademark, yes? So if they don’t send infringement notices to Baen and Tor and anyone who might have an anthology out containing “Captain Binks of the Space Marines” from 1938 or whenever it was, they’re in danger of losing their trademark anyway, yes?

            If they assert a common law trademark in the area of fiction/books, but fail to pursue infringement by the big publishers, could they lose the whole thing? That sounds nicely justice-like to me right now. [wry smile]

            Angie

            • It is a common misconception that a trademark holder is required to defend their trademarks. It is so common – and such a useful simplification of the real situation which is more complex – that even trademark attorneys use it.

              It is, however, most emphatically not true.

              The risk is that failing to defend a mark may cause its use in a way incompatible with the idea that it serves as an identifying mark as to the source of a good or service, and that such use may cause the “genericization” of the mark to the point where it is no longer enforceable. And the fact that another prominent infringement took place unchallenged may be probative in any evaluation of an alleged infringement on the grounds that the mark has become generic. But it is NOT a defense to a claim of trademark infringement to say that another infringer has not been similarly accused. Not, not, not. There are various theories of damage reduction and so forth which might apply. But as to the basic question of trademark infringement the presence of other alleged infringers is totally irrelevant.

              Suppose I start Space Marine Publishing, Inc. I apply for a trademark (actually, a service mark) registration on “Space Marine” for publishing books. It is granted. Then along comes Ms. Hogarth, who writes a book called “Spots the Space Marine.”

              Is she infringing? Arguably. However, she is not using the mark in a manner associated with publishing books. (Please note that this example is purposefully different from the instant case: it is for exemplary purposes only.) She is using it on a book, which presumably also has a publisher and a mark associated with that publisher, registered or not. I may, at my discretion, decline to take any action, and my trademark is in little danger.

              To make the example closer to a real life possibility, suppose I write a book called “Penguin,” about a penguin. (Stay with me, I know this is intricate.) I publish my book. The publishing house called “Penguin” might make an argument that their presumably registered mark for books is being infringed, might be diluted, and is in danger of tooth decay (beak decay?) because of my book bearing the same word prominently on its cover.

              Or, they might say, “Hey. It’s a book about penguins. Penguins are funny.” and go on about their business.

              If they were to do this latter, I don’t know any trademark attorneys who would seriously argue that they were endangering their trademark by not at least sending a nasty letter demanding some kind of disclaimer on the book. Certainly this one would not.

  10. Hi,
    My name is Dave “Knighthawk” Simpson. I host a Youtube channel called Gamers on Games. We just did an interview with Maggie Hogarth about her trademark dispute with Games Workshop. Please watch, subscribe, and share! We really want to help rally more support for her. Thanks!

    http://youtu.be/JnSTuSW5w7E
    http://www.youtube.com/gamersongames

  11. One of the steps in my pre-pub process is do due diligence on Trademarks / Copyright searches etc before publishing my works, so I was interested to see what TMs this company has.

    You can search various TM databases online (links at the end for interested people) so I jumped on the US, the UK, the Aus and the Canadian TM databases. GW Ltd has registered TMs in the US and the UK for the word mark “Space Marine” but when you burrow deeper and look at the actual goods & services / classes registered, they don’t list or own any classes about sci-fi or fiction or electronic books or books in general; none of that is registered at all. Mostly they registered for toys, electronic and other games, models etc, which is I guess what their company makes.

    So unless they are somehow equating electronic games with electronic books … which would be weird!

    I am not a lawyer, so maybe I am wrong in my assertion, but I basically understood that as long as your own product can’t be confused with the other company’s product and if you didn’t use the exact classes that are registered in a Trade Mark (for a Word Mark), you could still use those words and you wouldn’t be infringing.

    So for this case, as long as you didn’t try and use the word mark “Space Marine” as the label for your own brand of electronic games or any other class that GW Ltd have registered that mark for, then you’re fine legally to use it for any other purpose. Especially since the word mark in question seems to be a generic mark and not one that everyone automatically associates with that company. I always thought that TMs had to be very specific to be granted in the first place.

    While I understand TM owners must protect their marks from dilution and that Amazon is just covering its backside here … I can’t see how that games company has any right to say that they own outright the “Space Marine” string of words. And I don’t think the ‘passing off’ thing would count either.

    But I’m sure PG or Mark Cabot will correct me if I’m wrong *g*

    .

    For the writers or curious, here are some important links that I’ve found invaluable:

    * US Patent & Trademark Office
    http://www.uspto.gov/

    * Intellectual Property Office UK
    http://www.ipo.gov.uk/

    * Canadian Intellectual Property Office (sometimes that link doesn’t work, just Google it in that case)
    http://www.cipo.ic.gc.ca

    * IP Australia
    http://www.ipaustralia.gov.au/

    (you can search through registered patent and trademark databases on all the above links)

    Also, another good one:

    * Chilling Effects – FAQ about Trademarks
    http://www.chillingeffects.org/trademark/faq

    • I basically understood that as long as your own product can’t be confused with the other company’s product and if you didn’t use the exact classes that are registered in a Trade Mark (for a Word Mark), you could still use those words and you wouldn’t be infringing.

      This is generally right.

      Except when it’s wrong.

      The problem is, it can be very hard to tell which is the case. I have going on twenty years of experience at this and even I often throw up my hands and say, “Damned if I know.” When I see extensive lay discussions of this topic I just want to put my head down on my desk and sob. I know *you* don’t mean it like this, but the thought that forms in my head is often “IF IT’S SO EASY TO TELL THEN YOU DO IT!”

      It all boils down to the question of “likelihood of confusion.” (We’re not talking about dilution right now. I SAID WE’RE NOT TALKING ABOUT DILUTION RIGHT NOW.) This is a question of fact*. This is a phrase that gives attorneys the galloping shudders, especially when trying to explain how you construct legal opinions about questions of fact. But in very general terms (and before anybody responds see next paragraph) it means you can’t be sure that it’s so easy as “they have a registration for games, the work in question is a book, case closed.”

      They also sell books based on games. They may have common-law rights in the mark regarding which the registration is a piece of probative evidence especially since they sell books based on games which are sold in a registered class. I haven’t read the letter. I don’t know if they claimed they had a registered mark for books. (That would have been very foolish based on their USPTO file but see next sentence.) I haven’t looked at the UK registrations. I don’t know if they do have a registered mark for books in the UK. If they do that might, or might not, grant them certain legal rights in American courts. It is just not. That. Simple.

      The especially frustrating part is that when an attorney or some other reasonably knowledgeable person tries to offer some comment in such discussion, some well-meaning (usually) and intelligent (ditto) person who has run across some spectacularly bad example** which appears to contradict the comment will immediately pop up and say, “Well, obviously this is totally wrong because this one time this completely opposite thing happened.” You have no idea what this does to us. It’s bad enough when clients do it (and they do. Endlessly.) But one reason you don’t see more lawyers participating in this kind of discussion is that many of us just don’t have the will to live to spare.

      *Except when it’s a mixed question of fact and law AND I SAID WE’RE NOT TALKING ABOUT THAT RIGHT NOW. I DID. YOU DIDN’T HEAR ME. SHUT UP.

      **When I was in grade school, a teacher asked the class whether things got bigger or smaller when they got cold. I said, “They get bigger.” She said that that was wrong. I said, “I left a bottle of pop in the freezer the other night and it blew up. The pop got bigger when it got cold.” I often think of this when I read lay discussions of legal principles especially IP principles.

      • They claimed common law trademark in an email to the author, according to the author. From what research has found, and/or what they said to her (it’s early, my brain may be malfunctioning), they have a UK trademark on the games, and also on “paper products,” which (I’m pretty sure this is hearsay) they claimed (to her) includes books.

        On the other hand, the existing fiction community seems to be of the opinion that “space marine” is to fiction as “sliced bread” is to the grocery aisle… :)

  12. Looks like there is alot of support for this author on the net.

    That’s pretty cool. I’m glad that the little guy can now muster enough support to fight back against big bullies. I appreciated what Angie pointed out – they are going for the indies, not the big names.

    Bullies. I’m glad they are being held accountable!

  13. Games Workshop is a horrible company. I detest them and their products many of which are ripped off ideas from other franchises. I will make sure not to buy any of their junk. I am contacting some big time gamers who run blogs regarding this.

    GW you REALLY don’t understand the internet generation!

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