Games Workshop's latest...

[seawasp]

... stupidity is probably already known to everyone on my lists, as it's been reported widely, but in short, they're trying to enforce a trademark claim on the term "Space Marine" used in titles of books. While this is small potatoes next to all the real problems of the world, this has sufficiently annoyed me that I have written Games Workshop directly; the following is the text of said letter.



    It has come to my attention that Games Workshop is attempting to enforce a trademark on the phrase "Space Marine", specifically on titles of books, and currently doing so against an independent author who is not supplied with resources to challenge the legality of this claim.

    I am a long-term gamer, SF reader, and SF/F author, and I find this a ludicrous, and offensive, action on the part of Games Workshop. The term "Space Marine" has a long provenance in science fiction, going back to at least E. E. "Doc" Smith's "Lensman" series (VanBuskirk, one of the main characters in the early Lensman series, was a space marine, stated to be such, and led companies of armored space marines in combat).

    In addition, even within the GAMING field, the term "Space Marine" has not only been previously used, but was used in the title of a gaming product -- "Space Marines", first issued by FanTac in 1977 and later by FGU in 1980 (and the latter version tied into their larger Space Opera universe). It is quite clear that such a trademark should never have been granted, as it is a long-standing term of art in the SF/Space opera field, and an obvious one at that.

    Several modern SF series incorporate Space Marines -- those by David Weber and Elizabeth Moon, for example -- and there is no reason, nor justification, for anyone to say they could not choose to use those words as part of the title of a forthcoming book.

    I will be advising all of my gaming friends to not purchase any GW products and to avoid all associated games until such time as you appear to come to your senses. If this course of action is continued, I will contact all the other authors who may have an interest in this situation, and organizations such as SFWA, to address it in a more legal fashion.

    I hope that your legal department will recognize this is a stupid, short-sighted, and ultimately self-destructive tactic on their part and leave other authors alone.

            Sincerely,

                    Ryk E. Spoor
                    3 Glenwood Road
                    Troy, NY 12180
                    (518) 283-0907

Comments

[doc-lemming.livejournal.com]

While I applaud your sentiments and agree with you, twenty minutes of Googling has shown me that common law trademarks aren't granted or registered; they just are. In fact, you can apparently register a trademark even if somebody else used it, so long as they've abandoned it. (I dunno what the courts consider abandoning a trademark.) Two people can even use the same trademark, so long as they're separated by geography (and maybe by other things).

Essentially, Games Workshop is saying, "Hey, there's this term that was lying around and nobody was using it. So we started using it, and now when people see the term 'Space Marine,' they think of us. So don't nobody else use it, because we have no quality control over your product and we don't want them to buy your stuff thinking they'll get a Games Workshop product. By using the phrase we use, you're confusing people and damaging our good name!"

Now, I happen to think that they are in fact damaging their good name by doing this, and I think pointing that out (as you do) is useful in getting them to change their minds.

John

[argonel.livejournal.com]

Having purchased a few of their "fine" rulebooks I am quite confident that Ms Hogarths writing in no way represents their quality. From here live journal posts it is quite obvious that she thinks through what she is writing and proofreads the finished work. Also she isn't a wanker.

[hms42]

Well written. I saw this from another source earlier today. I hope a lot of others jump on this and send them a similar letter so that they figure it out.

[martianmooncrab.livejournal.com]

I dont think that the USMC would take to kindly to someone copyrights Marine in any form.

[lederhosen.livejournal.com]

Trademark, not copyright. Different thing.

Trademarks are application-specific. The basic principle (before it got corrupted) is that I shouldn't be able to trade off somebody else's good name.

So if I open "McDonalds Hamburger House" I am violating McD's trademark, since I'm effectively trading on their reputation (and potentially damaging it, if my burgers are bad). But if I open "McDonalds Electronics" there's no conflict, since they're not active in that area.

By my understanding, the GW trademark is specific to stuff like gaming and fiction. Which is definitely obnoxious, and I hope they're forced to back down on this one, but it's not really relevant to the USMC.

[martianmooncrab.livejournal.com]

Starbucks sued Sam Buck's Coffee house a few years back, and thats her real name.. of course the over caffinated merperson won.

Marines really dont care about trademark or copyright, they care about being Marines.

[lederhosen.livejournal.com]

Starbucks sued Sam Buck's Coffee house a few years back, and thats her real name.. of course the over caffinated merperson won.

Yes, because they were operating in the same market: selling coffee.

Marines really dont care about trademark or copyright, they care about being Marines.

And since GW isn't laying claim to the word "Marines", this really isn't an issue. Their claim seems to be specifically on "Space Marines".

[houseboatonstyx.livejournal.com]

By my understanding, the GW trademark is specific to stuff like gaming and fiction.

Not "and fiction". GW didn't put fiction in their application. They're trying to apply their trademark now against Hogarth's fiction, by various far reaches.

[lederhosen.livejournal.com]

By my understanding the (alleged) trademark they're invoking here is a common-law one, not the registered one, so there's no relevant application per se.

Without having seen the text of their letter I don't know what they're claiming, and I should have hedged my previous comment with more qualifiers accordingly. But if they have any common-law trademark on "Space Marine" (and I hope they don't) it would be in the context that they've been using it, which is unlikely to conflict with the USMC.

[houseboatonstyx.livejournal.com]

FYI, here's more detail, including some legal stuff. I don't think Scriveners have got the situaiton quite right either, though.

http://scrivenerserror.blogspot.com/2013/02/D206x.html

[shanejayell.livejournal.com]

That's just... dumb. Very dumb.

*head desk*

[tamahori]

I fully agree with your letter, though sadly I don't think they will pay it much attention.

GW got taken over by their legal team a while back, and given they have launched cease and desist attacks on fan websites in that, so in essence, attacking their own most devoted fans, I'm not sure anyone involved in this is doing anything we're recognise as, oh, thinking.

[jordan179.livejournal.com]

Hopefully this will end the way TSR's attempts to copyright "hobbits" and "orcs" did.

[jordan179.livejournal.com]

One word: countersuit. Incidentally, the term "space marine" is very much in common parlance as shown by all the still-in-copyright works which are using it commonly, establishing accepted practice. You can trademark a word style: you cannot trademark a word as such.

[lederhosen.livejournal.com]

One word: countersuit.

Possible but not at all trivial. You need a lawyer for that, and unless you're lucky enough to find one willing to work pro bono that's going to take tens of thousands of dollars minimum, and MCAH has indicated that she doesn't have that kind of money to put into this.

You can trademark a word style: you cannot trademark a word as such.

US Patent Office says: (http://www.uspto.gov/faq/trademarks.jsp#_Toc275426672)

A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.

IANAL but that certainly seems to suggest that words (and more relevant to this issue, phrases) are trademarkable.

[jordan179.livejournal.com]

The word cannot be in "common parlance" in the field to which the trademark applies. If, for instance, I tried to trademark "starship" with reference to science fiction literature, no honest judge would support my claim.

By contrast, "phaser" has been successfully trademarked because Star Trek invented the word and it was not generally used outside of reference to the Star Trek weapon.

On the other hand, if someone claimed that a fantasy writer could not refer to the Roman god "Vulcan" because of the Star Trek usage of the term, the claim would not stand up in court. "Vulcan" has been in common parlance, in reference to the god and to volcanoes, for well over two millennia.

[lederhosen.livejournal.com]

I agree that this particular attempt to claim a trademark on a phrase is ridiculous. I was just contesting the more general claim that "you can't trademark a word as such".

[jordan179.livejournal.com]

Well, ok, I said it sloppily the first time round anyway.