To Do: Discuss Games Workshop’s Suit Over “Space Marine”

[Blog Update 2-8-2012: Thanks to a smart Twitter user pointing out a few flaws, we’ll call him “EdG”, I discovered a few things I should update to clarify my post. Thanks, EdG! I promise this time I did at least 20-minutes of research =)  Though, if I may be so bold, you could have been a bit more polite. Constructive criticism and discussion broadens everyone’s knowledge. Updates will be higlighted in red.]

Ok, so as fair warning. I’m not a lawyer, nor have I ever studied law in length. All I am is a person who likes to look at things from different angles. For this post, I’m going to play devil’s advocate. Consider me Keanu, or Pacino. Whichever was the advocate to the other’s devil.

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(Please don’t sue me. I’m just illustrating a point. I love you, Pacino.)

I’ve been seeing a lot of posts slamming Games Workshop over their recent actions taken against a small author over a book. While it’s hard to find a story from a news source, here’s a link to one of the more subdued takes on the matter.

To smash this thing into little “Martha, the dog is eating that crap, it’s going to get stuck in its throat” pieces, here’s the jist: Games Workshop claims it has a trademark over the word Space Marine in regard to titles for e-books, video games, and digital products, and requested that Amazon have the author’s e-book, “Spots the Space Marine”, taken down. The author claims that this is a generic term used by science fiction writers for many years, and isn’t covered under trademark laws, nor does Games Workshop’s trademark influence this medium. In many ways, she has a point. It’s a pretty basic descriptor; marine personnel who fight in space. Side note: why didn’t Amazon investigate this claim before taking the book down? GW didn’t send a Cease and Desist letter, so far as I know.

First, let’s examine how Games Workshop believes they own a trademark. According to their facebook post, the company believes they own the words when used in such places as titles, such as, “Edward the Space Marine”, not in common speech or a “body of prose”, such as, “Edwards is a space marine, dude.” Wait, say whaaat?

Let’s take a step back. How does titles and common speech relate to this case? Like a lot of things involving smart-making, it requires a bit of thought to get to the root. Sounds like a great time to take a quick writing lesson. There is a difference between being “the” something versus “a” something. When “the” is placed in a name, title, or simply a body of text,  it singles that out as being singular. When an “a”  is used, it denotes that thing as belonging to a group. For example, “Landry the Dog” is a full name of something called Landry the Dog, whereas “Landry, a dog” is a name followed by a classification, something named Landry is a dog. This has, literally, nothing to do with trademark law. I just thought you might like a refresher. Please stop throwing tomatoes. 

Back to the subject at hand, the author’s book title, “Spots the Space Marine”, isn’t using space marine as a general term in regards to describing her character, it’s using the words in the title, which then singles it out, and which may veer it into potential trademark areas. Had her book been named “Spots, Intergalactic Warrior”, and inside it she referred to her character in numerous points of the text as a space marine, there would be no room for discussion. Just raised wine glasses and discussion on railroad expansion.

You+have+raised+a+good+point+here+but+there+is+_049aa4f1f70e5a26a45280958400f34c

Now you may be thinking, “Well it’s silly that Games Workshop can trademark a common term.” Silly, maybe, but it is possible, because they do own the trademark to it. They have much more control over the term in the UK, and not so much in the US, so this may be something to be factored into the argument, but they do own it. In fact, they have owned the trademark since 1995. As a note, the book in question was written in 2009.  Why should they be allowed to do so?

**Warning! Warning! Complete speculation on my part!** Potentially because their version of space marines popularized the term. Yes, the term existed for many years before GW, but with their stories, games, and work, the term became synonymous with their product. As an experiment, go to Images.Google.com and search the term “wolverine” (removing the quotation marks). Your first few results should be the marvel Character. Now, do the same thing with the search “space marine”. You’ll come up with nothing but Games Workshop imagery. Now try “space ranger”. Was your first thought Buzz Lightyear? What was the first image that came up? Here’s mine:

225px-Spacerangerdcu0

While Pixar’s movie created a popular character self identified as a space ranger, it did not popularize the term space ranger. Nor did Pixar tried to. Space Rangers weren’t a staple of the lore. If 500 books were to be written about space rangers, it wouldn’t have any bearing on Pixar’s product. Back to space marine. If I write a book series, “Space Marines Go to War”, those may produce sales just by using the GW popularized term, even with having nothing to do with the game or books. I believe this is the root of the issue for GW. 

Now, let’s take a different type of title and see if applying this same logic works. I’m a writer (at least that’s what I tell myself), and I am writing a book about a woman who is known to have an ill temper. I decide to name my book, “Lana the Wolverine”. Makes sense. Wolverines are real animals, and are known to have bad tempers. Perfect! Pat on the back for being a genius. If this book were to hit the shelves, I could easily foresee a scenario where Marvel would sue me over it. They have a character called “The Wolverine”. Egads! I didn’t think about that. But my book has nothing to do with mutants or fellas with claws, I’m just using the comparison to the animal. Innocent enough. Doesn’t really matter. Marvel has legitimate claim to the title, so now Lana will need to become the Pot of Boiling Water, or something equally as hot and ouch-inducing. Thanks alot, mushy smart maker!

my-brain-you-have-failed-me1

I’m such a clever guy. You see, now that I’ve introduced Marvel, I can easily use them for my next point. In her argument, the author claims that “space marine” is an extremely common term in science fiction, being used in dozens of books, movies, games, and franchises for many years. The marines in Aliens were space marines…

Aliens02

…Master Chief is a space marine…

Halo-4-Master-Chief-halo-30585561-1920-1080

Mother of God, they’re all over the place! But lo, there’s another science fiction word that’s insanely common; “superhero”.

marvel-super-hero-squad-20090602043346420
(See what I did there?)

Superheroes are all over the place in sci-fi. Hell, I have them on my underwear. In full rhinestones. Tres sexy. And yes, my underwear classifies as sci-fi; it’s filled with marvelous tales that are completely untrue. It would make sense, using the idea that words can be common in a genre, that there’s no way to trademark this word. Ha, I dare say! It’d be cray cray, as the kids say nowadays, to entertain the ide…

Q: What does it mean that Marvel and DC have a trademark on the word “Superhero”?

A: It means that companies cannot enter certain areas of commerce with the word/phrase “superhero” as part of their product name.

(source: CBR)

*cough* Ok, so common terms can be trademarked. But, hehehe, I mean, they just own the word. They’d never sue someo…

Marvel and DC sue small publisher over using the word superhero – (source: Blastr)

Well sh*t. It would seem that extremely common words can be trademarked…

medium_dumbfounded

I do want to question one common theme in this debate. What would Games Workshop have to gain by enforcing this trademark? If you read forums, it’d be because they’re, “RAWR GW SMASH! HATE PUNEE RITERS WHO MAEK MOWNEE. I EAT THEM.” Pretty doubtful. The book made only a fraction of what GW makes a year, so it’s not money. They also didn’t do it to stifle creativity, as, if used in the body of the book, the term can’t be trademarked (remember, it’s just titles). I say it’s because they want to keep the term synonymous with their brand. If I google search space marine books with the idea of finding GW products, I might get Spots in that search. If my non-existent but terribly bratty child asked his aunt for a space marine book, and she bought Spots, he’d be upset, she’d be confused, and I’d be ignoring them both with a glass whiskey. It comes down to the title, not the money.

Now, I’m not saying that Games Workshop does indeed own the words space marine in the context they say they do, or that they’re right to sue a small author over the word when the material is not at all influenced by their lore. I’m simply saying, “Hey, pull up a chair. Have some cocoa. Listen, I know you kids have all these strong ideas nowadays. It’s natural. I just want you to think about the entire story. Maybe Games Workshop isn’t a soulless abomination trying to destroy the little guy. Maybe they’re just a company who feel the have a legitimate claim over it, and are attempting to protect it. Attaboy. Now, stop touching it, or you’ll grow hair on your palms.” Really, it’s up to the courts to decide what legitimate claim, if any, Games Workshop has over the words.

I enjoy a lively debate! Polite and respectful, of course. I ain’t havin’ none of that there name callin’ or whatchamacallits. Holy balls, apparently that’s a real word. Anyways, please feel free to comment below on your thoughts, or tweet me @cbmcgames.

Now, if you’ll excuse me, I have to go hide in a bunker to hide from a fleet of Marvel lawyer-loaded Quinjets. I’m allergic to lawsuits.

To Do: Discuss Games Workshop’s Claim Over “Space Marine”

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About Onshava

I'm a writer who grew up a total geek. I attended the University of Florida (Go Gators!), graduated, and set out to make my place in the world in the great city of Chicago. I'm married (still not sure how I suckered her into it), have two dogs, and think subway trains are the devil's magic. Also, I'm a horribly addicted hobbyist. Warhammer 40k, MMOs, Xbox gaming, writing, reading, playing guitar, painting, modeling (not the sexy GQ kind)...you name it, I probably do it. I also like to talk, a lot. So, to quote Deckard Cain, "Hello, my friends! Stay awhile, and listen." View all posts by Onshava

14 responses to “To Do: Discuss Games Workshop’s Suit Over “Space Marine”

  • Becky

    Disclaimer: I’m not a lawyer just an educated layperson who’s been reading up on this because Maggie is a friend.

    Primary differences are.

    1. Marvel and DC trademarked superhero at the inception of the genre – that is before the word was in common parlance. GW are attempting an IP land grab in an area where the term has been common parlance for a long time.

    2. GW don’t even appear to have a valid trademark registration to cover ebooks (trademarks cover only what you register them to cover). They’ve told Maggie they believe the mere act of having published an ebook extends their trademark through common law. Which it might (dubious) but for the fact That Maggie’s book was there first. Anyway it’s a bit back-to-front using a common law trademark that way – it’s more usually used to contest a trademark application. (So say I had a little company selling “Becky’s left handed-widgets” and I didn’t trademark the term – then someone else tries to I could protest the claim by claiming a common law trademark.

    I will note that the book in question has now reappeared on Kindle. I imagine what happened is that after the story exploded on the net Am UK passed the hot potato to corporate HQ (actually I know this – they said so in the Registar article but the next bit is my surmise) and HQ finally consulted their lawyers and were told Maggie was right. They should’ve done it at the start – Trademark claims are one IP claim a lawyer should always check.

    • Onshava

      Alright, let’s try this again. I had typed a response on my phone, but it decided I didn’t really need to have it work =/

      *ahem* Hi Becky! Thanks so much for your caring and well laid out comment. It’s good to see people sticking up for their friend, and doing so logically =) Like you, I’m not a lawyer by any means, just a person who is educated and a (hopefully) fair amount of reason. I’d love to address your comments.

      1. I can see your point. Marvel and DC grabbed the term in its infancy, not after it became common speech. Where I get fuzzy on trademark law is, can a company trademark a word or phrase that they popularized? Space Marines did exist before Games Workshop, but one can certainly argue that their take on the genre very much popularized it. I think their claim, if they hold any, would be that they created its popularity, and own that. In a different context, X-Men didn’t invent mutants, but it certainly popularized them. Could Marvel, should they choose, lay claim to the trademark? No idea, just food for thought.

      2. This is where I think GW knee-jerked a bit. From what outside sources can discern, it appears GW’s claim on the term (again, if any even exists) is in e-book format , not print. Do they have a legitimate claim? No clue, and it doesn’t appear as if they fully know either. They should have had their legal team investigate the issue in-and-out before jumping into action. Kind of looks like GW wanted to punt the issue to the courts and let them sort it out.

      Now, in all this mess, here’s what I don’t understand; why is no one mad at Amazon for pulling the book? One can hardly blame GW for protecting what they think is there’s. It’s their responsibility to the company and the shareholders to do so. So they sent word to Amazon that they believe this book title is in conflict with their trademark. So far as can be discerned from news stories, this wasn’t a Cease and Desist letter, but a request. Amazon, without much diligence, pulled the book. One would think they would have investigated GW’s claim before taking action. And since Amazon’s lawyers must have come to the conclusion that GW doesn’t have a valid claim, (since they put the book back on the shelves), couldn’t they have saved some trouble and not pulled it to begin with? Google is constantly asked by governments to give up information on their clients, and Google fights it tooth and nail every time. I feel like Amazon should have been the wall between this trademark confusion; stick up for the authors of their products and investigate claims from other companies.

      Anyways, I hope this issue is resolved for Maggie without much hassle. From what I’ve read, trademark cases are commonly solved out of court than in front of a judge. Hopefully that’s the case here. Hopefully Maggie gets to continue writing, and GW discovers what their trademark does and does not entail, so they can save themselves from looking like jackasses in the future.

      Thanks for reading!

      • TC the Space Marine (@twincast2005)

        Well, you’re right about Amazon, but regarding 2.:

        A legal distinction between printed books and e-books is ridiculous to begin with, but apparently laws are unclear on it as a legacy of not knowing how to deal with all that fancy new digital stuff those pesky kids of today are fiddling with.

        And apparently they know fully well that they have no claim to a trademark of space marine for print books despite having published a number of them precisely because other books have been using it since the 1930’s.

        So they obviously thought something along the lines of “Hey, we just entered the e-book market, which hasn’t been around that long and it’s digital, you know, magically floating inside computers just like those video games we own, so let’s stake a claim here! But we have to be sneaky about it, so let’s start with a small self-published book by an unknown author.”

        The logical long term result would be them also owning the trademark for print publications, either directly because they flex their muscles, turn the tables, say that since they own the e-book rights they also own the print ones and magically win the case or more likely indirectly simply because having different titles for your print and digital editions is uneconomical.

        Of course the claim is bollocks either way, partly because the distinction is ridiculous, partly because they came late to the digital party as well, partly because said older books tend to be available as e-books (or will be, sooner rather than later) and partly because the term borders between descriptive and generic.

      • Onshava

        All of that makes perfect sense. I don’t quite understand why e-books and print books are given different distinctions as far as trademarks and products go. They shouldn’t. Whether on a computer screen or on a page, a book is a book. But, as you said, new technologies/products tend to produce these sort of wonky legal issues.

        In my personal opinion, I see this as a land grab for GW. They own the trademark for digital products, and they see e-books as an emerging market they can take the lead on. I’m not so sure it had anything to do with the author, but more to do with the title itself; kind of a “wrong place at the wrong time” kind of thing. If you search Amazon for “Space Marine”, hers is on the first page right in the middle of a slew of Games Workshop products. They probably felt that this was the first product to try their trademark muscle on, since it’s so high up in the search. There are other books that are pretty close, such as “Featherfoot, Space Marine“, but they’re further back in the search (page 3 and beyond).

        I’m not too sure they’d push for a print trademark, as e-books do seem to be the future of the print industry. There’d be little incentive for them to backtrack.

        Overall, I want you (and readers) to know that I’m not on any one side. In truth, if it were the opposite and most people were in defense of the company, I’d be arguing for the author. I simply see an issue that can be seen multiple ways and interpreted multiple ways, and thought it’d be good to bring some of those to light; get people talking. And as I said earlier, while I haven’t blocked any comments or tweets, I can say that some “discussion” has been less than civil, and I appreciate 1) your eagerness to exchange ideas, and 2) your civility in sharing ideas. It’s a breath of fresh air, and exactly what I hoped the post would inspire.

      • TC the Space Marine (@twincast2005)

        Well, sure, of course they just went for the first (that is, newest) potential target that popped up instead of doing a thorough (re)search, but what I meant is that they wouldn’t have gone after, say, a StarCraft comic or novel with Space Marine in the title.

        I was thinking about incorporating the decline of print, but the post felt too long already. And the whole idea of them actively going after it was just a thought experiment, but the de facto, if not de jure, acquisition is a very real threat I felt I had to throw in there in case anyone reading this was dismissing it as “only affecting those digital thingamajigs”.

  • mephistonag

    Reblogged this on Mephiston's Wargame blog and commented:
    A valid and well argued counterpoint, I’m still not buying any more Black Library though 😉

  • TC the Space Marine (@twincast2005)

    Two things:

    1) Your whole tirade on definite and indefinite articles is, well, bollocks. Also, it’s not about any title a character may have or capitalisation or whatever, but strictly about using the word in any form in the name of a product, be that a book, a film or a dishwasher.

    2) The legitimacy of DC and Marvel’s claim to their trademark on super-hero is highly questionable (a) because it is descriptive at most (and IMO not even that, but clearly generic) and b) because they did indeed not trademark it in the infancy of either the term or the genre), but was established when nobody cared enough to fight against it and the whole industry has been brainwashed to accept it.

    • Onshava

      Well, kind of polite. Let’s go with it!

      1) I believe the tirade, as you put it, was simply a matter of discussion, not really about trademarks. In fact, I feel like I said as such. As I stated, the discussion on the trademark is on the title, not body of prose. Again, had the title been anything else, and the character was referred to as a space marine, we wouldn’t be having this debate. It’s all about the title.

      2) Dubious or not, they own it and they enforce it. Doesn’t quite matter if it’s silly or not, it’s the law. They’ve co-owned it since the 60s. I’m more confused on how entities can co-own something.

      From what I can tell from reading responses on other forums, only exact terms should be able to be trademarked. Why is that? Also, please bear in mind, folks, that the purpose is to have meaningful discussions, not bash one side or the other. Let’s talk it out.

      • TC the Space Marine (@twincast2005)

        1) Well, to me it clearly seems like you mixed up different definitions of “title”, not all of which apply.

        2) Oh, they do enforce it, but the only thing that protects it are their unholy hordes of lawyers. Besides, uspto.gov says they own it for toy figures since 1974 and for (print and by extension digital) publications (and a somewhat odd collection of merchandise) since 1979 (trademarks for various other kinds of merchandise have apparently come and gone before and after).

        If I understand your question correctly, to use a handy example: Calling an apple an apple comes naturally because that is what all apples are called in the English language, so it can’t be trademarked. Likewise nobody can (at least in theory and in fact ethically nobody should be able to) trademark the word apple for miniatures of or books about apples. Calling a computer (firm) Apple on the other hand isn’t generic, but creative and therefore can rightfully be registered. There’s more degrees to it, but that’s the gist of it.

        *Registered trademarks

      • Onshava

        TC, you’re making my night =) So glad to be debating in a civil matter (so rare on the internet these days). Sorry for the delay in responding, I was out celebrating a friend’s birthday.

        1) Haha, I wouldn’t doubt it. The post has been edited to hell in back on my phone, so it’s probably all sorts of confusing in the first half. The main point of bringing up definite and indefinite articles was to just give readers a mindset for the discussion between titles and prose.

        2) Honestly, I can see an argument for both sides. Creative works should inspire more creative works. Inspiring someone else to create something is a very sincere compliment. It’s a tragedy that corporate law has tied down the creative process with trademarks and other restrictive laws. But on the other hand, the world runs on money (unfortunately), and not protecting, or at least attempting to protect, what you think is yours means losing money.

        But that’s kind of my question in regards to trademarks. Apples are apples, and impossible to claim as one’s own. That makes sense. But can companies ethically stake a claim on something if they’re the one’s that put the time and money to make it a large part of their brand? Let’s say that a sci-fi author in 1940 invented a race of creatures known as werewolves; creatures that were half man, half dog. Other authors used the term afterwards, but it never became a big thing. Then a company comes along and invests millions of dollars in stories about their version of the creature, which they also name werewolves. Because of their work, werewolves become a commonplace thing in households. Should they have some sort of claim over the word, since they put in the hard work? Or should other writers be able to cash in the company’s work and write books titled “Werewolves” to make money? I’m not trying to be leading, I’m truly asking. I can see both sides of it.

      • TC the Space Marine (@twincast2005)

        Erm, that last line of two words is a leftover from a prior draft. I missed it, just ignore it.

      • TC the Space Marine (@twincast2005)

        Taking a generic word or concept, no matter how obscure, and then trying to lay claim on anything more than the specific spin you put on it? I can comprehend the sentiment, but I can not respect it. … I almost veered into the due boundaries of copyright here, but I wanted to keep it short this time.

        And to expand on the “in theory” I mentioned above: The registered trademarks of Space Marine for miniatures and Super Hero for publications (among others — e.g. for a while that weasel Saul Zaentz used to have virtually every other noun used by J.R.R. Tolkien registered as a trademark for every imaginable use whatsoever) are clearly illegitimate failings of the USPTO.
        Possible reasons are “those terms aren’t ‘real'”, “those terms only appear in ‘trash”‘, “those products are only ‘trash'”, “those products aren’t ‘real'” (i.e. a miniature is not a space marine, failing to realise that miniatures can be made of everything including space marines) or any combination thereof.

  • macarthurs.info

    I want to to thank you for this good read!! I definitely enjoyed every little bit of
    it. I have you book marked to check out new stuff you
    post…

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