Author's Book Removed From Amazon By Bogus Trademark Claim

from the no-books-just-crooks dept

Fri, Dec 21st 2012 2:03pm — Timothy Geigner

If you recall the company named Games Workshop from Techdirt stories, you likely already have a bad taste in your mouth from my mentioning them. The game publisher responsible for the Warhammer games twice went after fan sites that were simply building a better experience for fans of the game. We wondered at the time how a company could be so boneheaded as to target their own fans and level trademark suits at them instead of getting creative with a way to allow those fans to continue to be fans. Well, I have an answer for how they could do that, and it's going to surprise you.

No, Games Workshop's CEO is not Satan...but you're close!
My theory is that the people working at Games Workshop, or at the very least their legal team, are in fact from a completely different universe than we are! How did I come up with this theory, you ask? Well, it all revolves around the company having Amazon take down author M.C.A. Hogarth's fictional novel over their supposed trademark on the term "space marine".

Today I got an email from Amazon telling me they have stopped selling Spots the Space Marine because Games Workshop has accused me of infringement on their trademark of the word ‘space marine’.

If you go to the Trademarks Database and look up the word “space marine” you’ll find the Games Workshop owns a trademark on the term “space marine,” but it only covers the follow 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.

Hogarth then goes on to say that she (shockingly!) didn't come up with the term for Space Marine after playing a Warhammer board game, but instead from what appears to be its original use back in the 1930's. At the time of this writing, Hogarth's blog post states that she's discussing the situation with the people involved, so hopefully that means not only is Amazon reversing course and putting the book back up on Amazon, but also be soliciting an apology from the company.

In any case, Games Workshop being unable to understand their own trademark is only mildly surprising, but their interest in trademarking what, to me at least, seems like such a common phrase these days got me wondering just how common the term "space marine" is. So I went to Wikipedia to see what they had to say, and that is where I discovered the shocking truth: "space marine" is an archetype of science fiction. Don't know what an archetype is?

"An archetype is a universally understood symbol, term, statement, or pattern of behavior, a prototype upon which others are copied, patterned, or emulated."

This suggests two things to me. First, if "space marine" is an archetype, then by definition it is designed to be a symbol (amongst other things) for all to copy and emulate. That would seem to be the antithesis of this particular trademark suit. Secondly, if it is to be universally understood and Games Workshop didn't recognize this to the point that they decided to trademark the term as distinct, well, then they obviously are not of this universe at all. It seems clear that they're inter-dimensional lawyer-merchants that may, or may not, have plans to colonize Earth and destroy the human race.

Well, that or they're just kind of jackasses.

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Filed Under: space marine, trademark
Companies: amazon, games workshop

31 Comments

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Anonymous Coward, 21 Dec 2012 @ 2:15pm

It appears to be back up.
Spots the Space Marine: Defense of the Fiddler
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techinabox (profile), 21 Dec 2012 @ 2:16pm

As bad as the MPAA
As a long time player of their games I can assure you that GW is as bad as the MPAA. They threaten sites over fan fiction. They threaten people make fan movies. They threaten sites over rules discussions that reveal some sort of info about their games. They sue companies that make models that are hemi-demi-semi similar to theirs. They sue companies that make model weapons or other bits that can fit on their models even if its made for another companies model range. The threaten people trying to run tournaments if they let people play with stuff that GW doesn't make. They still only make their rules in print format and threaten people who try to make digital applications of them. They try to squeeze independent retailers with silly rules like no online sales. They raise prices every year on everything despite industry trends towards lower cost production.

Sadly I really like their games. :|
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Coogan (profile), 21 Dec 2012 @ 2:23pm

It seems clear that they're inter-dimensional lawyer-merchants that may, or may not, have plans to colonize Earth and destroy the human race.

Well, that or they're just kind of jackasses.

What, they can't be both?
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JEDIDIAH, 21 Dec 2012 @ 2:43pm

From the halls of Mon-te-zu-u-ma...
It looks like someone else wants to stand up and sue the Aliens franchise over a really weak claim to a pretty basic idea.

Ships + Soldiers -> Marines!

Space + Ships + Soldiers -> Space Marines!

I always thought that Worf should have been labeled a Marine officer.
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Capt ICE Enforcer, 21 Dec 2012 @ 2:51pm

Space Private 1st Class
I want to trademark and copyright Space Private 1st Class. and Space Private.
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drummer315, 21 Dec 2012 @ 2:56pm

Space Marines - Have they read any real Sci Fi ?
I recall the term Space Marine being used by "Doc" EE Smith in a bunch of his books, to name just one example of "prior art". The Lensmen Series was written in the late 40's into the 50's. I am sure if I think on it I could cite another dozen or so examples. "Sheesh, what a bunch of maroons."
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Zakida Paul (profile), 21 Dec 2012 @ 2:58pm

Has the word 'bollocks' been trademarked? Because that is what I think of trademarks, patents and copyright.
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huu, 21 Dec 2012 @ 2:58pm

"Superhero" is a trademark, too. Jointly held by Marvel and DC, naturally. Nope, no monopolistic or collusive practices to see here, move on.
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cpt kangarooski, 21 Dec 2012 @ 3:01pm

Re: Space Marines - Have they read any real Sci Fi ?
Novelty is not required for trademarks. Or did you think that Apple invented apples and Nike invented the Greek goddess Nike?
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cpt kangarooski, 21 Dec 2012 @ 3:44pm

Re:
Yeah, I'd love to see someone challenge that one; there's no way it isn't generic. But who wants the headache of litigating it?
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Digitari, 21 Dec 2012 @ 4:17pm

Re: Re:
A Super Hero Space Marine Of course :)
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Dave Xanatos, 21 Dec 2012 @ 4:19pm

Re: Re: Space Marines - Have they read any real Sci Fi ?
I did think that a purely descriptive term couldn't be trademarked. I don't think that a company should be able to trademark "bathroom cup" for a line of bathroom cups, or "fire-breathing dragon" for their dragon toys. There's gotta be a rule somewhere...

Found it. Here. Page 4:

Generic words are the weakest types of �marks� (and cannot even qualify as �marks� in the legal
sense) and are never�registrable or enforceable against third parties.� Because generic words are
the common, everyday name for goods and services and everyone has the right to use such terms
to refer to their goods and services, they are not protectable.
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cpt kangarooski, 21 Dec 2012 @ 4:42pm

Re: Re: Re: Space Marines - Have they read any real Sci Fi ?
I doubt they'd have trouble showing it to be a descriptive mark with secondary meaning, which is protectable. But wouldn't do what they want. They'll argue that the mark is at least suggestive. I've never looked at marks for toys, so I dunno the details. (Eg MY LITTLE PONY is certainly a doll of a pony, and is certainly little; MY isn't a lot to work with. But there's no way a big toy company is going to put up with weak marks if its avoidable. So there must be some mark holder friendly precedent at work)
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Anonymous Coward, 21 Dec 2012 @ 5:43pm

I would imagine that Games Workshop goes nuclear on any possible infringement because the one time they didn't they got raped of very valuable IP.

Warhammer 40k --> StarCraft
Warhammer --> WarCraft
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Anonymous Coward, 21 Dec 2012 @ 7:05pm

Wikipedia: Space Marine
Wikipedia: Space marine

History

The earliest known use of the term "space marine" was by Bob Olsen in his short story "Captain Brink of the Space Marines" (Amazing Stories, Volume 7, Number 8, November 1932)�.�.�.�. Olsen published a novella sequel four years later, "The Space Marines and the Slavers" (Amazing Stories, Volume 10, Number 13, December 1936)�.�.�.�.

A more widely known early example was E. E. Smith's Lensman series.�.�.�. passing mentions of marines are made in Galactic Patrol (Astounding Stories, September 1937�February 1938) and Gray Lensman (Astounding Stories, October 1939�January 1940), and a more direct mention is made in First Lensman (1950)�.�.�.�.

The phrase "space marines" appears in Robert A. Heinlein's "Misfit" (1939) and is again used in "The Long Watch" (1941), in both cases before Smith had used the phrase�.�.�.�.

(Footnotes omitted.)
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That One Guy (profile), 21 Dec 2012 @ 8:02pm

Re: As bad as the MPAA
Two words: Privateer Press.

All the awesome of wicked tabletop games, with none of that 'feeling like you just paid someone to mug you after purchasing one of their products', like you'd get from buying GW stuff.
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That Anonymous Coward (profile), 22 Dec 2012 @ 5:16am

Re: As bad as the MPAA
There is an iThingy version of some of their books now.
I guess the walled garden was preferable.
Still on the same cost level as their print work.

Resin costing more than metal... who knew.
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That Anonymous Coward (profile), 22 Dec 2012 @ 5:21am

Re: Re: As bad as the MPAA
Another company that promised they weren't going to go plastic and hike prices?
Ooopsie.

They managed to destroy their fanbase by running off the people willing to demo and judge events...

They are the 2 dominate players in tabletop minis, and both have taken steps to annoy their customers.

But you can find that in nearly all of the available systems. The big difference is with the smaller army size for PIP you don't get screwed as hard when they alter rules or models.
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That Anonymous Coward (profile), 22 Dec 2012 @ 5:22am

Re: Re: Space Marines - Have they read any real Sci Fi ?
Did you miss Apple suing everything on the planet that is apple like?
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That Anonymous Coward (profile), 22 Dec 2012 @ 5:25am

Re:
Yeah they even threaten to sue stores for the audacity of advertising new releases and promoting the game.
Its a very good tactic.
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cpt kangarooski, 22 Dec 2012 @ 9:25am

Re: Re: Re: Space Marines - Have they read any real Sci Fi ?
You're completely misunderstanding what I said.

Novelty means that something is completely new in the world. In patent law, patentable inventions must be novel. If an invention already exists, a second, independent inventor is not entitled to get a patent on it.

Originality means that something originated with the party in question. In copyright law, there is no novelty requirement, but there is an originality requirement. So an author can write a poem that is completely identical to another, preexisting poem (thus, non-novel) but only by coincidence, not by copying the first poem (thus, original, rather than copied). (In practice independent creation is tough to establish -- the more complex a work, the less likely this argument is to be believed)

Trademark law doesn't care about novelty. Trademark law doesn't care about originality.

Thus, you can take an existing word or phrase or other trademarkable device, which you didn't invent, and which you may even have copied from somewhere else, and so long as you satisfy the other various requirements for trademarks, you can get a protectable trademark.

Apple didn't invent the word "apple" and didn't originate the word "apple" (and may even have been imitating the already-existing Apple Corps record label) and certainly were not the first company to use the word "apple" in a trademark. But none of that mattered -- the APPLE mark was perfectly fine regardless.

So it doesn't matter that someone might have previously come up with the term (and idea) of a "space marine." It's not the least bit relevant for whether or not there can be a mark.

As for Apple suing people, a) more of that is due to patent, design patent, and trade dress than it is outright trademark, b) it's irrelevant.
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Dave Xanatos, 22 Dec 2012 @ 11:30am

Re: Re: Re: Space Marines - Have they read any real Sci Fi ?
Apple has not been suing apple growers and supermarkets for selling apples. The fruit, that is. Nor does Apple have it's own trademarked line of produce, Apple apples. Everyday words can be used as trademarks, they just can't protect their real world analog.
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Anonymous Coward, 22 Dec 2012 @ 2:48pm

Re: Worf
And why do they call him Lt. Worf instead of Lt. Rozhenko?
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Anonymous Coward, 22 Dec 2012 @ 2:51pm

Re: Re: Re: Re: Space Marines - Have they read any real Sci Fi ?
Would that be Apple the computer company or Apple the Beatles' record company?
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That One Guy (profile), 22 Dec 2012 @ 3:06pm

Re: Re: Re: As bad as the MPAA
Good point regarding the metal->plastic=price stays the same or rises, that has always bugged me, whether GW or Privateer.

Wasn't aware they'd been doing a number on their fanbase though, from what I'd been aware of it was actually pretty solid if not rising, due at least in part to people bailing on GW and moving elsewhere.
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Beth, 22 Dec 2012 @ 8:42pm

Re: It appears to be back up.
No, that's the physical book, which for some reason never went down, even though Amazon also owns CreateSpace. The (much less expensive) ebook is still down on Amazon.
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That Anonymous Coward (profile), 22 Dec 2012 @ 11:14pm

Re: Re: Re: Re: As bad as the MPAA
I forget the actual name of their volunteer evangelist program, but tons of them quit in protest over things PIP had done. While they've done bad things, they are still not on the GW level of customer abuse. They are rebuilding the fanbase up, and it seems that games that are "squad" based rather than army based are gaining in popularity. Less entry costs to get into the game and have fun.

I spoke with someone recently who was bemoaning the new FineCast models. They are often flawed, and GW used to take good care of customers. Now the response to a customer asking for a miscast or missing piece to be fixed is basically to accuse them of having done something wrong... because the customer can cause there to be bubbles in the resin.
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That Anonymous Coward (profile), 22 Dec 2012 @ 11:16pm

Re: Re: Re: Re: Space Marines - Have they read any real Sci Fi ?
They did sue a grocery store for having a logo that looked like an apple but not THE apple logo.
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Anonymous Coward, 26 Dec 2012 @ 8:55am

Re: Space Private 1st Class
I want to trademark Space Privates....

You can guess where I want to stick this one....
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John Fenderson (profile), 26 Dec 2012 @ 9:58am

Re: Re: Re: Re: Re: Space Marines - Have they read any real Sci Fi ?
And of course, Apple Corps did sue Apple computers for infringing their trademark. They settled out of court with an agreement by Apple Computers that it would never get into the music distribution business.

Many years later, of course, it did anyway.
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ABeth, 13 Jan 2013 @ 10:00am

Re: It appears to be back up.
That's just the paper book, which Amazon never took down. The ebook -- less expensive for purchasers, and thus more likely to send money to the author -- is still down as of this writing.
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