I notice that some places are reporting it as "GDW copyright trolls Space Marine". Double irony as, of course, Games Designer Workshop (GDW) are a different company from Games Workshop(GW), but GDW had "space marines" in their RPG Traveller at least ten years before GW did in Rogue Trader...

GW has been infected with IP idiocy for years, though: witness their take down notices for all websites containing non-licensed images of their miniatures (by, you know, fans showing off their collection) and any fan made game aids.

Well, the Warhammer 40.000 universe dates from the late 80s and Ultramarines were there right off the bat, so yeah, it would predate Morrison's work -- but the fact that Morrison wasn't challenged in the 90s might be ground for trademark annulment, surely ?

Games Porkshop, as they're "affectionately" known, are the Disney of the boardgaming/rpg world: they cannibalize existing material and then bully everyone else in respecting their "intellectual property". This hard-nosed attitude dates from way back, when they had to fend off competitors producing cheap alternative miniatures for their own gaming systems (which are just an excuse to sell the actual toys, really), and has now degenerated in all sorts of way.

The Ultramarines are from one of the first editions of the game, if not the first, so pre-1998.

GW is UK based, and there have to be UK fen who know people working there, not for the retail end, but for the publishing end

Here's GW's linkedin page

Here's "Paul L" who's the "head of digital" at GW

Oh, and here's the senior legal council

Plus there's probably enough fen out there to just comment on GW's products on Amazon with a recap of what they're doing (and a real review) to get them to retract and apologize. But let's save that for after those of us with any journalism credentials write an official letter to GW asking for comment on.

Apparently Instapundit blogged about it. If I'm seeing it here, other news/blog outlets can't be too far behind.

It's pre-dawn-thirty here too, but does anyone know if David Weber got in there 1st with his own space Marines? IIRC, Honor Harrington had friends among these, and I like to envision them dropping in on the GW HQ...

John Scalzi weighs in on the issue in a new blog post, which is aptly titled Space Marines and the Battle of Tradem Mark.

Hey, there's worse out there; the facts alleged in http://arstechnica.com/science/2013/02/site-plagiarizes-blog-posts-then-files-dmca-takedown-on-originals/ are even more amazing. Talk about chutzpah....

When I hear of 'ultramarines', I think not of superduper Marines, but of this:

"...a blue pigment consisting primarily of a zeolite-based mineral containing small amounts of polysulfides. It occurs in nature as a proximate component of lapis lazuli..."

Serge@8: The name "Ultramarines" is based on the fact that they are painted with that shade of blue. It was originally a joke; playing Ultramarines was the way to get your little dudes out on the field if you couldn't be bothered to paint them properly.

Well, that this point I've lost any remaining interest in picking up the HW40K series, much less their games. It's one thing to defend your proper trademarks and such; it's quite another to file lawsuits based on poorly-chosen keyword searches.

Peter Darby @1, the "GDW" mistake was all mine. I got so used to seeing GDW that my brain automatically inserted the D. I never played GW's games.

I am rather glad that, when I was writing Rocket Vixens of the Solarian Patrol, the Marines of the North Pacific Sector proudly wore the ancient insignia of the Army Union Landing Force.

There;s a Wikipedia page that lists some uses of the term, going back to a 1932 book title, but I suspect that it's as much a list of uses of the idea. Aliens had "Colonial Marines". The Valerians of Grey Lensman fit the bill, but they're only once mentioned as "marines", and no "space marines".

Games Workshop are in an awkward area, for them, moving from game to books, and wanting to protect a component of their game that connects to the books. They don't have a crazy objective. But what identifies their property is not the two words but a combination of visual design and context.

And Amazon are being as light-footed as usual over IP issues.

does anyone know if David Weber got in there 1st with his own space Marines?

Heinlein had Space Marines (upper case) in "Space Cadet" (1947).

Smith's reference to space marines is in First Lensman(1950)

Then, as soon as the intrinsic velocities could possibly be matched, board and storm! With Dronvire of Rigel Four in the lead, closely followed by Costigan, Northrop, Kinnison the Younger, and a platoon of armed and armored Space Marines!

Mad Magazine had Outer Space Marines in the 'sixties:

From the rocks of Aldabaran Nine
To the swamps of Sigma Grex
We will make a better man of you
Irregardless of your sex....

IIRC the basis for this bogus trademark claim is in the European trademark which lumps books in with games.

Another case of confused copyright issue> I was thinking about signal boosting this in the Open thread, and if the mods decide to move it there, I'm okay. But there is a GW connection, in that in the final link, one of the people advising her on legal action is using GW as an example of how copyright works. And I think I have my own errors in my counters, but I did my best.

Here's the issue as it's run to date:
YOutube claims an artist's work is not her own.

Youtube appears to have answered.

it falls apart again.

She could use some advice. And some correct info about copyright/trademark, even before she gets to a lawyer. (I personally suspect part of the issue is fanvids whose visual aspects she doesn't own.)

Three links to places oft connected to spam. Not spam. Promise.

The way I heard it GW's Ultramarines from Ultramar were jokingly inspired by the gas station.

I very much doubt that the existence of people using the phrase “space marines” in the texts of novels is any help whatsoever. This isn’t a patent claim. Plenty of people used the word “wolverine” prior to the creation of that Marvel superhero, but I’d advise against trying to publish a comic about a superhero named Wolverine nowadays.

On the other hand, I don’t recall Marvel making trouble over Bill Loebs’s Journey, while they did send Dave Sim a letter about the three consecutive issues of Cerebus that had the Wolveroach prominently on the cover.

What little I know of trademark law is that you can’t trademark a common descriptive term for your product — you can’t market a laundry detergent, call it “detergent”, and claim a trademark in that word. You could market a new car, call it the “Detergent”, and trademark that, and nobody else could market a car with that name. I don’t know how that applies to common fictional tropes, though.

Word among James Nicoll's commentariat is that Spots the Space Marine is pretty good.

Jim Macdonald in #15 regarding "Outer Space Marines:"

I know those lyrics as a filksong written by Jeff Duntemann around 1976 and published in various fanzines and songbooks; if they appeared in Mad, Jeff has never mentioned it to me.

Ken, at popehat.com, put up the Popehat Signal, asking for pro bono help, and at least one lawyer has volunteered.

#21 ::: Bill Higgins

I recall seeing it in Mad a long, long time ago. I believe that the complete run of the Bill Gaines Mad is available on CD, though I don't own it. Someone could probably search it and either confirm or falsify my memory.

First of Games Work Shop makes total crap settings to boot, pretty much tailored to twelve year od uper soldier fanatics. But second SPace Marines are definitely an estblished SF term. Trying to laim trademark in a book title is beyond silly. Time to give GWS a piece of our mind.

Prior art going back to 1947 would tend to lead to the conclusion that GW are a) ignorant fucks, b) detestable trademark bullies, c) trademark squatters, or d) ignorant fucking detestable trademark bully squatters.

Fuck Spay them and any horse, real or imaginary, they may choose to ride in on.

Again, the best way to make a stupid, illegal thing a company is doing cease and reverse is to annoy senior management. Senior management i annoyed by EER having to deal with customer issues, so the more time you take out of their personal day, the sooner your problem gets resolved.

Pro bono is all well and good, I guess, but lawyers have to eat too. (And there are too many of them on the market, right now, so they're not eating particularly well at that.)

Is there a legal defense fund set up yet? Because I'd contribute. This is just stupid.

Could people maybe stop going on about “prior art”, given that this dispute has to do with a trademark, not a patent? I’m not a lawyer, but I strongly suspect that “prior art” has nothing to do with trademarks.

The issue, from where I’m sitting, is that since Hogarth’s book’s cover art and type treatment look nothing like a GW product, the entirety of GW’s claim rests upon the presence in the title of a phrase so common in science fiction as to seem like a generic term.

Problem is, “space marine” probably doesn’t count as a true generic term in the contexts for which GW is claiming it — games and books. Generic terms in the book world would be things like “hardcover”, “paperback”, and “ebook” — things that generically describe the actual product, not the fictional contents of the novel. Or so I’m guessing. Still not a lawyer.

27
Avram, my understanding (and IANAL) is that titles aren't protected.

Not only that, but I'd heard of 'space marines' long before 1987.Heck,I make a joke tee-shirt with a space merino on it, in about 1985. (Sleep-shirt, had a sheep printed on it. I added a space helmet...)

Probably a Word of Power. Or an ellipsis.
I have some Stilton Blue, if the gnomes prefer.

Even if you ignore mentions of space marines in fiction . . . there was a miniatures rules set published in 1977 that not only featured space marines, but was called Space Marines.

PJ Evans, @29, my understanding is that you can’t copyright a title. We’re talking about a trademark case, though, not copyright.

Think about it. What do you think would happen if you tried to publish a novel called “Star Wars”?

Stefan Jones @32, but for how long after that were the rules published? Trademark law allows for trademarks to be abandoned. Did you know that “heroin” was originally a trademarked name owned by Bayer?

I think you could publish a novel called "Star Wars" (though you'd probably have to self-publish, since it would be too stoopid for a real publisher to touch). That wouldn't violate a trademark. If you used their font and the stylized drawing of the words, that would.

Just my understanding, and IANAL.

Trademark Basics:

b. Titles. Titles, while not protected under copyright law, are sometimes protected under trademark and unfair competition laws. However, one-shot titles, no matter how clever they are, are not automatically entitled to trademark protection. To be protected, titles must achieve "secondary meaning." Secondary meaning is akin to the commercial magnetism of a title. As a rule, to be protected, titles must be "broadly known." Series titles, unlike one-shot titles, make good trademarks candidates. In addition, a title in one medium, will be protected in another.

I've encountered several duplicate titles on books. None of them were nearly as iconic as "Star Wars", but simple phrases seem to be no problem. As there is no well-known major work with the title "Space Marine(s)", my layperson's opinion is that trademark will be hard to apply.

There is a Games Workshop 40K tie-in novel called Space Marine* by Ian Watson from 1993. One of their rules sets from about 1990 was also called Space Marine. I believe one of their recent computer games is called something like Warhammer 40,000: Space Marine. It would not be completely outrageous for them to defend a trademark for a minatures game, computer game or novel called simply "Space Marine".

I do not, however, recall any characters called Spots appearing prominently in any Games Workshop product.

* Coincidentally probably the best tie-in novel I've ever read.

Checking on "Common Law Trademarks", which seems to be a US thing, it gives an existing local user of a business name, or other trademark, protection against over-zealous enforcement. So Games Workshop couldn't do anything over pre-existing book titles, especially if they were in print. But once they registered a trademark, new books would not have that protection.

I must say, Amazon have a relatively poor reputation over their handling of DMCA notices (different thing), and other companies have found that trademark enforcement notices have arrived in their DMCA system, partly because they don't advertise any other legal contact point.

I have other reasons for not thinking much of Amazon, from a supplier point of view. I did some checking of what would be involved in selling an ebook through them, and they are solidly locked into you dealing with the US tax system. For an international business, one of the Slippery Jims of tax avoidance, they can be stunningly parochial when you wish to supply something for them to sell.

(let's try that again.)

IANAL either, but isn't the problem here for GW the distinctiveness requirement? You can't trademark the word "Salt" for salt, and it seems to me that you cannot enforce trademark on the phrase "Space Marines" for literature if people have been using the word generically for sixty-odd years.

Yes to Amazon being locked into US tax law. I pay 35% of my royalties as tax, and will have to pay an accountant to push the right buttons here to claim an Australian tax credit.

They won't pay by credit transfer or paypal to here, either. Cheques only. Do you have any idea how long it takes a cheque drawn on a US bank to clear from here? Honest, I think they load them onto ships bound for Californ-eye-ay from Sydney Town. And as for the bank charges...

C Wingate @40, yeah, that’s the part where we really need the advice of someone who knows how the law works. “Space marine” is a generic term for describing a marine in space, but it’s not a generic term for describing a book.

This post on Scrivener’s Error reassures me that GW is over-reaching, and Amazon’s been lazy, but I’m not certain of the general issues.

Avram @40, Hogarth says in one of her latest updates that GW specifically told her to remove the phrase "space marine" from the INSIDE of her book as well. So it wasn't just an issue of changing the name of the book, which might be a stronger claim, but that GW is apparently claiming they have a trademark of the term within the fictional work itself, not just the branding of it.

er, sorry, the above should be "Avram @42."

ISTR a screed a number of years ago regarding GW's outlet store business practices, including a reference to older gamers as "beards," but my google-fu is weak and I cannot find it. Anyone else remember that?

While I am outraged at GW's overreach, and as sympathetic to Hogarth's plight as to any other author, I think it would be really cool if she'd rename her space marines in a non-infringing manner -- say, as starship stormtroopers. (I suspect the originator of that term would have no problem with such a usage, insofar as it's a more forthright and honest approach to the material at hand ...)

Avram@34, Bayer's trademarks on "Heroin" and "Aspirin" were confiscated by the US government as war reparations, which is why they're generics here (as opposed to generic acetyl-salicylic acid being "ASA" in Canada, where "Aspirin" is still a Bayer brand name.)

Finding previous uses of "space marine" isn't really "prior art". But the flipside of losing a trademark when it's become a generic term is that you can't trademark a generic term to begin with. If people have been referring to non-GW marines in space as "space marines" all along, it's probably not a valid trademark.

As for Aspirin, it's a little more complicated. Although the German Bayer did lose the rights to its trademarks in the US, they were sold by the US government to Stirling Drug, which continued selling it as Bayer Aspirin. They lost the Aspirin trademark in Bayer Co. v. United Drug Co.

All that said... all the notable cases of a trademark being involuntarily lost are pretty old. Are the legal teams that much better now, or do trademark holders get much more leeway these days?

I understand the whole "if you don't defend your trademark you lose it" thing, but isn't that supposed to apply to the areas where you've registered it? Every time this is brought up, it's treated as if you register a single trademark and it covers everything... and it doesn't. M.C.A. actually looked up the GW's trademark's in the US and the UK, and in neither instance does it consider any category that could reasonably or unreasonably be considered an ebook. The UK trademark might, from what I've seen of the list, be used to knock her trade paperback off the market, but they haven't even lifted a finger to go after that.

If the law requires you to rabidly defend a trademark even in areas where you haven't legally registered it, then Trademarks are a poison pill to the English language, pirates and counterfeiters are right, and there's no point in even trying to be polite about the entire business. Raze the company to the ground, salt the earth where the foundation used to stand, and turn the barren land into a monument to what happens if you have a trademark.

Alan Hamilton @48, I think famous brands are valued so highly nowadays that even if a company fails, a well-known trademark is going to get bought.

Remember when Pets.com went under, and their hand-puppet mascot was worth more than the rest of the company?

When it comes to trademarking tiles, let us all yield to the Master:
"A word about the title. It is related of Thackeray that, hitting upon Vanity Fair after retiring to rest one night, he leaped out of bed and ran seven times round the room, shouting at the top of his voice. Oddly enough, I behaved in exactly the same way when I thought of Summer Lightning. I recognized it immediately as the ideal title for a novel. My exuberance has been a little diminished since by the discovery that I am not the only one who thinks highly of it. Already I have been informed that two novels with the same name have been published in England, and my agent in America cables to say that three have recently been placed on the market in the United States. As my story has appeared in serial form under its present label, it is too late to alter it now. I can only express the modest hope that this story will be considered worthy of inclusion in the list of the Hundred Best Books Called Summer Lightning."

Alan @ #48

"In 1994, Bayer AG purchased Sterling Winthrop's over-the-counter drug business from SmithKline Beecham ... thereby reacquiring the U.S. and Canadian trademark rights to "Bayer" and the Bayer cross, as well as the ownership of the Aspirin trademark in Canada."

lifted from Wikipedia

But that's the side issue. However, (IANAL) I have heard that defending a trademark requires proof of regular use in trade and vigorous defense. That's why the writing trade journals have ads enjoining writers to identify "Kleenex brand tissues" and "Jell-O brand gelatin", etc.

So there may be some relevance to the prior uses of the term, even more to uses that overlap the period of GW using it.

Even the very big companies occasionally make outrageous claims - I have some Intel manuals where Intel claims a trademark on the "lower-case letter i" (in certain circumstances, this is one of their trademarks, but not generically).

I, too, am not a lawyer. Games Workshop has a registered trademark on "Space Marines" in Class 28 (games, etc.), but not in other categories. However, in the US, a trademark does not have to be registered to be enforceable. Hogarth herself says that GW is claiming a "common-law" trademark, which is precisely that type of unregistered but still valid trademark.

Trademark infringement in book titles is a poorly defined area of law. There are titles that would clearly not be trademark violations even though they are similar to well-established brands--I don't think the worst lawyer in America would represent a suit against a fantasy novel entitled The Magic Ring. At the same time, there are titles that clearly would be. Even though Jim Rigney didn't invent the idea that time is a wheel, I bet that if I tried to publish a fantasy novel entitled The Wheel of Time, I would get a very stern letter from Macmillan telling me to change it, and I believe they would be completely right to send me such.

"Space Marines" is somewhere in the middle of that continuum. My gut instinct is that GW has reasonably solid legal grounds for requesting that Hogarth change her title--a conclusion that I really dislike, but there's a lot I don't like about the current state of "intellectual property" laws. I am certain that they have no grounds for requesting that she change her text, though I suspect they didn't actually do that.

Also, repeating something that can't be overstated: The fact that the term "space marines" dates back to the 1930s is irrelevant to trademark. You can trademark completely common words--"Time" Magazine, "Life" Cereal, "Orbit" Gum. Trademark does not concern itself with the expression of new ideas; those are the realm of patent and copyright. Trademark concerns itself solely with the use of distinctive terms and designs--"marks"--used to differentiate goods offered for sale--"trade". Unless someone else was actively selling goods under the brand name "Space Marines", GW has a fair claim to the trademark.

That doesn't mean they have to be dicks about it, of course.

Again, I am not a lawyer. And I do know that not all lawyers are dicks about everything.

Amazon is selling M.C.A. Hogarth's Spots the Space Marine: Defense of the Fiddler Kindle book again. I just bought a copy.

I checked with UK's IPO on challenging trademarks: they have a website. Get legal advice, they say, and pay us a UKP 200 fee when you send us this form.

I don't know what it takes to end a trademark on the grounds of being a generic term, and that's where you need a competent lawyer and good information about other uses. Wikipedia isn't enough.

But the words "Space Marine", if not the GW images and models and depictions in cover art and whatever graphic logo they have specified, looks awkwardly generic for them to enforce. If they went after somebody who could afford lawyers, it could get rather difficult for them.

Nulli vendemus, nulli negabimus aut differemus rectum vel justiciam. seems a little false these days, but it is OK because we agreed to pay lawyers rather than Kings.

I don't know if anyone else has noticed, but this has hit BBC news.

Row blows up over ownership of 'space marine' term

@53: Note, though, that all these generic terms are qualified: Time Magazine, Life Cereal, Orbit Gum. They're all constrained to a specific market, which is why Life Magazine and Life Cereal could get along.

In more recent times, Microsoft was unable to trademark "Windows" as it was too generic. The trademark is "Microsoft Windows". X Windows is not an infringement.

So "Warhammer Space Marines" or "Game Workshop Space Marines" would be fine. "Space Marines" on its own, however, looks fishy.

Alan Hamilton #57: And conversely, Apple Computers got along with Apple Records until the former got into the music business. I don't recall the details, but ISTR there was an explicit settlement of the matter.

In 1980 Fantasy Games Unlimited published a set of tactical ground combat rules called Space Marines. I have a copy right here that I'll be using in a few months when I start a Space Opera campaign. The rules are unfortunately no longer available.

The random-text generators are getting better. This is almost intelligible, and the subject is clear, even if the text is mangled. Of course, I don't know if the links are related at all, though.