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BaronIveagh wrote:Almost all of GW's work is derivative. If I remember right, the Tau Firewarrior is from a Rodger Waters album cover

I must see this Album cover.

Sorry, it was Roger Dean:

Wow... yeah, thats sorta sad knowing that now..

Hmm... Sort of, sort of not. There are resemblances for sure - enough for it to not just be a coincidence - but I would say there're more Samurai and Anime influences at work on the Fire Warriors. The helmet's upturned Wok shape is the only immediate resemblance I spot there.

Killjoy00 wrote:

Janthkin wrote:
*sigh* Stupid USPTO website.

The link is supposed to go to GW's registered trademark for the term "Space Marine," filed in 1991, and covering "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."

So yes - they DO have complete rights to "Space Marine," within the context of this hobby. It's also long since become incontestable.

As a fellow IP lawyer, I'm surprised to see you use such absolute language. As I'm sure you know, genericity can operate to lose trademark rights, long after the period for incontestability is over. In fact, most of the time, it will be after a long time. Examples like aspirin and escalator.

As for whether Space Marine has reached that area... well, I would argue yes. Maybe you would argue no. But you certainly can't argue that because the statutory period for incontestability has passed, that GW has "complete rights" to the term.

I put my disclaimers up back on page 1.

Yes, I'm using absolutist language here; yes, it's all open for argument, given enough money and time. And then there's always the question of what I could have meant by "complete" rights....

But I don't see how "Space Marine," as applied to miniatures hobbies, could be successfully attacked as generic. GW has done a pretty fair job of policing their trademarks over the years. I have yet to here of anyone calling a random toy soldier a "Space Marine," or seen any current large-scale distribution of non-GW figures sold as "Space Marines."

Incontestability is nice for GW, as it neatly puts an end to the "but there was prior art!" argument raised earlier in the thread. Leaving aside for the moment whether or not such examples were relevant at the time of filing, it's a legally foreclosed argument - their mark isn't open for attack on validity grounds anymore.

Would this screw up this whole argument?

Kenner Aliens Space Marine Toy

metallifan wrote:Hmm... Sort of, sort of not. There are resemblances for sure - enough for it to not just be a coincidence - but I would say there're more Samurai and Anime influences at work on the Fire Warriors. The helmet's upturned Wok shape is the only immediate resemblance I spot there.

The sculptor stated in an interview she was 'inspired' by it. You may notice the vaguely devilfish shaped craft in the background, too.

Chapterhouse wrote:Would this screw up this whole argument?

Kenner Aliens Space Marine Toy

If it were still in production? It'd be a data point. But that's a 1992 toy soldier there.

Trademark isn't like patent - finding a single piece of "prior art" can kill a patent, but is often irrelevant to the trademark analysis. Trademarks are also far more susceptible to a "use it or lose it" argument - if the owners of the Aliens franchise had continued to make toys throughout the last 20 years, they could make a "Space Marine" toy today and have a reasonable argument that their (common law) trademark rights supercede GW's rights, to the extent of allowing them to use the term. But if they were to fire up the presses now, after so many years of silence, GW could probably shut them down, even though they may have used the term first.

Seeing that that toy and GWs trademark were in existance at the same time and GW did nothing to prevent them using "Space Marine" does the give precedence to another company doing the same safely?

Chapterhouse wrote:Seeing that that toy and GWs trademark were in existance at the same time and GW did nothing to prevent them using "Space Marine" does the give precedence to another company doing the same safely?

In this precise case? I doubt it. Aliens came out in 1986, and I suspect similar toys were in production before GW filed their trademark application; GW probably would not have been able to stop them (for an interesting case about concurrent trademark use, read this).

I wouldn't care to try and rely on a 18 year old example of possible acquiescence, in a situation where the trademark holder didn't have an obviously reasonable likelihood of success, to try and defend against trademark infringement now.

That's a toy, rather than a detailed, collectible, sculpted miniature of a specific scale designed to be used as a playing piece in a specific miniatures wargame set in the specific fictional universe of 40K.

Interestingly, though, Kenner might have trouble making the same toy now. GW registered the trademark "Space Marine" twice in the UK, in 1991 solely for use with minis for wargames & RPGs, and again in 1996 in a far wider assortment of categories:

http://www.ipo.gov.uk/domestic?domesticnum=1461715

http://www.ipo.gov.uk/ohim?ohimnum=E392886

Who knew that you can't even make Space Marine Artificial Flowers or Space Marine Christmas Tree Decorations without GW siccing their law-dogs on you?!?

...I have a Santa Clause Space Marine Christmas Tree Ornament that I made for myself... Does that mean I'm getting sued?

brettz123 wrote:

Dork Eldar wrote:

brettz123 wrote:

Dork Eldar wrote:Ahh...I wasn't aware that FW was owned/licensed by GW. That explains a lot.

So if I sculpt a space marine model that is decent quality, I can sell it as long as it doesn't have any of the logos/emblems on it?

Uhhhh.... how did you not know that?

I haven't really looked at FW until recently, and wasn't informed there was some kind of established relationship. There's nothing on their website saying they are licensed by GW or anything else.

So all the direct links to every other GW site and the copyright information at the bottom of EVERY page wasn't a dead giveaway?

So he admits he doesn't know somethingand do you really have to have such bad manners as to reply in that fashion?

Originally FW was a separate company in Southern California that was slowly co-opted by GW.

Let's just say that GW claims all sorts of IP that may or may not stand up in court. Until someone actually challenges them in court, it's all hypothetical.

@ Jathkin: Actually, the owners of the Aliens IP *have* been licensing the toy rights. Do you think that Paramount would ever let a single Ip slip through thier fingers anymore then GW would?

Samus_aran115 wrote:

Dork Eldar wrote:Lol.Fail assumptions are fail.

You know, these are the kinds of comments that turn discussions into arguments.
There really isn't a need for it.

Could you, please, keep your discussion on IP away from inflammatory comments? I know I would appreciate it, and I'm certain some others here would, too.

Thank you.

BaronIveagh wrote:@ Jathkin: Actually, the owners of the Aliens IP *have* been licensing the toy rights. Do you think that Paramount would ever let a single Ip slip through thier fingers anymore then GW would?

Now, there's a legal battle I'd like to see. GW fighting Paramount in a court of law over who does or doesn't have the right to use "Space Marines" in their stuff.
Regardles who won, it would be interesting to see the GW juggernaut sweat at the legal costs.

Eric

BaronIveagh wrote:@ Jathkin: Actually, the owners of the Aliens IP *have* been licensing the toy rights. Do you think that Paramount would ever let a single Ip slip through thier fingers anymore then GW would?

It's not "have they kept the Aliens license/trademarks alive," it's "have they continuously produced a toy called a 'space marine'?" If they have, I haven't seen it, and no one's posted here.

Have they produced the toy consistently for the last 20 years, probably not. I will bet good money that they have, however, maintained all the legal requirements to produce it tomorrow, if they decided to.

God knows, they spend millions of dollars a year to make sure not one IP right they have ever had slips through their fingers.

If Paramount produced a Space Marine toy tomorrow, the only reason for GW to sue them would be if it was suitable for 28mm wargaming.

I know GW have registered Space Marines™ for a lot of unrelated areas, however before commencing legal action you have to consider the costs and possible benefits and drawbacks.

If they sued about a Space Marine posable figurine rather than a wargame miniature, (a) it would be expensive, (b) they might not win, (c) if they did win they achieve nothing to protect their core business.

Even if it was 28mm, it might not win. Considering the legal teams both sides could bring to bare, it might take decades to sort out.

Indeed -- just because someone has registered a trademark, it's not uncontestable.

Janthkin wrote:

Killjoy00 wrote:

Janthkin wrote:
*sigh* Stupid USPTO website.

The link is supposed to go to GW's registered trademark for the term "Space Marine," filed in 1991, and covering "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."

So yes - they DO have complete rights to "Space Marine," within the context of this hobby. It's also long since become incontestable.

As a fellow IP lawyer, I'm surprised to see you use such absolute language. As I'm sure you know, genericity can operate to lose trademark rights, long after the period for incontestability is over. In fact, most of the time, it will be after a long time. Examples like aspirin and escalator.

As for whether Space Marine has reached that area... well, I would argue yes. Maybe you would argue no. But you certainly can't argue that because the statutory period for incontestability has passed, that GW has "complete rights" to the term.

I put my disclaimers up back on page 1.

Yes, I'm using absolutist language here; yes, it's all open for argument, given enough money and time. And then there's always the question of what I could have meant by "complete" rights....

But I don't see how "Space Marine," as applied to miniatures hobbies, could be successfully attacked as generic. GW has done a pretty fair job of policing their trademarks over the years. I have yet to here of anyone calling a random toy soldier a "Space Marine," or seen any current large-scale distribution of non-GW figures sold as "Space Marines."

Incontestability is nice for GW, as it neatly puts an end to the "but there was prior art!" argument raised earlier in the thread. Leaving aside for the moment whether or not such examples were relevant at the time of filing, it's a legally foreclosed argument - their mark isn't open for attack on validity grounds anymore.

You forgot one thing under US Trademark law, which is that a trademark is assigned a specific image at the time of filing. Yes, GW owns the trademark Space Marine, but only in the context of the Warhammer 40k Space Marine. All other space marines and their individual images are open. I can have a character named Colossus, but he can't be a huge metal skinned Russian guy that wears a specific type of costume. This is because Marvel owns the trademark to the name Colossus with the specific image of the X-Men named Colossus. It would have to be any other image that I would have to use when the trademark was filed. Thus, the Aliens Colonial Space Marine, if trademarked as just Space Marine looks completely different then the GW Warhammer 40k Space Marine and customers can readily identify they are two separate product lines due to the associated images. As a lawyer, you should have known this.

ThePatriot wrote:You forgot one thing under US Trademark law, which is that a trademark is assigned a specific image at the time of filing. Yes, GW owns the trademark Space Marine, but only in the context of the Warhammer 40k Space Marine. All other space marines and their individual images are open. I can have a character named Colossus, but he can't be a huge metal skinned Russian guy that wears a specific type of costume. This is because Marvel owns the trademark to the name Colossus with the specific image of the X-Men named Colossus. It would have to be any other image that I would have to use when the trademark was filed. Thus, the Aliens Colonial Space Marine, if trademarked as just Space Marine looks completely different then the GW Warhammer 40k Space Marine and customers can readily identify they are two separate product lines due to the associated images. As a lawyer, you should have known this.

You seem to have some misconceptions about trademarks.

The "look and feel" of a GW Space Marine is covered by copyright law. The term "Space Marine," as applied to "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" is covered by trademark law. As it is a word mark, rather than an image mark, any toy model being marketed as a "Space Marine," irrespective of whether it looks anything like a GW Space Marine, is potentially infringing.

Ian Sturrock wrote:Indeed -- just because someone has registered a trademark, it's not uncontestable.

Actually, it's incontestable, because the law says it is. Outside of a few narrow exceptions, it is EXTREMELY difficult to attack a trademark that has been registered for more than five years.

Wait: GW claims they have the trademark for Space Marines for video games?

Someone should tell Id Software.

Since in Doom you play a 'space marine'

Usage is everything.

If ID Software had you playing as a "Space Marine of the God-Emperor", there would be a cause for GW to go after them.

A "space marine" is not the same as a "Space Marine".

Read what Janthkin put about the "look and feel".
If Doom's "space marine" was 8 feet tall, wielding an automatic RPG rifle while clad in a massive suit of Powered Armour with aquilas on it--there'd be an issue.

Yes, but his assertion is that the term 'space marine' itself is their trademark. Rather like WotC trade mark on the term 'collectible card game' or Marvel/DC's battle over their attempts to trademark the term 'super hero'.

Sorry -- should have specified -- I was thinking of UK law, where there's no particular time limit for contesting a trademark, if you have good grounds:

http://www.ipo.gov.uk/types/tm/t-other/t-object/t-afterreg.htm

I researched it a few years back, as Conan Properties Inc decided to trademark a name I'd been using for live roleplaying games I run, Hyborian Tales:

http://www.ipo.gov.uk/domestic?domesticnum=2423399

http://hyboriantales.com/

They've just done it so they have more legal might to throw at me if they ever decide to sue. I had a bit of a back-and-forth with them about their Conan IP, when I first started running the games, but we didn't resolve anything to either party's satisfaction -- I don't think that the games I run infringe their IP, they do but don't want to take me to court.

Ian Sturrock wrote:Sorry -- should have specified -- I was thinking of UK law, where there's no particular time limit for contesting a trademark, if you have good grounds:

http://www.ipo.gov.uk/types/tm/t-other/t-object/t-afterreg.htm

I researched it a few years back, as Conan Properties Inc decided to trademark a name I'd been using for live roleplaying games I run, Hyborian Tales:

http://www.ipo.gov.uk/domestic?domesticnum=2423399

http://hyboriantales.com/

They've just done it so they have more legal might to throw at me if they ever decide to sue. I had a bit of a back-and-forth with them about their Conan IP, when I first started running the games, but we didn't resolve anything to either party's satisfaction -- I don't think that the games I run infringe their IP, they do but don't want to take me to court.

Do you mind if I ask why you think it does not infringe on their IP? Isn't Hyborean a made up word? Just asking as I do not know the answers.

Brettz, yeah, Hyborian is a made-up word, but it was made up by Robert E. Howard, who died in 1936. 90%+ of his fiction is out-of-copyright, now.

The *character* of Conan is a trademark of CPI, and they've been buying up the few REH copyrights that remain viable, but I've generally avoided using their trademark to sell my games, and made it clear that I'm not affiliated with them or doing anything "official" in their eyes.

The USA has pretty good precedent to indicate that a literary estate or similar body trying to claim a trademark on a character, but without owning the copyright of most of the works the character appears in, will be ruled against:

http://www.pryorcashman.com/assets/attachments/42.PDF

That's for a not dissimilar situation involving the Sherlock Holmes IP (again, most of the copyrights these days are public domain).

Interesting overview on the recent attempts by estates & similar organisations to keep making money out of dead authors long after copyrights expire, here:

http://us.ft.com/ftgateway/superpage.ft?news_id=fto081620071304359321

Agatha Christie and Ian Fleming are getting the same kind of treatment!

Oh, and I have enough faith in UK-based courts to firmly believe that any British judge would find it unlikely that me organising 20 or so people to run around in the woods, hitting each other with foam swords, once a year, will significantly impact the multi-million dollar, multimedia, international business that is Conan Properties Inc.

Ian Sturrock wrote:Brettz, yeah, Hyborian is a made-up word, but it was made up by Robert E. Howard, who died in 1936. 90%+ of his fiction is out-of-copyright, now.

The *character* of Conan is a trademark of CPI, and they've been buying up the few REH copyrights that remain viable, but I've generally avoided using their trademark to sell my games, and made it clear that I'm not affiliated with them or doing anything "official" in their eyes.

The USA has pretty good precedent to indicate that a literary estate or similar body trying to claim a trademark on a character, but without owning the copyright of most of the works the character appears in, will be ruled against:

http://www.pryorcashman.com/assets/attachments/42.PDF

That's for a not dissimilar situation involving the Sherlock Holmes IP (again, most of the copyrights these days are public domain).

Interesting overview on the recent attempts by estates & similar organisations to keep making money out of dead authors long after copyrights expire, here:

http://us.ft.com/ftgateway/superpage.ft?news_id=fto081620071304359321

That is pretty interesting I didn't even think about it having entered the public domain. Thanks for the explanation. How did they even find out about you and your friends wacking each other with foam swords in the first place?

Might have been the website, though I suspect that it's a lot more likely that someone who doesn't like me was stalking my blog & decided to let CPI know about the announcement of the first game. And, yes, I have someone in mind, and, yes, they would have had the relevant contacts at CPI... and, no, I'm not going to mention who I think it was.