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 AlexHolker wrote:
It does not. It should be legally impossible for GW to trademark "Space Marine" as a descriptor for a marine in space, for the same reason you can't trademark "apple" as the name of an actual apple and not a technology company.

The term Space Marine does seem pretty generic but probably not enough to prevent trademarking.

So it may (or may not) be that the book falls foul of GWs trademark.

It does not. It should be legally impossible for GW to trademark "Space Marine" as a descriptor for a marine in space, for the same reason you can't trademark "apple" as the name of an actual apple and not a technology company.

Apple isn't a description of an apple, it is the noun.
Also as noted jurisduction has a big part in it, everyone has their own laws.

They are not trademarking anything real (unless NASA has progressed a lot recently), and even marines in space is not really what they are trademarking, they are trademarkig a game/figures etc (just as apple trademark themselves rather than apples). Under UK law you can use descriptive terms if the term has gained some signifiance beyond its description due to it use in your context, and I expect GW can make a pretty good argument for that if it was even necessary. When someone mentions space marines I expect GW is the first thing most who know anything about games would think (indeed, I expect a good number who aren't into games would immediately assossiate space marines with GW).

Remember though, GW would have to show that the term somehow creates confusion with their IP/them. I know nothing of the book so can't comment, but using the term space marine in a descriptive sense is unlikely to fall foul of trademarks. There would, I suspect, be more to it than that.

The US has a common law system for trademarks so if GW can show they've used the term Space Marine to brand books, clothing, whatever they can make a legal claim to it, even if it is only registered for games.

IE DC Comics can shut down a line of Superman T shirts (even though Nietchie coined the phrase and even if the company does not use the character's picture or the S shield) since they can show they've sold Superman T shirts and customers might assume this line is licensed by them.

 AlexHolker wrote:

puree wrote:
So it may (or may not) be that the book falls foul of GWs trademark.

It does not. It should be legally impossible for GW to trademark "Space Marine" as a descriptor for a marine in space, for the same reason you can't trademark "apple" as the name of an actual apple and not a technology company.

This is a stronger argument and is probably why GW has moved away from names Jugernaught and Dreadnaught which are very hard to trademark.

BUT they've certainly made a good job of defining the term, the first page of Google web and image hits are all about GW Space Marines and not other uses of the term.

It would be an interesting case especially since there is not such thing as a Space Marine can it really be a generic descriptor. I mean isn't 'Superman' a generic term for man who is super?



Automatically Appended Next Post:
Addition-Wikipedia's only non-GW Space Marine entry is a movie from 1996 which even I have not heard of until now.

So they have a pretty good claim for uniqueness. Even better than Superman or Batman I would wager.

 Kid_Kyoto wrote:

It would be an interesting case especially since there is not such thing as a Space Marine can it really be a generic descriptor. I mean isn't 'Superman' a generic term for man who is super?



Automatically Appended Next Post:
Addition-Wikipedia's only non-GW Space Marine entry is a movie from 1996 which even I have not heard of until now.

So they have a pretty good claim for uniqueness. Even better than Superman or Batman I would wager.

Same could then be applied to everything including dark elves, lizardmen, traitor cultists, orc (though i suppose they dodge the bullet with the K) etc.


Automatically Appended Next Post:

 Kid_Kyoto wrote:

It would be an interesting case especially since there is not such thing as a Space Marine can it really be a generic descriptor. I mean isn't 'Superman' a generic term for man who is super?



Automatically Appended Next Post:
Addition-Wikipedia's only non-GW Space Marine entry is a movie from 1996 which even I have not heard of until now.

So they have a pretty good claim for uniqueness. Even better than Superman or Batman I would wager.

Same could then be applied to everything including dark elves, lizardmen, traitor cultists, orc (though i suppose they dodge the bullet with the K) etc.

 Kid_Kyoto wrote:

*snip

That's a good post. It appears GW may well have a claim...though it does seem very petty. I'm unsure as to why they'd bother launching a legal battle against a very obscure author who's not exactly piggy backing them. Though I haven't read the book, so I couldn't really comment.

They are lawyers
They are paid to harrass everyone left and right if they come near any words that GW has used. They are not paid to provide a founded base for their claims, and the Chapterhouse case shows that they are very bad at that.

And in the end that makes it extremely entertaining.

puree wrote:
...even marines in space is not really what they are trademarking, they are trademarkig a game/figures etc.

"Spots the Space Marine" isn't a game or a figure, so you are factually incorrect. GW is laying claim to the label "space marine" for marines in space, or they would not have shut her down.

 Kid_Kyoto wrote:


Automatically Appended Next Post:
Addition-Wikipedia's only non-GW Space Marine entry is a movie from 1996 which even I have not heard of until now.

So they have a pretty good claim for uniqueness. Even better than Superman or Batman I would wager.

Not really - and luckily, Wikipedia (and its ease of manipulation) isn't looked at as an expert source.

Space Marine is a pretty generic term for science fiction. It has been used in several books and magazines (as well as one or two movies). Also, in the late 1970s - a set of rules was written for science fiction miniatures called "Space Marines" - the rules were actually reviewed in one of the earliest issues of White Dwarf (either single digits or low double digits...I would need to double check the specific issue though). These rules were later rolled into Fantasy Games Unlimited game called "Space Opera".

In the early 1980s several miniature companies produced Space Marines. It is one of the reasons the first Space Marine figure from GW wasn't called a Space Marine. In fact you can still buy some of the first Space Marines from Alternative Armies - and GW can't even think about contesting them selling "Space Marine" figures since they started making them in 1982 or 1983 (granted the were originally produced under the name Asgard Miniatures).

The term continued to be used rather generically all the way into the early 1990s by several companies - including GW. It wasn't until 2nd edition of Warhammer 40K that they started to try to assert a claim on the term - though to be perfectly honest it would be like Ford trying to assert a trademark claim on "pick-up". If you go back and take a look at the various books from the Rogue Trader period - you will notice that no claims are made in them for the vast majority of trademarks GW claims now (even though they were just as much in use then by GW as they are now).


Automatically Appended Next Post:
BTW - a claim on something, even registering it...isn't actually evidence that the claim is valid.

Amazon consenting to pull the book also isn't evidence, as the way the laws are written - it is in their interests to just pull the book down.

 Sean_OBrien wrote:


though to be perfectly honest it would be like Ford trying to assert a trademark claim on "pick-up".

Like say... a Vehicle called a 'jeep' because it is a verbalization of the letters 'GP' which stands for 'General Purpose'.

And now we have a term called 'SUV' because 'Jeep' is trademarked because while it was a common term used by lots of people in a generic way once, one group stepped up, trademarked it, and used it exclusively while no one else did. Years later, a different term needed to be used for generic description because the generic description became a brand name.

If no one was making trucks except ford for a good long while, you bet your ass Ford would trademark 'Pick-up' and attempt to have it exclusive towards their brand.

nkelsch wrote:

 Sean_OBrien wrote:


though to be perfectly honest it would be like Ford trying to assert a trademark claim on "pick-up".

Like say... a Vehicle called a 'jeep' because it is a verbalization of the letters 'GP' which stands for 'General Purpose'.

And now we have a term called 'SUV' because 'Jeep' is trademarked because while it was a common term used by lots of people in a generic way once, one group stepped up, trademarked it, and used it exclusively while no one else did. Years later, a different term needed to be used for generic description because the generic description became a brand name.

If no one was making trucks except ford for a good long while, you bet your ass Ford would trademark 'Pick-up' and attempt to have it exclusive towards their brand.

The problem of course is that Jeep isn't a common word or set of words, while space marine is the natural progression of marines in space. Marines being the infantry of naval forces and space fleets generally being referred to in naval terms. The progression than, would logically be Space Marine to refer to space based infantry in science fiction settings.

Further - the term hasn't been abandoned (not that that particular issue is important with terms which are generic to begin with) - the marines in Quake are SMC (Space Marine Corps). Timesplitters are Space Marines. Eat Lead uses space marines. Alien Swarm and FreeFall use Space Marines. The Star Blazers anime is filled with Space Marines. The book Into the Looking Glass Allied Space Marines. And of course iconic sci-fi books by Robert A. Heinlein use the term.

 doc1234 wrote:
(though i suppose they dodge the bullet with the K) etc.

They did. Trademarks are VERY specific. Words HAVE to be spelled the same way. Orc and Ork are two separate words for ™ purposes. The same way as "Unobtainium" (™(R) Oakley) and "Unobtanium" (Avatar, James Cameron movie. Although JC changed it so that it better fit the naming convention for metallic elements, not JUST to get around ™ issues.). Completely beside the point that Oakley's ™ only applies to the industries they use the product in, not movies.

 Testify wrote:

 Kid_Kyoto wrote:

*snip

That's a good post. It appears GW may well have a claim...though it does seem very petty. I'm unsure as to why they'd bother launching a legal battle against a very obscure author who's not exactly piggy backing them. Though I haven't read the book, so I couldn't really comment.

Thanks.

Unfortunately the US system requires this sort of behavior.

If trademarks are not 'vigerously defended' the owner can lose it and then anyone can use 'space marine in a title and customers would the have to figure out if 'Space Marines and the battle of blood bay' is a GW book or not.


Automatically Appended Next Post:

 chromedog wrote:

 doc1234 wrote:
(though i suppose they dodge the bullet with the K) etc.

They did. Trademarks are VERY specific. Words HAVE to be spelled the same way. Orc and Ork are two separate words for ™ purposes. The same way as "Unobtainium" (™(R) Oakley) and "Unobtanium" (Avatar, James Cameron movie. Although JC changed it so that it better fit the naming convention for metallic elements, not JUST to get around ™ issues.). Completely beside the point that Oakley's ™ only applies to the industries they use the product in, not movies.

That may be a difference between the US and UK systems.

In the US trademarks include any marks that are confusinly similar. IE a company called Docks and Deck would be able to act against companies called Decks and Docks and maybe even Doctor Deck.

So in the US orc=ork=orq=orck

 Kid_Kyoto wrote:

 chromedog wrote:

 doc1234 wrote:
(though i suppose they dodge the bullet with the K) etc.

They did. Trademarks are VERY specific. Words HAVE to be spelled the same way. Orc and Ork are two separate words for ™ purposes. The same way as "Unobtainium" (™(R) Oakley) and "Unobtanium" (Avatar, James Cameron movie. Although JC changed it so that it better fit the naming convention for metallic elements, not JUST to get around ™ issues.). Completely beside the point that Oakley's ™ only applies to the industries they use the product in, not movies.

That may be a difference between the US and UK systems.

In the US trademarks include any marks that are confusinly similar. IE a company called Docks and Deck would be able to act against companies called Decks and Docks and maybe even Doctor Deck.

So in the US orc=ork=orq=orck

While it is true broadly speaking, it still ignores the scope of a trademark. When you register a mark - you specify what goods or services you will use that mark for. If you look up the Space Marine trademark on the USPTO site, it specifies what that particular mark is used for. In the case of GW, they have two registered marks:

IC 009. US 021 023 026 036 038. G & S: video computer games; computer software for playing games

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.

If it isn't one of those two broad categories of products - Gamesworkshop has no official claim to the term. Especially not in regards to a book which has the common term title.

Regarding confusion - the court will weigh the issue regarding the terms used and how unique they may or may not be with regards to the subject at hand. In the case of the Decks and Docks or Docks and Decks that you mention...the strength of the mark would be weak. The terms are common - and assuming that it is used in relation to a construction company that deals with decking...pretty much everyone will be using some manner of those words to describe their services. If you used something that was odd - for example "Adamant Deck Works" to name your company, you would have a strong claim if a competitor decided to name their company "Adamant Dock Works" you would have a stronger claim towards infringement. The word Adamant - while descriptive - isn't normally used to describe decking.

With regards to the mark in question though - space marines are two very common words...and they are the natural progression for a science fiction military. They are also used fairly often by other companies (as I mentioned above) and as a result, the strength of the mark is reduced based on the tests which the courts have put in place. You can find an example of the process in AMF, Inc v Sleekcraft Boats:

http://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/amf.htm

So, we end up with a short list of 8 points to address:

1. strength of the mark;
2. proximity of the goods;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. type of goods and the degree of care likely to be exercised by the purchaser;
7. defendant's intent in selecting the mark; and
8. likelihood of expansion of the product lines

1) How strong is the mark? As I stated already, I don't think space marine is a very strong mark. No doubt - others will feel that it is the neatest thing since sliced bread.
2) Proximity of the goods? Are they sold through the same channels...in this case, yes sort of. Independent retailers do sell through Amazon.
3) Similarity of the marks? Both would be text marks - but the book is "Spots the Space Marine" which is fairly different from just "Space Marine" which GW has registered.
4) Evidence of confusion? Considering the author describes the book as Pollyanna meets Starship Troopers - I don't think there is going to be any evidence of confusion.
5) Marketing channels used? Primarily this would apply if both products were advertised in the same newspaper, TV or radio stations or websites. I don't think Spots the Space Marine has a huge marketing arm - and GW really doesn't advertise either.
6) Type of goods? Miniatures versus Children's Books - no real overlap. Care exercised by the purchaser? Not to much. We are not talking about Rolex watches or Italian leather shoes - both products are junk purchases, things which will not become family heirlooms.
7) The intent? As the author said - he was inspired by Heinlein not GW. They didn't have any foul ideas with which to attempt to confuse or dilute GW's products.
8) Likelihood of expansion? GW would probably attempt to sell children's books if they thought there was money to be made. The author might consider a line of toys if the series is very successful. This could bring them into more direct competition - so there is an interest for the courts to address the issue now as opposed to later.

Looking at those issues - even disregarding the specific registration categories which GW chose...their doesn't look to be any infringement. Regarding the other issue with trademarks - dilution, GW is not famous. You can't have dilution without fame. Being #1 in a niche market is not sufficient to prove legal fame in order to determine trademark dilution.

Have the GW lawyers looked at Apples rounded corners litegation? I am looking forward to how this pans out

 Kroothawk wrote:
Another classic example of GW lawyers trying to silence competitors until someone finds out they have no right to do this and takes them to court. See Chapterhouse case.
Amazon is playing safe to the disadvantage of the less known party.

This.

It isn't a question of innocence, only degrees of guilt.

CurryMaster wrote:
Arn't the dudes in Alien called space marines?

This toy commercial from back in the day seems to think so. I remember seeing this every day when TMNT was on.
http://www.youtube.com/watch?v=OUJXr2CUTmY

 Rainyday wrote:

CurryMaster wrote:
Arn't the dudes in Alien called space marines?

This toy commercial from back in the day seems to think so. I remember seeing this every day when TMNT was on.
http://www.youtube.com/watch?v=OUJXr2CUTmY

Oh god yes think i had a few of these Same when they did those Predator toys haha. Good times

 Rainyday wrote:

CurryMaster wrote:
Arn't the dudes in Alien called space marines?

This toy commercial from back in the day seems to think so. I remember seeing this every day when TMNT was on.
http://www.youtube.com/watch?v=OUJXr2CUTmY

Good times! Of course back then GW was playing nice with other companies. Milton Bradley was making Battle Masters and Hero Quest. GW was also in negotiations with Kenner to make 40k action figures. Sadly only prototypes were made.

Today we have evil GW that has a cue of employees waiting to be fired, outrageous pricing in the pacific, and IP crap such as this.

I've heard both, and I'm not sure which is really more "official". They're called Colonial Marines in the movie, but I've heard Colonial Space Marines used elsewhere. Maybe Colonial Space Marines is the "official" name and they just call them Colonial Marines for short and/or because calling them "Space Marines" would have sounded way too lame.

 Testify wrote:
People are bashing GW for owning Intellectual Property now?

Read the original post and you'll see GW are wrong anyway.

The amount of cognitive dissonance in your post is truly astounding.

People are doing the thing in the first sentence of your post because of the thing in the second sentence of you post, FFS.

 Ouze wrote:

 Testify wrote:
People are bashing GW for owning Intellectual Property now?

Read the original post and you'll see GW are wrong anyway.

The amount of cognitive dissonance in your post is truly astounding.

People are doing the thing in the first sentence of your post because of the thing in the second sentence of you post, FFS.

To be fair:

 Testify wrote:

Brother Gyoken wrote:

But that aside, why couldn't you say this the first time instead of throwing out a stupid strawman about people begrudging GW for having copyrights?

I miss-read the OP, didn't realise GW didn't own the copyright to Space Marines in fiction.

As others have pointed out, this is pretty standard behavior for a company trying to establish/defend a trademark. You simply can't let it go.

In practice? This is a solo author selling an e-book on Amazon. I can't imagine the sales were much to Amazon, probably less than even a simple response to a GW lawsuit. So of course they'll boot it. What is there to be gained by Amazon for standing firm?

On a slightly different note, I'm mildly pleased by this. Sure, I feel bad for the author and any potential fans of the work, but this is long term thinking. So much of what we see from GW reeks of short term, cash grab stuff. When I see an action like this, which is only done for long term brand protection or sheer pointless bullying, I see that somebody there is looking out for more than the next few years.

 Sean_OBrien wrote:

nkelsch wrote:

 Sean_OBrien wrote:


though to be perfectly honest it would be like Ford trying to assert a trademark claim on "pick-up".

Like say... a Vehicle called a 'jeep' because it is a verbalization of the letters 'GP' which stands for 'General Purpose'.

And now we have a term called 'SUV' because 'Jeep' is trademarked because while it was a common term used by lots of people in a generic way once, one group stepped up, trademarked it, and used it exclusively while no one else did. Years later, a different term needed to be used for generic description because the generic description became a brand name.

If no one was making trucks except ford for a good long while, you bet your ass Ford would trademark 'Pick-up' and attempt to have it exclusive towards their brand.

The problem of course is that Jeep isn't a common word or set of words, while space marine is the natural progression of marines in space. Marines being the infantry of naval forces and space fleets generally being referred to in naval terms. The progression than, would logically be Space Marine to refer to space based infantry in science fiction settings.

Further - the term hasn't been abandoned (not that that particular issue is important with terms which are generic to begin with) - the marines in Quake are SMC (Space Marine Corps). Timesplitters are Space Marines. Eat Lead uses space marines. Alien Swarm and FreeFall use Space Marines. The Star Blazers anime is filled with Space Marines. The book Into the Looking Glass Allied Space Marines. And of course iconic sci-fi books by Robert A. Heinlein use the term.

Not to Mention Star Wars Also uses the term "Space Marines" to describe the fleet action soliders of both the Empire and the Rebellion / New Republic. The earliest reference i can find so far is 1998's SpecForce Guide from the roleplaying game. If GW went after Disney / George Lucas for IP infrangement, It would be a battle for the ages...

 Testify wrote:
People are bashing GW for owning Intellectual Property now?

Read the original post and you'll see GW are wrong anyway. The fact that Amazon have removed the book doesn't mean they're validating it, it means they're playing it safe.

Nope, people are bashing your [Mod: no need to have a go at people just because of a GW legal dispute]...

Read the definition of what they have successfully, legally copy-written. Fictional literature isn't one of those things. Amazon just pushed a button when confronted with a legaleese letter.


Really, your blind adoration and willingness to attack anyone critical of the company that makes your toy soldiers is getting very tiresome, if you somehow cannot process or accept other people taking objection with a company's decisions, leave the forum. Now.

 swampyturtle wrote:
If GW went after Disney / George Lucas for IP infrangement, It would be a battle for the ages...

Considering that they are getting spanked by a small company with pro-bono representation, if GW went after the likes of Disney in a IP battle, when the dust settled Disney would own everything ever made by GW!

Well I can hardly say I am surprised. Sadly the author got what was coming to her. If only the same would happen to Chapterhouse.

 Squigsquasher wrote:
Well I can hardly say I am surprised. Sadly the author got what was coming to her. If only the same would happen to Chapterhouse.

I am not an expert in IP/copyright law , and have only the comments by others in the Chapterhouse threads and on this thread to guide my opinion , but the opinion above if not guided by the authors' own more expert knowledge appears to me to be more about personal alliegance .

I am waiting with interest on the Chapterhouse case to see if it reveals that GW has been overstating its copyright / IP , it would be good for this possibly precedence forming case to give the TT game Industry some more clearly defined boundaries .

If GW have forced an author to have her book pulled by overstating the scope of its IP then thats shameful practise , thing is I dont know for certain they have overstated , that may be for a court or lawyers, but I that may not be a viable option for this author .

Amazon doesn't know they're dealing with a bunch of idiots. As soon as they do a little research into the folks at GW I doubt they'll do this again.

MeanGreenStompa wrote:
Read the definition of what they have successfully, legally copy-written. Fictional literature isn't one of those things. Amazon just pushed a button when confronted with a legaleese letter.

Copy right is nothing to do with Trademarks. They automatically have copyright on anything they write (that isn't someone elses copyright, and even there they may have copyright on aspects of the derivative work) - books being rather an obvious thing to have copyright on.