Games Workshop’s Space Marine Trademark Battle Rolls On
Before we get into anything, I’ll point out that the usual caveats around this kind of thing apply – I am not a lawyer, so my analysis of the situation may well be wrong in places. Also, any opinions below are just that, and should not be inferred as being representative of Giant Fire Breathing Robot in any way, shape or form.
So, Games Workshop has sailed headlong into a PR disaster of epic proportions. The row is over GW’s attempts to assert their right to trademark the phrase “space marine” in written works of fiction, i.e. books and novels, ensuring that only they would be able to use the words.
This isn’t actually a new story. The saga began on the 13th of December last year, when author Maggie Hogarth received an email from Amazon, telling her they had taken her book, Spots the Space Marine, down following a claim from GW that she was infringing their trademark of the phrase “space marine.” The news caused a minor sensation at the time, but was generally written off as another example of GW’s infamously heavy-handed approach to their intellectual property. On February 5th of this year, Hogarth posted an update on her blog summarising what had been happening – in short, GW was pushing forward with their claim. She would have to go to court to challenge it – something she couldn’t afford – and for one reason or another, this time the Internet took notice, and things got serious.
John Scalzi, president of the Science Fiction and Fantasy Writers of America and award-winning author himself, tweeted up a storm in support of Hogarth. His tweets on the matter went viral, along with the #spacemarine, #spacemarines, and #savespacemarines hashtags. Charlie Jane Anders, of io9, penned an article about the situation which raised the profile even further. Cory Doctorow, Wil Wheaton, and Charles Stross have also weighed in on the tale. In case you’re wondering, none of them are supporting GW on this one.
And why would they? At face value, the case seems spurious. GW’s argument appears to be that, because they have now entered into the world of publishing books, in this case specifically e-books, they are now able to claim a common law trademark on the phrase “space marine.” Here’s the thing though – GW didn’t invent the phrase “space marine.” Admittedly, they’re not claiming that they did, however what they are claiming is that their brand is so strong, so ubiquitous, that anyone using the words “space marine” now will either be talking specifically about a Games Workshop space marine from the Warhammer 40,000 universe, or that the person hearing, reading, or otherwise encountering the words will immediately think of a Games Workshop space marine from the Warhammer 40,000 universe.
Why would I suggest that that’s spurious? If, like me, you’re a geek then there’s an excellent chance that if someone in your hearing started talking about space marines, you’d think of GW. Assuming that’s true, extending that to cover the population at large, is where the mistake lies. “Space marine” has been in use in science fiction and other forms of literature since the 1930′s. Exact dates are hard to pin down (there are a few competing suggestions), but both Wikipedia and TvTropes have pages suggesting that one Bob Olsen was the first to use the term in a story called Captain Brink of the Space Marines in 1932. Standard caveats apply here – both sites are user-moderated and may not be 100% reliable.
Trademarks are issued to protect and distinguish one company’s products from another’s. The US Patent Office defines a Trademark as, “a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” They are issued for words, symbols, devices, and logos which are used for commercial purposes, and the basic idea is to prevent one company ‘cashing in’ on the work of another by exploiting customers’ confusion and tricking them into buying something unofficial.
Ed Grabianowski on Robot Viking has an excellent post about this subject which delves into the topic of trademarks a bit deeper, in particular trademark classes, which specify exactly what kinds of products a trademark covers. The salient class in this case is 16, which covers “Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks.” The emphasis in that quote is mine, and it’s important – we’ll come back to it later. Ed’s post is well worth a read, if only for the deliciously ironic editorial by GW founder Ian Livingstone (no longer with the company), which essentially attacks draconian trademark laws and over-zealous legal teams.
One thing that’s important to note here: we’re not dealing with an issue of Copyright infringement. I’ve seen a lot of people online claiming that GW used a Digital Millennium Copyright Act (DMCA) takedown notice, but that’s not the case. Copyright and Trademark are two different things. Copyright protects creative and intellectual works – written, dramatic or musical works, for example. When people host copies of movies and songs, or scan books and provide them online, they’re breaching copyright. Officially, the DMCA is only supposed to be used to prevent people circumventing Digital Rights Management (DRM) tools, but it has been used in the past as a tool to pursue people hosting or providing links to copyrighted content. Copyright battles are generally to do with piracy, but that’s a discussion for another time, and not what’s happening here.
Another point that I’ve seen a lot of commenters missing or failing to understand, is that there are no international trademarks. The UK, U.S., and Europe all have different trademark laws. A registered trademark in one, has almost no legal weight in another. GW’s trademarks in the UK and U.S. only cover games, miniatures, and wargaming.
Hogarth mentions that GW has no trademark registered under Class 16 in the UK, however a search of the UK Intellectual Property Office (IPO) shows that Games Workshop does indeed have a trademark registered on the phrase “space marine” under class 16, amongst others. Here’s the thing – Class 16 does not cover e-books, or any other form of digital publishing, as far as I can tell. And, while GW does have “space marine” registered for several trademarks at the U.S. Patent and Trademark Office, none of them are for the U.S. equivalent of Class 16. One is for war games, board games, and the like while the other is for computer and video games. No books, printed or electronic, that I can see.
It’s hard to tell how far Games Workshop wants to take this. They don’t engage with the press as a rule, and the only official statement they’ve made has been through their Facebook page (classy), and even then it was a fairly generic “we have no choice but to take reasonable action” kind of thing. Go read it, assuming it’s still there. Actually, wait:
There. Saved for posterity.
Obviously, the saga is still on-going. At the start of the week, things looked grim for Maggie Hogarth. She didn’t have the means to even begin a legal battle with GW, let alone win, regardless of the strength of her case. Things may be looking up for her, however. Due in no small part to the attention raised by everyone involved, the Electronic Frontier Foundation (EFF) are now in talks with Hogarth. The EFF are a non-profit organisation which exists to help defend consumer rights and freedoms (among other things) as they pertain to the electronic world. They are especially keen to help defend against copyright trolls. They have just put up a blog post talking about the matter, and confirming that Spots the Space Marine has now been reinstated by Amazon. Hogarth also has a blog post up thanking everyone who’s taken notice of this matter and helped her start to fight back, something she originally thought was impossible.
That’s not to say this is a done deal. Legal battles of any kind are rarely wrapped up quickly, easily, or cheaply. A BBC article on the matter points out the difference in trademark law between the UK and U.S., and suggests that GW will have a greater struggle to assert their claim in the U.S. than anywhere else.
So, now that you’re up to speed, what should you do if you feel like getting involved in this affair? Well, first and foremost is what NOT to do – don’t head down to your local GW and give the staffers grief about it. That should be a no-brainer for most of our readers (because you’re awesome), but you’d be surprised how many people will think that it’s OK to do. The guys and girls working in the average GW store are (generally) some of the hardest working and most dedicated hobbyists I’ve had the pleasure to know and work with. Yes, I’m an ex-member of GW’s retail team, from quite some time ago. The people in-store have nothing to do with this, so don’t be that guy or girl, and leave them be. They have enough to deal with. That extends to GW staff in general – don’t phone their customer service people and scream at them for being Trademark bullies or neo-Nazis. GW’s official Twitter account is @voxcaster, try to refrain from trolling them, you’ll only get ignored. The best thing to do is make your voice heard calmly, clearly, and rationally. The internet is full of sites and forums dedicated to GW and tabletop wargaming at large, and they’re already crammed with discussions about this. GW’s customer service email differs from country to country, but you could always drop them a strongly worded, but polite, note explaining how you feel. If you do decide to weigh in there, try to maintain a level head. A little class and a lot of rationality will stand you in good stead there.
Finally, and probably most importantly, the two most effective things you can do are: donate to the EFF to help them to support Maggie Hogarth, and anyone else being bullied in a similar fashion; and vote with your wallet. If you don’t like what GW is doing, show them by not giving them your money. Do it publicly if you want – write a blog post, an open letter on Facebook, or your forum of choice telling GW and the world that you’ve had enough. Or, do it privately, just fold your arms and stop buying GW products. If you really want to help, then take action, don’t simply sit at your keyboard and seethe. Just don’t be a dick about it.
A final note: Having read over this post prior to uploading it, I realise that I’m simply assuming you won’t be taking GW’s side. I may be wrong. You might think there’s nothing wrong with what they’re doing, and they have every right to claim a phrase they’ve popularised over the years. I disagree, but please, feel free to comment below, I’d love to get a discussion going.